Appeal No. 2001-0025
Application No. 08/751,980
determinative of the patentability of that claim. We do not
share that viewpoint. The patentability of claim 9 must be
predicated upon the structure of the claimed article and not
the argued method by which the article may have been made. In
other words, the determination of patentability in a product-
by-process claim is based on the product itself, even though
the claim may be limited and defined by the process. The
product or article in such a claim is unpatentable if it is
the same as or obvious from the product of the prior art, even
if the prior product or article was made by a different pro-
cess. See In re Thorpe, 777 F.2d 695, 697, 227 USPQ 964, 966
(Fed. Cir. 1985). With the above particularly in mind, we
note that neither appellant nor declarant has pointed to any
structural securement difference that would be perceived in
the final disk brake product resulting from the broadly
claimed “heating process” that would distinguish the secured
pin and bore structure of the claimed brake disk from the
secured pin and bore structure of JP ‘237, and we perceive
none. Thus, the examiner’s rejection of claim 9, in
particular, under 35 U.S.C. § 103 is well founded.
9
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