Appeal No. 2005-2522 Page 5
Application No. 09/841,453
that group and to decide the appeal of that rejection based
solely on the selected representative claim”). 2
Jin discloses the formation of porous silica (hybrid
organic-silica dielectric) films useful in microelectronic
integrated circuit devices. Appellants do not dispute that Jin
discloses a nanoporous silica film on a substrate. See, e.g.,
column 4, lines 29 and 30 of Jin. Rather, appellants (brief,
page 6) maintain that Jin does not disclose a hydrophobic coating
formed from an oligomer or polymer reactive with silanol groups
of a nanoporous film, as required by representative claim 20. 3
2Also, see new rule 37 CFR 41.37(c)(7).
3The claimed porous silica film includes silica films
obtained using organic base materials (paragraph bridging pages 7
and 8 of the specification and the paragraphs under the caption
“Nanoporous Silica Films,” at pages 1-3 of appellants’
specification). Also, representative claim 20 is a product-by-
process claim. Therefore, certain principles of patent
jurisprudence apply. The patentability of a product is a
separate consideration from that of the process by which it is
made. See In re Thorpe, 777 F.2d 695, 697, 227 USPQ 964, 966
(Fed. Cir. 1985). Moreover, determination of the patentability
of a product-by-process claim is based on the product itself.
See In re Brown, 459 F.2d 531, 535, 173 USPQ 685, 688 (CCPA
1972). In other words, the patentability of the product does not
depend on its method of preparation. See In re Pilkington, 411
F.2d 1345, 1348, 162 USPQ 145, 147 (CCPA 1969). If the prior art
product appears to be substantially the same as the claimed
product, the burden is on the applicants to establish with
objective evidence that the claimed product is patentably
distinct from the product of the prior art. See In re Brown, id.
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