Appeal 2007-0911
Application 10/058,808
hafnium carbide-containing fiber of rejected claim 8 (Answer 5 and 6,
Uemera, col. 1, ll. 43-55, and col. 2, ll. 5-13).
Appellants contend that the Uemera disclose a carbon fiber having a
ceramic coating (i.e., HfC) or a composite formed by reacting a carbon fiber
with a carbide-forming element (i.e., Hf). Moreover, Appellants contend
that the product fiber of Uemera is not derived from a pre-ceramic polymer.
The issue before us with respect to this rejection is: Have Appellants
identified reversible error in the Examiner’s anticipation rejection by the
arguments asserted in the Brief? We answer this question in the negative
and we affirm the Examiner’s anticipation rejection over Uemura.
Rejected claim 8 employs the open transitional term “comprising”,
which leaves the product claim open to the inclusion of other components
other than those specifically recited therein. See Exxon Chemical Patents
Inc. v. Lubrizol Corp., 64 F.3d 1553, 1555, 35 USPQ2d 1801, 1802 (Fed.
Cir. 1995); In re Baxter, 656 F.2d 679, 686, 210 USPQ 795, 802 (CCPA
1981). Moreover, the product of rejected claim 8 is described, at least in
part, by a process of preparing the same. In assessing the patentability of
such a product-by-process claim, the product made is the focus of our
inquiry, not the process itself. In this regard, the patentability of a product is
a separate consideration from that of the process by which it is made. See In
re Thorpe, 777 F.2d 695, 697, 227 USPQ 964, 965-66 (Fed. Cir. 1985); In re
Brown, 459 F.2d 531, 535, 173 USPQ 685, 688 (CCPA 1972).
The claim 8 recitation concerning the derivation of the claimed
product from a pre-ceramic polymer is a rather broad product-by-process
limitation. In a case such as this one where Appellants are asserting a
product distinction based on such a “derived from …” process limitation it is
4
Page: Previous 1 2 3 4 5 6 7 8 9 Next
Last modified: September 9, 2013