Appeal No. 1997-0569
Application No. 08/150,559
the granulated slag material, we note that independent claims
7 and 13 on appeal are “product-by-process” claims and that,
in our opinion, the product-by-process limitations therein do
not serve to distinguish the claimed product (claim 7) or
roofing material (claim 13) from the naturally colored red
(e.g., iron oxide) roofing granules disclosed or suggested in
Wright or the prior art roofing material disclosed in Wright
that would utilize only naturally occurring red (e.g., iron
oxide) granules as a surface coating on a man-made composition
substrate. The patentability of a product-by-process claim is
based on the product itself, and such claim is unpatentable
over a product made obvious by the prior art even if the
product of the claim is made by a different process. See In
re Thorpe, 777 F.2d 695, 697, 227 USPQ 964, 966 (Fed. Cir.
1985); In re Brown, 459 F.2d 531, 535, 173 USPQ 685, 688 (CCPA
1972); and Ex parte Edwards, 231 USPQ 981, (Bd. Pat. App. &
Int. 1986). As was indicated by the Court in Brown, 459 F.2d
at 535, 173 USPQ at 688:
When the prior art discloses a product which
reasonably appears to be either identical with or
only slightly different than a product claimed in a
8
Page: Previous 1 2 3 4 5 6 7 8 9 10 11 12 13 14 15 Next
Last modified: November 3, 2007