Appeal No. 2006-2630 Page 5
Application No. 10/255,014
seal that has a permanent seal width. Brief, pp. 8, 9. We agree with the examiner
that claim 1 is a product-by-process claim. The appellants do not appear to argue
otherwise in their briefs, and the appellants’ representative agreed with this
characterization of the claim at the oral hearing. “The purpose of product-by-
process claims is to allow inventors to claim ‘an otherwise patentable product that
resists definition by other than the process by which it is made.’” Smithkline
Beecham Corp. v. Apotex Corp., 439 F.3d 1312, 1315, 78 USPQ2d 1097, 1099
(Fed. Cir. 2006) (quoting In re Thorpe, 777 F.2d 695, 697, 227 USPQ 964, 965-66
(Fed. Cir. 1985)). The ultimate issue in Smithkline is the same issue that we face in
the present case, viz, “whether the prior art disclosure of a product precludes a
future claim to that same product when it is made by an allegedly novel process.”
Id. at 1317, 78 USPQ2d at 1100. The court in Smithkline stated,
Regardless of how broadly or narrowly one construes a
product-by-process claim, it is clear that such claims are
always to a product, not a process. It has long been
established that one cannot avoid anticipation by an
earlier product disclosure by claiming the same product
more narrowly, that is, by claiming the product as
produced by a particular process.
Id. The Supreme Court has recognized that in some instances, a claim may
validly describe a new product with some reference to the method of production,
but only in cases where the patentee distinguishes his product from what is old by
reference to something other than the process by which he produced it. See Gen.
Elec. Co. v. Wabash Appliance Corp., 304 U.S. 364, 373 (1938) (cited with
approval in Smithkline, 439 F.3d at 1318, 78 USPQ2d at 1101. Otherwise,
“[w]hile the process set forth in the product-by-process claim may be new, that
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