Appeal No. 1997-1536
Application 08/342,817
not limited to any particular amount or proportion for any of
the recited ingredients utilized in steps (a) through (c).
Claims 10 and 11 are claims to the carbonaceous char
prepared by appellants' process and are so-called product-by-
process claims. It is by now well-understood that, even
though a product-by-process is defined by the process steps by
which the product is made, determination of patentability is
based on the product itself. In re Thorpe, 777 F.2d 695, 227
USPQ 964 (Fed. Cir. 1985). As the court stated in Thorpe, 777
F.2d at 697,
227 USPQ at 966:
The patentability of a product does not depend on its
method of production. In re Pilkington, 411 F.2d 1345,
1348, 162 USPQ 145, 147 (CCPA 1969). If the product in a
product-by-process claim is the same as or obvious from a
product of the prior art, the claim is unpatentable even
though the prior product was made by a different process.
(citations omitted).
Nevertheless, we are not free to ignore the process by which
appellants' product is made in considering the prior art
because we must consider all appellants' claim limitations in
reaching our final determination of patentability.
THE REFERENCES
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