SME Instructions

SME Instructions

THE TWO-STEP 101 ANALYSIS

STEP 1

Is the claim directed to one of the four patent-eligible subject matter categories?

– Process, Machine, Manufacture, Composition of Matter

If not in one of the four categories, the claim is not eligible.

– Examples of claims that are not eligible:

• Transitory signals per se, humans per se, a company per se, or a set of instructions per se (such as a game or software per se)

STEP 2

A claim satisfying Step 1 is subject-matter eligible under 101 unless it wholly embraces a judicially recognized exception.

Does the claim wholly embrace a judicially recognized exception?

– Abstract Idea
– Law of Nature
– Natural Phenomena
– The exceptions also include, for example:

• Mental Processes
• Mathematical Algorithms
• Scientific Principles

If the claim is directed to a judicial exception itself, it is not eligible.
A particular practical application of a judicial exception is eligible.

PRODUCT CLAIM ANALYSIS

• Begin with the broadest reasonable interpretation (BRI) of the claim in view of the specification consistent with the interpretation those skilled in the art would reach. MPEP 2111
• Product Focus:

– Does the claim meet definitions of machine, manufacture or composition of matter?

– Is there a judicial exception recited in the claim?

COMPUTER-READABLE MEDIA

The functional/non-functional distinction is not an inquiry under 101. The 101 inquiry is whether a claim directed to one of the four statutory categories is wholly directed to a judicial exception.

A tangible medium including a computer program should be evaluated to determine if there is a functional relationship between the computer program and the medium for purposes of distinguishing over prior art, not for subject matter eligibility.

PROCESS CLAIM ANALYSIS

• Begin with the broadest reasonable interpretation (BRI) of the claim in view of the specification consistent with the interpretation those skilled in the art would reach. MPEP 2111.

• Process Focus:

– Does the claim meet the machine or transformation (M-or-T) test? The claimed process must:

• (1) be tied to a particular machine or apparatus, or
• (2) particularly transform a particular article to a different state or thing.
• Two corollaries: the particular machine or transformation must involve:

– Meaningful limits
– More than insignificant “extra-solution” activity

SUMMARY

• The Instructions supersede previous guidance on subject matter eligibility that conflicts with the Instructions, including MPEP 2106(IV), 2106.01 and 2106.02, as of 8/24/09.

– To determine subject matter eligibility, follow the “Interim Examination Instructions for Evaluating Subject Matter Eligibility Under 35 U.S.C. § 101”.

• Product claims are evaluated to determine if the claim is wholly directed to a judicial exception.

– Functional/nonfunctional descriptive material (FDM/NFDM) is evaluated for patentable distinction over the prior art. See MPEP 2112.01(III).

• All process (method) claims are evaluated with the M-or-T test.

Leave a Reply

Your email address will not be published. Required fields are marked *