Appeal No. 2004-0651
Application No. 09/898,082
application. When the two portions are solid stated
bonded to each other, the concave shaped surface
defining a dishing portion is no longer in the final
product as disclosed in figure 4 of the instant
application. Since the claim appears to be defining a
final product, the concave shaped surface defining a
dishing portion does not structurally distinguish over
Kawai (answer-page 9).
Appellant agrees that the final product recited by instant
claim 1 need not have the claimed concave dishing portions
(principal brief-page 11). However, appellant contends that one
cannot simply ignore this claim limitation, under the product-by-
process rule, because the dishing portions are positively recited
limitations which lead to unobvious differences in the final
product and because the skilled artisan can tell from examination
of the final product whether the dishing portions were used in
the process of manufacture (principal brief-page 12). Appellant
cites In re Swirbel, 2002 WL 1801019, Appeal No. 2000-0314 (BPAI
2002) and In re Marosi, 710 F.2d 799, 802, 218 USPQ 289, 292-93
(Fed. Cir. 1983).
Determination of patentability in “product-by-process”
claims is based on the product itself, even though such claims
are limited and defined by a process, and thus the product in
such claims is unpatentable if it is the same as, or obvious
from, a product of the prior art, even if the prior product was
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