Processes Which Employ Non-Obvious Products Considering Ochiai, Brouwer and §103(b)

Treatment of Product and Process Claims in light of: In re Ochiai, 71 F.3d 1565, 37 USPQ2d 1127 (Fed. Cir. 1995) In re Brouwer, 77 F.3d 422, 37 USPQ2d 1663 (Fed. Cir. 1996) 35 U.S.C. §103(b)

Question? Can an otherwise conventional process or method be patented if limited to making or using a non-obvious product?

TEST The collective teachings of the prior art must have suggested to one of ordinary skill in the art that, at the time the invention was made, Applicants’ claimed invention would have been obvious.

Decision Use of per se rules is improper in applying the test for obviousness. There was no suggestion or motivation in the prior art to make or use non-obvious products. Rejections based upon S103(a) were overturned.

Impact Upon Examination RESTRICTION Product(s) & Process(es) may still be restricted. Product elected, rejoining the process is possible... WHEN Withdrawn process claims depend from the product claim. Process claim otherwise includes all of the limitations of an allowed product.

Rejoinder Considerations Process claims which are not commensurate in scope with allowed product. Process(es), if rejoined will be subject to examination for patentability in accordance with 37 C.F.R 1.104. - May have 112 1st or 2nd paragraph considerations. - Matter(s) of form

Biotechnological Processes only Effective Date of Inventions Ownership Term of Inventions Biotechnological Process Definition Timely election under provisions as of §103(b). 35 U.S.C. S103(b)