Appeal No. 1998-0419
Application No. 08/526,534
The examiner's rejection under 35 U.S.C. § 102 of product-
by-process claims 5, 11, and 18 stand on different footing.3 The
examiner held:
As to claims 5, 11 and 18, these claims are product-
by-process [claims] and as such the patentability is
based on the product itself, even though the claims
are limited and defined by the process. Therefore,
unless proven otherwise, the instant products are not
different from that produced in the reference to Song
et al. regardless [of] the method of production.
(Examiner's answer, page 5.)
We agree with the examiner's analysis. Our reviewing court
has held that if a product recited 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 art product was made
by a process that is different from the process recited in the
claims. In re Thorpe, 777 F.2d 695, 697, 227 USPQ 964, 966
(Fed. Cir. 1985).
In In re Best, 562 F.2d 1252, 1255, 195 USPQ 430, 433-34
(CCPA 1977), the predecessor of our reviewing court explained as
follows:
3 The appeal brief does not include a statement that claims
5, 11, and 18 are separately patentable from each other. Nor is
there any argument supporting the separate consideration of
these claims. We therefore limit our discussion as to the
rejection of these product-by-process claims to claim 5. See 37
CFR § 1.192(c)(7)(1997).
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