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.
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
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.
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).
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