Appeal No. 204-2024 Page 6
Application No. 10/138,716
However, In re Dike1 considered a situation like that before us in the present
case. In Dike, claim 3 recited “[a]n integral one-piece, blow-molded plastic container”
(emphasis added). The examiner took the position that “blow-molded” related only to
the process by which the plastic container was manufactured and did not add a
structural limitation that patentably defined over the prior art structure, which was not
blow-molded. In affirming the examiner’s position, the court stated that the claim was
directed to the article rather than the method of making it, and “this is a case where the
product itself is not patentably distinguished over the prior art, and process limitations
cannot impart patentability to it” (157 USPQ at 585).
The third error alleged by the appellant is that we ignored the adjective
“extruded” in our analysis of the patentability of the claims. We did not, for, as we
explained in our decision, we agreed with the examiner that it was a process recitation
that did not patentably distinguish the claim over the prior art.
The fourth alleged error was that we redrafted the claim language “from extruded
metal member” to “metal member as a product of the process of extrusion.” That is not
the case. We merely interpreted the claim in the light of the guidance provided by our
reviewing court.
The fact of the matter is, as we stated on pages 5 and 6 of our decision, that the
examiner provided a reasonable rationale for the rejection, thus shifting the burden to
1394 F.2d 584, 157 USPQ 581 (CCPA 1968).
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