The Board of Patent Appeals Weighs In on Product-by-Process Claims

MARK TERRY, ESQ.

In Ex parte Lockemeyer, the Board of Patent Appeals and Interferences affirmed an obviousness rejection of a product-by-process claim covering a chemical composition made using a new process.

The cited prior art disclosed the product but not the applicant’s manufacturing process. The Board nevertheless applied the settled rule that patentability of a product-by-process claim is determined based on the product itself.

If the claimed product is the same as, or obvious from, a prior-art product, the claim may be unpatentable even when the prior art used a different process to make it.

The applicant argued that its composition had characteristics absent from the prior-art product, but it submitted only attorney argument and no supporting evidence. The Board therefore affirmed the rejection.

Practical takeaway: The process language in a product-by-process claim may provide little patentable distinction. When the product appears identical to the prior art, applicants need evidence showing a meaningful product difference.