How are product-by-process claims evaluated for patentability?

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Source: FAQ (MPEP-Based) BlueIron Update: 2024-09-30 10 Rules 5 Related FAQs 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. According to MPEP 2113 , the evaluation of product-by-process claims focuses on the final product, not the process of making it. The MPEP states: “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.” This means that examiners will compare the claimed product to prior art products, regardless of how those products were made. If the claimed product appears to be the same or obvious in light of a prior art product, it may be rejected under 35 U.S.C. 102 (anticipation) or 35 U.S.C. 103 (obviousness). Related Rules from the Manual of Patent Examining Procedure 10 rules Collapse Prior Art Product Can Anticipate But Not Infringe MPEP 2113 Prohibited Prior Art Product Identical to Claimed Product MPEP 2113 Same Product as Prior Art Invalidates Claim MPEP 2113 Same Product, Different Process Anticipation MPEP 2113 Same Product Anticipation MPEP 2113 Same Product Anticipation Irrespective of Process MPEP 2113 Product Determination Over Process MPEP 2113 Obviousness of Product from Process MPEP 2113 Same Product Anticipation MPEP 2113 Product Patency Over Process MPEP 2113 Required Other Related FAQs 5 FAQs Collapse What is the burden of proof in product-by-process claim rejections? What is the &#8220;burden-shifting&#8221; approach in examining product-by-process claims? How do examiners determine if a prior art product is &#8220;identical&#8221; to a product-by-process claim? What evidence can applicants provide to establish nonobvious differences in product-by-process claims? What is the role of the examiner in evaluating product-by-process claims?