What is the significance of In re Thorpe in product-by-process claim examination?
The case of In re Thorpe plays a crucial role in the examination of product-by-process claims. As stated in MPEP 2113:
“[E]ven though product-by-process claims are limited by and defined by the process, determination of patentability is based on the product itself. The patentability of a product does not depend on its method of production. If the product in the product-by-process claim is the same as or obvious from a product of the prior art, the claim is unpatentable even though the prior product was made by a different process.” In re Thorpe, 777 F.2d 695, 698, 227 USPQ 964, 966 (Fed. Cir. 1985)
This case established that the focus of examination for product-by-process claims should be on the product itself, not the process of making it. However, if the process imparts distinctive structural characteristics to the final product, those characteristics should be considered in determining patentability.
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