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   Withdrawn product by process allowed method claims
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   Author  Topic: Withdrawn product by process allowed method claims  (Read 1310 times)
Wiscagent
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Re: Withdrawn product by process allowed method cl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
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Isaac
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Re: Withdrawn product by process allowed method cl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?

 
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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Re: Withdrawn product by process allowed method cl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:
OKay.  Thank you, Isaac.

 
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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