What is a product-by-process claim?
A product-by-process claim is a product claim that defines the claimed product in terms of the process by which it is made. According to MPEP 2173.05(p), “A product-by-process claim, which is a product claim that defines the claimed product in terms of the process by which it is made, is proper.” This type of claim…
Read MoreCan a product-by-process claim be anticipated by a prior art product made by a different process?
Yes, a product-by-process claim can be anticipated by a prior art product made by a different process. MPEP 2113 clearly states: “[B]ecause validity is determined based on the requirements of patentability, a patent is invalid if a product made by the process recited in a product-by-process claim is anticipated by or obvious from prior art…
Read MoreCan a claim include both a product and a process?
While claims can reference multiple statutory classes of invention, there are specific rules for combining product and process elements. According to MPEP 2173.05(p): A claim to a device, apparatus, manufacture, or composition of matter may contain a reference to the process in which it is intended to be used without being objectionable, as long as…
Read MoreHow is a ‘process’ defined for patent eligibility purposes?
A process, for patent eligibility purposes, is defined as a series of actions or steps. The MPEP cites the Supreme Court’s definition from Gottschalk v. Benson: “A ‘process’ is ‘a mode of treatment of certain materials to produce a given result. It is an act, or a series of acts, performed upon the subject-matter to…
Read MoreCan a process claim be rejected if it describes the function of a disclosed machine?
No, a process claim cannot be rejected solely because it describes the function of a disclosed machine. The MPEP 2173.05(v) clearly states: “Process or method claims are not subject to rejection by U.S. Patent and Trademark Office examiners under 35 U.S.C. 112(b) or pre-AIA 35 U.S.C. 112, second paragraph, solely on the ground that they…
Read MoreWhat role does the problem solved by the invention play in determining analogous art?
The problem solved by the invention plays a crucial role in determining analogous art, particularly in applying the “reasonably pertinent” test. According to MPEP 2141.01(a): “In determining whether a reference is reasonably pertinent, an examiner should consider the problem faced by the inventor, as reflected – either explicitly or implicitly – in the specification.” The…
Read MoreWhat is the relationship between priority claims and the written description requirement?
Priority claims, whether under 35 U.S.C. 119 or 35 U.S.C. 120, are closely tied to the written description requirement. According to MPEP 2163.03: “Under 35 U.S.C. 119(a) or (e), the claims in a U.S. application are entitled to the benefit of a foreign priority date or the filing date of a provisional application if the…
Read MoreHow does a proper priority claim affect the prior art status of international applications?
A proper priority claim can significantly affect the prior art status of international applications. The MPEP 2127 provides guidance on this: “If the international application does not have an earlier effective date under 35 U.S.C. 102(e) based on a proper priority claim to an earlier filed U.S. application, the international application is only effective as…
Read MoreHow can priority claims be used to overcome a pre-AIA 35 U.S.C. 102(e) rejection?
Priority claims can be an effective way to overcome a pre-AIA 35 U.S.C. 102(e) rejection. This can be done through either foreign priority claims or domestic benefit claims. For foreign priority claims, the MPEP states: “Submitting a claim to priority under 35 U.S.C. 119(a) – (d) within the time period set in 37 CFR 1.55”…
Read MoreWhat are the requirements for a U.S. patent document to claim priority or benefit under AIA 35 U.S.C. 102(d)?
For a U.S. patent document to be “entitled to claim” priority or benefit of a prior-filed application under AIA 35 U.S.C. 102(d), it must meet three ministerial requirements: Contain a priority or benefit claim to the prior-filed application Be filed within the applicable filing period requirement Have a common inventor or be by the same…
Read More