The CAFC's ruling in Abbott clarified that infringement of a product-by-process claim will occur only when a product meets all of the process limitations recited in the claim. One would presume that the corollary - patentability - would require similar consideration.
Interestingly, Judge Newman, who dissented from the Abbott majority, wrote the opinion in In re Thorpe, 777 F.2d 695 (Fed. Cir. 1985), where it was stated that
Product-by-process claims are not specifically discussed in the patent statute. The practice and governing law have developed in response to the need to enable an applicant to claim an otherwise patentable product that resists definition by other than the process by which it is made. For this reason, even though product-by-process claims are limited by and defined by the process, determination of patentability is based on the product itself. In re Brown, 459 F.2d 531, 535, 173 USPQ 685, 688 (CCPA 1972); In re Pilkington, 411 F.2d 1345, 1348, 162 USPQ 145, 147 (CCPA 1969); Buono v. Yankee Maid Dress Corp., 77 F.2d 274, 279, 26 USPQ 57, 61 (2d Cir.1935).
The patentability of a product does not depend on its method of production. In re Pilkington, 411 F.2d 1345, 1348, 162 USPQ 145, 147 (CCPA 1969). If the product in a 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. In re Marosi, 710 F.2s 799, 803, 218 USPQ 289, 292-93 (Fed.Cir.1983); Johnson & Johnson v. W.L. Gore, 436 F.Supp. 704, 726, 195 USPQ 487, 506 (D.Del.1977); see also In re Fessman, 489 F.2d 742, 180 USPQ 324 (CCPA 1974).
While not stated in Thorpe, it is generally known that, when the process steps "confer a structure or characteristic of the product which distinguishes it from products made by other processes, the process steps should be considered." In re Garnero, 412 F.2d 276, 279 (CCPA 1979).
While the CAFC majority commented that the Abbott ruling "follows this court’s clear statement in In re Thorpe that 'product by process claims are limited by and defined by the process'" (slip op. p. 18), it appears this quote is taken out of context, as the full quote (highlighted above) states that "even though product-by-process claims are limited by and defined by the process, determination of patentability is based on the product itself" - which appears to mean something different from from the majority interpretation.
In fact, Judge Newman, author of In re Thorpe, called the majority out on this in the Abbott dissent:
My colleagues are mistaken in stating that Thorpe held that all such claims are to be construed as process claims, even when the product is new and the rule of necessity justifies this mode of describing the invention. In Thorpe the product was not new; it was a known color developer for carbonless paper copy systems, and this court held that the PTO correctly rejected the claim to “the product of the process of claim 1,” explaining that since the product was old it could not be claimed as a product, whether or not process steps are recited in the claim. (slip op. p. 18)
Indeed, the USPTO has been tacking its rejection of product-by-process claims using Judge Newman's interpretation of Thorpe - since the beginning of this year, the BPAI has issued roughly 35 rejections of product-by-process claims using Thorpe, and they don't appear to be construing the claims pursuant to the Abbott majority.
Yikes . . .
See recent BPAI In Re Thorpe decisions here (link)