Appeal No. 2006-0513
Application No. 09/741,684
We also make the observation that, while unnecessary for a
determination of whether claim 7 is anticipated by Albrecht in
view of our discussion supra, we find no error in the Examiner’s
assertion (Answer, page 6) that the “initially without bonding
substance” in claim 7 is a process limitation which is entitled
to no patentable weight in a product by process claim. We agree
with the Examiner that in claims directed towards a product, it
is the patentability of the final product per se which must be
determined.
In the present factual situation, the Examiner has provided
a reasonable rationale (Answer, page 6) for concluding that the
claimed final end product, i.e., the suspension including the
slider/suspension connection, will be the same or at least
structurally equivalent whether or not bonding material is
initially placed on both the slider pad and suspension pad and
reflowed together, or whether bonding material is initially
placed only on the suspension pad and reflowed to the slider pad.
See In re Thorpe, 777 F.2d 695, 697, 227 USPQ 964, 966 (Fed. Cir.
1985).
We do recognize that Appellants may always provide evidence
to show that the process claimed does, in fact, result in a
product different from that disclosed by the applied reference.
7
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