Appeal No. 2005-1698 Page 6
Application No.09/775,425
This is not a case of incidental or accidental anticipation where one of ordinary
skill in the art at the time of the appellants’ invention would not have recognized that
Todd’s wheel assembly possesses the claimed feature argued by the appellants. On
the contrary, given the explicit teachings of Todd, one of ordinary skill in the art would
have immediately envisaged a wheel assembly wherein the peripheral edge of the
fascia is aligned with the peripheral edge of the wheel, not a wheel assembly wherein
the fascia extends beyond the peripheral edge of the wheel.
The appellants are correct that Todd does not express any appreciation of
appellants’ concern that the overlay not extend radially beyond the outermost edge of
the wheel regardless of tolerance variations and thus does not disclose, at least
expressly, designing the overlay with a margin of safety to ensure that permitted
tolerance variations will not cause the overlay (fascia) to extend radially beyond the
edge of the wheel. The appellants’ claims, however, are directed to a product, namely,
a wheel and overlay assembly, not to a method of manufacturing a wheel and overlay
assembly. The patentability of a product does not depend on its method of production.
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 art product was made by a
different process. In re Thorpe, 777 F.2d 695, 697, 227 USPQ 964, 966 (Fed. Cir.
1985). As already noted above, a wheel assembly wherein the peripheral edge of the
overlay or fascia extends to the edge of the wheel, in accordance with the specific
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