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)
Can an otherwise conventional process
or method be patented if limited to
making or using a non-obvious product?
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.
1. Use of per se rules is improper in
applying the test for obviousness.
2. There was no suggestion or motivation
in the prior art to make or use non-
3. Rejections based upon S103(a) were
• Product(s) & Process(es) may still be
restricted. Product elected, rejoining the
process is possible...
• Withdrawn process claims depend from the
• Process claim otherwise includes all of the
1. Process claims which are not commensurate in
scope with allowed product.
2. 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
- Matter(s) of form
Biotechnological Processes only
• Effective Date of Inventions
• Term of Inventions
• Biotechnological Process Definition
• Timely election under provisions as of §103(b).