Appeal No. 2003-0233
Application 09/103,874
THE REJECTIONS
The claims stand rejected under 35 U.S.C. § 103 as follows:
claims 18-23, 25-30, 32-38, 40-45 and 47 over Baumgartner in view
of Noishiki, and claims 24, 31, 39 and 46 over Baumgartner in
view of Noishiki and Brendel.
OPINION
We reverse the aforementioned rejections. We need to
address only claim 33, which is the broadest independent claim.1
The appellants’ claims are in product-by-process form.
Hence, the patentability of the claimed invention is determined
based on the product itself, not on the method of making it. See
In re Thorpe, 777 F.2d 695, 697, 227 USPQ 964, 966 (Fed. Cir.
1985) (“If the product in a product-by-process claim is the same
as or obvious from a product of the prior art, the claim is
unpatentable even though the prior art product was made by a
different process.”). Whether a rejection is under 35 U.S.C.
§ 102 or § 103, when the appellants’ product and that of the
prior art appear to be identical or substantially identical, the
Page: Previous 1 2 3 4 5 6 7 8 9 Next
Last modified: November 3, 2007