Appeal No. 2002-2249
Application 09/340,441
With respect to the combined teachings of Loh and Ovshinsky, we suggest that the
examiner consider whether one of ordinary skill in this art would have modified Loh, as applied
by the examiner under § 103(a) to at least claims 1, 3, 4, 10, 12 through 14 and 17, by using an
inert gas to modify the effect of the single reactant monomer as suggested by Ovshinsky (e.g.,
cols. 3 and 5) and any other applicable prior art developed by the examiner, and thus would have
arrived at the claimed method encompassed by claims 5, 7 and 11 under § 103(a).
The application of any reference to appealed claims 18 through 20 must be on the basis
that these claims encompass products. See generally, Thorpe, supra; In re Wertheim, 541 F.2d
257, 271, 191 USPQ 90, 103-04 (CCPA 1976) (“These claims are cast in product-by-process
form. Although appellants argue, successfully we have found, that the [reference] disclosure does
not suggest . . . appellants’ process, the 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.”).
Reversed
CHARLES F. WARREN )
Administrative Patent Judge )
)
)
)
ROMULO H. DELMENDO ) BOARD OF PATENT
Administrative Patent Judge ) APPEALS AND
) INTERFERENCES
)
)
JAMES T. MOORE )
Administrative Patent Judge )
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