Rejoinder - Is there an implied conflict between MPEP 821.04 and MPEP 821.04(b)?

[EvilLost]

MPEP 821.04 says that you can rejoin non-elected inventions if they share all the same limitations as elected inventions which have been found allowable.

MPEP 821.04(b) says that you can rejoin the PROCESS if it shares all the same limitations as the elected PRODUCT which has been found allowable. MPEP 821.04(b) does NOT state that you can rejoin the product if you elect the process (i.e. it is only one directional).

But, if I elect the method/process, and if all the limitations between the process and the product are shared, then can't I just ask for rejoinder under MPEP 821.04? This seems to be possible, though the "one-way" language of 821.04(b) seems to imply that you cannot do it in the other direction.

Thoughts?

[two banks of four]

Different processes may be patentable over one another, but the product produced thereby may not be patentably different.  There may be prior art whose product would read on the product of the application, but whose processes would not.

Take, for example, an anodization process.  You just need to get the outer surface of the metal oxidized.  All you need to form the product is an energy source and some chemical species to accept electrons (an oxidant).  The choice of oxidant per se may not have a material difference in the product obtained (say, thickness of oxide layer formed, crystallinity of the oxide layer formed, etc), but perhaps the choice of one oxidant would allow you to do something that the other oxidant won't allow you to do (e.g. rate, amount of oxidant used, waste disposal, etc).  Those methods would be patentable distinct from each other, but if there's no difference in the product, then the earlier filed product reads on the product produced by the latter filed application.

[EvilLost]

Right, I thought about this too, and generally agree. But, it seems that MPEP 821.04 would still apply?

MPEP 821.04 says "In order to be eligible for rejoinder, a claim to a nonelected invention must depend from or otherwise require all the limitations of an allowable claim." If I amend the unelected product claim to include all the process limitations, then I have met the requirement for 821.04 haven't I?

There SHOULD be a disclaimer somewhere excluding the method election of a product by process step, but I don't see that in the MPEP. I only see the explicit mention of electing the product and rejoining the process.

The only reasoning I can think of is that a product-by-process claim, although claimed by functional language, is patented based on the structure which results from that language. Thus, even if we were to amend the product-by-process to include the method claim limitations, they won't be interpreted as the same limitations...so 821.04 doesn't apply....? And instead we must use 821.04(b)? I feel like this is a bit of a stretch.

[doop]

Think more along the lines of restrictions made between an apparatus and a method of using the apparatus.  If applicant elects the apparatus claims and the examiner finds that the apparatus claims are allowable, then the method of using the apparatus claims would also be allowable if the method claims contain all of the apparatus limitations  However, the reverse is not necessarily true because if the applicant elects the method of using claims, even if the apparatus is known, the specific method of using the apparatus may be inventive and thus allowable (even if the apparatus is not).

For example, say an application is directed to (1) a special bicycle, (2) a method of riding the bicycle, and (3) a method of generating electricity using the bicycle.  If applicant elects the group 1 bicycle claims and the examiner finds the bicycle allowable, then both method claim groups should be rejoined as long as they contain the same limitations as (1) - such as "providing the bicycle of claim 1" - since if the bicycle is novel, then the method claims would also be novel because it would not be known to provide such a bicycle.  But, if applicant elects group 3 and they are found allowable, then it is not necessarily true that groups 1 and 2 should also be allowable.  It is possible that the bicycle is known in the art and that it is used as a typical bicycle, but that using the bicycle as an electrical generator is not known.  Thus, rejoinder may not be possible.  And even if you amend the unelected product claims to include the process limitations, those process limitations would not necessarily distinguish over the prior art because intended use limitations in apparatus claims do not distinguish unless there are some sort of structural limitations imposed. 

[lazyexaminer]

The others have explained it but I will try too.

It only makes sense to go in one direction because of the way device claims are interpreted.

If a device is patentable over the prior art then it follows that any method involving that exact device is also patentable over the art. If that device never existed before, then of course it was never used or made in any particular way. So there is minimal additional examination necessary, the examination burden no longer exists, so they can be rejoined.

But patentability of a method of making or using a device tells us nothing about the patentability of the underlying device. I can make or use a well known device in a new way. And you can't include all of those patentable limitations in the device claim, because device claims aren't interpreted that way. Product by process and intended use limitations generally don't limit device claims for examination purposes, so such limitations won't distinguish the device claims for patentability purposes. Including them therefore doesn't remove the examination burden so the restriction requirement is not removed.

Yeah the MPEP doesn't explicitly say this. Maybe it SHOULD as you say, but it doesn't necessarily have to. It doesn't make sense to rejoin in that direction.

[two banks of four]

The others have explained it but I will try too.

It only makes sense to go in one direction because of the way device claims are interpreted.

If a device is patentable over the prior art then it follows that any method involving that exact device is also patentable over the art. If that device never existed before, then of course it was never used or made in any particular way. So there is minimal additional examination necessary, the examination burden no longer exists, so they can be rejoined.

But patentability of a method of making or using a device tells us nothing about the patentability of the underlying device. I can make or use a well known device in a new way. And you can't include all of those patentable limitations in the device claim, because device claims aren't interpreted that way. Product by process and intended use limitations generally don't limit device claims for examination purposes, so such limitations won't distinguish the device claims for patentability purposes. Including them therefore doesn't remove the examination burden so the restriction requirement is not removed.

Yeah the MPEP doesn't explicitly say this. Maybe it SHOULD as you say, but it doesn't necessarily have to. It doesn't make sense to rejoin in that direction.

That's the key.

And to piggyback on that comment, if that product-by-process limitation does indeed provide a patentable difference over the prior art, then the product would have been patentable in the first place.  In which case, one could have saved the trouble of filing a divisional by prosecuting the product claim in the first place and get the corresponding method of making/using claims rejoined as a matter of right.  If that particular process doesn't produce a patenably different product, well the prior art  would read on it.

In the example I gave, a change in processing parameters (voltage applied or oxidant) can easily affect density and crystallinity of the oxide formed.  If the prior art is silent on this or teach something different, the product claim gets allowed, and method of making is patentable as well. 

Or in the case of the bicycle

[EvilLost]

Just to be clear, I understand the "one-way" rejoinder for practical purposes. Absent the special section for product-by-process, it seems that the general language of 821.04 would apply to electing the process and rejoining the product (even though logic dictates that this should not be possible).

My post was more directed at the fact that the MPEP does not seem to correctly address this specific situation.