Appeal No. 1999-1810
Application 08/288,433
appellant’s process (brief, page 7). This argument is not
well taken because the patentability of the solution recited
in product-by-process claim 16 is determined based on the
product itself, not on the process for making it. See In re
Thorpe, 777 F.2d 695, 697, 227 USPQ 964, 966 (Fed. Cir. 1985)
(“If the product 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
different process.”).
The appellant argues that the solution recited in claim
16, because it is the product of an oxidation process, differs
from seawater (brief, page 7; reply brief, page 1). The
process recited in claim 19, which is used to make the
solution recited in claim 16, and the process recited in claim
1, from which claim 19 depends, have the transition term
“comprising”, which opens the claims to non-recited steps.
See In re Baxter, 656 F.2d 679, 686, 210 USPQ 795, 802 (CCPA
1981). The appellant’s specification (page 5, lines 14-31)
indicates that the processes encompassed by claim 19 include
processes in which the ammonium is oxidized and products of
7
Page: Previous 1 2 3 4 5 6 7 8 9 10 11 12 13 14 15 Next
Last modified: November 3, 2007