2113

2113 Product-by-Process Claims [R-1]

PRODUCT-BY-PROCESS CLAIMS ARE NOT LIMITED TO THE MANIPULATIONS OF THE RECITED STEPS, ONLY THE STRUCTURE IMPLIED BY THE STEPS

AMGEN

An obviousness determination requires that a skilled artisan would have perceived a reasonable expectation of success in making the invention in light of the prior art. Amgen Inc. v. F. Hoffman-LA Roche Ltd., 580 F.3d 1340, 1362 (Fed. Cir. 2009) (citing In re Kubin, 561 F.3d 1351, 1360 (Fed. Cir. 2009)).


FESSMAN

The burden of proof on the PTO in making out a case of prima facie obviousness for product-by-process claims
is less than when a product is claimed in the more conventional fashion. In re Fessman, 489 F.2d 742, 744 (CCPA 1974).

Garnero
However, any structure or property implied by process steps must be considered when assessing the patentability of a product-by-process claim over the prior art. See In re Garnero, 412 F.2d 276, 279 (CCPA 1969) (holding the claimed process limitation "interbonded one to another by interfusion between the surfaces of perlite particles" in a product-by-process claim to limit the structure of the claimed composite just as process limitations, such as "intermixed," "ground in place," "press fitted," "etched," and "welded" were held to be capable of being construed as a structural limitation.)

see also In re Garnero, 412 F.2d 276, 278-79 (CCPA 1969)(noting that past-tense verbs such as “ ‘intermixed,’ ‘ground in place,’ ‘press fitted,’ ‘etched,’ and ‘welded,’ all … at one time or another have been separately held capable of construction as structural, rather than process, limitations.”).

Thorpe

So-called "product-by-process" limitations define or characterize a product by reciting the way the product is made. Claims containing such limitations are interpreted during prosecution as being anticipated by or obvious in view of any product, no matter how made, that is the same as any product made by a process within the scope of the steps recited in the claim. See, e.g., In re Thorpe, 777 F.2d 695, 697 (Fed. Cir. 1985) ("[i]f 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 product was made by a different process.") (citations omitted).

"[E]ven though product-by-process claims are limited by and defined by the process, determination of patentability is based on the product itself." 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 product was made by a different process." Thorpe, 777 F.2d at 697.
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