2100 Patentability

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(@jasonliao)

2100 Patentability

2111.05: emphasize substrate relationship requirement for weight

The current text of MPEP 2111.05, if read quickly, seems to suggest that a "function" of "descriptive material" itself carries patentable weight. But this interpretation is not correct: A sheet of instructions as part of the kit claim in In re Ngai (cited in this section) was found to *not* have patentable weight. The "functional" nature of the particular instructions did not save the claims from anticipation over a ...more »

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(@patricia.leith)

2100 Patentability

2111.02 Effect of Preamble Needs Additional Explanations

It appears, in my experience, that there is confusion regarding this section of the MPEP and it would be very helpful to examiners if the MPEP would provide a more extensive discussion of preambles, intended uses and when statements in preambles actually limit the claimed Invention. Quite respectfully, the statement in the MPEP, upon citing In re Schriber, indicates 'If a prior art structure is capable of performing ...more »

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(@patricia.leith)

2100 Patentability

2111.04 Whereby/Wherein clauses (inter alia)

As a suggestion, in relation to Minton v. Nat’l Ass’n of Securities Dealers, Inc, this section could be expanded, if deemed applicable, to include other words with a similar meaning to 'wherein' and 'whereby' which may also be interpreted as merely indicating the intended outcome of a positively-recited method step; e.g., 'thereby,' thereto,' 'therein.' It would also be very helpful, especially for new examiners, to ...more »

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(@patricia.leith)

2100 Patentability

2164.01(c) In re Vaeck citation

The MPEP here states: When a compound or composition claim is limited by a particular use, enablement of that claim should be evaluated based on that limitation. See In re Vaeck, 947 F.2d 488, 495, 20 USPQ2d 1438, 1444 (Fed. Cir. 1991) (claiming a chimeric gene capable of being expressed in any cyanobacterium and thus defining the claimed gene by its use). Quite respectfully, is it 'defining the claimed gene by ...more »

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(@chrisw)

2100 Patentability

What happened to 2116?

MPEP 2116 formerly* read: The materials on which a process is carried out must be accorded weight in determining the patentability of a process. Ex parte Leonard, 187 USPQ 122 (Bd. App. 1974). I just today noticed that 2116 has gone. Why? The change summary** that removed it says "Section removed and reserved" but does not give an explanation. If it was removed for purely logistical reasons, would you please bring ...more »

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(@dorange)

2100 Patentability

Broadest reasonable interpretation of "adapted to"

As explained by MPEP 2111.04, the phrase "adapted to" is sometimes interpreted as the narrower "configured to" and other times as the broader "capable of." The MPEP directs "[t]he determination of whether each of these clauses is a limitation in a claim depends on the specific facts of the case," and cites In re Giannelli to show that the court determined the scope of "adapted to" by analyzing the written description. ...more »

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(@chrisw)

2100 Patentability

2145 should also be broken up into subsections

Similar to Justin's idea* - 2145 would also be much easier to navigate if split. I suggest moving the text under Roman numeral XI just before the current Roman numeral I to form new 2145. I suggest changing Roman numerals I-X to 2145.01-2145.10 respectively. Apologies if this is a duplicate - I can't find it mentioned through the Ideascale search or a targeted Google search. * https://uspto-mpep.ideascale.com/a/dtd/%C2%A7-2181-should-be-broken-up-into-subsections/540832-9426 ...more »

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(@jasonliao)

2100 Patentability

2111.05 "or process" lacks cited support

In MPEP 2111.05, either citations to related-to-process based decisions should be provided, or the subheadings should be altered to remove parenthetical reference to processes. The two subheadings in question are: I. DETERMINING WHETHER A FUNCTIONAL RELATIONSHIP EXISTS BETWEEN PRINTED MATTER AND ASSOCIATED PRODUCT (OR PROCESS) II. FUNCTIONAL RELATIONSHIP BETWEEN PRINTED MATTER AND ASSOCIATED PRODUCT (OR PROCESS) ...more »

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(@jasonliao)

2100 Patentability

Another outline level in 2106.05(I)(A)

Add a "1," before "Limitations that the courts have found to qualify as "significantly more" when recited in a claim with a judicial exception include: " Add a "2." before "Limitations that the courts have found not to be enough to qualify as "significantly more" when recited in a claim with a judicial exception include:" If discussing Alice step B, in order to cite the MPEP for any particular class of limitation, ...more »

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(@chrisw)

2100 Patentability

2106.04 (1/2018): Enfish "character as a whole" missing

MPEP 2106.04 (Jan. 2018) (at 2100-21, right column) quotes the original 2014 Guidance (79 FR 74618, 74622) that “A claim is directed to a judicial exception when ... an abstract idea is recited (i.e., set forth or described) in the claim.” However, the Federal Circuit’s Enfish decision specifically found that the “‘directed to’ inquiry ... cannot simply ask whether the claims *involve* a patent-ineligible concept.” ...more »

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(@bricoyle)

2100 Patentability

Safety and Efficacy Considerations - evidence clarification

Medical products have been given some leeway by the USPTO, in terms of product safety. Their safety is regulated by another government division, the Food and Drug Administration (FDA). Medical product makers do not want to "publicize" inventions prior to patenting. If USPTO demanded FDA approval, that would allow other companies to copy the invention while it was being tested for the FDA. It makes more sense to patent ...more »

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(@james.nigh)

2100 Patentability

MPEP 2161.01 I paragraph 6 sentences need clarification

One of the sentences in this paragraph is very unclear and is leading to confusion as to what the standard for the written description and in particular possession actually is. Quoting from MPEP 2161.01 I paragraph 6 the sentence in question is the first sentence from the following two sentences: Specifically, if one skilled in the art would know how to program the disclosed computer to perform the necessary steps described ...more »

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(@justin.blaufeld)

2100 Patentability

Grammatical Error in 2111.05(III.)

The first sentence in the second paragraph of MPEP § 2111.05(III.) reads: "However, where the claim as a whole is directed conveying a message or meaning to a human reader independent of the intended computer system, and/or the computer-readable medium merely serves as a support for information or data, no functional relationship exists." The phrase "is directed conveying" is missing the word "to," as in, "the claim ...more »

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