Appeal No. 1999-0700 Page 4
Application No. 08/590,580
applicant is claiming "a method of absorbing a liquid" in the preamble of the
claim. However, the [sic] most of the steps (i.e., steps (b) and (c)) recited in the
body of the claim are directed towards the process of forming the pellets which
are used to carry out the method of absorbing a liquid. Thus it is not clear what
method would or would not infringe the claimed method of absorbing [answer,
page 4].
The examiner also contends that the apparent utilization of product by process language is
inappropriate and creates confusion about what is included in the scope of the preamble (final
rejection, page 2).
As correctly pointed out by the appellant (brief, page 5), a claim which recites a product
by listing the process steps used to obtain it, commonly referred to as a product-by-process
claim, does not inherently conflict with the second paragraph of 35 U.S.C. § 112. That
method of claiming is a perfectly acceptable one so long as the claims particularly point out and
distinctly claim the product or genus of products for which protection is sought and satisfy the
other requirements of the statute. In re Brown, 459 F.2d 531, 535, 173 USPQ 685, 688 (CCPA
1972). Claims 19-23 are directed to a method of absorbing liquid comprising the step of
contacting the liquid with an absorbent material and recite the absorbent material by listing the
process steps used to obtain it. As we see it, these claims are clearly directed to a method of
absorbing liquid comprising a single step of contacting liquid with an absorbent material. The
additional process steps referred to by the examiner further limit or describe the absorbent
material used in the method. As the second paragraph of 35 U.S.C. § 112 does not prohibit
single step methods and as the examiner has not pointed to any reason why the product-by-
Page: Previous 1 2 3 4 5 6 7 8 9 10 11 12 13 14 15 Next
Last modified: November 3, 2007