Q) Product by Process (4.00.6a)

by patentbar on September 4, 2008 · 3 comments

in Exam Questions

Test takers have reported questions #6 from the April 2000 (AM) patent bar exam in the current question database.

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].

{ 3 comments… read them below or add one }

1 PatentGrrlNo Gravatar July 11, 2012 at 10:04 pm

I believe I had a variant of this 7/5/12. Answers were slightly different, but same sections were useful.

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2 geoffNo Gravatar March 25, 2014 at 6:57 pm

There is a good uspto presentation on the PTO website

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3 whereNo Gravatar May 14, 2014 at 9:52 am

where? link?

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