Appeal No. 2005-0181
Application No. 09/781,631
teachings of Hanyu and concludes that the same composition is
disclosed in Hanyu as recited in appellant’s claim 42.
On pages 10-11 of the brief, appellant rebuts this
rejection. Appellant states “Hanyu et al. reference does not
teach the purpose of the invention.” Appellant does not dispute
the examiner’s findings that Hanyu discloses the same
composition; rather appellant argues the “purpose” of Hanyu’s
invention versus his invention. For the reasons discussed,
supra, we are not convinced by such argument. We again note that
use limitations of a product being claimed has no significance in
a product claim. Cf. In re Wiggins, 397 F.2d 356, 359 n.4, 158
USPQ 199, 201-202 n.4 (CCPA 1968).
We therefore affirm the 35 U.S.C. § 102(b) rejection of
claims 42, 44 and 46 as being anticipated by Hanyu.
XII. The 35 U.S.C. § 102(b) rejection of claim 43 as being
anticipated by, or in the alternative as being obvious over
Hanyu
Claim 43 is directed to the toughness property. As
discussed, supra, we affirmed the rejection of this claim under
35 U.S.C. § 112, second paragraph (indefiniteness). As such, the
metes and bounds of appealed claim 43 is unclear and indefinite
to the extent that it is impossible to ascertain the propriety of
the grounds of rejection of appealed claim 48 under 35 U.S.C.
§ 102(e)/103 over Tang. See In re Wilson, 424 F.2d 1382, 1385,
165 USPQ 494, 496 (CCPA 1970); In re Steele, 305 F.2d 859, 862-
63, 134 USPQ 292, 295-96 (CCPA 1962). We therefore reverse this
rejection of claim 43, pro forma.
Therefore, we reverse, pro forma, the rejection of claim 43
under 35 U.S.C. § 102(b) as being anticipated by, or in the
alternative, under 35 U.S.C. § 103, as being obvious over Hanyu.
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