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1.4 – Summary of Additional Material

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.

SME Instructions

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.

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7.2 – Subject Matter Eligibility Instructions

SME Instructions Featured

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.

For subject matter eligibility instructions regarding product claims, there is a two step analysis newly developed to help determine if the subject matter contained in the application is patentable per 35 U.S.C. § 101.  This two step analysis is described below:

The Two-Step 35 U.S.C. § 101 Analysis

Step 1:  Is the claim directed to one of the four patent-eligible subject matter categories?  This includes process, machine, manufacture or composition of matter.  If the subject matter is not in one of the four categories, the claim is not eligible.  An example of non eligible claims can be transitory signals, humans, a company, a set of instruction, etc…

Step 2:  A claim satisfying Step 1 is subject-matter eligible under 101 unless it wholly embraces a judicially recognized exception.  These judicially recognized exceptions include: abstract idea, law of nature and natural phenomena.  Some examples include mental processes, mathematical algorithms or scientific principles.  If the claim is directed to one of these judicially recognized exceptions the claim is not patent eligible.  However, a particular practical application of a judicial exception is eligible.

Product Claim Analysis:

To perform a proper product claim analysis, one must 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.  Then review the claims in view of the two steps listed above.

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.

For subject matter eligibility instructions regarding product claims, there is a two step analysis newly developed to help determine if the subject matter contained in the application is patentable per 35 U.S.C. § 101.  This two step analysis is described below:

Process Claim Analysis:

To perform a proper process claim analysis, one must 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.

Then look at the claim in view of the machine or transformation (M-or-T) test.  For this test, the claimed process must be tied to a particular machine or apparatus or particularly transform a particular article to a different state or thing.  There are two corollaries in that the particular machine or transformation must involve meaningful limits and a more than insignificant “extra-solution” activity.

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7.3 – 35 U.S.C. §112 Paragraph 2 Compliance

 112 Paragraph 2 Compliance Featured

There are three steps in conducting a 35 U.S.C. § 112 Paragraph 2 compliance test.  These steps are shown below:

Step 1:

Give the claim the broadest reasonable interpretation (BRI) consistent with the specification as it would be interpreted by one of ordinary skill in the art.

Step 2:

Determine whether the claim language is definite.  This can be done through reviewing the terms of degree, subjective terms, confirming clear support in specification, look for improper dependent claims, functional claiming, means-plus-function claim limitations (or other non structural claim term), Markush claims and supplemental information for examining computer-implemented functional claim limitations.

Step 3:

Compact Prosecution Procedures for Resolving §112 Issues