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…
Read MoreWhat 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…
Read MoreWhat is the burden of proof in product-by-process claim rejections?
In product-by-process claim rejections, the burden of proof is initially on the patent examiner, but it’s lower than for conventional product claims. According to MPEP 2113: “The Patent Office bears a lesser burden of proof in making out a case of prima facie obviousness for product-by-process claims because of their peculiar nature” than when a…
Read MoreAre “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…
Read MoreCan 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…
Read MoreCan 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…
Read MoreHow is a product claim defined by a process treated in patent examination?
A product claim defined by the process by which it is made is still considered a product claim in patent examination. This principle is based on the decision in In re Bridgeford, as cited in MPEP 806.05(f): “A product defined by the process by which it can be made is still a product claim (…
Read MoreHow 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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