2103 Patent Examination Process
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Section Frequency Chart
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| 2103 |
I. DETERMINE WHAT INVENTION IS SOUGHT TO BE PATENTED
A. Identify and Understand Any Utility 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.
Examiners 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, a complete disclosure should contain some indication of the practical application for the claimed invention, i.e., why the applicant believes the claimed invention is useful.
- 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).
- Note that the concept of a "practical application" in the evaluation of utility is different from the concept of whether a judicial exception is integrated into a "practical application" in the evaluation of subject matter eligibility.
- Regardless of the form of statement of utility, it must enable 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.
USPTO personnel should continue their evaluation by:
- 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
- determining the features necessary to accomplish at least one asserted practical application.
C. Review the Claims
The claims define the property rights provided by a patent, and thus require careful scrutiny.
- Examiners must first determine the scope of a claim by thoroughly analyzing the language of the claim before determining if the claim complies with each statutory requirement for patentability.
Examiners should begin claim analysis by identifying and evaluating each claim limitation.
- 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.
Examiners should then correlate each claim limitation to all portions of the disclosure that describe the claim limitation.
The subject matter of a properly construed claim is defined by the terms that limit the scope of the claim when given their broadest reasonable interpretation.
- As a general matter, grammar and the plain meaning of terms as understood by one having ordinary skill in the art used in a claim will dictate whether, and to what extent, the language limits the claim scope.
The following types of claim language may raise a question as to its limiting effect:
- (A) statements of intended use or field of use, including statements of purpose or intended use in the preamble,
- (B) “adapted to” or “adapted for” clauses,
- (C) "wherein" or "whereby" clauses,
- (D) contingent limitations,
- (E) printed matter, or
- (F) terms with associated functional language.
Examiners are to give claims their broadest reasonable interpretation in light of the supporting disclosure.
- Disclosure may be express, implicit, or inherent.
- Examiners are to give claimed means- (or step-) plus- function limitations their broadest reasonable interpretation consistent with all corresponding structures (or materials or acts) described in the specification and their equivalents.
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.
Finally, when evaluating the scope of a claim, every limitation in the claim must be considered.
- Examiners 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.
II. 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 nonpatent literature.
III. 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
35 U.S.C. 101 states:
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 has been interpreted as imposing four requirements:
- (i) only one patent may be obtained for an invention;
- (ii) the inventor(s) must be identified in an application filed on or after September 16, 2012 or must be the applicant in applications filed before September 16, 2012;
- (iii) the claimed invention must be eligible for patenting; and,
- (iv) the claimed invention must be useful (have utility).
The patent eligibility inquiry under 35 U.S.C. 101 is a threshold inquiry.
- Even if a claimed invention qualifies as eligible subject matter under 35 U.S.C. 101, it must also satisfy the other conditions and requirements of the patent laws.
IV. EVALUATE APPLICATION FOR COMPLIANCE WITH 35 U.S.C. 112
A. Determine Whether the Claimed Invention Complies with 35 U.S.C. 112(b) or Pre-AIA 35 U.S.C. 112, Second Paragraph Requirements
35 U.S.C. 112(b) or Pre-AIA 35 U.S.C. 112, second paragraph contains two separate and distinct requirements:
- that the claim(s) set forth the subject matter applicants regard as the invention, and
- 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(b) when evidence outside the application as filed, e.g., admissions, shows that the inventor or a joint inventor 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.
The scope of a limitation that invokes 35 U.S.C. 112(f) is defined by the inventor in the written description and equivalents thereof that perform the claimed function.
B. Determine Whether the Claimed Invention Complies with 35 U.S.C. 112(a) or 35 U.S.C. 112, First Paragraph Requirements
The first paragraph of 35 U.S.C. 112 contains three separate and distinct requirements:
- adequate written description,
- enablement, and
- 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.
V. 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.
The test for obviousness under 35 U.S.C. 103 is whether the invention would have been obvious to one of ordinary skill in the art.
VI. 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 unpatentability conveying their rejections to the applicant.
