Appeal No. 2002-1768
Application 09/538,786
encompassed by appealed claims 4 through 10 would have been obvious as a matter of law
under 35 U.S.C. § 103(a).2
The examiner’s decision is affirmed.
No time period for taking any subsequent action in connection with this appeal may be
extended under 37 CFR § 1.136(a).
AFFIRMED
CHARLES F. WARREN )
Administrative Patent Judge )
)
)
)
PAUL LIEBERMAN ) BOARD OF PATENT
Administrative Patent Judge ) APPEALS AND
) INTERFERENCES
)
)
ROMULO H. DELMENDO )
Administrative Patent Judge )
Patent Department
2 The examiner compares Dietrich with the claimed processes encompassed by appealed claims
4 through 8, but does not address the claimed products encompassed by appealed claims 9 and
10, styled in product-by-process format based on the same process. Thus, it seems that the
examiner has not considered the separate patentability of the product claims over the product
taught by Dietrich. See generally, In re Thorpe, 777 F.2d 695, 697, 227 USPQ 964, 966 (Fed.
Cir. 1985); In re Wertheim, 541 F.2d 257, 271, 191 USPQ 90, 103-04 (CCPA 1976) (“These
claims are cast in product-by-process form. Although appellants argue, successfully we have
found, that the [reference] disclosure does not suggest . . . appellants’ process, the patentability of
the products defined by the claims, rather than the processes for making them, is what we must
gauge in light of the prior art.”). Such consideration is not necessary here as appellants have
stipulated that all of the claims stand or fall together (see above p. 2), and the examiner has
established that on this record, the process is unpatentable. Accordingly, the examiner should
separately consider the patentability of the claimed products with respect to the products of
Dietrich upon any further prosecution of the appealed claims subsequent to the termination of
this appeal.
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