Appeal No. 2002-0514
Application No. 08/886,388 Page 6
Here, the examiner has reasonably determined that
representative claim 44 is drawn to product stacked capacitors
and is not limited by any particular photolithographic process by
which it must be made.2 Indeed, appellants (brief, page 5) urge
that the claims, including representative claim 44, do not
include any process steps and that any reference thereto as
“product-by-process” claims by the examiner mischaracterizes the
claimed subject matter. That argument of appellants serves to
bolster the examiner’s determination that representative claim 44
is in violation of the requirements of the second paragraph of
35 U.S.C. § 112 for a further reason in that appellants do not
appear to be particularly claiming what the applicants regard as
the invention. This is so since representative claim 44 is drawn
to a product, which is defined at least in part by the process by
which it can be made, subject matter which is in contrast to what
appellants suggest is being claimed.
Moreover, the examiner (answer, pages 11-13) has reasonably
determined that there are a number of ways that a characteristic
2
2 The patentability of such product-by-process claims is
determined based on the product itself. 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.").
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