Appeal No. 1997-1530
Application 08/485,198
the language of appealed independent claim 16, the Examiner
points to insulating layers 190, 196 in Hornbeck as
corresponding to the claimed first and second insulating
layers. In making this assertion, the Examiner (Answer, page
5) has disregarded the claim language “a freestanding first
electrically insulating layer previously formed on a
substrate”, contending that, as a product-by-process
limitation, it is not entitled to be given weight in
determining patentability of a claim to a final product. We
note that the Examiner is correct to the extent that, often,
in a claim drawn to structure, the process by which elements
of the end structure are made would not be considered
limiting. It is equally true, however, that claim language
cannot be considered in isolation but, rather, must be
interpreted in the context of the claim as a whole. In the
language of present appealed claim 16, the product-by-process
limitation discussed above is followed by the clause:
said first layer being of a material having a
coefficient of thermal expansion substantially
the same as said substrate; ...
This language, by reference to the substrate, serves to limit
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