Appeal No. 2002-1182
Application 09/233,385
product does not depend on its method of production; if the
claimed product is the same as a prior art product, the claim is
unpatentable even though the prior art product was made by a
different process. See In re Thorpe, 777 F.2d 695, 697, 227 USPQ
964, 966 (Fed. Cir. 1985).
Since lack of novelty is the ultimate or epitome of
obviousness (see In re Fracalossi, 681 F.2d 792, 794, 215 USPQ
569, 571 (CCPA 1982), we shall sustain the standing 35 U.S.C.
§ 103(a) rejection of claim 50, and claims 53 through 61 which
stand or fall therewith, as being unpatentable over Pasch in view
of Rostoker.5
We also shall sustain the standing 35 U.S.C. § 103(a)
rejection of claim 51, and claim 52 which stands or falls
5 Upon return of the application to the technology center,
the examiner should reassess whether the appellants’
specification provides written descriptive support for the
subject matter recited in claim 61. This claim, which was added
to the application subsequent to filing (see Paper No. 7),
recites “solder elements deposited on said substrate, said solder
elements being cone shaped prior to thermal reflow.” Although
the remarks accompanying the submission of the claim (as well as
those appearing on page 12 in the main brief) state that this
subject matter finds support in the specification at page 10,
lines 14 through 30, such support is not readily apparent. In
the event the examiner determines that the specification does
indeed lack written descriptive support for claim 61, an
appropriate rejection under 35 U.S.C. § 112, first paragraph,
should be entered.
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