How should examiners approach product-by-process claims?

Examiners should approach product-by-process claims by focusing on the product itself, rather than the process of making it. MPEP 904.01 provides guidance:

Product-by-process claims are not limited to the manipulations of the recited steps, only the structure implied by the steps.

Key points for examiners to consider:

  • 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
  • The focus should be on the end product and its characteristics
  • Process limitations may be considered if they impart distinctive structural characteristics to the final product

Examiners should search for prior art products that match the claimed product’s characteristics, regardless of how those products were made.

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Tags: Claim Analysis, patent examination, product-by-process claims, USPTO