How does the examiner’s burden of proof work in process of making and product made distinctness?

This page is an FAQ based on guidance from the Manual of Patent Examining Procedure. It is provided as guidance, with links to the ground truth sources. This is information only: it is not legal advice.

How does the examiner’s burden of proof work in process of making and product made distinctness?

In establishing distinctness between a process of making and a product made, the examiner bears the burden of proof. According to MPEP 806.05(f):

“The burden is on the examiner to provide an example, but the example need not be documented.”

This means that:

• The examiner must provide a specific example to support the distinctness claim.
• The example doesn’t require documentation or evidence from prior art.
• The examiner’s example should demonstrate either:
  • The claimed process can make a materially different product, or
  • The claimed product can be made by a materially different process.

If the applicant can’t prove or persuasively argue that the example is not proper, the burden shifts to the applicant to prove or provide convincing arguments that the process as claimed cannot be used to make another materially different product, or that the product as claimed cannot be made by another materially different process.