Appeal No. 2006-1506 Page 3
Application No. 10/858,576
OPINION
Having carefully considered each of appellants’ arguments
set forth in the brief and reply brief, appellants have not
persuaded us of reversible error on the part of the examiner.
Accordingly, we will affirm the examiner’s rejections for
substantially the reasons set forth by the examiner in the
answer. We add the following for emphasis.
Appellants argue the rejected claims as a group. Thus, we
select independent claim 1 as the representative claim on which
we shall decide this appeal.
A review of representative claim 1 reveals that the claimed
adhesive product is defined, at least in part, by the method of
making same; that is, in a product-by-process format. The
patentability of such a claim is determined based on the product
itself, not on the method of making it. See In re Thorpe, 777
F.2d 695, 697, 227 USPQ 964, 966 (Fed. Cir. 1985) (“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.”).
We agree with appellants (reply brief, page 2) that the
Jepson claimed format employed is not an admission by appellants
that the here claimed product is an admitted prior art product.
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