Appeal No. 2000-0698
Application No. 08/960,694
The examiner relies on the following prior art reference as
evidence of unpatentability:
Regenstein 4,411,142 Oct. 25, 1983
Claims 9 and 10 on appeal stand rejected under 35 U.S.C.
§ 102(b) as anticipated by Regenstein. (Examiner’s answer of
Nov. 29, 1999, pages 3-8.)
We reverse this rejection.
“To anticipate a claim, a prior art reference must disclose
every limitation of the claimed invention, either explicitly or
inherently.” In re Schreiber, 128 F.3d 1473, 1477, 44 USPQ2d
1429, 1431 (Fed. Cir. 1997). Here, it is our judgment that
Regenstein does not describe every limitation of the claimed
invention, either explicitly or inherently.
We first note that appealed claim 9 recites "product-by-
process" limitations. Thus, "product-by-process" claim
interpretation principles apply. Specifically, the
patentability of the recited product must be adjudged on the
product itself, not on the process by which it is made; that is,
the recited product would be unpatentable over a prior art
product that is indistinguishable in terms of structure, even if
the prior art product is made by a different process. In re
Thorpe, 777 F.2d 695, 697, 227 USPQ 964, 966 (Fed. Cir. 1985).
3
Page: Previous 1 2 3 4 5 6 7 Next
Last modified: November 3, 2007