[
# 2116 [Reserved]




# 2116.01 Novel, Nonobvious Starting Material or End Product [R-10.2019]


All the limitations of a claim must be considered when weighing
 the differences between the claimed invention and the prior art in determining the
 obviousness of a process or method claim. See **[MPEP § 2143.03](s2143.html#d0e210501)**.
 


*In re Ochiai,* 71 F.3d 1565, 37 USPQ2d 1127 (Fed. Cir. 1995) and
 *In re Brouwer,* 77 F.3d 422, 37 USPQ2d 1663 (Fed. Cir. 1996)
 addressed the issue of whether an otherwise conventional process could be patented if it
 were limited to making or using a nonobvious product. In both cases, the Federal Circuit
 held that the use of *per se* rules is improper in applying the test
 for obviousness under **[35 U.S.C. 103](mpep-9015-appx-l.html#d0e302450)**. Rather, **[35 U.S.C. 103](mpep-9015-appx-l.html#d0e302450)** requires a highly
 fact-dependent analysis involving taking the claimed subject matter as a whole and
 comparing it to the prior art. "A process yielding a novel and nonobvious product may
 nonetheless be obvious; conversely, a process yielding a well-known product may yet be
 nonobvious." *TorPharm, Inc. v. Ranbaxy Pharmaceuticals, Inc.,* 336
 F.3d 1322, 1327, 67 USPQ2d 1511, 1514 (Fed. Cir. 2003). 
 


Interpreting the claimed invention as a whole requires consideration of
 all claim limitations. Thus, proper claim construction requires treating language in a
 process claim which recites the making or using of a nonobvious product as a material
 limitation. The decision in *Ochiai* specifically dispelled any
 distinction between processes of making a product and methods of using a product with
 regard to the effect of any product limitations in either type of claim.
 


As noted in *Brouwer,* 77 F.3d at 425, 37 USPQ2d at
 1666, the inquiry as to whether a claimed invention would have been obvious is "highly
 fact-specific by design." Accordingly, obviousness must be assessed on a case-by-case
 basis. The following decisions are illustrative of the lack of *per se*
 rules in applying the test for obviousness under **[35 U.S.C. 103](mpep-9015-appx-l.html#d0e302450)** and of the
 fact-intensive comparison of claimed processes with the prior art: *In re
 Durden,* 763 F.2d 1406, 226 USPQ 359 (Fed. Cir. 1985) (The examiner rejected
 a claim directed to a process in which patentable starting materials were reacted to
 form patentable end products. The prior art showed the same chemical reaction mechanism
 applied to other chemicals. The court held that the process claim was obvious over the
 prior art.); *In re Albertson,* 332 F.2d 379, 141 USPQ 730 (CCPA 1964)
 (Process of chemically reducing one novel, nonobvious material to obtain another novel,
 nonobvious material was claimed. The process was held obvious because the reduction
 reaction was old.); *In re Kanter,* 399 F.2d 249, 158 USPQ 331 (CCPA
 1968) (Process of siliconizing a patentable base material to obtain a patentable product
 was claimed. Rejection based on prior art teaching the siliconizing process as applied
 to a different base material was upheld.); Cf. *In re Pleuddemann,* 910
 F.2d 823, 15 USPQ2d 1738 (Fed. Cir. 1990) (Methods of bonding polymer and filler using a
 novel silane coupling agent held patentable even though methods of bonding using other
 silane coupling agents were well known because the process could not be conducted
 without the new agent); *In re Kuehl,* 475 F.2d 658, 177 USPQ 250 (CCPA
 1973) (Process of cracking hydrocarbons using novel zeolite catalyst found to be
 patentable even though catalytic cracking process was old. "The test under 103 is
 whether in view of the prior art the invention as a whole would have been obvious at the
 time it was made, and the prior art here does not include the zeolite, ZK-22. The
 obviousness of the process of cracking hydrocarbons with ZK-22 as a catalyst must be
 determined without reference to knowledge of ZK-22 and its properties." 475 F.2d at
 664-665, 177 USPQ at 255.); and *In re Mancy,* 499 F.2d 1289, 182 USPQ
 303 (CCPA 1974) (Claim to a process for the production of a known antibiotic by
 cultivating a novel, nonobvious microorganism was found to be patentable.). 
 



[[top]](#top)


, 
# 2116.01 Novel, Nonobvious Starting Material or End Product [R-10.2019]


All the limitations of a claim must be considered when weighing
 the differences between the claimed invention and the prior art in determining the
 obviousness of a process or method claim. See **[MPEP § 2143.03](s2143.html#d0e210501)**.
 


*In re Ochiai,* 71 F.3d 1565, 37 USPQ2d 1127 (Fed. Cir. 1995) and
 *In re Brouwer,* 77 F.3d 422, 37 USPQ2d 1663 (Fed. Cir. 1996)
 addressed the issue of whether an otherwise conventional process could be patented if it
 were limited to making or using a nonobvious product. In both cases, the Federal Circuit
 held that the use of *per se* rules is improper in applying the test
 for obviousness under **[35 U.S.C. 103](mpep-9015-appx-l.html#d0e302450)**. Rather, **[35 U.S.C. 103](mpep-9015-appx-l.html#d0e302450)** requires a highly
 fact-dependent analysis involving taking the claimed subject matter as a whole and
 comparing it to the prior art. "A process yielding a novel and nonobvious product may
 nonetheless be obvious; conversely, a process yielding a well-known product may yet be
 nonobvious." *TorPharm, Inc. v. Ranbaxy Pharmaceuticals, Inc.,* 336
 F.3d 1322, 1327, 67 USPQ2d 1511, 1514 (Fed. Cir. 2003). 
 


Interpreting the claimed invention as a whole requires consideration of
 all claim limitations. Thus, proper claim construction requires treating language in a
 process claim which recites the making or using of a nonobvious product as a material
 limitation. The decision in *Ochiai* specifically dispelled any
 distinction between processes of making a product and methods of using a product with
 regard to the effect of any product limitations in either type of claim.
 


As noted in *Brouwer,* 77 F.3d at 425, 37 USPQ2d at
 1666, the inquiry as to whether a claimed invention would have been obvious is "highly
 fact-specific by design." Accordingly, obviousness must be assessed on a case-by-case
 basis. The following decisions are illustrative of the lack of *per se*
 rules in applying the test for obviousness under **[35 U.S.C. 103](mpep-9015-appx-l.html#d0e302450)** and of the
 fact-intensive comparison of claimed processes with the prior art: *In re
 Durden,* 763 F.2d 1406, 226 USPQ 359 (Fed. Cir. 1985) (The examiner rejected
 a claim directed to a process in which patentable starting materials were reacted to
 form patentable end products. The prior art showed the same chemical reaction mechanism
 applied to other chemicals. The court held that the process claim was obvious over the
 prior art.); *In re Albertson,* 332 F.2d 379, 141 USPQ 730 (CCPA 1964)
 (Process of chemically reducing one novel, nonobvious material to obtain another novel,
 nonobvious material was claimed. The process was held obvious because the reduction
 reaction was old.); *In re Kanter,* 399 F.2d 249, 158 USPQ 331 (CCPA
 1968) (Process of siliconizing a patentable base material to obtain a patentable product
 was claimed. Rejection based on prior art teaching the siliconizing process as applied
 to a different base material was upheld.); Cf. *In re Pleuddemann,* 910
 F.2d 823, 15 USPQ2d 1738 (Fed. Cir. 1990) (Methods of bonding polymer and filler using a
 novel silane coupling agent held patentable even though methods of bonding using other
 silane coupling agents were well known because the process could not be conducted
 without the new agent); *In re Kuehl,* 475 F.2d 658, 177 USPQ 250 (CCPA
 1973) (Process of cracking hydrocarbons using novel zeolite catalyst found to be
 patentable even though catalytic cracking process was old. "The test under 103 is
 whether in view of the prior art the invention as a whole would have been obvious at the
 time it was made, and the prior art here does not include the zeolite, ZK-22. The
 obviousness of the process of cracking hydrocarbons with ZK-22 as a catalyst must be
 determined without reference to knowledge of ZK-22 and its properties." 475 F.2d at
 664-665, 177 USPQ at 255.); and *In re Mancy,* 499 F.2d 1289, 182 USPQ
 303 (CCPA 1974) (Claim to a process for the production of a known antibiotic by
 cultivating a novel, nonobvious microorganism was found to be patentable.). 
 


]