What is the role of the examiner in evaluating product-by-process claims?
The examiner plays a crucial role in evaluating product-by-process 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.
The examiner’s responsibilities include:
- Considering the implied structure of the claimed product
- Comparing the claimed product to prior art products
- Determining if the prior art product is identical or only slightly different
- Shifting the burden to the applicant to show an unobvious difference if the products appear to be identical or only slightly different
If the prior art product does not appear to be identical, the examiner should consider whether the process steps would be expected to impart distinctive structural characteristics to the final product.
To learn more:
Topics:
MPEP 2100 - Patentability,
MPEP 2113 - Product - By - Process Claims,
Patent Law,
Patent Procedure