MPEP 2103

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2103 Patent Examination Process[edit | edit source]

USPTO personnel follow the below mentioned steps when examining a patent application:

1- DETERMINE WHAT APPLICANT HAS INVENTED AND IS SEEKING TO PATENT

2- CONDUCT A THOROUGH SEARCH OF THE PRIOR ART

3- DETERMINE WHETHER THE CLAIMED INVENTION COMPLIES WITH 35 U.S.C. 101

4- EVALUATE APPLICATION FOR COMPLIANCE WITH 35 U.S.C. 112

5- DETERMINE WHETHER THE CLAIMED INVENTION COMPLIES WITH 35 U.S.C. 102 AND 103

6- CLEARLY COMMUNICATE FINDINGS,CONCLUSIONS AND THEIR BASES


1- DETERMINE WHAT APPLICANT HAS INVENTED AND IS SEEKING TO PATENT

A USPTO personnel follows the principles of compact prosecution wherein 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 some statutory requirement.

Thus, USPTO personnel should state all reasons and bases for rejecting claims in the first Office action. Whenever practicable, USPTO personnel should indicate how rejections may be overcome and how problems may be resolved. A failure to follow this approach can lead to unnecessary delays in the prosecution of the application.

USPTO personnel must begin examination by determining what, precisely, the applicant has invented and is seeking to patent, and how the claims relate to and define that invention. USPTO personnel will review the complete specification, including the detailed description of the invention, any specific embodiments that have been disclosed, the claims and any specific, substantial, and credible utilities that have been asserted for the invention.

In order to clearly understand what the applicant has invented and is seeking to patent, USPTO personnel must follow the following approach:

A. Identify and Understand Any Utility and/or Practical Application Asserted for the Invention B.Review the Detailed Disclosure and Specific Embodiments of the Invention To Understand What the Applicant Has Invented C.Review the Claims

A. Identify and Understand Any Utility and/or Practical Application Asserted 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.

USPTO personnel should review the application to identify any asserted utility. The applicant is in the best position to explain why an invention is believed useful.Accordingly, the applicant should incorporate a statement of utility in the complete disclosure to indicate the practical application for the claimed invention. 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).

The form of statement of utility is not important as long as it enables one ordinarily skilled in the art to understand why the applicant believes the claimed invention is useful. An applicant may assert more than one utility and practical application, but only one is necessary.

Alternatively, an applicant may rely on the contemporaneous art to provide that the claimed invention has a well-established utility.

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. Accordingly, USPTO personnel should continue their evaluation by

(A) 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

(B) determining the features necessary to accomplish at least one asserted practical application.

C.Review the Claims

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.

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.

USPTO personnel are to give claims their broadest reasonable interpretation in light of the supporting disclosure. Limitations appearing in the specification but not recited in the claim should not be read into the claim.

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:

(A) statements of intended use or field of use, (B) “adapted to” or “adapted for” clauses, (C) "wherein" clauses, or (D) “whereby” clauses.

Where an explicit definition is provided by the applicant for a term, that definition will control interpretation of the term as it is used in the claim. Any special meaning assigned to a term must be sufficiently clear in the specification that any departure from common usage would be so understood by a person of experience in the field of the invention.

If the applicant asserts that a term has a meaning that conflicts with the term’s art-accepted meaning, USPTO personnel should encourage the applicant to amend the claim to better reflect what applicant intends to claim as the invention.

Where means plus function language is used to define the characteristics of a machine or manufacture invention, such language must be interpreted to read on only the structures or materials disclosed in the specification and "equivalents thereof" that correspond to the recited function. The USPTO is to interpret means plus function language according to 35 U.S.C. § 112, sixth paragraph.

While it is appropriate to use the specification to determine what applicant intends a term to mean, a positive limitation from the specification cannot be read into a claim that does not itself impose that limitation. A broad interpretation of a claim by USPTO personnel will reduce the possibility that the claim, when issued, will be interpreted more broadly than is justified or intended. An applicant can always amend a claim during prosecution to better reflect the intended scope of the claim.

Finally, when evaluating the scope of a claim, every limitation in the claim must be considered. USPTO personnel may not dissect a claimed invention into discrete elements and then evaluate the elements in isolation. Instead, the claim as a whole must be considered.

2- 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 non patent literature.

3- 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

Section 101 of title 35, United States Code, provides:

35 U.S.C. 101

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:

1- processes,

2- machines,

3- manufactures and

4- 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). See 35 U.S.C. 100(b)

The term 'process' is defined as art, or method, and includes a new use of a known process, machine, manufacture, composition of matter, or material.

Subject Matter Outside The Four Statutory Categories:

  • abstract ideas
  • laws of nature
  • natural phenomena


Patentability of Practical application of abstract ideas, laws of nature and natural phenomenon'


A subject matter that is not a practical application of an idea, a law of nature or a physical phenomenon is not patentable. A scientific truth, or the mathematical expression of it, is not patentable invention, a novel and useful structure created with the aid of knowledge of scientific truth may be.

The courts have also held that a claim may not preempt abstract ideas, laws of nature or physical phenomena; i.e.,one may not patent every “substantial practical application” of an abstract idea, law of nature or physical phenomenon. This is because such a patent would “in practical effect be a patent on the abstract idea, law of nature or physical phenomenon itself.”

Patentability of business method claims

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, "in choosing such expansive terms . . . modified by the comprehensive ‘any,’ Congress plainly contemplated that the patent laws would be given wide scope."

Therefore, business methods are not "categorically outside of § 101’s scope. The Court stated that "a business method is simply one kind of method’ that is, at least in some circumstances and is eligible for patenting under § 101.However, the Examiners were reminded that 35 U.S.C. 101 is not the sole tool for determining patentability in case of claims that 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.

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 requirement of § 102, § 103, and fully and particularly described, § 112. Those requirements include that the invention be novel, § 102, non obvious, § 103, and fully and particularly described, § 112.

Therefore, examiners should avoid focusing on issues of patent-eligibility under 35 U.S.C. 101 to the detriment of considering an application for compliance with the requirements of 35 U.S.C. 112, 102, and 103, and should avoid treating an application solely on the basis of patent-eligibility under 35 U.S.C. 101 except in the most extreme cases.

4- EVALUATE APPLICATION FOR COMPLIANCE WITH 35 U.S.C. 112

In order to evaluate application for compliance with 35 U.S.C 112 the following two steps are to be performed:

A. Determine Whether the Claimed InventionComplies with 35 U.S.C. 112, Second Paragraph Requirements

The second paragraph of 35 U.S.C. 112 contains two separate and distinct requirements:

(1) that the claim(s)set forth the subject matter applicants regard as the invention, and

(2) 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. In this regard, the definiteness of the language must be analyzed,not in a vacuum, but always in light of the teachings of the disclosure as it would be interpreted by one of ordinary skill in the art. Applicant’s claims, interpreted in light of the disclosure, must reasonably apprise a person of ordinary skill in the art of the invention.

B. Determine Whether the Claimed Invention Complies with 35 U.S.C. 112, First Paragraph Requirements

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.

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.


5- 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.


6- 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 un-patentability. Only then should any rejection be imposed in an Office action. The Office action should clearly communicate the findings, conclusions and reasons which support them.

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