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Flashcards in MPEP 2100 Deck (14):

Utility for the Invention

Invention as a whole must be useful. Only one utility is needed, but more can be disclosed. Or contemporaneous art to provide that the claimed invention has a well-established utility.


Review of Claims

For processes, the claim limitations will define steps or acts to be performed. For products, the claim limitations will define discrete physical structures or materials. Product claims are claims that are directed to either machines, manufactures or compositions of matter.


Limiting language of claims

Language that suggests or makes optional but does not require steps to be performed or does not limit a claim to a particular structure does not limit the scope of a claim or claim limitation. The following are examples of language that may raise a question as to the limiting effect of the language in a claim:

(A) statements of intended use or field of use,

(B) “adapted to” or “adapted for” clauses,

(C) "wherein" clauses, or

(D) “whereby” clauses.


Bilski v. Kappos

The Supreme Court in Bilski v. Kappos, 561 U.S. ___, 130 S. Ct. 3218, 95 USPQ2d 1001 (2010), underscored that the text of 35 U.S.C. 101 is expansive, specifying four independent categories of inventions eligible for protection, including processes, machines, manufactures, and compositions of matter. As stated by the Court, "[i]n choosing such expansive terms . . . modified by the comprehensive ‘any,’ Congress plainly contemplated that the patent laws would be given wide scope.") (quoting Diamond v. Chakrabarty, 447 U.S. 303, 308, 206 USPQ 193, ___ (1980)). The Court also made clear that business methods are not "categorically outside of § 101’s scope," stating that "a business method is simply one kind of ‘method’ that is, at least in some circumstances, eligible for patenting under § 101." Examiners are reminded that 35 U.S.C. 101 is not the sole tool for determining patentability; where a claim encompasses an abstract idea, 35 U.S.C. 112 , 102 , and 103 will provide additional tools for ensuring that the claim meets the conditions for patentability. As the Court made clear in Bilski:

The § 101 patent-eligibility inquiry is only a threshold test. Even if an invention qualifies as a process, machine, manufacture, or composition of matter, in order to receive the Patent Act’s protection the claimed invention must also satisfy ‘‘the conditions and requirements of this title.’’ § 101. Those requirements include that the invention be novel, see § 102, nonobvious, see § 103, and fully and particularly described, see § 112.


First paragraph 112

The first paragraph of 35 U.S.C. 112 contains three separate and distinct requirements:

(A) adequate written description,

(B) enablement, and

(C) best mode.


101 Patentability reqs:

First, whoever invents or discovers an eligible invention may obtain only ONE patent therefor. This requirement forms the basis for statutory double patenting rejections when two applications claim the same invention, i.e. claim identical subject matter. See MPEP § 804 for a full discussion of the prohibition against double patenting.

Second, a claimed invention must fall within one of the four eligible categories of invention, i.e., process, machine, manufacture, or composition of matter, as these categories have been interpreted by the courts. See MPEP § 2106 for a detailed discussion of the subject matter eligibility requirements and MPEP § 2105 for special considerations for living subject matter.

Third, a claimed invention must be useful or have a utility that is specific, substantial and credible. See MPEP § 2107 for a detailed discussion of the utility requirement.


Non-patentenable subject matter

Non-limiting examples of claims that are not directed to one of the statutory categories:

i. transitory forms of signal transmission (for example, a propagating electrical or electromagnetic signal per se), In re Nuijten, 500 F.3d 1346, 1357, 84 USPQ2d 1495, ___ (Fed. Cir. 2007);
ii. a naturally occurring organism, Chakrabarty, 447 U.S. at 308;
iii. a human per se, The Leahy-Smith America Invents Act (AIA), Public Law 112-29, sec. 33, 125 Stat. 284 (September 16, 2011);
iv. a legal contractual agreement between two parties, see In re Ferguson, 558 F.3d 1359, 1364, 90 USPQ2d 1035, ___ (Fed. Cir. 2009) (cert. denied);
v. a game defined as a set of rules;
vi. a computer program per se, Gottschalk v. Benson, 409 U.S. at 72;
vii. a company, Ferguson, 558 F.3d at 1366; and
viii. a mere arrangement of printed matter, In re Miller, 418 F.2d 1392, 1396, 164 USPQ 46, ___ (CCPA 1969).


Prima Facie Case for Patentability of Biz Methods

“The examiner bears the initial burden … of presenting a prima facie case of unpatentability.” In re Oetiker, 977 F.2d 1443, 1445, 24 USPQ2d 1443, 1444 (Fed. Cir. 1992). If the record as a whole suggests that it is more likely than not that the claimed invention would be considered a practical application of an abstract idea, physical phenomenon, or law of nature, then USPTO personnel should not reject the claim.


Examining EACH claim

Under the principles of compact prosecution, each claim should be reviewed for compliance with every statutory requirement for patentability in the initial review of the application, even if one or more claims are found to be deficient with respect to the patent-eligibility requirement of 35 U.S.C. 101 . Thus, Office personnel should state all non-cumulative reasons and bases for rejecting claims in the first Office action.

If the claim as a whole satisfies this inquiry, the claim is directed to patent-eligible subject matter. If the claim as a whole does not satisfy this inquiry, it should be rejected under 35 U.S.C. 101 as being directed to non-statutory subject matter.


3 Qs to determine PROCESS CLAIMS eligibility
MPEP 2106

1. Is the claimed invention directed to a process, defined as an act, or a series of acts or steps?
If no, this analysis is not applicable. For product claims see MPEP § 2106. If yes, proceed to Inquiry 2.
2. Does the claim focus on use of a law of nature, a natural phenomenon, or naturally occurring relation or correlation (collectively referred to as a natural principle herein)? (Is the natural principle a limiting feature of the claim?)
If no, this analysis is complete, and the claim should be analyzed to determine if an abstract idea is claimed (see MPEP § 2106). If yes, proceed to Inquiry 3.
3. Does the claim include additional elements/steps or a combination of elements/steps that integrate the natural principle into the claimed invention such that the natural principle is practically applied, and are sufficient to ensure that the claim amounts to significantly more than the natural principle itself? (Is it more than a law of nature plus the general instruction to simply “apply it”?)
If no, the claim is not patent-eligible and should be rejected. If yes, the claim is patent-eligible, and the analysis is complete.


Natural principles and patentable subject matter

Claims that do not include a natural principle as a limitation do not raise issues of subject matter eligibility under the law of nature exception. For example, a claim directed to simply administering a man-made drug that does not recite other steps or elements directed to use of a natural principle, such as a naturally occurring correlation, would be directed to eligible subject matter. Further, a claim that recites a novel drug or a new use of an existing drug, in combination with a natural principle, would be sufficiently specific to be eligible because the claim would amount to significantly more than the natural principle itself. However, a claim does not have to be novel or non-obvious to qualify as a subject matter eligible claim. Moreover, a claim that is deemed eligible is not necessarily patentable unless it also complies with the other statutory and non-statutory considerations for patentability under 35 U.S.C. 101 (utility and double patenting), 102, 103, 112, and non-statutory double patenting.


Examples of situations that DO NOT define "Substantial Utility"

a. Basic research such as studying the properties of the claimed product itself or the mechanisms in which the material is involved;

b. A method of treating an unspecified disease or condition;

c. A method of assaying for or identifying a material that itself has no specific and/or substantial utility;

d. A method of making a material that itself has no specific, substantial, and credible utility; and

e. A claim to an intermediate product for use in making a final product that has no specific, substantial and credible utility.

Immediate benefit or currently available is not necessary, long as any reasonable use identified will suffice to meet substantial utility.


Research Tools

Labels such as "research tools," "intermediate" or "for research purposes" are not helpful in determining if an applicant has identified a specific and substantial utility for the invention.


101 and 112

Deficiency under utility prong also create a deficiency under 112, first paragraph.