Product by process

Q) Product by Process (4.00.6a)

6. Which of the following statements is true regarding a product-by-process claim?

(A) Product-by-process claims cannot vary in scope from each other.

(B) Product-by-process claims may only be used in chemical cases.

(C) A lesser burden of proof may be required to make out a case of prima facie

obviousness for product-by-process claims than is required to make out a prima

facie case of obviousness when the product is claimed in the conventional fashion.

(D) It is proper to use product-by-process claims only when the process is patentable.

(E) It is proper to use product-by-process claims only when the product is incapable

of description in the conventional fashion.

6. ANSWER: (C). MPEP § 2113, page 2100-51, citing In re Fessman, 489 F.2d 742, 744,

180 USPQ 324, 326 (CCPA 1974). (A) and (E) are incorrect because “[t]he 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.” MPEP § 2173.05(p), item (I). (D) is incorrect

even if it is not necessary to describe the product in product-by-process form. (D) is incorrect

because “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.” MPEP § 2113, [p.2100-51]. (B) is

incorrect. “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.” MPEP § 2173.05(p), item (I) [p.2100-174].