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 can only be defined by the process steps by which the product is made, or where the manufacturing process steps would be expected to impart distinctive structural characteristics to the final product.”
Examiners look for:
- Structural similarities between the claimed product and prior art
- Comparable physical or chemical properties
- Any distinctive characteristics imparted by the claimed process
If these factors suggest the products are identical or substantially identical, the examiner may reasonably conclude the claimed product-by-process is anticipated or rendered obvious by the prior art.
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