Appeal No. 2002-1128 Page 5
Application No. 08/668,036
Platz and AKZO "of record by themselves or in combination," further in view of Maniar,
Okada [and] Hirai "by themselves or in combination." The examiner separately rejected
claims 19, 23, and 34 under 35 U.S.C. § 103(a) over that same combination of
references, further in view of Chien "and/or" Markussen. By formatting rejections in this
manner, the examiner obfuscated rather than clarified the issues on appeal and we
would be constrained to reverse on procedural grounds alone. Cf. In re Herrick,
344 F.2d 713, 716, 145 USPQ 400, 401 (CCPA 1965) (Because of indefinite statement
of the grounds of rejection, "the existing situation does not permit rational isolation and
determination of the legal issues which may be present.") Accord, Ex parte Blanc,
13 USPQ2d 1383 (Bd. Pat. App. & Int. 1989).
On return of this application to the examining corps, we recommend that the
examiner reevaluate the patentability of product-by-process claim 24. This claim is
drawn is drawn to an insulin composition "produced by the method of claim 15."
As stated in In re Thorpe, 777 F.2d 695, 697, 227 USPQ 964, 966 (Fed.
Cir. 1985):
[E]ven though product-by-process claims are limited by and defined by the
process, determination of patentability is based on the product itself. . . .
The patentability of a product does not depend on its method of
production. 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 product was made by a different process. [Citations
omitted.]
Further, in discussing product-by-process claims in In re Brown, 459 F.2d 531, 535,
173 USPQ 685, 688 (CCPA 1972), the court stated:
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