Appeal No. 2003-1889
Application No. 09/367,455
can be classified as a wet stick adhesive that can adhere to a
wet substrate surface.
Moreover, claim 1 is a product-by-process claim. A
product-by-process claim is not a method claim, but rather a
product claim in which the product is defined, in whole or in
part, by the process used to make the product. In ex parte
proceedings before the PTO, product-by-process claims are
interpreted as not being limited by the process steps recited in
the claims, because product-by-process claims define a product
rather than a process. See In re Thorpe, 777 F.2d 695,697, 227
USPQ 964, 965-66 (Fed. Cir. 1985). It follows, accordingly,
that any reference in the prior art to the same, or similar
compound, no matter how made, may render the claim anticipated
or obvious. Thus, the claim is interpreted as covering the
claimed product, no matter how it is made. In the instant
case, Blake discloses a similar or identical compound, which
therefore establishes a prima facie case of anticipation or
obviousness.
With regard to the claimed properties of “wet” stick and
“adheres to wet substrate surfaces”, we note that where the
Patent Office has reason to believe that a functional limitation
asserted to be critical for establishing novelty may, in fact,
be an inherent characteristic of the prior art, it possesses the
authority to require appellants to prove that subject matter
shown in the prior art does not necessarily possess the
characteristics relied on. In re Schreiber, 128 F.3d 1473,
1478, 44 USPQ2d 1429, 1432 (Fed. Cir. 1997); See also, In re
Spada, 911 F.2d 705, 708, 15 USPQ2d 1655, 1658 (Fed. 1990); and
Ex Parte Gray, 10 USPQ2d 1922, 1925 (Bd. Pat. App. & Int. 1989).
Also, it is well settled that the Patent Office can require
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