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[S. Robinson]

Does anyone know if you can patent a product that was an intermediate in a prior art patent. In other words, there is prior art out there that makes a product, then crushes it down into a completely different product. Can that intermediate product be patented before it is crushed if it was nonobvious? What authority supports that answer? Thanks.

[Wiscagent]

The short answer is: if a product has been described and enabled in the prior art then it is not novel, and so can not be patented.  The authority is 35USC102.

A trivial example would be a cake batter.  Patent x,xxx,xxx describes how to make a cake.  In the specification it discusses making the batter, then baking it under certain conditions to make a cake.  Suppose the finished cake is claimed, but the batter is not – someone else could make a batter without infringing the patent, but as soon as they bake the batter, they do infringe.

If you find a new use for the batter ... suppose it makes an excellent shampoo ... you could patent that use of the batter.


Richard Tanzer

[S. Robinson]

Thanks for the response. So if I understand correctly, there is an argument for why it can be patented and why it can't. It can't be patented because it is already disclosed in the specification and therefore, it is not novel and hence, unpatentable under 102. But, since the use is of the intermediate product is new and useful and was not claimed or realized by the inventor of the prior art, it can be patented. Is this rationale correct? What if the intermediate product I am trying to claim is not a new use but is a greatly improved use that has much better results than the product claimed in the prior art? Thanks again.

[Isaac]

It does not matter whether or not the intermediate is claimed.  If the intermediate is described in sufficient detail in a patent or any other written publication, the published document is prior art that can prevent you from getting a patent.

Examiners generally do not  care about the claims when applying art to make a rejection and seldom cite text from the claim. (Except for double patenting and interference issues of course).

[Wiscagent]

Perhaps I was not clear in my earlier note.  I was trying to explain that:

1) if a material is known in the prior art, i.e. described and enabled, there is no novelty and that material can no longer be patented - as Isaac noted it is irrelevent whether or not the material was claimed;

2) a new USE for that material may be claimed.

To go back to my hypothetical example, a claim for using the cake batter as a  shampoo might be something like this:

    A method of washing hair comprising applying cake
    batter to hair, adding water to the cake batter; rubbing
    the cake batter into the hair; and rinsing the cake
    batter out of the hair with additional water, wherein
    the cake batter comprises eggs, milk, and flour.

Notice that "a method of washing hair" is claimed, NOT the batter itself.

Richard Tanzer