Question about a Structure Claim that Refers to the Method Made

patag2001

I found this:

This type of claim is called a product-by-process claim.  According to the MPEP 2113, ?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.? 

Generally, it is best to avoid a product-by-process format unless the invention cannot be distinguished from a prior art product in terms of composition and/or structure. This is because a court in the United States could well hold that such claims are limited to a product that is prepared by the specific process steps recited therein (or their equivalent).

Is this correct?

pentazole

Yes you are referring to a product-by-process claim, or at least a claim limitation that is a product-by-process limitation.  Canada doesn't keep prosecution history that is available to the public (I don't think) so it would be hard to know what has been said during prosecution to get the case allowed.  From your description it seems like the claim has other, perhaps non-product-by-process limitations.  Assuming the product-by-process limitation doesn't add anything to the patentability of the structure claim, it doesn't trump it if other limitations do. 

I can tell you that whil product-by-process limitations aren't generally favored, oftentimes they do bring novelty and patentability to a product, and sometimes the novelty can only be described in terms of the process.  This is fairly common in the chemical arts, but when it happens we do have a tough time arguing how a product made by a process is different from the same product made by another process.  This would be almost impossible if the product was a simple molecule (no matter how you make sodium chloride, in the end it's going to be sodium chloride).  However, there are many chemical reactions that are extremely complex and virtually nothing can be said about how the individual components react with one another, and oftentimes reacting them in different orders under different conditions in different proportions will yield very different compounds that can be shown to be different in terms of their properties.  The key in your case is to see what this product-by-process limitation adds to the claim, if anything.

You are of the opinion that the claim is not novel and that the process is obvious, but in the end that's just your opinion.  If, however, you have any references that strongly support your position, you can always submit those to the PTO in connection with the prosecution of the U.S. equivalent.  A patent usually will have several dependent claims depending from an independent claim.  I'm by no means an expert on invalidity, but it would make sense to me that for the purposes of determining validity, every claim would be looked at as an independent claim, and those that are invalid would be invalidated, and those that are deemed valid would be assertable as if they were written in independent form.  However, on this point, others may give you a better answer. 

As an aside, and this is a matter of very biased personal opinion, Canadian prosecution is a joke.  I am well involved in prosecuting the Canadian stage of my clients' international applications, and the examiners are very easy and would allow almost anything that may look credible on the surface.  I have seen some ridiculous claims being allowed.  Here's a simple example of a claim I have seen allowed.  This is an analogy.  Someone is claiming a composition of matter that has 4 different albeit very common and well known ceramics in varying proportions.  Let's assume these ceramics were Al2O3 (aluminum oxide or alumina),  TiO2 (titanium dioxide or titania), ZrO2 (zirconium dioxide or zirconia), and SiC (silicon carbide).  The claim was: a composition comprising: (Al2O3)w(TiO2)x(ZrO2)y(SiC)z, wherein w = 70-100, x = 0-10 % by weight, y = 0-10 % by weight, z = 0-10 % by weight.  This claim was allowed in Canada.  So a person just patented aluminum oxide in Canada, which is naturally occurring, and has been known for hundreds if not thousands of years, because taken at its broadest, the claim reads:  a composition comprising 100% alumina.

patag2001

Thanks Pentazole for your feedback!

The U.S. patent publication (based on Canadian patent) date was 10-19-2006 and as of yesterday no patent has been issued.  This seems like an inordinate amount of time.  What would be some of the reasons such a time hiatus?

Many Thanks!

Wiscagent

It is not unusual for an application to linger in the USPTO for a couple of years, or more, before a patent issues.  Of course a patent may never issue.  You can look up the status of the application at the USPTO web site; look for public PAIR.

I'm an inventor on an application that published in December 2005.  So far there hasn't yet been an office action, let alone a patent granted or application rejected.

patag2001

The present status is ?Docketed New Case-Ready for Examination?.  Once the prosecution starts, what will the status say?  Is there a standard list of status statements?

Wiscagent

?Docketed New Case-Ready for Examination? = gathering dust.

I don't know if there is a standard list, but most of the status reports are resonably clear, e.g. "finally rejected", "under appeal", "claims allowed", etc.