Appeal No. 2004-0651
Application No. 09/898,082
made by different process. It is not error to affirm an
examiner’s rejection of “product-by-process” claims, absent proof
by applicant that prior art products do not necessarily or
inherently possess characteristics of his claimed product. In re
Thorpe, 777 F.2d 695, 227 USPQ 964 (Fed. Cir. 1985).
As we view the record, there is no disagreement as to the
final product not needing to have the claimed concave dishing
portions because the finished product will not exhibit such
concave dishing portions. The question, however, is whether the
claimed “dishing portion” must be considered. They, in fact,
must be considered as traditional product characteristics to the
extent that these “process limitations” distinguish the finished
product over the product disclosed by Kawai. In re Hallman, 655
F.2d 212, 210 USPQ 609 (CCPA 1981).
However, in accordance with the examiner’s explanation as to
how the elements of Kawai correspond to the instant claimed
elements, it seems that the Kawai product would reasonably appear
to be identical to the presently claimed product in product-by-
process claim 1. Therefore, the examiner’s rejection would
appear to be fair because the PTO is not equipped to manufacture
products by a myriad of processes put before it and then obtain
-5-
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