Appeal 2007-1945
Application 10/669,215
The dispositive question is, therefore, whether the broadly claimed
composition embraces Sublett’s thermoplastic composition within the
meaning of 35 U.S.C. § 102(b). On this record, we answer this question in
the affirmative.
As explained in In re Thorpe, 777 F.2d 695, 697-98, 227 USPQ 964,
966 (Fed. Cir. 1985):
Product-by-process claims are not specifically discussed
in the patent statute. The practice and governing law have
developed in response to the need to enable an applicant to
claim an otherwise patentable product that resists definition by
other than the process by which it is made. For this reason,
even though product-by-process claims are limited by and
defined by the process, determination of patentability is based
on the product itself….
The patentability of a product does not depend on its
method of production.… If 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…. (Citation omitted).
There is no dispute that Sublett teaches a thermoplastic composition
containing a blend of a polycarbonate and a polyester, wherein the amount
of a catalyst used for making the polyester ranges from 10 ppm to 100 ppm
titanium. (Compare Answer 3 with Br. 7). As indicated supra, the claimed
thermoplastic composition, as broadly recited, does not preclude the
presence of additional titanium (in addition to the one used in producing the
polyester) such that the total amount of titanium in the composition
corresponds to the one taught by Sublett. Hence, we concur with the
Examiner’s determination that Sublett renders the subject matter defined by
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