This section provides an overview of the patent examination process. Essentially, the examiner must determine what the applicant has invented and is seeking to patent, then conduct a thorough search of the prior art, determine whether the claimed invention complies with 35 U.S.C. 101, 35 U.S.C. 112, 35 U.S.C. 102, and 35 U.S.C. 103, then clearly communicate their findings, conclusions, and their bases.

• Review Ed9 10.2019: 2103

This section covers living subject matter, providing examples of what can be and cannot be patentable. For example, new minerals discovered in the earth are not patentable, but microorganisms produced by genetic engineering can be patented. In addition, it gives specifics on how no patent may issue on a claim directed to or encompassing a human organism, which was added in the America Invents Act (AIA).

• Review Ed9 10.2019: 2105

This section deals with the eligibility of subject matter for patentability, providing a flow chart of guidelines for Patent Office examiners to make such eligibility determinations.

Computer programs may be patented, however, mere instructions cannot. The computer program must either be a method that is novel, or a system that instructs a computer to perform a particular action. Functional descriptive material may be patented, while nonfunctional descriptive material are not.

The criteria for determining subject matter eligibility are:

• The claimed invention must be directed to one of the four statutory categories, and
• It must not be wholly directed to subject matter encompassing a judicially recognized exception.

A two-step analysis is used to evaluate these criteria. This two-step analysis is covered in detail in this section.

• Review Ed9 10.2019: 2106

This section describes the principles behind rejections based on utility (whether or not an invention has any use) and obviousness based on one or more prior art references. In addition, there is a discussion on how to interpret claims within the scope of these utility or obviousness rejections.

• Review Ed9 10.2019: 2107

Claims must be given their broadest reasonable interpretation in light of the specification. Due to the fact that the applicant has the opportunity to amend the claims during prosecution, giving a claim its broadest reasonable interpretation will reduce the possibility that the claim, once issued, will be interpreted more broadly than is justified.

The plain meaning of a term means the ordinary and customary meaning given to the term by those of ordinary skill in the art at the time of the invention.

• Review Ed9 10.2019: 2111

There are many situations where claims are permissively drafted to include a reference to more than one statutory class of invention.

• Review Ed9 10.2019: 2173.05(p)