Appeal 2007-1485
Application 10/943,944
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)).
OPINION
(A) The rejections over Higuchi and Yamanaka.
Claims 13-14 stand rejected under 35 U.S.C. § 103(a) as unpatentable
over Higuchi and Yamanaka individually. 5
The Examiner contends that both Higuchi and Yamanaka teach a wide
fluororesin film useful as an agricultural covering having at least two
fluororesin film sheets bonded to one another. The Examiner recognized
that neither Higuchi nor Yamanaka disclosed the described fluororesin film
had a width of from 1-150 m as required by the claimed invention. The
Examiner concluded that forming a fluororesin film with a width of from 1-
150 m would have been obvious to a person of ordinary skill in the art
(Answer 4-5).
Appellants contend that the fluororesin film structure of Higuchi and
Yamanaka is not substantially similar to the present invention because the
described layers are coextensive with each other rather than overlapping at
the edges (Br. 6-7).
5 Appellants have not presented separate arguments for claim 14 (See Brief
6-7). We select claim 13 as representative of the claims on appeal and will
limit our discussion to claim 13.
4
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