Appeal 2007-4100
Application 09/962,971
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….[W]hen 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.
Consistent with Brown, the Examiner has demonstrated that the pellet taught
by Klabunde “reasonably appears to be either identical with or only slightly
different than” the claimed pellet. As indicated supra, there is no dispute
that Klabunde describes a pellet useful for a fluid medium (gas or liquid),
having the claimed ingredients. Klabunde also teaches preparing pellets in
methods similar to that claimed (cols. 4-11, Examples 1-3). Klabunde’s
Examples 1 and 2 show forming powder from an aerogel and pressing the
powder in a small hydraulic press at 1000 and 2000 psi to make spherical
pellets having a diameter of 12 mm (col. 4-9). The pellets formed are then
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