Appeal No. 2004-2257
Application No. 09/841,486
The court provides guidance for analyzing the patentability
of product-by-process claims in In re Thorpe, 777 F.2d 695, 697,
227 USPQ 964, 965-66 (Fed. Cir. 1985) as follows:
Product-by-process claims are not specifically
discussed in the patent statute. The practice and governing
law have developed in response to the need to enable an
applicant to claim an otherwise patentable product that
resists definition by other than the process by which it is
made. For this reason, even though product-by-process
claims are limited by and defined by the process,
determination of patentability is based on the product
itself. In re Brown, 459 F.2d 531, 535, 173 USPQ 685, 688
(CCPA 1972); In re Pilkington, 411 F.2d 1345, 1348, 162 USPQ
145, 147 (CCPA 1969); Buono v. Yankee Maid Dress Corp., 77
F.2d 274, 279, 26 USPQ 57, 61 (2d. Cir. 1935).
The patentability of a product does not depend on its
method of production. In re Pilkington, 411 F.2d 1345,
1348, 162 USPQ 145, 147 (CCPA 1969). If the product in a
product-by-process claim is the same as or obvious from a
product of the prior art, the claim is unpatentable even
though the prior product was made by a different process.
In re Marosi, 710 F.2d 799, 803, 218 USPQ 289, 292-93 (Fed.
Cir. 1983); Johnson & Johnson v. W. L. Gore, 436 F.Supp.
704, 726, 195 USPQ 487, 506 (D. Del. 1977); see also, In re
Fessman, 489 F.2d 742, 180 USPQ 324 (CCPA 1974).
Thus, upon return of this application to the examiner’s
jurisdiction, it is ORDERED that:
1) the examiner is to determine whether the ink receiving layer
exemplified in Arai is identical or substantially identical to
the claimed streched porous resin film; and
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