Appeal No. 2002-1107 Page 4
Application No. 09/662,540
determination of the examiner in the reply brief. Also, see In
re McDaniel, 293 F.3d 1379, 1383, 63 USPQ2d 1462, 1465 (Fed. Cir.
2002) (“if the brief fails to meet either requirement, the Board
is free to select a single claim from each group of claims
subject to a common ground of rejection as representative of all
claims in that group and to decide the appeal of that rejection
based solely on the selected representative claim”).
Accordingly, we select claim 18 as the representative claim for
deciding this appeal as to each ground of rejection before us.
See 37 CFR § 1.192(c)(7)(2000).
Representative claim 18 calls for a coating composition made
from a mixture of specified amounts of a cationic oligomer, an
epoxy functional monomer, a surfactant component, a transfer
agent, and a photo initiator.
Because claim 18 is drawn to a product in terms of the
process for making same, we determine that the representative
appealed claim 18 is in product-by-process form. Thus, 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
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