How does the USPTO apply the “Mere Function of Machine” rule during patent examination?
The United States Patent and Trademark Office (USPTO) applies the “Mere Function of Machine” rule by not rejecting process or method claims solely because they describe the function of a disclosed machine. As stated in MPEP 2173.05(v): “Process or method claims are not subject to rejection by U.S. Patent and Trademark Office examiners under 35…
Read MoreHow does the USPTO determine if a claim limitation invokes 35 U.S.C. 112(f)?
The USPTO examines each claim limitation to determine if it invokes 35 U.S.C. 112(f) (previously known as 35 U.S.C. 112, sixth paragraph). According to MPEP 2173.01: “As part of the claim interpretation analysis, examiners should determine whether each limitation invokes 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph or not. If the claim…
Read MoreIs it acceptable to use ‘optionally’ in patent claims?
Yes, using the term ‘optionally’ in patent claims can be acceptable, but it requires careful consideration. The MPEP 2173.05(h) provides guidance on this: “In Ex parte Cordova, 10 USPQ2d 1949 (Bd. Pat. App. & Inter. 1989) the language ‘containing A, B, and optionally C’ was considered acceptable alternative language because there was no ambiguity as…
Read MoreCan new terms be used in patent claims?
Yes, new terms can be used in patent claims. In fact, the MPEP recognizes that it’s often desirable to use new terms to describe and define new inventions more precisely. As stated in MPEP 2173.05(a): “Courts have recognized that it is not only permissible, but often desirable, to use new terms that are frequently more…
Read MoreHow can examiners use interviews to resolve indefiniteness issues?
Examiners are encouraged to use interviews as an effective tool to resolve indefiniteness issues. The MPEP provides guidance on this approach: “Issues of claim interpretation and clarity of scope may lend themselves to resolution through an examiner interview. For example, the examiner may initiate an interview to discuss, among other issues, the broadest reasonable interpretation…
Read MoreHow should examiners use abstracts in prior art rejections?
Examiners should be cautious when using abstracts for prior art rejections. The MPEP provides the following guidance: When both the abstract and the underlying document qualify as prior art, the underlying document should normally be used to support a rejection. When relying on an abstract, “the evidence relied upon is the facts contained in the…
Read MoreCan these methods also be used to overcome a 35 U.S.C. 103 rejection?
Yes, the methods used to overcome a 35 U.S.C. 102(a)(1) or 102(a)(2) rejection can also be used to overcome a 35 U.S.C. 103 rejection that is based on 35 U.S.C. 102(a)(1) or 102(a)(2) prior art. MPEP 2152.06 explicitly states: “Note that all of the ways of overcoming a 35 U.S.C. 102(a)(1) or 102(a)(2) rejection mentioned…
Read MoreCan an invention have utility but still fail the enablement requirement?
Yes, an invention can have utility but still fail the enablement requirement. The MPEP provides an interesting insight into this situation: “In some instances, the utility of the claimed invention will be provided, but the skilled artisan will not know how to effect that use. In such a case, no rejection will be made under…
Read MoreHow does the AIA use the term “disclosure” in 35 U.S.C. 102?
The AIA (America Invents Act) uses the term “disclosure” in specific contexts within 35 U.S.C. 102, particularly in relation to exceptions to prior art. According to MPEP 2152.04: “AIA 35 U.S.C. 102(b)(1) and (b)(2), however, each state conditions under which a “disclosure” that otherwise falls within AIA 35 U.S.C. 102(a)(1) or 102(a)(2) is not prior…
Read MoreHow do “Use” claims relate to process claims in patent applications?
“Use” claims are closely related to process claims, but they often lack the specificity required for a proper process claim. According to MPEP 2173.05(q), a “Use” claim becomes problematic when it fails to set forth specific steps involved in the process. The MPEP states: “Attempts to claim a process without setting forth any steps involved…
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