REVERSED
1600 Biotechnology and Organic Chemistry
Ex Parte Brod ADAMS 112(2)/112(1)/103(a) FULBRIGHT & JAWORSKI, L.L.P
[W]e note that working examples are not required to satisfy 35 U.S.C. § 112, first paragraph. In re Strahilevitz, 668 F.2d 1229, 1232 (CCPA 1982).
2600 Communications
Ex Parte Hsu et al SAADAT 112(1)/103(a) THE FARRELL LAW FIRM, P.C. - IBM
AFFIRMED-IN-PART
3600 Transportation, Construction, Electronic Commerce, Agriculture, National Security, and License & Review
Ex Parte Conaway et al HORNER 102(b)/103(a) ECKERT SEAMANS CHERIN & MELLOTT
In other words, “[t]he patentability of a product does not depend on its method of production.” SmithKline, 439 F.3d at 1317.
SmithKline Beecham Corp. v. Apotex Corp., 403 F.3d 1331, 74 USPQ2d 1398 (Fed. Cir. 2005).. . . . . . . . . . . . . . . . . . . . . . . .2112
However, if the words of limitation can connote with equal force a structural characteristic of the product or a process used to obtain it, then the limitation is commonly interpreted in its structural sense. See, e.g., 3M Innovative Props. Co. v. Avery Dennison Corp. , 350 F.3d 1365, 1371 (Fed. Cir. 2003)(“[E]ven words of limitation that can connote with equal force a structural characteristic of the product or a process of manufacture are commonly and by default interpreted in their structural sense….”); Hazani v. U.S. Int’l. Trade Com’n. , 126 F.3d 1473, 1479 (Fed. Cir. 1997) (holding that claims to a plate having a “chemically engraved” surface are best characterized as pure product claims, since the “chemically engraved” limitation, read in context, describes the product more by its structure than by the process used to obtain it); see also In re Garnero, 412 F.2d 276, 278-79 (CCPA 1969)(noting that past-tense verbs such as “ ‘intermixed,’ ‘ground in place,’ ‘press fitted,’ ‘etched,’ and ‘welded,’ all … at one time or another have been separately held capable of construction as structural, rather than process, limitations.”).
Garnero, In re, 412 F.2d 276, 162 USPQ 221 (CCPA 1979) . . . . . . . . . . . . . . . . . . . . . . .2113
