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.
5
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