Appeal No. 1999-2242
Application No. 08/137,056
examiner. As a consequence of our review, we have made the
determinations which follow.
The 35 U.S.C. § 102(b) rejection
Initially, we note that at page 5 of the main brief, the
appellant has identified claims 11 through 14 as a single
group and that the patentability of claims 11 and 14 has not
been separately argued. Accordingly, we select claim 14 for
review and claim 11 will stand or fall with representative
claim 14. See 37 CFR § 1.192(c)(7).
Claim 14 is a product-by-process claim. The lack of
physical description in a claim of this type makes the
determination of the patentability of the claim more
difficult, since in spite of the fact that the claim may
recite only process limitations, it is the patentability of
the product claimed and not of the recited process steps which
must be established. As stated by the Court in In re Brown,
459 F.2d 531, 535, 173 USPQ 685, 688 (CCPA 1972)
. . . when the prior art discloses a product which
reasonably appears to be either identical with or
only slightly different than a product claimed in a
product-by-process claim, a rejection based
alternatively on either section 102 or section 103
of the statute is eminently fair and acceptable. As
a practical matter, the Patent Office is not
equipped to manufacture products by the myriad of
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