Appeal No. 1999-2795
Application 09/046,111
discontinuity of a web). Appellant is invited to look
in class 250, subclass 559.42, entitled "Discontinuity
detection (e.g. hole, crack)" which indicates either a
hole or a crack can be utilized to detect
discontinuity. In addition, the term "crack" is
defined by Webster's New World Dictionary, Third
College Edition, as "a narrow opening". Within the
normal definition of the term "crack", the hole of
Smith, which clearly can be "a narrow opening" reads on
the claimed "crack".
An apparatus claim containing a method of making step
is a product-by-process claim. The patentability of
product-by-process claims is based on the product itself.
See In re Thorpe, 777 F.2d 695, 697, 227 USPQ 964, 966 (Fed.
Cir. 1985). Where the end products are the same, the
process of making limitations do not have to be given weight
in ex parte examination. See Atlantic Thermoplastics Co. v.
Faytex Corp., 970 F.2d 834, 846, 23 USPQ2d 1481, 1490-91
(Fed. Cir. 1992) (product-by-process claims are treated
differently for patentability purposes during ex parte
examination in the USPTO than for infringement and validity
purposes during litigation). However, process of making
limitations must be given weight to the extent they produce
a different structure, i.e., to the extent the product
produced by the step is different.
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