Appeal No. 2001-2200
Application No. 09/286,328
formed by laminating an aluminum-copper alloy film and a copper film. (See Brief at 8.)
We do not sustain the rejection of claims 37-39.
Finally, we observe that independent claims 41 and 42 fail to require the subject
matter taught as essential to the invention. We also note that appellants have not
grouped the claims with any of the arguments submitted in response to the section 112,
first paragraph rejection. We sustain the rejection of claims 41 and 42.
Thus, with respect to the rejection of the claims under 35 U.S.C. § 112, first
paragraph for lack of an enabling disclosure, we sustain the rejection of claims 8, 10-
13, 20, 22-25, 27-33, 40-42, 44, and 45; we do not sustain the rejection of claims 9, 21,
26, 34-39, and 43.
Section 102 rejection
The examiner has rejected claims 34-36 and 43-45 as being "clearly anticipated"
by appellants' admitted prior art, as shown in Figure 1 of the '917 patent. Appellants'
position is that the process limitations in the product claims serve to distinguish over the
admitted prior art.
Process steps per se cannot serve to limit product claims. See In re Stephens,
345 F.2d 1020, 1023, 145 USPQ 656, 658 (CCPA 1965) (“We think it well settled that
the presence of process limitations in product claims, which product does not otherwise
patentably distinguish over the prior art, cannot impart patentability to that product.”).
The relevant inquiry is how the process recitations might define structure. See, e.g., In
-9-
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