Ex parte FONTANA et al. - Page 4




             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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