How do examiners determine if a prior art product is “identical” to a product-by-process claim?

Examiners determine if a prior art product is “identical” to a product-by-process claim by focusing on the product’s structure and characteristics, not its method of production. According to MPEP 2113: “The structure implied by the process steps should be considered when assessing the patentability of product-by-process claims over the prior art, especially where the product…

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What is the “burden-shifting” approach in examining product-by-process claims?

The “burden-shifting” approach in examining product-by-process claims involves two key steps: The examiner initially focuses on the product itself, regardless of how it was made. If the examiner finds a prior art product that appears to be identical or substantially identical, the burden shifts to the applicant. As stated in MPEP 2113: “Once the examiner…

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Are “use” claims ever acceptable in US patent applications?

While “use” claims are generally problematic in US patent applications, there are rare instances where they might be acceptable: Certain process claims: If the claim clearly implies the steps involved, it might be considered definite. However, this is risky and not recommended. Product-by-process claims: These are not strictly “use” claims but can describe a product…

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Can product-by-process claims be rejoined with allowed product claims?

Can product-by-process claims be rejoined with allowed product claims? Yes, product-by-process claims can be rejoined with allowed product claims under certain circumstances. MPEP 821.04(a) provides guidance on this topic: “When a product-by-process claim is presented in the same application as a product claim that is not a product-by-process claim, and the product-by-process claim is not…

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Can product-by-process claims be rejoined in a patent application?

Yes, product-by-process claims can be rejoined in a patent application under certain circumstances. The treatment of product-by-process claims for rejoinder purposes is outlined in the MPEP 821.04(b): “Where product and process claims drawn to independent and distinct inventions are presented in the same application, applicant may be called upon under 35 U.S.C. 121 to elect…

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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…

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