Appeal No. 2003-1495 Application No. 09/591,968 of claims 31 through 36 and 38. According to the examiner (answer, page 6): The Appellants correctly state that the dose specifies how many atoms are implanted during the time of implantation. However, the result of such an implant is that part of the device that is a physical manifestation of the process of implantation. The dose is only associated with the beam and therefore is a “product-by-process” limitation,[.] The final product per se which [sic] must be determined in a “product by process” claim, and not the patentability of the process. An old or obvious product produced by a new method is not patentable as a product, whether claimed in “product by process” claims or not. Appellants argue (brief, page 7) that the claimed dose “specifies how many ions are implanted per unit area,” and is, therefore, “a characteristic of the implanted solid.” Appellants additionally argue (brief, page 7) that Chang neither teaches nor would have suggested the claimed dose of the implanted region. We agree with appellants’ arguments. In keeping with In re Garnero, 412 F.2d 276, 278-279, 162 USPQ 221, 223 (CCPA 1969), the claimed dose is a structural amount of an implanted species in the noted region as opposed to a process step of implanting a species in the region. Thus, the rejections are reversed because “the single reference cannot teach the claimed invention under Section 102 or Section 103” (brief, page 7). 3Page: Previous 1 2 3 4 5 NextLast modified: November 3, 2007