Appeal 2007-2656
Application 11/133,685
Because we are in agreement with the Examiner’s position as set forth
in the Answer, we adopt the Examiner’s findings as our own and affirm the
stated rejection for substantially the reasons as presented in the Answer.
We add the following for emphasis.
At the outset, we note that the catalyst of representative appealed
claim 5 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. 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, 966 (Fed. Cir.
1985); In re Brown, 459 F.2d 531, 535, 173 USPQ 685, 688 (CCPA 1972).
“To anticipate a claim, a prior art reference must disclose every limitation of
the claimed invention, either explicitly or inherently.” In re Schreiber, 128
F.3d 1473, 1477, 44 USPQ2d 1429, 1431 (Fed. Cir. 1997); accord Glaxo
Inc. v. Novopharm Ltd., 52 F.3d 1043, 1047, 34 USPQ2d 1565, 1567 (Fed.
Cir. 1995). However, anticipation by a prior art reference does not require
that the reference recognize either the inventive concept of the claimed
subject matter or the inherent properties that may be possessed by the prior
art reference. See Verdegaal Bros., Inc. v. Union Oil Co.,
814 F.2d 628, 633, 2 USPQ2d 1051, 1054 (Fed. Cir.), cert. denied, 484 U.S.
827 (1987).
Anticipation under this section is a factual determination. See In re
Baxter Travenol Labs., 952 F.2d 388, 390, 21 USPQ2d 1281, 1283 (Fed.
Cir. 1991) (citing In re Bond, 910 F.2d 831, 833, 15 USPQ2d 1566, 1567
(Fed. Cir. 1990).
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