Appeal No. 1999-0769 Page 7
Application No. 08/661,532
Our disposition of the examiner’s § 103 rejection of
product claims 13-16, 18 and 19 is another matter. We note 2
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, such as appealed claims 13-16 is based on the
product itself. See In re Brown, 459 F.2d 531, 535, 173 USPQ
685, 688 (CCPA 1972). In other words, the patentability of
the product does not depend on its method of preparation. See
In re Pilkington,
411 F.2d 1345, 1348, 162 USPQ 145, 147 (CCPA 1969). Hence, if
the claimed product is the same as or obvious from a product
of the prior art that is made by a different process, the
claim is unpatentable. See In re Marosi, 710 F.2d 799, 803,
218 USPQ 289, 292-293 (Fed. Cir. 1983). If the prior art
product appears to be substantially the same as the claimed
2We decline appellants’ invitation (brief, page 3) to
group product claims 13-16 with method claims 1-12 and 20 in
our consideration of the propriety of the examiner’s rejection
as to those product claims.
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