2113 Product-by-Process Claims
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The fact that it is necessary for an applicant to describe his product in product-by-process terms does not prevent him from presenting claims of varying scope.
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 thought the prior art was made by a different process.
A claim to a device, apparatus, claim, or composition of matter may contain a reference to the process in which it is intended to be used…so long as it is clear that the claim is directed to the product and not the process.
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.
