Appeal No. 2007-0671 Page 5
Application No. 10/836,174
with regard to whether the canister is removable or permanently attached to the
housing. In contrast, according to appellant’s claimed invention, the canister
must be permanently attached to the housing. As discussed above, appellant’s
specification discloses how the canister may be permanently attached, e.g., the
canister 7 includes a nozzle which is received in and permanently held by an
atomizing socket 10. Specification, paragraph 31. This attachment is such that
when the canister is empty the entire dispenser is discarded. Stated differently,
the canister cannot be removed to allow the housing to be reused with a different
canister.
Claims 2-12 ultimately depend from and further limit the components of
claim 1. Of claims 2-12, claims 5-12 require closer inspection. The examiner
“asserts that [a]ppellant’s [c]laims 5-12 are directed towards product-by-process
claims rather than product claims itself [sic]” Answer, page 10, emphasis
removed. According to the examiner (id., emphasis removed),
[i]n [c]laim 5, [a]ppellant recites the “electronic circuit includes one
or more count presetting switches for presetting a count in said
electronic circuit at the time said housing and said canister are
combined during initial assembly. Appellant’s use of the recited
claim language recites not only a structural element or product “the
presetting switches” but also a process by which the device or
product is to be assembled “combined during initial assembly.” As
such, [a]ppellant has essentially recited a process by which the
product is to be assembled rather than an end product itself.
For his part, appellant argues that claims 5-12 contain limitations that are
not product-by-process limitations and cannot be ignored.” Brief, page 8-9. We
agree. Claim 5 depends from and further limits the electronic circuit of claim 1.
Specifically, claim 5 requires that the electronic circuit includes one or more
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