Chapter 2100: Patentability
Determining whether specific subject matter is patentable is a very difficult task. Therefore, the PTO has many rules and guidelines used to help sort out this dilemma. The patentability guidelines extend to living subject matter and computer related inventions as well as basic engineering designs.
The statutes under 35 U.S.C. 101, 102 and 103 are used to reject an application’s disclosed subject matter. 35 U.S.C. 101 discusses the types of inventions that are patentable. 35 U.S.C. 102 discusses the conditions for patenting in as far as their novelty requirements and the loss of the right to patent. 35 U.S.C. 103 states the conditions for patenting in relation to non-obvious subject matter. Both 102 and 103 are considered rejections based on prior art and are discussed in Appendix I - Prior Art Rejections.
The requirements for the specification are outlined in the six paragraphs under 35 U.S.C. 112. The general requirements for a specification can be broken down into three basic categories; the written description, the enablement and the best mode.
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This section provides an overview of the patent examination process. Essentially, the examiner must determine what the applicant has invented and is seeking to patent, then conduct a thorough search of the prior art, determine whether the claimed invention complies with 35 U.S.C. 101, 35 U.S.C. 112, 35 U.S.C. 102, and 35 U.S.C. 103, then clearly communicate their findings, conclusions, and their bases.
This section provides a brief overview of what constitutes patentable subject matter. Essentially, 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. In addition, this section outlines the four categories of inventions; machines, manufactures, compositions of matter, and processes.
This section covers living subject matter, providing examples of what can be and cannot be patentable. For example, new minerals discovered in the earth are not patentable, but microorganisms produced by genetic engineering can be patented. In addition, it gives specifics on how no patent may issue on a claim directed to or encompassing a human organism, which was added in the America Invents Act (AIA).
This section deals with the eligibility of subject matter for patentability, providing a flow chart of guidelines for Patent Office examiners to make such eligibility determinations.
Computer programs may be patented, however, mere instructions cannot. The computer program must either be a method that is novel, or a system that instructs a computer to perform a particular action. Functional descriptive material may be patented, while nonfunctional descriptive material are not.
The criteria for determining subject matter eligibility are:
- The claimed invention must be directed to one of the four statutory categories, and
- It must not be wholly directed to subject matter encompassing a judicially recognized exception.
A two-step analysis is used to evaluate these criteria. This two-step analysis is covered in detail in this section.
This section describes the principles behind rejections based on utility (whether or not an invention has any use) and obviousness based on one or more prior art references. In addition, there is a discussion on how to interpret claims within the scope of these utility or obviousness rejections.
Claims must be given their broadest reasonable interpretation in light of the specification. Due to the fact that the applicant has the opportunity to amend the claims during prosecution, giving a claim its broadest reasonable interpretation will reduce the possibility that the claim, once issued, will be interpreted more broadly than is justified.
The plain meaning of a term means the ordinary and customary meaning given to the term by those of ordinary skill in the art at the time of the invention.
The express, implicit, and inherent disclosures of a prior art reference may be relied upon in the rejection of claims under 35 U.S.C. 102 or 103. This section covers the burden of proof for a rejection based on inherency.
This includes that something old does not become patentable upon the discovery of a new property. In addition, the inherent feature need not be recognized at the time of the invention. In addition there is a brief discussion how a rejection under 35 U.S.C. 102/103 can be made when the prior art product seems to be identical except that the prior art is silent as to an inherent characteristic. Finally, this section states that the examiner must provide rationale or evidence tending to show inherency.
Even though product-by-process claims are limited by and defined by the process, determination of patentability is based on the product itself.
The patentability of a product does not depend on its method of production. If the product in the product-by-process claim is the same as or obvious from a product of the prior art, the claim is unpatentable even though the prior product was made by a different process.
This section covers computer-implemented functional claims and 35 U.S.C. 102 and 103.
“Expressions relating the apparatus to contents thereof during an intended operation are of no significance in determining patentability of the apparatus claim.”
Furthermore, “[i]nclusion of material or article worked upon by a structure being claimed does not impart patentability to the claims.” This section also includes an example of how the material or article worked upon does not limit apparatus claims.
This section addresses how examiners should view claims, and states that claims must be reviewed as a whole, review of claims is highly fact specific and all claim limitations should be considered. This section is particularly directed to process claims.
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