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))

See Amgen Inc. v. F. Hoffman-LA Roche Ltd., 580 F.3d 1340, 1366 (Fed. Cir. 2009) ("It has long been the case that an old product is not patentable even if it is made by a new process.") (citing General Elec. Co. v. Wabash Appliance Corp., 304 U.S. 364, 373 (1938)); 

We do not find this argument persuasive because claim 15 is drawn to an apparatus, not a method for forming a substrate, and because claim 15 does not require a “uniform” material as in claim 1. “In determining validity of a product-by-process claim, the focus is on the product and not the process of making it.” Amgen Inc. v. F. Hoffman-La Roche Ltd., 580 F.3d 1340, 1369 (Fed.Cir. 2009). The process of making is only relevant “if the process by which a product is made imparts ‘structural and functional differences’ distinguishing the claimed product from the prior art” Greenliant Systems, Inc. v. Xicor LLC, 692 F.3d 1261, 1268 (Fed. Cir.2012).


BROWN


Claim 1 is directed to an assembly for forming a document, which we interpret as directed to an apparatus, i.e. a structure which can be termed a machine or manufacture under 35 U.S.C. § 101. Thus, claim 1 is a structural claim and as such must be distinguished from the prior art based on structure. “[I]t is the patentability of the product claimed and not of the recited process steps which must be established.” In re Brown, 459 F.2d 531, 535 (CCPA 1972).


FESSMANN

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).
 

The USPTO bears a lesser burden of proof in making out a prima facie case of obviousness in a product-by-process situation because of its peculiar nature. In re Fessmann, 489 F.2d 742 (CCPA 1974). Once the examiner provides a rationale tending to show that the claimed product appears to be the same or similar to that of the prior art, although produced by a different process, the burden shifts to applicant to come forward with evidence establishing an unobvious difference between the claimed product and the prior art product. In re Marosi, 710 F.2d 799, 803 (Fed. Cir. 1983)


“[T]he 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 would be the case when a product is claimed in the more conventional fashion.” In re Fessmann, 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.”).

See also In re Garnero, 412 F.2d 276, 279 (CCPA 1979) (holding “interbonded by interfusion” to limit structure of the claimed composite and noting that terms such as “welded,” “intermixed,” “ground in place,” “press fitted,” and “etched” are capable of construction as structural 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.

see also 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.").

Here, the claims are directed to a reed switch, not a method of making the reed switch. Therefore, patentability is determined by the actual product made-not the process by which it is made, and the burden was properly shifted to the Appellant to show that the products are in fact patentably different. Cf In re Thorpe, 777 F.2d 695, 697 (Fed Cir. 1985).


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