Appeal No. 1999-0734 Page 6
Application No. 08/686,495
product is claimed by describing its structural or compositional features or by listing the process
steps used to obtain it. See In re Wertheim, 541 F.2d 257, 271, 191 USPQ 90, 103 (CCPA
1976)(“[T]he 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.”); and In re Brown, 459 F.2d 531,
535, 173 USPQ 685, 688 (CCPA 1972)(“[I]t is the patentability of the product claimed and not
of the recited process steps which must be established.”). So the question we must ask in regard
to the subject matter of groups 1-5 is whether Rutt describes a multilayer capacitor having the
structure required by the claims.
Group 1: Claims 13 and 14
Looking at claim 13, the claim we select to decide the anticipation question with regard to
group 1, we agree with the Examiner’s findings which indicate that Rutt describes each and every
structural limitation of the claim (Answer at 5). That is all that is required in order to establish a
prima facie case of anticipation.
Appellants argue that Rutt does not describe the net-shape molded nature of the ceramic
body (Brief at 6). According to Appellants the term “net-shape molded” refers to a ceramic part
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