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[JimIvey]

See MPEP 2113
"[E]ven 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) (citations omitted)

Does anyone else find that self-contradictory?  The claims are limited by an defined by the process.  Yet, novelty and obviousness are not determined according to the invention as limited by an defined by the process.

So, if the process aspects of claim are limiting, but not limiting for showing anticipation or obviousness, what are they limiting for?  I thought that's what "limiting" means, limiting what infringes and what anticipates.

And, has that issue not come up in the last 26 years?  Is that really the most recent authority?

Regards.

[khazzah]

And, has that issue not come up in the last 26 years?  Is that really the most recent authority?

Dunno. Product-by-process doesn't come up often in my technology area. So it's not something I know much about.

[bakhus]

How about defining an element by what it is designed to achieve?

For example, a thing designed to achieve a goal. Is such a claim element valid?

Would a device comprising a thing that was designed to achieve the goal, but was designed poorly, and in practice doesn't achieve the goal, be considered to infringe due to the design?

Would a thing that achieve the goal in spite of not being designed to achieve the goal be read on such a claim?

[khazzah]

For example, a thing designed to achieve a goal. Is such a claim element valid?

I'll bet the PTO will consider this something akin to "intended use" and thus not give it patentable weight. Though it's not intended *use*. But clearly intent is implicated, and so maybe it should be treated similarly. I don't know of any case law on point.

The more common approach is to claim a device that achieves the goal, that is, claim the result. That's where this thread started: an apparatus that is the result of a casting process rather than the process of casting it.

Would a device comprising a thing that was designed to achieve the goal, but was designed poorly, and in practice doesn't achieve the goal, be considered to infringe due to the design?

I'd be concerned about proving infringement. "Designed" sure sounds like it involves intent. You'd need evidence of intent. Hard to discover, hard to prove. I want a claim where I can prove infringement by buying the product, taking it apart, operating it, etc.

Would a thing that achieve the goal in spite of not being designed to achieve the goal be read on such a claim?

Perhaps a patentee would try that. IMHO, "designed to" forecloses that possibility.

[bakhus]

The more common approach is to claim a device that achieves the goal, that is, claim the result. That's where this thread started: an apparatus that is the result of a casting process rather than the process of casting it.

Can you example how to translate a claim to - a device that have an element designed to achieve a goal - to a claim to - a device that achieve a goal? Note that not everything that is designed to achieve something would actually achieve it, and that not every achievement is a device, so if you claim the result maybe it is not a device, and if it is a device then this leaves out devices that are just designed to achieve the goal, but practically does not achieve it.