How does the USPTO treat ‘instruction limitations’ in method claims?
The USPTO extends the rationale from printed matter cases to method claims that include ‘instruction limitations’. According to MPEP 2112.01(III):
“The court has extended the rationale in the printed matter cases, in which, for example, written instructions are added to a known product, to method claims in which ‘an instruction limitation’ (i.e., a limitation ‘informing’ someone about the existence of an inherent property of that method) is added to a method known in the art.” King Pharmaceuticals, Inc. v. Eon Labs, Inc., 616 F.3d 1267, 1279, 95 USPQ2d 1833, 1842 (2010).
The key inquiry for such method cases is whether a new and nonobvious functional relationship exists with the known method. If the ‘instruction limitation’ merely informs a user about an inherent property of the method without establishing a new and unobvious functional relationship, it will not be given patentable weight.
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