What evidence can applicants provide to establish nonobvious differences in product-by-process claims?

When facing a rejection of a product-by-process claim, applicants can provide various types of evidence to establish nonobvious differences between their claimed product and the prior art. According to MPEP 2113, this may include:

• Structural differences: Evidence showing unique structural features resulting from the claimed process.
• Chemical composition: Data demonstrating different chemical makeup or properties.
• Physical properties: Test results showing distinct physical characteristics.
• Performance data: Information on superior performance or unexpected results.
• Expert testimony: Declarations from experts in the field explaining the significance of the process.

The key is to demonstrate that the claimed process imparts distinctive characteristics to the final product that are not present in the prior art. As MPEP 2113 states:

“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 product is claimed in the conventional fashion.”

Therefore, applicants must provide clear and convincing evidence of nonobviousness to overcome the rejection.

To learn more:

• product-by-process claims
• nonobvious differences
• evidence
• patent application