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Topic: Withdrawn product by process allowed method claims (Read 1310 times) |
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Wiscagent
Full Member
Posts: 843
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Re: Withdrawn product by process allowed method cl
« Reply #5 on: Sep 11th, 2006, 1:51pm » |
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Isaac wrote "The scope of a product by process claim is the product made by *any* method." That's certainly consistent with MPEP 2113 which cites in re Thorpe. But I believe there is also case law (I can’t find it right now) that takes a narrower position, i.e. the scope of a product by process claim is the product made by that particular process. Any thoughts?
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Richard Tanzer
Patent Agent
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Isaac
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Posts: 3472
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Re: Withdrawn product by process allowed method cl
« Reply #6 on: Sep 11th, 2006, 2:33pm » |
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on Sep 11th, 2006, 1:51pm, Wiscagent wrote:| Isaac wrote "The scope of a product by process claim is the product made by *any* method." That's certainly consistent with MPEP 2113 which cites in re Thorpe. But I believe there is also case law (I can’t find it right now) that takes a narrower position, i.e. the scope of a product by process claim is the product made by that particular process. Any thoughts? |
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I cannot recall a specific case, but there can be situations where the process defines structure that cannot be made in a way other than the described process, and thus the product by process claim is limited to the given process (or at least some aspects of the process). I do recall reading such a case in law school when we covered product by process claims.
My memory is even fuzzier on this, but I believe there is also some old, overruled case law giving product by process claims the more narrow interpretation that you suggest as the general rule. I dug my old caselaw book out of its crate a couple weeks ago, but I haven't managed to drag it out of the house yet.
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Isaac
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Isaac
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Posts: 3472
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Re: Withdrawn product by process allowed method cl
« Reply #7 on: Sep 11th, 2006, 9:46pm » |
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on Sep 11th, 2006, 1:26pm, Lily wrote:
There's nothing preventing you from asking the Examiner about rejoinder. Your case might have some pecularities I dont contemplate in my answer. In an appropriate case the Examiner might volunteer to rejoin claims when he notifies you of allowed claims.
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Isaac
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