How should patent examiners evaluate the “improvements” consideration?
Patent examiners should evaluate the “improvements” consideration by carefully analyzing both the specification and the claims. The MPEP states:
“During examination, the examiner should analyze the ‘improvements’ consideration by evaluating the specification and the claims to ensure that a technical explanation of the asserted improvement is present in the specification, and that the claim reflects the asserted improvement.”
Key points for examiners to consider include:
- Ensuring the specification provides a technical explanation of the improvement
- Verifying that the claim reflects the asserted improvement
- Analyzing the claim as a whole and as an ordered combination
- Avoiding oversimplification of the claims
- Considering the extent to which the claim covers a particular solution to a problem or a particular way to achieve a desired outcome
Examiners are generally not expected to make qualitative judgments on the merits of the asserted improvement. If the examiner concludes the disclosed invention does not improve technology, the burden shifts to the applicant to provide persuasive arguments and evidence.
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