What is the burden of proof in product-by-process claim rejections?

Question

Accepted Answer

Source: FAQ (MPEP-Based) BlueIron Update: 2024-09-29 10 Rules 5 Related FAQs This page is an FAQ based on guidance from the Manual of Patent Examining Procedure. It is provided as guidance, with links to the ground truth sources. This is information only: it is not legal advice. 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 product is claimed in the conventional fashion. Once the examiner provides a rationale showing that the claimed product appears to be the same or similar to a prior art product, the burden shifts to the applicant. The applicant must then provide evidence establishing a nonobvious difference between the claimed product and the prior art product. Related Rules from the Manual of Patent Examining Procedure 10 rules Collapse Patent Office Requires Lesser Burden of Proof for Obviousness MPEP 2113 Burden Shifts to Prove Nonobvious Difference MPEP 2113 Prior Art Product Can Anticipate But Not Infringe MPEP 2113 Prohibited Prior Art Product Identical to Claimed Product MPEP 2113 Applicant Must Prove Nonobvious Difference MPEP 2113 Same Product as Prior Art Invalidates Claim MPEP 2113 No Evidence of Nonobvious Difference Required MPEP 2113 Product Patency Over Process MPEP 2113 Required Applicant Must Compare Factors for Unexpected Properties MPEP 2113 Recommended Product Anticipation Over Process MPEP 2113 Other Related FAQs 5 FAQs Collapse What is the &#8220;burden-shifting&#8221; approach in examining product-by-process claims? How do examiners determine if a prior art product is &#8220;identical&#8221; to a product-by-process claim? What evidence can applicants provide to establish nonobvious differences in product-by-process claims? What is the role of ...