How can an applicant overcome a rejection of a product-by-process claim?

An applicant has several options to overcome a rejection of a product-by-process claim. According to MPEP 2113:

“[T]he lack of physical description in a product-by-process claim makes determination of the patentability of the claim more difficult, since in spite of the fact that the claim may recite only process limitations, it is the patentability of the product claimed and not of the recited process steps which must be established.”

To overcome a rejection, an applicant can:

• Show that the product as claimed has different properties or structure compared to the prior art product
• Demonstrate that the claimed process imparts unexpected properties to the final product
• Provide evidence that the claimed product cannot be made by other processes
• Argue that the process steps result in a product with a different structure or properties
• Amend the claims to better distinguish the product from the prior art

The key is to focus on the unique characteristics of the final product that result from the claimed process, rather than the process itself.

To learn more:

• product-by-process claims
• overcoming rejection
• patent prosecution
• claim amendments