Appeal No. 2004-1171
Application No. 09/754,618
The second rejection
In this rejection, claims 4, 5, 10, and 11 are at issue,
which claims respectively address bearing disks made by “a non-
cutting process” carried out at a particular shaping speed.5
These claims are appropriately recognized as product by product
claims.
At this point, it is important to understand that the
determination of the patentability of a product-by-process claim
is based on the product itself, even though the claim may be
limited and defined by the process. In other words, the product
in such a claim is unpatentable if it is the same as or obvious
from the product of the prior art, even if the prior product was
made by a different process. See In re Thorpe, 777 F.2d 695,
697, 227 USPQ 964, 966 (Fed. Cir. 1985). To the extent that
process limitations in product claims distinguish the product
over the prior art, they must be given the same consideration as
5 As disclosed (specification, page 8), the non-cutting
shaping process is effected by a press.
7
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