Appeal No. 204-2024 Page 5
Application No. 10/138,716
page 3). We do not agree. In the former case the issue was whether the phrase
“condensation product” as used in claim 25 should be interpreted as a product-by-
process limitation, as the examiner had urged, in which case the claim would be an
improper product-by-process claim, or merely as a definition what the acid phosphate
which is the subject of the claim is, as the appellant argued. For several reasons, the
court did not sustain the examiner’s position. However, the appellant here has not
directed us to precisely where the court stated in their decision “that words such as
‘condensation product’ . . . are not purely process limitations; they are also structural,”
as the appellant contends on page 3 of the Request for Rehearing.
In Garnero the question was whether in a claim to a composite, porous, thermal
insulation panel the recitation of perlite particles as being “interbonded to one another
by interfusion between the surfaces of the perlite particles” was a structural limitation.
The court found that it was, in the same manner as were the terms intermixed, ground
in place, press fitted, etched and welded, “all of which at one time or another have been
separately held capable of construction as structural, rather than process, limitations”
(emphasis added). In the case at bar, the court found the claim terminology to be so
capable, that is, as reciting a structural rather than a process limitation. However, the
issue before us here is not the means by which separate elements are joined together,
as was the situation in Garnero, but the process by which a single element is formed,
and therefore we find Gareno not to persuasive.
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