Appeal No. 1998-0873
Application 08/301,279
validity purposes during litigation. See Atlantic
Thermoplastics Co. v. Faytex Corp., 970 F.2d 834, 846,
23 USPQ2d 1481, 1490-91 (Fed. Cir. 1992). The patentability
of product-by-process claims is discussed in In re Thorpe,
777 F.2d 695, 697, 227 USPQ 964, 966 (Fed. Cir. 1985):
[E]ven though product-by-process claims are limited by
and defined by the process, determination of
patentability is based on the product itself.
[Citations omitted.]
The patentability of a product does not depend on
its method of production. If the product in a
product-by-process claim is the same as or obvious from
a product of the prior art, the claim is unpatentable
even though the prior product was made by a different
process. [Citations omitted.]
Process limitations must be given weight to the extent they
produce a different structure.
The question is whether the product is the same as or
obvious over the prior art. In this case, the APA admits
that "U"-shaped tubes have been uniformly coated by the
slurry flush coat method. Thus, there is no structural
difference in the phosphor layer applied by this prior art
method versus Appellant's method. Claims 7, 10, and 11 are
anticipated.
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