Product-by-Process© (Part I of II)
Spring, 2005

Field of Endeavor

The present article relates to a type for claiming in a patent specification, particularly to a not-very-typical claim, and more particularly to a claim costing one’s energy before he/she can have it categorized in some way.


Background Statement

A great civilization often entails some spectacular events.  As everybody knows at the present time, the US has lead and served as the sole superpower on earth for a long while.  It might be not too much surprising that there must be some masterpieces made by the US in the patent field to serve as the byproducts of civilization in this respect, e.g. Doctrine of Equivalents, All Element Rules, and File History Estoppel to name a few.  Out of which, a product-by-process might also be a great discovery.

As a matter of fact, a truth in a proposition normally is very simple and easy although it is never straightforward to find out such a simple and/or easy truth and/or answer in order that there cannot be so many saints or great civilizations in this world or in the human history.

Nevertheless, just like what happens to a trademark through dilution, it would appear that in lack of a frequent clarification as to whether product-by-process is properly used, people nowadays do not always use the term product-by-process regularly or in the way it is created to be, or liberated to be.

Specifically, so far as a product-by-process claim in the US is concerned:

1.      The product or at least one of its elements is recited in a method form or a method limitation/feature;

2.      Before April of 1974, such claim was permissible only when the product “cannot be described in any other manner.” In re Dreyfus, 24 USPQ (BNA) 463 (CCPA 1935); In re Moeller, 48 USPQ (BNA) 542 (CCPA 1941); Ex parte Donahey, 126 USPQ (BNA) 61 (BOP 1959); and

3.      The applicant was not allowed such claims whenever regular product claims are presented also.  The rationales for such practice might be that:

A.     Since such claim is critically exceptional, it must not be compatible with any other claim type in the same specification;

B.     If a regular claim is co-existent in a specification, it must mean the situation is not critical and exceptional; and

C.     Since a regular claim has secured for the patentee a relatively broader scope of protection in the same invention, it is apparent that it is never critically or exceptionally compulsory or necessary for the Patent Office to allow such strange or bizarre claim type.

As is known, the fact that an administration or a government of a country always finds nationals of the country against its easy and effective governance is just like the one that nationals of a country always find administration or government of the relevant country against their free activities.  Although it is not very certain or clear as to whether it will eventually do the human being well, it appears that nationals will finally win the administration or government, as exemplarily illustrated by the product-by-process claim where:

1.      The conglomeration of nationals of a country is far bigger than that of an administration of government of the same country.  What we really mean here is not their physical sizes but the chances of presenting what they feel, want, take, believe and/or are backed up through reasoning or explanations since new events happening in this world always come from or confronted by the former (i.e. nationals) rather than the latter (i.e. the administration or government);

2.      Since settlement and negotiation are getting more and more popular, it is getting more and more incredible that one thing must not co-exist with another simply because something is critically exceptional;

3.      Since the world is also getting more and more diversified, it is getting more and more difficult to convince people nowadays that we should keep a product-by-process claim exclusive in a patent application, in order to keep its image as critical and exceptional; and

4.      Just like that a claim set normally contains the independent claims and dependent claims in order to secure best coverage for protection, it is never convincing for one to assert that a product-by-process claim should stay away from a regular claim in the same invention.

Nevertheless, we are not very sure that as time goes by for development, every new developed practice must be good enough to qualify as a progressive measure to reflect the assumed ideal or desired presumed recognition that the human society is creatively evolving and is getting more and more improved.  Specifically, when the Patent Office was forced or lobbied to lift off the restrictive ban in order that a product-by-process claim is not necessitated to be permissible only when the product “cannot be described in any other manner,” we are not very confident as to whether the patent practices or the human society are advanced thereby, or progressed accordingly or not, since according to the traditional Chinese philosophy, a wisdom spark can originate from a carefree atmosphere or only be ignited through perseverance being diametrically opposite to liberation or carelessness.  It is unclear whether lifting off the restrictive use of a product-by-process relates to tempting creation of a carefree atmosphere or a careless environment, the answer of which concern we do not know how to obtain at the present time since it involves so many variables, e.g. the average patent knowledge, the level pursuit of the patent art, and/or the economic conditions of a specific country and the world, whether an exact answer really plays a certain role in (technological level of) the country or world.

It is therefore attempted by this article to clarify some points of issues relating to the product-by-process claims through discussions made to various aspects of such claim type.

The present article also tries to present and discuss peripheral issues relating to the product-by-process claim in order that peripheral issues thereof can also somewhat and somehow be more apparent and clarified.


Summary of Developments

In April 1974, the USPTO alleviated the attitude that one could not have both regular product claims and product-by-process claims at the same application in Manual of Patent Examining Procedure (MPEP) 706.03(e) as follows:

An article may be claimed by a process of making it provided it is definite.  In re Moeller… In re Pilkington, 162 U.S.P.Q. 145 (C.C.P.Q. 1969).

When the prior art discloses a product which reasonably appears to be either identical with or only slightly different than a product claimed in a product-by-process claim, a rejection based alternatively on either section 102 or 103 of the statute is appropriate…

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, Ex parte Pantzer and Feier, 176 U.S.P.Q. 141 (Board of Appeals, 1972).”

From such ruling statements, we can know as follows:

1.      What is important is whether the claim is definite so that an applicant wins nothing more than what is allowed by the law if it can freely make use of a product-by-process claim at its will.  This is because 35 USC 112 requires the applicant to include in the claims what are regarded as what are invented so that the Patent Office cannot additionally require what are not statutorily required or prescribed;

2.      Different independent claims, different levels of coverage presented by different types of claims, and/or different protective tiers embodied by different claiming philosophies will overlappingly blockade the potential protective loophole existing in claim sets drafted and contemplated for skillfully and better protecting the invention.  Specifically, claims of varying scopes can happen between independent claims and dependent ones, different sets of claims, or different types of claims;

3.      A product-by-process claim cannot exempt itself from being scrutinized by 35 USC 102 or 103 rejections.  Since the product-by-process is a product claim, if the prior art has disclosed a product reasonably appearing to be either identical with or only slightly different from a product claimed under the product-by-process type, the Examiner can render rejections under 35 USC 102 or 103 without any restriction.  Specifically, since a product-by-process claim is a kind of product claims, the product itself must be novel and unobvious.  More specifically, even though a process itself is or may be patentable, one cannot take it for granted that the product itself claimed under the product-by-process type is or may be patentable.  Such reasoning allows us to make the following conclusions:

A.     A process patentable per se needs not necessarily make the product defined therewith patentable;

B.     It is not significant whether the process component in a product-by-process is patentable per se.  Instead, what is important is whether or not the product per se made through the process component is patentable;

C.     If a product per se is patentable, it might be possible that it is not wise to claim it under the product-by-process claim since it will subject to both limitations, i.e. the product component and the process component;

D.     If a process per se is patentable, it might be suggestible that the applicant shall cause the claims of an application to contain claims directed to the process per se in order to seek the largest protecting scope therefor since a product-to-process claim shall subject itself to the scrutiny of 35 USC 102 and 103 rejections;

E.      Since the product-by-process claim will subject to double limitations as to the product component and the process component, it would appear to be clear that such product-by-process claim shall only be applicable or adoptable when:

a)      An invention cannot be soundly protected either by the product claim or the process claim;

b)      An invention cannot be presented either by the product claim or the process claim;

c)      An invention is not allowed to be presented in a product claim or a process claim; or

d)      The applicant wants to soundly or better protect the invention by adding a new claim set of the product-by-process type into the claims.

The above deduction can also find supports from contents of the current MPEP Chapter 2113 for product-by-process claim where relevant passages therein are reproduced as follows for convenience:

1.      “Product-by-process claims are not limited to the manipulations of the recited steps, only the structure implied by the steps”;

2.       “Even though product-by-process claims are limited by and defined by the process, determination of patentability is based on the product itself”;

3.      “The patentability of a product does not depend on its method of production”;

4.      “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)”;

5.      “Once a product appearing to be substantially identical is found and a 35 USC 102/103 rejection made, the burden shifts to the applicant to show an unobvious difference”;

6.      “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. In re Fessmann, 489 F.2d 742, 744, 180 USPQ 324, 326 (CCPA 1974)”;

7.      “The Board stated that the dispositive issue is whether the claimed factor exhibits any unexpected properties compared with the factor disclosed by the prior art”;

8.      “The Board further stated that the applicant should have made some comparison between the two factors to establish unexpected properties since the materials appeared to be identical or only slightly different”;

9.      “The lack of physical description in a product-by-process claim makes determination of the patentability of the claim more difficult, since in spite of the fact that the claim may recite only process limitations, it is the patentability of the product claimed and not of the recited process steps which must be established”; and

10.  “As a practical matter, the Patent Office is not equipped to manufacture products by the myriad of processes put before it and then obtain prior art products and make physical comparisons therewith.” In re Brown, 459 F.2d 531, 535, 173 USPQ 685, 688 (CCPA 1972).

Having known the above by primarily basing upon the US patent practice, it might be interested and interesting for us to review and make reference to the European patent practices in regard of product-by-process primarily reflected in the Case No. T0150/82-3.3.1 decided on 7 February 1984 as in the following:

1.      In the Decision Headnote, it is made that “claims for products defined in terms of processes for their preparation (known as “product-by-process” claims) are admissible only if the products themselves fulfill the requirements for patentability and there is not other information available in the application which could enable the applicant to define the product satisfactorily by reference to its composition, structure or some other testable parameter.”  As we know, in order to define or draft a claim for a product, some forms of media capable of representing or describing the product, and/or named as elements must be presented in the recitation of the claim.  If the product is entirely new, a direct recitation about the product itself or a testable parameter thereof might be appropriate.  If not, its elements, e.g. its sub-structures, constituents, or a testable parameter of sub-sets will become necessitated roles of the claim.  Only if through such elements, the product cannot be differentiated from the prior art, the product-by-process claim becomes a potential type for claiming.

2.      It is set forth in Item 8 of the Reasons for Decision of the above-captioned Case that “the Guidelines for Examination in the EPO (C-III 4.7b) allows claims for products defined in terms of a process of manufacture provided the products themselves fulfill the requirements for patentability.  This may well be the only way to define certain natural products or macromolecular materials, of unidentified or complex composition, which have not yet been defined structurally.  Nevertheless before such claims are allowable their patentability, as products must be established since such definition is in lieu of the normal definition by structure.”  We would like to further comment as follows:

A.     It is true that natural products or macromolecular materials are potential subjects of product-by-process claim, which, however, is not so limited thereto;

B.     Having an unidentified or complex composition per se is a competent reason for usage of the product-by-process claim but is never a preempted prerequisite.  Specifically, it is unimportant as to how complex the involved composition of a product in the product-by-process claim is since the claim logic per se is a complex but simple one.  Instead, what is taken care is whether it is impossible, hardly possible or nearly impossible to structurally define the concerned product; and

C.     This reason further stresses again that the patentability as a product for a product-by-process claim must be established.  This issue will be dealt in detail later.

3.      In Chapter III, Section 4.7b, the Guidelines for Examination in the EPO provides that “claims for products defined in terms of a process of manufacture are allowable only if the products as such fulfil the requirements for patentability, i.e. inter alia that they are new and inventive. A product is not rendered novel merely by the fact that it is produced by means of a new process (see T 150/82, OJ 7/1984, 309). A claim defining a product in terms of a process is to be construed as a claim to the product as such. The claim may for instance take the form "Product X obtainable by process Y". Irrespective of whether the term "obtainable", "obtained", "directly obtained" or an equivalent wording is used in the product-by-process claim, it is still directed to the product per se and confers absolute protection upon the product (see T 20/94, not published in OJ).”  With regard to this section, we would like to comment as follow:

A.     According to Guidelines for Examination in the EPO, a product claim defined in terms of a process is to be construed as a product claim.  Accordingly, the product per se must be new and inventive;

B.     No matter what kind of connection we would like to interconnect the product-by-process with the process component, such claim per se will be eventually construed to be a product claim.  Specifically:

a.       Even if the words, e.g. “directly obtained” or “only obtainable” are used in a product-by-process claim, it is a product claim;

b.      Although it is not made clear in the Guidelines for Examination in the EPO that the absolute protection conferred upon the product is limited to the product which is made through the process component in the product-by-process claim, this is a natural interpretation through the claim logic reasoning;

c.       Although the underlined portion of provisions under Guidelines for Examination in the EPO (C-III 4.7b) covers the possibility in interpretation that once a product claim defined in terms of a process is patented, the patentee obtains an “absolute” protection upon the product.  This is not to be taken that such patented product claim will cover a final product which is produced by any kind of process other than a process defining the product.  Such mistake might potentially originate from the wording in Item 8 of the Reasons for Decision of the above-captioned Case No. T 150/82, which will be further dealt with later.

4.      In Item 10 of the Reasons for Decision of the above-captioned Case, it is mentioned that “any attempt to claim the in itself non-inventive product by means of product-by-process claims is claiming the mere effects instead.  Whilst reliance on the provisions of Article 64(2) EPC may nevertheless provide protection beyond the invention in processes leading to known or patentable products alike, this should not be afforded for both kinds of product themselves on the same footing, irrespective of their character.”  In this regard, it is important and interesting for us to analyze as follows:

A.     From the sentence that “any attempt to claim the in itself non-inventive product by means of product-by-process claims is claiming the mere effects instead,” we can know:

a.       Since the Board correlated ‘the in itself non-inventive product’ with ‘product-by-process claims,’ it is rational and reasonable to realize that there must be some kind of connection between a non-inventive product and a product-by-process claim;

b.      Although it is unclear whether the Board considered it is unpatentable for a claim claiming the mere effects of a ‘new’ non-inventive product, the Board has confirmed that through a product-by-process claim, a non-inventive product will have new effects although it might be unpatentable;

c.       It appears that the Board was finding that even if some one has found a process for producing a product will impart to the product some effects, the product cannot be claimed through a product-by-process claim if it can be claimed otherwise.  Specifically, the Board is constructing the exceptional case bases for a product-by-process claim;

d.      It is believed that through the above sentence, the Board is never finding the following:

i.                     Whenever there is a new process which will give rise to some effects for or on a product, it is impossible for any one to attempt to seek patent protection in this respect;

ii.                   Even the composition, structure or some other testable parameter embodying the effects have been incorporated into the non-inventive product, it is still unpatentable;

iii.                  If a process can bring forth new effects to a product, such process is still unpatentable;

B.     For the remaining passage quoted above from Item 10 of the Reasons for Decision of the above-captioned Case, we would like to analyze as follows:

i.                     Just like the patent practices in many a countries, according to Article 64(2) of the European Patent Convention mainly deals with that if the subject-matter of a European patent is a process, the protection conferred by the patent extends to the products directly obtained by such process.  It has been annotated by the European Patent Office that the provisions of this article are understood to apply to:

i)                    Processes producing products completely different from the starting materials; and

ii)                   Processes producing only superficial changes (e.g. painting, polishing);

ii.                   Reliance on the provisions of Article 64(2) EPC may nevertheless provide protection beyond the invention in processes leading to known or patentable products alike, i.e. this statutory paragraph provides the protection to the product directly produced by the patented process, in addition to the protection of the unauthorized usage of the patented process;

iii.                  Nevertheless, the above reasoning should not be afforded for both kinds of products, i.e. the product directly produced from a patented process and a product in a product-by-process claim, in themselves on the same footing, irrespective of their character.

5.      Accordingly, we fully agree with the Board to take in Item 10 of the Reasons for Decision of the above-captioned Case “the view that in order to minimize uncertainty, the form for a claim to a patentable product as such defined in terms of a process of manufacture (i.e. “product-by-process claims”) should be reserved for cases where the product cannot be satisfactorily defined by reference to its composition, structure or some other testable parameters.”

The present article may become better illustrative through the following discussions as briefly sub-titled first as follows.


Brief Items to be Discussed for Presenting Issues We Concern

*When the product-by-process claim should be used?

*What is the function of a method limitation in a product-by-process claim?

*Whether it is good to liberalize the definition, the use opportunity and the examination of the product-by-process claim?

*Should we allow mixed claims having both product and process components incapable of satisfying requirements of a typical product-by-process claim?

*Does EPO err in construing a product-by-process claim somehow?

*Is a claim in a mixed/hybrid claim having either the product component or the process component capable of satisfying patentable requirements patentable?

*Can a product claim allow inclusion of method limitation therein?

*Is a method-related adjective presenting a method limitation?


Detailed Analyses

*When the product-by-process claim should be used?

As we have already known, a product-by-process claim is neither claiming to protect a classical product, nor a process, nor a product directly produced by a patentable process, by which we would like not to exclude the possibility that there might be a situation on this earth sooner or later that all of the product claims, the process claims and the product-by-process claims involved in the same application are patentable although it might not be readily incredible.  We will not make any more comments to distinguish among a classical product, a classical process and a product directly produced by a patentable process.

It is believed from the above discussions through the cases in the USPTO and European Patent Office that a product-by-process claim is originally and currently assumed to be used only exceptionally when a skillful claim drafter cannot claim to protect an invention in a classical product claim or a classical process claim, or when he or she finds it impossible to claim protecting the invention in a classical product claim or a process claim.  In this regard, it is to be noted that classically or in the conventional practices, a process limitation in a product claim or a product limitation in a process claim will carry no weight as to the patentability thereof upon examination.  Specifically, in a product claim, only the product limitation thereof will play the role of distinguishing itself from the cited references while only the process limitation in a process claim will be useful for being differentiated from the prior art.  Nevertheless, since such product (process) limitation is presented in a process (product) claim, the protecting scope of such process (product) claim will be limited thereby.  As a result, such product (process) limitation can do no helps to the process (product) claim in securing therefor a patent right whereas this product (process) limitation will do harms to the protecting scope of the process (product) claim.  While this is not fair due to violation of the symmetry or mutual dependency of rights and obligations in the legal theorem, such practice is compulsory in order to keep alive and active the important bases and theories of the patent practices, e.g. unity of invention, claim philosophy or logic….

As the time goes by, it appears that everything, including the above basic understanding to the product-by-process on this earth is changing, as evidenced by the frequent emergence of the mixed claims having a product limitation in a process claim or a process limitation in a product claim and their eventual acceptance by patent offices of various countries.  It is believed that such emergence and acceptance result from the following facts or reasons:

1.      If the facts/reasons come from the claim drafter, the background factors might be:

A.     The claim drafter does not know the solemnity of a product-by-process claim so that he/she puts a mixed claim sub-set in the complete claim set in order to diversify and enlarge the maximum protecting overlapping coverage of the complete claim set; or

B.     The claim drafter does know the strictness of the product-by-process claim but still try to reach potential functions of the above diversification and enlargement through silently undermining or secretly challenging such apparently invulnerable precedent or practice.  It would appear that every one or applicant would like to secure a better protecting scope for a subject invention, and does not like to be restricted in any way as to how he/she/it could use the claim style to better secure what is sought patented.  Since an additional claim sub-set drafted in the mixed type can possibly secure an additional protection coverage for a subject invention only at the potential price of the additional filing fee at the worst case without the possibility of damaging the eventual obtainable rights of the subject invention, it appears that a wise claim drafter or applicant would not be conscious of testing or taking care of bringing forth a trouble to the Patent Office or an examiner as to whether such additional claim sub-set only causes troubles or complexity of the examination proceedings; and

2.      If the facts/reasons come from the examiner, the background factors might be:

A.     In this fast-changing era, it might be not so easy to keep an examiner long enough in the Patent Office that he/she can know the exact difference between a mixed claim and a product-by-process claim, whether a mixed can be allowable and when a product-by-process claim can be acceptable; or

B.     While working is boresome, it is hard to frequently remind oneself of the fact as to how and why a product-by-process claim can be used only when there is an emergent case, especially when the examiner is put in a situation before the fact that the applicant submits thereto a lot of convincing materials explaining how and why a mixed claim should be allowable.

3.      As the use and acceptance of the mixed claim become more and more frequent, it is getting more and more difficult to differentiate a mixed claim from a product-by-process since both claim types are allowable so that if an examiner tries to reject a product-by-process claim on the base that the applicant has not shown there is an exceptional case, such rejection can easily be overcome by making a sarcastic response that it is so strange that the examiner fails to recognize that the claim in issue is a mixed claim rather than a product-by-process claim to be exceptionally used unless:

A.     There is a rule ruling that the applicant must make it clear upon filing an application whether the claim in issue is a mixed claim or a product-by-process claim; and

B.     There is a provision stipulating that the protection scope of a mixed claim is different from that of a product-by-process claim.

It would appear that the solemnity or strictness of a product-by-process has been diluted through the extensive use and acceptance of a mixed claim and more seriously, the product-by-process claim has been getting more and more equalized to a mixed claim.  We cannot readily determine or know whether this is good to the patent society of this world.  It is earnestly encouraged and solicited here that responsible patent practitioners all over the world should find themselves interested and obliged to answer the following questions since we have exerted our efforts in so posting:

1.      Is it good for the patent practice or this world to equalize a mixed claim to a product-by-process claim?

2.      If yes, how should we neatly dissolve or lift the restriction or limitation of the product-by-process claim so that a product-by-process claim can be used freely whenever the claim drafter or applicant desires?  If not, how should we tell a mixed claim apart from a product-by-process claim?

After differentiating between them, what kinds of differences in protection offered therebetween?