Ex parte EHMKE - Page 4




               Appeal No. 1997-3443                                                                                                 
               Application No. 08/595,901                                                                                           


                       Appellant argues that Baker does not teach or suggest  electrically conductive material                      
               damaging the lattice structure by extending into said lattice structure.  This is a process limitation               
               which is entitled to no patentable weight in appellant’s apparatus claim.  Appellant has                             
               effectively admitted that process limitations in product claims are entitled to no weight at page 2                  
               of his reply brief filed July 8, 1997 (Paper No. 14) wherein he states,                                              
                       [h]owever, after correctly stating that “a ’product by process’ claim is directed to                         
                       the product per se”, the Examiner then erroneously implies that the end product is                           
                       the same as in Baker.                                                                                        
               Furthermore, 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 product-by-process claim, a                    
               rejection based alternatively on either section 102 or section 103 of the statute is eminently fair                  
               and acceptable.  In re Brown, 459 F.2d 531,  535, 173 USPQ 685, 688 (CCPA 1972).                                     
                       To the extent that appellant is arguing that Baker does not disclose damaged regions, his                    
               position is unpersuasive.  The n-type regions 13b of Baker are damaged regions of the lattice                        
               structure and they are adjacent to the electrically conductive material 23.  The damage occurs                       
               during manufacture when the n-type regions are formed from p-type regions by ion                                     
               bombardment.                                                                                                         
                       Appellant’s attack on the examiner’s reference to U.S. Patent 4,411,732 to Wotherspoon                       
               in his answer is of no import because the reference is unnecessary to the rejection1.  The                           
               examiner merely notes that Wotherspoon details the conversion of p-type cadmium mercury                              



                                                                                                                                    
               1 Wotherspoon is specifically incorporated by reference in Baker                                                     

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