Summary of the additional supplemental material:
There are four pieces of additional material whose subject matter is included in the patent bar exam. These four include the topics of: Bilski Process Claims, Subject Matter Eligibility, 35 U.S.C. § 112 Paragraph 2 compliance and KSR Obviousness Inquiry. Each of these topics deal with recent court rulings which apply to patent law.
Bilski Process Claims
The Interim Bilski Guidance provides factors to consider in determining whether a claim is directed to an abstract idea and is therefore not patent-eligible under 35 U.S.C. § 101. Under the Interim Bilski Guidance, factors that weigh in favor of patent-eligibility satisfy the criteria of the machine-or-transformation test or provide evidence that the abstract idea has been practically applied, and factors that weigh against patent-eligibility neither satisfy the criteria of the machine-or-transformation test nor provide evidence that the abstract idea has been practically applied.
The subject matter eligibility instructions contained in the supplemental material define a two step process for determining eligibility.
Step 1 encompasses reviewing the claims to determine if they fall into one of the four categories defined by 35 U.S.C. § 101.
Step 2 encompasses cross-referencing these claims and their respective subject matter against judicial exemptions to the 35 U.S.C. § 101 subject matter. Step 2 is only undertaken if the claims pass step 1.
Additional instructions are included for analyzing product and process claims.
35 U.S.C. §112 Paragraph 2 compliance
This supplemental material includes a 3 step test for determining compliance with 35 U.S.C. § 112(2). To properly complete this analysis one must give the claims their broadest reasonable interpretation, determine whether the claim language is definite and finaly complete compact prosecution procedures for resolving any 35 U.S.C. § 112 issues.
KSR Obviousness Inquiry
The KSR Obviousness Inquiry involves an analysis on obviousness which can also be found in the Graham vs. Deere court ruling. This analysis consists of determining the scope and content of the prior art, the difference between the prior art and the claimed invention, the level of ordinary skill in the art and any secondary considerations.
Every obviousness rejection must also contain an appropriate finding of fact, reasoned explanation and a legal conclusion of obviousness.
Additionally, there are many cases also contained in the supplemental material which were chosen to provide
examiners with examples of both obvious and non-obvious claims. These
cases are shown in the KSR Obviousness post.