1. By Janet Cord, Partner, Ladas & Parry

2. 35 USC 103(b).

3. 37 USPQ 2d 1663 (Fed. Cir. 1995).

4. 37 USPQ2d 1127 (Fed. Cir. 1995).

5. 226 USPQ 359 (Fed. Cir. 1985).

6. The Process Patent Amendments Act provides that it is an infringement of a process patent if a product made abroad using the patented process is imported into the U.S. unless the product made by the patented process is materially changed by subsequent processes or it becomes a trivial and nonessential component of another product.

7. The situation became even more perverse with the 1990 Federal Circuit decision In re Pleuddemann (15 USPQ 2d 1738 (Fed. Cir. 1990)) where the court held that use of a novel and nonobvious compound in a known process was patentable (use of the patentable aminoorganosilanes as bonding/priming agents). The distinction between Pleuddemann and Durden being a method of using the novel and nonobvious compound and the method of making the novel and nonobvious compound. The court referred to its decision in Durden and distinguished it stating:

the compounds and their use are but different aspects of, or ways of looking at, the same invention and consequently that invention is capable of being claimed both as new compounds or as a new method or process of bonding/priming. On the other hand, a process or method of making the compounds is a quite different thing; they may have been made by a process which was new or old, obvious or nonobvious. In this respect, therefore, there is a real difference between a process of making and a process of using and the cases dealing with one involve different problems from the cases dealing with the other.

During examination of patent applications the U.S. PTO tended to apply Durden rather than Pleuddemann.

8. 35 USC 103(b).

9. Graham v. Deere (383 U.S. 1, 148 USPQ 459 (1966)) requires an Examiner to establish a prima facie case of obviousness by determining the scope and content of the prior art; ascertaining the differences between the prior art and the claims and resolving the level of ordinary skill in the pertinent art.

10. PTO Notice on Treatment of Product and Process Claims (March 5, 1996).

11. The PTO plans to train Examiners on the rejoinder of the process claims into the application.

12. 35 USC 251 provides that patentee may obtain a reissue patent whenever any patent is, through error without any deceptive intention, deemed wholly or partial inoperative or invalid,... by reason of the patentee claiming more or less than he had a right to claim in the patent.