Appeal No. 1997-2836
Application No. 08/106,009
the examiner should determine whether there are any
characteristics which distinguish the claimed products from
the laminated assemblies depicted in the cited prior art
references. If the examiner determines that there are no
substantial differences, the examiner should consider whether
the prior art products anticipate, or render obvious, the
laminated assembly defined by any particular product-by-
process claim or claims. When claims are presented in a
product-by-process format, it is the patentability of the
product, and not the process, which must be determined. 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).
For the foregoing reasons, the decision of the examiner
is reversed, and the application is remanded to the examiner,
via the Office of a Director of the involved Technology
Center, for appropriate action consistent with our opinion.
This application, by virtue of it’s ˇspecial˘ status
requires an immediate action. Manual of Patent Examining
Procedure § 708.01 (7th ed., July 1998). It is important that
the Board be informed promptly of any action affecting the
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