What is the significance of the phrase “another and materially different” in MPEP 806.05(f)?

What is the significance of the phrase “another and materially different” in MPEP 806.05(f)?

The phrase “another and materially different” in MPEP 806.05(f) is crucial for establishing distinctness between a process of making and a product made. It signifies that:

  • For the process: It must be capable of making a product that is significantly different from the claimed product.
  • For the product: It must be capable of being made by a process that is significantly different from the claimed process.

The term “materially different” implies that the difference must be substantial and not merely superficial. This criterion helps ensure that the distinction between the process and product claims is meaningful and justifies separate patent protection.

As stated in MPEP 806.05(f): “A process of making and a product made by the process can be shown to be distinct inventions if either or both of the following can be shown: (A) that the process as claimed is not an obvious process of making the product and the process as claimed can be used to make another and materially different product; or (B) that the product as claimed can be made by another and materially different process.”

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Tags: distinctness, materially different, mpep 806.05(f), process claims, Product Claims