Appeal No. 1998-0596
Application 08/259,370
Opinion
The rejection of claims 1-3, 21, 31-34, 36-39 and 55 under 35 U.S.C. § 103 as
being unpatentable over Kant, Ainslie and Hosokawa is reversed.
The rejection of claims 4, 20, 22, 24-30, 40-43, 45, 48 and 51-54 under 35 U.S.C. §
103 as being unpatentable over Kant and Ainslie is reversed.
The rejection of claims 46, 47, 49 and 50 under 35 U.S.C. § 103 as being
unpatentable over Kant and Ainslie is affirmed.
The rejection of claims 1-4, 20-22, 24-34, 36-43, 45, 48 and 51-55
A reversal of the rejection on appeal should not be construed as an affirmative
indication that the appellant’s claims are patentable over prior art. We address only the
positions and rationale as set forth by the examiner and on which the examiner’s rejection
of the claims on appeal is based.
The crux of the deficiency in the examiner’s stated rejection lies in the examiner’s
failure to recognize and appreciate those structural features which result from process
limitations recited in the appellants’ claims. While process features which do not affect the
resulting structure claimed are properly not entitled to weight in an apparatus or product-
by-process claim, see, e.g., 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); In re
Pilkington, 411 F.2d 1345, 1348, 162 USPQ 145, 147 (CCPA 1969), they cannot be
ignored when the structure of the resulting product is correspondingly modified or limited.
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