2103 Patent Examination Process
|
Section Frequency Chart
| Key |
|
|||||
| 2103 |
I. DETERMINE WHAT APPLICANT HAS INVENTED AND IS SEEKING TO PATENT
A. Identify and Understand Any Utility for the Invention
The claimed invention as a whole must be useful.
- The purpose of this requirement is to limit patent protection to inventions that possess a certain level of “real world” value, as opposed to subject matter that represents nothing more than an idea or concept, or is simply a starting point for future investigation or research.
- The applicant is in the best position to explain why an invention is believed useful.
A complete disclosure should contain some indication of the practical application for the claimed invention, i.e., why the applicant believes the claimed invention is useful.
- Such a statement will usually explain the purpose of the invention or how the invention may be used (e.g., a compound is believed to be useful in the treatment of a particular disorder).
Applicant may assert more than one utility and practical application, but only one is necessary.
B. Review the Detailed Disclosure and Specific Embodiments of the Invention To Understand What the Applicant Has Invented
The written description will provide the clearest explanation of the applicant’s invention, by exemplifying the invention, explaining how it relates to the prior art and explaining the relative significance of various features of the invention.
USPTO personnel should continue their evaluation by:
- determining the function of the invention, that is, what the invention does when used as disclosed (e.g., the functionality of a programmed computer); and
- determining the features necessary to accomplish at least one asserted practical application.
C. Review the Claims
The claims define the property rights provided by a patent, and thus require careful scrutiny.
The goal of claim analysis is to identify the boundaries of the protection sought by the applicant and to understand how the claims relate to and define what the applicant has indicated is the invention.
USPTO personnel should begin claim analysis by identifying and evaluating each claim limitation.
- 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.
The subject matter of a properly construed claim is defined by the terms that limit its scope.
- It is this subject matter that must be examined.
- As a general matter, the grammar and intended meaning of terms used in a claim will dictate whether the language limits the claim scope.
- 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:
- statements of intended use or field of use,
- “adapted to” or “adapted for” clauses,
- "wherein" clauses, or
- “whereby” clauses.
This list of examples is not intended to be exhaustive.
- The determination of whether particular language is a limitation in a claim depends on the specific facts of the case.
II. CONDUCT A THOROUGH SEARCH OF THE PRIOR ART
Prior to evaluating the claimed invention under 35 U.S.C. 101, USPTO personnel are expected to conduct a thorough search of the prior art.
Generally, a thorough search involves reviewing both U.S. and foreign patents and nonpatent literature.
III. DETERMINE WHETHER THE CLAIMED INVENTION COMPLIES WITH 35 U.S.C. 101
A. Consider the Breadth of 35 U.S.C. 101 Under Controlling Law
35 U.S.C. 101 states:
Whoever invents or discovers any new and useful process, machine, manufacture, or composition of matter, or any new and useful improvement thereof, may obtain a patent therefor, subject to the conditions and requirements of this title.
35 U.S.C. 101 defines four categories of inventions that Congress deemed to be the appropriate subject matter of a patent: processes, machines, manufactures and compositions of matter.
- The latter three categories define “things” or “products” while the first category defines “actions” (i.e., inventions that consist of a series of steps or acts to be performed).
- The subject matter which courts have found to be outside of, or exceptions to, the four statutory categories of invention is limited to abstract ideas, laws of nature and physical phenomena.
While this is easily stated, determining whether an applicant is seeking to patent an abstract idea, a law of nature or a physical phenomenon has proven to be challenging.
Software and business methods are not excluded categories of subject matter.
IV. EVALUATE APPLICATION FOR COMPLIANCE WITH 35 U.S.C. 112
A. Determine Whether the Claimed Invention Complies with 35 U.S.C. 112(b) or Pre-AIA 35 U.S.C. 112, Second Paragraph Requirements
35 U.S.C. 112(b) or Pre-AIA 35 U.S.C. 112, second paragraph contains two separate and distinct requirements:
- that the claim(s) set forth the subject matter applicants regard as the invention, and
- that the claim(s) particularly point out and distinctly claim the invention.
An application will be deficient under the first requirement of 35 U.S.C. 112, second paragraph when evidence including admissions, other than in the application as filed, shows that an applicant has stated what he or she regards the invention to be different from what is claimed.
An application fails to comply with the second requirement of 35 U.S.C. 112, second paragraph when the claims do not set out and define the invention with a reasonable degree of precision and particularity.
The scope of a "means" limitation is defined by the inventor in the written description and equivalents thereof that perform the claimed function.
B. Determine Whether the Claimed Invention Complies with 35 U.S.C. 112(a) or 35 U.S.C. 112, First Paragraph Requirements
The first paragraph of 35 U.S.C. 112 contains three separate and distinct requirements:
- adequate written description,
- enablement, and
- best mode.
1. Adequate Written Description
For the written description requirement, an applicant’s specification must reasonably convey to those skilled in the art that the applicant was in possession of the claimed invention as of the date of invention.
2. Enabling Disclosure
An applicant’s specification must enable a person skilled in the art to make and use the claimed invention without undue experimentation. The fact that experimentation is complex, however, will not make it undue if a person of skill in the art typically engages in such complex experimentation.
3. Best Mode
Determining compliance with the best mode requirement requires a two-prong inquiry:
(1) at the time the application was filed, did the inventor possess a best mode for practicing the invention; and
(2) if the inventor did possess a best mode, does the written description disclose the best mode such that a person skilled in the art could practice it.
V. DETERMINE WHETHER THE CLAIMED INVENTION COMPLIES WITH 35 U.S.C. 102 AND 103
Reviewing a claimed invention for compliance with 35 U.S.C. 102 and 103 begins with a comparison of the claimed subject matter to what is known in the prior art.
- If no differences are found between the claimed invention and the prior art, then the claimed invention lacks novelty and is to be rejected by USPTO personnel under 35 U.S.C. 102.
- Once differences are identified between the claimed invention and the prior art, those differences must be assessed and resolved in light of the knowledge possessed by a person of ordinary skill in the art.
- Against this backdrop, one must determine whether the invention would have been obvious at the time the invention was made.
- If not, the claimed invention satisfies 35 U.S.C. 103.
VI. CLEARLY COMMUNICATE FINDINGS, CONCLUSIONS AND THEIR BASES
Once USPTO personnel have concluded the above analyses of the claimed invention under all the statutory provisions, including 35 U.S.C. 101, 112, 102, and 103, they should review all the proposed rejections and their bases to confirm that they are able to set forth a prima facie case of unpatentability conveying their rejections to the applicant.
