Appeal 2006-1512
Application 10/131,455
and an edge exclusion lip projecting from the body, the lip sized and adapted
to project over an edge of any substrate beneath the one or more contacting
surfaces, the lip spaced from the substrate at an innermost edge of the lip by
a first distance and spaced from the substrate at the substrate edge by a
second distance smaller than the first distance.
We will treat the claim language appearing in the last stanza of claims
6, 7, and 11 beginning with the word “wherein” as equivalent to a process
limitation. The limitation describes a process parameter that must be
considered in determining the “second distance” (or the second lower
surface of claim 11)2. Thus, a clamp ring product that comprises the
elements discussed above would render the claimed invention unpatentable.
It has long been held that “‘[i]f 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 product was made by a different
process.’” SmithKline Beecham Corp. v. Apotex Corp., 439 F.3d 1312,
1317, 78 USPQ2d 1097, 1101 (Fed. Cir. 2006) (quoting In re Thorpe,
777 F.2d 695, [697], 227 USPQ 964, 966 (Fed. Cir. 1985)).
Claims 6, 7, and 11-17 stand rejected under 35 U.S.C. § 102(b) as
anticipated by Lee.
2 The subject matter of claim 11 is directed to a clamp ring comprising a roof
having upper and lower surfaces, at least one substrate contacting surface
extending downwardly from the lower roof surface, and a lip forming an
inner terminus of the roof, wherein the lip is sized and adapted to extend
inwardly over the edge of the substrate while remaining vertically spaced
from the substrate, the lip having a variable lower surface comprising at least
first and second lower surfaces, the first surface disposed inwardly from the
second surface.
7
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