Appeal No. 1998-2425 Page 4
Application No. 08/656,871
the examiner. As a consequence of our review, we determine
that the examiner has not established a prima facie case of
obviousness. Accordingly, we will not sustain the stated
rejection. Our reasoning follows.
Since the appealed claims are in product-by-process
format, certain principles of patent jurisprudence apply. We
note that the patentability of a product is a separate
consideration from that of the process by which it is made.
See In re Thorpe, 777 F.2d 695, 697, 227 USPQ 964, 966 (Fed.
Cir. 1985). Moreover, determination of the patentability of a
product-by-process claim is based on the product itself. See
In re Brown, 459 F.2d 531, 535, 173 USPQ 685, 688 (CCPA 1972).
Also, we observe that in proceedings before the U.S.
Patent and Trademark Office, claims are interpreted by giving
words their broadest reasonable meanings in their ordinary
usage, taking into account the written description found in
the specification. See In re Morris, 127 F.3d 1048, 1054, 44
USPQ2d 1023, 1027 (Fed. Cir. 1997); In re Zletz, 893 F.2d 319,
321-22, 13 USPQ2d 1320, 1322 (Fed. Cir. 1989).
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