Appeal No. 2001-0651
Application 08/134,187
Thus, each of the tokens defined in claims 26, 56, 92 and 128
includes a cavity with an imprinted disk therein and two distinct
layers of protective coating in the cavity over the imprinted
disk.
It is by now well settled that product claims may be drafted
to include process steps to wholly or partially define the
claimed product, and that to the extent that the process
limitations distinguish the claimed product from the prior art,
they must be given the same consideration as traditional product
characteristics or limitations. See In re Hallman, 655 F.2d 212,
215, 210 USPQ 609, 611 (CCPA 1981). This type of claim is
referred to as a product-by-process claim and, as noted in In re
Brown, 459 F.2d 531, 535, 173 USPQ 685, 688 (CCPA 1972), does not
inherently conflict with the second paragraph of 35 U.S.C. § 112.
However, due to the lack of physical description in a product-by-
process claim, this form of claim does impose a certain burden
with regard to determining the patentability thereof, since in
spite of the fact that the claims may recite only process
limitations, it is the patentability of the product claimed and
not the recited process steps which must be established.
Accordingly, when the prior art discloses a product which
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