Appeal No. 2006-0483
Application 09/860,272
composition of claim 1, once its ingredients are mixed, is a composition existing during
manufacture that is being used to produce the end product. Consequently, as properly
interpreted, Exxon’s claims are to a composition that contains the specified ingredients at any
time from the moment at which the ingredients are mixed together. This interpretation of
Exxon’s claims preserves their identify as product claims, and recognizes as a matter of
chemistry that the composition exists from the moment created.”).
Appellants have not argued that the coating compositions thus taught by Mercurio ‘795
would not result in a dried coating that dissipates sound as required by claim 1. See, e.g., In re
Best, 562 F.2d 1252, 1255-56, 195 USPQ 430, 433-34 (CCPA 1977)( “Where, as here, the
claimed and prior art products are identical or substantially identical, or are produced by
identical or substantially identical processes, the PTO can require an applicant to prove that the
prior art products do not necessarily or inherently possess the characteristics of his claimed
product. See In re Ludtke, [441 F.2d 660, 169 USPQ 563 (CCPA 1971)]. Whether the rejection
is based on ‘inherency’ under 35 USC 102, on ‘prima facie obviousness’ under 35 USC 103,
jointly or alternatively, the burden of proof is the same, and its fairness is evidenced by the
PTO’s inability to manufacture products or to obtain and compare prior art products. [Footnote
and citation omitted.]”); In re Skoner, 517 F.2d 947, 950-51, 186 USPQ 80, 82-83 (CCPA 1975)
(“Appellants have chosen to describe their invention in terms of certain physical characteristics .
. . . Merely choosing to describe their invention in this manner does not render patentable their
method which is clearly obvious in view of [the reference]. [Citation omitted.]”). To the extent
that the language with respect to sound dissipation in product claim 1 is intended by appellants
as a method or process of use limitation of that product, such a limitation has no place in a
product claim. Cf. In re Wiggins, 397 F.2d 356, 359 n.4, 158 USPQ 199, 201-02 n.4 (CCPA
1968), and cases cited therein (“[A]ppellant’s discovery of the analgesic properties of ‘O2’ and
of a composition containing it could properly be claimed only as a method or process of using
that compound or composition in accordance with the provisions of 35 U.S.C. 100(b) and 101.”).
Appellants submit with respect to the ground of rejection based on Mercurio ‘795 and
Kumacheva that “[t]he difference in Tg between the core and shell [of the particles of
Kumacheva] . . . is not a ‘phase segregation’” as required by appealed claim 1, and “[t]he
teachings of Kumacheva do not account for the deficiencies of Mercurio” (brief, pages 7-8).
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