MPEP 2113: Difference between revisions

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PRODUCT-BY-PROCESS CLAIMS ARE NOT  
=====PRODUCT-BY-PROCESS CLAIMS ARE NOT LIMITED TO THE MANIPULATIONS OF THE RECITED STEPS, ONLY THE STRUCTURE IMPLIED BY THE STEPS=====
LIMITED TO THE MANIPULATIONS OF THE  
RECITED STEPS, ONLY THE STRUCTURE  
IMPLIED BY THE STEPS


“[E]ven though product-by-process claims are limited  
Even though product-by-process claims are limited by and defined by the process, determination of patentability is based on the product itself. The patentability of a product does not depend on its method of production. If the product in the product-by-process claim is the same as or obvious from a product of the prior art, the claim is unpatentable even though the prior product was made by a different process.
by and defined by the process, determination of  
patentability is based on the product itself. The patentability  
of a product does not depend on its method of  
production. If the product in the product-by-process  
claim is the same as or obvious from a product of the  
prior art, the claim is unpatentable even though the  
prior product was made by a different process.” In re
Thorpe, 777 F.2d 695, 698, 227 USPQ 964, 966 (Fed.
Cir. 1985) (citations omitted) (Claim was directed to a
novolac color developer. The process of making the
developer was allowed. The difference between the
inventive process and the prior art was the addition of
metal oxide and carboxylic acid as separate ingredients
instead of adding the more expensive pre-reacted
metal carboxylate. The product-by-process claim was
rejected because the end product, in both the prior art
and the allowed process, ends up containing metal
carboxylate. The fact that the metal carboxylate is not
directly added, but is instead produced in-situ does
not change the end product.).


The structure implied by the process steps should  
The structure implied by the process steps should be considered when assessing the patentability of product-by-process claims over the prior art, especially where the product can only be defined by the process steps by which the product is made, or where the manufacturing process steps would be expected to impart distinctive structural characteristics to the final product.
be considered when assessing the patentability of  
product-by-process claims over the prior art, especially  
where the product can only be defined by the  
process steps by which the product is made, or where  
the manufacturing process steps would be expected to  
impart distinctive structural characteristics to the final  
product. See, e.g., In re Garnero, 412 F.2d 276, 279,
162 USPQ 221, 223 (CCPA 1979) (holding “interbonded
by interfusion” to limit structure of the
claimed composite and noting that terms such as
“welded,” “intermixed,” “ground in place,” “press fitted,”
and “etched” are capable of construction as
structural limitations.)


ONCE A PRODUCT APPEARING TO BE SUBSTANTIALLY  
=====ONCE A PRODUCT APPEARING TO BE SUBSTANTIALLY IDENTICAL IS FOUND AND A 35 U.S.C. 102/103 REJECTION MADE, THE BURDEN SHIFTS TO THE APPLICANT TO SHOW AN UNOBVIOUS DIFFERENCE=====
IDENTICAL IS FOUND AND A  
35 U.S.C. 102/103 REJECTION MADE, THE  
BURDEN SHIFTS TO THE APPLICANT TO  
SHOW AN UNOBVIOUS DIFFERENCE


“The Patent Office bears a lesser burden of proof in  
"The Patent Office bears a lesser burden of proof in making out a case of ''prima facie'' obviousness for product-by-process claims because of their peculiar nature" than when a product is claimed in the conventional  
making out a case of prima facie obviousness for  
fashion. Once the examiner provides a rationale tending to show that the claimed product appears to be the same or similar to that of the prior art, although produced by a different process, the burden shifts to applicant to come forward with evidence establishing an unobvious difference between the claimed product and the prior art product.
product-by-process claims because of their peculiar  
nature” than when a product is claimed in the conventional  
fashion. In re Fessmann, 489 F.2d 742, 744,
180 USPQ 324, 326 (CCPA 1974). Once the examiner  
provides a rationale tending to show that the claimed  
product appears to be the same or similar to that of the  
prior art, although produced by a different process, the  
burden shifts to applicant to come forward with evidence  
establishing an unobvious difference between  
the claimed product and the prior art product. In re
Marosi, 710 F.2d 798, 802, 218 USPQ 289, 292 (Fed.
Cir. 1983) (The claims were directed to a zeolite manufactured
by mixing together various inorganic materials
in solution and heating the resultant gel to form a
crystalline metal silicate essentially free of alkali
metal. The prior art described a process of making a
zeolite which, after ion exchange to remove alkali
metal, appeared to be “essentially free of alkali
metal.” The court upheld the rejection because the
applicant had not come forward with any evidence
that the prior art was not “essentially free of alkali
metal” and therefore a different and unobvious product.).  


=====THE USE OF 35 U.S.C. 102/103 REJECTIONS FOR PRODUCT-BY-PROCESS CLAIMS HAS BEEN APPROVED BY THE COURTS=====


Ex parte Gray, 10 USPQ2d 1922 (Bd. Pat. App. &
"[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 on either section 102 or section 103 of the statute is eminently fair and acceptable."
Inter. 1989) (The prior art disclosed human nerve
<noinclude>{{MPEP Section|2112|2100|2114}}</noinclude>
growth factor (b-NGF) isolated from human placental
tissue. The claim was directed to b-NGF produced
through genetic engineering techniques. The factor
produced seemed to be substantially the same whether
isolated from tissue or produced through genetic engineering.
While the applicant questioned the purity of
the prior art factor, no concrete evidence of an unobvious
difference was presented. The Board stated that
the dispositive issue is whether the claimed factor
exhibits any unexpected properties compared with the
factor disclosed by the prior art. The Board further
stated that the applicant should have made some comparison
between the two factors to establish unexpected
properties since the materials appeared to be
identical or only slightly different.).
 
THE USE OF 35 U.S.C. 102/103 REJECTIONS
FOR PRODUCT-BY-PROCESS CLAIMS HAS
BEEN APPROVED BY THE COURTS
 
“[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. We
are therefore of the opinion that 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 on 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.” In re Brown,
459
F.2d 531, 535, 173 USPQ 685, 688 (CCPA 1972).

Revision as of 12:48, November 3, 2011

← MPEP 2112 ↑ MPEP 2100 MPEP 2114 →


2113 Product-by-Process Claims

PRODUCT-BY-PROCESS CLAIMS ARE NOT LIMITED TO THE MANIPULATIONS OF THE RECITED STEPS, ONLY THE STRUCTURE IMPLIED BY THE STEPS

Even though product-by-process claims are limited by and defined by the process, determination of patentability is based on the product itself. The patentability of a product does not depend on its method of production. If the product in the product-by-process claim is the same as or obvious from a product of the prior art, the claim is unpatentable even though the prior product was made by a different process.

The structure implied by the process steps should be considered when assessing the patentability of product-by-process claims over the prior art, especially where the product can only be defined by the process steps by which the product is made, or where the manufacturing process steps would be expected to impart distinctive structural characteristics to the final product.

ONCE A PRODUCT APPEARING TO BE SUBSTANTIALLY IDENTICAL IS FOUND AND A 35 U.S.C. 102/103 REJECTION MADE, THE BURDEN SHIFTS TO THE APPLICANT TO SHOW AN UNOBVIOUS DIFFERENCE

"The Patent Office bears a lesser burden of proof in making out a case of prima facie obviousness for product-by-process claims because of their peculiar nature" than when a product is claimed in the conventional fashion. Once the examiner provides a rationale tending to show that the claimed product appears to be the same or similar to that of the prior art, although produced by a different process, the burden shifts to applicant to come forward with evidence establishing an unobvious difference between the claimed product and the prior art product.

THE USE OF 35 U.S.C. 102/103 REJECTIONS FOR PRODUCT-BY-PROCESS CLAIMS HAS BEEN APPROVED BY THE COURTS

"[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 on either section 102 or section 103 of the statute is eminently fair and acceptable."

← MPEP 2112 ↑ MPEP 2100 MPEP 2114 →
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