Appeal No. 1998-0437
Application No. 08/603,523
concludes (Answer, page 6) that the substrate and finger count
(i.e., number of reflective elements) of Satoh satisfies the
conditions of the claimed equation in spite of the broader
ranges in the disclosure. With respect to the device claims,
we agree with the examiner that the Satoh product (i.e., the
acoustic wave device) is the same as the claimed product
because N =50 is within the range that results from the
g1
claimed equation. When claims are directed to a “product-by-
process,” it is the patentability of the product claimed and
not of the recited process which must be established. In re
Brown, 459 F.2d 531, 535, 173 USPQ 685, 688 (CCPA 1972);
In re Thorpe, 777 F.2d 695, 697, 227 USPQ 964, 966 (Fed. Cir.
1985).
It is our view that the examiner’s rejection of the
instant product-by-process claims over the device of Satoh was
appropriate given that the product of Satoh appears to be
identical, albeit produced by a different process, to the
product claimed by the appellant. Such a rejection shifts the
301 F.2d 676, 682, 133 USPQ 275, 280 (CCPA 1962)); Manual of
Patent Examining Procedure (MPEP) § 2131.03 (7th ed., July
1998).
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