Ex Parte Schlegel - Page 5

                Appeal 2007-4099                                                                               
                Application 09/962,935                                                                         
                The Appellant only argues (Br. 11-12) that:                                                    
                         Klabunde fails to disclose [its] agglomerated particles                               
                         prepared from an aqueous suspension and fails to describe                             
                         a method for preparing [its] agglomerated particles of                                
                         [iron oxide,] iron hydroxide and/or iron oxyhydroxide                                 
                         without a powder compacting step.3                                                    
                      The dispositive question is, therefore, whether the claimed process                      
                or method limitations would have rendered the claimed pellet patentably                        
                distinguishable over the pellet taught by Klabunde within the meaning of                       
                35 U.S.C. § 102(b).  On this record, we answer this question in the negative.                  
                      As stated in In re Brown, 459 F.2d 531, 535, 173 USPQ 685, 688                           
                (CCPA 1972):                                                                                   
                         [T]he lack of physical description in a product-by-process                            
                         claim makes determination of the patentability of the                                 
                         claim more difficult, since in spite of the fact that the                             
                         claim may recite only process limitations, it is the                                  
                         patentability of the product claimed and not of the recited                           
                         process steps which must be established….when the prior                               
                         art discloses a product which reasonably appears to be                                
                         either identical with or only slightly different than a                               
                         product claimed in a product-by-process claim, a rejection                            
                         based alternatively one either section 102 or section 103 of                          
                         the statute is eminently fair and acceptable.  As a practical                         
                         matter, the Patent Office is not equipped to manufacture                              
                         products by the myriad of processes put before it and then                            
                         obtain prior art products and make physical comparisons                               
                         therewith.                                                                            

                                                                                                              
                3 Contrary to the Appellant's argument, claim 1 on appeal does not preclude                    
                mechanically shaping (e.g., pressing or compacting) wet powder from an                         
                aqueous suspension as is apparent from page 7 of the Appellant's                               
                Specification.                                                                                 

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