Written by Mark Terry 

Today, the Board of Patent Appeals and Interferences (BPAI) affirmed a Patent Examiner’s 35 U.S.C. 103 obviousness rejection of a commonly used “product-by-process” claim, supporting my theory that product-by-process claims are useless. As a Miami Patent Lawyer, I found the Ex parte Lockemeyer decision interesting because it confirmed my own abandonment of product-by-process claims in the course of patent prosecution.

Ex parte Lockemeyer involved a product-by-process claim of a chemical composition made using a new process. The Examiner issued a 35 U.S.C. 103 obviousness rejection of the product-by-process claim based on a prior art reference that disclosed the chemical composition, but did NOT disclose the Applicant’s process. This begs the question – can you properly reject a product-by process claim using a prior art reference that discloses the product but NOT the process? Apparently, you can.

It is well settled that the patentability of a claim in product-by-process form is determined based on the product itself, not on the method of making it. See In re Thorpe, 777 F.2d 695, 697 (Fed. Cir. 1985) (“If the product in a 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 art product was made by a different process.”). In light of this precedent, the Board affirmed the rejection of the Applicant’s product-by-process claim.

As a side note, it should be noted that the Applicant did argue that Applicant’s composition possessed characteristics not held by the composition of the prior art reference. Other than attorney argument, the Applicant offered no other evidence. This argument was, of course, shot down by the Board. When Appellants’ product and a product of the prior art appear to be identical or substantially identical, the burden shifts to Appellants to provide evidence that the prior art product does not necessarily or inherently possess the characteristics of Appellants’ claimed product. See Thorpe, 777 F.2d at 698; In re Fitzgerald, 619 F.2d 67, 70 (CCPA 1980); In re Best, 562 F.2d 1252, 1255 (CCPA 1977); In re Fessmann, 489 F.2d 742, 745 (CCPA 1974).

The affirmation of the rejection of the product-by-process claim illustrates the uselessness of these types of claims. The “process” portion of a product-by-process claim clearly has little or no limiting value and is virtually ignored as a claim limitation. Consequently, there is no good reason to add a “process” to a “product” claim. For expediency, product-by-process claims should be avoided and standard chemical composition claims should be used.