Earlier this week we posited our second Patent Bar Review Question of the Week. Now that we’ve had time to rack our brains, here’s the question (to remind you) followed by the US Patent Office’s “Model Answer” as well as detailed commentary and analysis from from Patent Resources Group’s Academic Director Paul Gardner.
Question of the Week No. 2 (Q and A 22 from April 2003 Exam, Morning Session):
On January 2, 2001, a registered practitioner filed a patent application with the USPTO for inventor Beck. The application includes a specification and a single claim to the invention which reads as follows:
1. Mixture Y made by the process Q1.
In the specification, Mr. Beck discloses that mixture Y has a melting point of 150° F. On June 2, 2001, the practitioner received an Office action from the primary examiner rejecting the claim. The claim is rejected under 35 USC §102/103 as being clearly anticipated by or obvious over Patent A. The examiner states “Patent A teaches mixture Y but made by a different process Q2.” Beck believes he is entitled to a patent to mixture Y. In accordance with USPTO rules and procedures set forth in the MPEP, which of the following would be the best reply to the rejection of his claim?
(A) An argument that the claimed product has an unexpectedly low melting point of 150° F, supported by an affidavit showing that the mixture Y made by process Q2 exhibits a melting point of 300° F.
(B) An argument that the processes used by applicant and patent A are different, supported by a third-party declaration stating only that the processes are different.
(C) An argument that the claimed product has an unexpectedly low melting point of 150° F, supported by a third-party declaration stating only that the products are different.
(D) An argument that the processes used by applicant and patent A are different, supported by an affidavit showing that the mixture Y made by process Q2 exhibits a melting point of 300° F.
(E) An argument that the claimed product has an unexpectedly low melting point of 150° F because the claimed mixture Y has a melting point of 150° F and the mixture Y of patent A has a melting point of 300° F.
Patent Office’s “Model Answer”
ANSWER: (A) is the most correct answer. MPEP § 2113, under the heading “Product-By-Process Claims Are Not Limited To The Manipulations Of The Recited Steps, Only The Structure Implied By The Steps,” states “‘even though product-by-process claims are limited by and defined by the process, 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 though the prior product was made by a different process.’ In re Thorpe, 777 F.2d 695, 698, 227 USPQ 964, 966 (Fed. Cir. 1985).” The issue is whether the claimed mixture Y is the same as or obvious over the patented mixture Y. MPEP § 2113, under the heading “Once A Product Appearing To Be Substantially Identical Is Found And A 35 U.S.C. 102/103 Rejection Made, The Burden Shifts To The Applicant To Show An Unobvious Difference,” states “[o]nce 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 798, 802, 218 USPQ 289, 292 (Fed. Cir. 1983).” Evidence that the two processes produce different properties is germane to the issue of patentability of the product-by-process claim. Accordingly, a comparison of the results obtained by conducting the process recited in the claim versus the process used by patent A and which shows that the claimed product exhibits an unexpectedly lower melting point would be a persuasive demonstration that, although the products would appear to be substantially identical, in fact, they are patentably different. Ex parte Gray, 10 USPQ2d 1922 (Bd. Pat. App. & Inter. 1989). Therefore, the best reply to the outstanding rejection would be to argue that the claimed product has an unexpectedly lower melting point and to support that argument with evidence showing that the result of the patent A process is a mixture with higher melting point as compared to the claimed product.
(B) is not the most correct answer. The patentability of a product-by-process claim is determined on the basis of product characteristics, not process steps.
(C) is not the most correct answer. The declaration is conclusory, as opposed to being factual. Thus, the argument is not supported by facts. As stated in MPEP § 716.02(c), under the heading “Opinion Evidence,” “Although an affidavit or declaration which states only conclusions may have some probative value, such an affidavit or declaration may have little weight when considered in light of all the evidence of record in the application. In re Brandstadter, 484 F.2d 1395, 179 USPQ 286 (CCPA 1973).” Thus, the reply in (A) is the most correct answer vis-à-vis (C).
(D) like answer (B), is not the most correct answer for the same reason discussed for (B).
(E) is not the most correct answer. Like answer (C), this reply rightly focuses on product properties. But without the comparative factual evidence to support it, this reply is weaker than one described in answer (A).
Paul Gardner’s Commentary:
This question is designed to test the examinee’s understanding of the scope and limitations associated with a product-by-process claim, i.e., a claim that recites a product by the process by which it is made rather than the structural and functional aspects of the product. Important principles flowing from the question and answer options include the following:
i. While defined by the process by which the product is made, patentability of a product-by-process claim depends on the novelty and unobviousness of the product itself, not that of the process. For example, in the Thorpe case cited in the Model Answer (A) above, a product-by-process claim reciting a color developer was held to be unpatentable over prior art disclosing a developer made by a different, more efficient, novel and unobvious process. While the process itself was patentable, and process claims reciting it were allowed, the examiner’s rejection of the product-by-process claim was sustained by the Federal Circuit.
ii. The examiner meets the Patent Office’s burden of establishing prima facie unpatentability of a product-by-process claim over a prior art reference if the reference discloses what appears to be the same or an obvious variant of the product claimed in product-by-process format, shifting to the applicant the burden of presenting evidence of unobviousness of the product itself. Quoting the holding in a 1974 CCPA opinion (In re Fessmann, 489 F.2d 742, 744) the MPEP states the rule as follows: “The 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 when a product is claimed in the conventional fashion.
iii. The applicant’s burden of overcoming the Patent Office’s prima facie case of unpatentability in such an instance may be satisfied by evidence that the product-by-process claimed differs from the product of the prior art reference in an unobvious way, e.g., has an unexpectedly lower melting point.
iv. Evidence of unexpected results is ordinarily presented to the Patent Office by the applicant in the form of an affidavit or declaration. In order to be effective, such an affidavit or declaration must present facts (not mere conclusory statements) which establish that the results are unexpected. Naked conclusions are not sufficient, no matter how much of an expert the affiant may be.
For more information on preparing for the Patent Bar, please see Patent Resources Group’s Patent Bar Review Course homepage, where you can get information on upcoming dates and locations for the course, including Boston in June, New York in September, San Francisco in November, and Dallas in December. Those unable to attend can even take the review courses via extensive home study DVD course materials. No matter how you take the course, you’ll receive thousands of dollars of study material and software, an exceptional value. The PRG Patent Bar Review Course is the authoritative Bar Review course designed to get you the best results.
This post was edited by Chris Jagalla.