What is the “Mere Function of Machine” rule in patent law?
The “Mere Function of Machine” rule refers to a principle in patent law that protects process or method claims from being rejected solely based on their relationship to a disclosed machine or apparatus. According to 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 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’…
Read MoreHow does inherency apply to method claims in patent applications?
How does inherency apply to method claims in patent applications? Inherency can apply to method claims in patent applications, but its application requires careful consideration. According to MPEP 2163.07(a): “The fact that a certain result or characteristic may occur or be present in the prior art is not sufficient to establish the inherency of that…
Read MoreWhat is an example of a partial loss in a patent interference proceeding?
The MPEP 2308.03(a) provides a clear example of a partial loss in a patent interference proceeding: “Example: The applicant lost the interference on a count drawn to a compound, but the opponent lost on a count drawn to methods of using the compound. The applicant may continue to pursue claims to the method of using…
Read MoreHow can I convert a “use” claim to a proper method claim?
To convert a “use” claim to a proper method claim, follow these steps: Identify the underlying process or method implied by the “use” claim. Draft a clear set of steps that describe how to perform the process. Use active verbs to start each step (e.g., “applying,” “mixing,” “heating”). Ensure all necessary elements and conditions are…
Read MoreWhat are contingent limitations in patent claims and how are they interpreted?
Contingent limitations in patent claims are conditions that may or may not occur, affecting the interpretation of the claim. The MPEP 2111.04 provides guidance on interpreting these limitations: “The broadest reasonable interpretation of a method (or process) claim having contingent limitations requires only those steps that must be performed and does not include steps that…
Read MoreHow does the interpretation of contingent limitations differ between method and system claims?
The interpretation of contingent limitations differs significantly between method and system claims. According to MPEP 2111.04, based on the Ex parte Schulhauser decision: For method claims: “If the condition for performing a contingent step is not satisfied, the performance recited by the step need not be carried out in order for the claimed method to…
Read MoreWhat is the difference between losing on a compound claim versus a method claim in patent interference?
The MPEP 2308.03(a) provides an example that illustrates the difference between losing on a compound claim versus a method claim in patent interference: “The applicant lost the interference on a count drawn to a compound, but the opponent lost on a count drawn to methods of using the compound. The applicant may continue to pursue…
Read MoreWhat is the broadest reasonable interpretation (BRI) of claims with contingent limitations?
The broadest reasonable interpretation (BRI) of claims with contingent limitations varies depending on whether the claim is a method claim or a system claim. According to MPEP 2111.04: For method claims: “The broadest reasonable interpretation of a method (or process) claim having contingent limitations requires only those steps that must be performed and does not…
Read MoreHow does rejoinder apply to different types of inventions?
Rejoinder can apply to various types of inventions, but its application depends on the relationship between the elected and non-elected claims. The MPEP 821.04 provides specific guidance: “Rejoined claims must be fully examined for patentability in accordance with 37 CFR 1.104. Thus, to be allowable, the rejoined claims must meet all criteria for patentability including…
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