How does the Vanda case relate to the treatment or prophylaxis consideration in Step 2A Prong Two?
The Vanda Pharmaceuticals Inc. v. West-Ward Pharmaceuticals International Ltd. case is significant in the context of the treatment or prophylaxis consideration in Step 2A Prong Two. According to MPEP 2106.04(d)(2): “Vanda Pharm. Inc. v. West-Ward Pharm. Int’l Ltd., 887 F.3d 1117, 126 USPQ2d 1266 (Fed. Cir. 2018). The claims in Vanda recited a method of…
Read MoreHow can a treatment or prophylaxis limitation qualify for consideration in Step 2A Prong Two?
For a treatment or prophylaxis limitation to qualify for consideration in Step 2A Prong Two, it must meet certain criteria. According to MPEP 2106.04(d)(2): “Examiners should keep in mind that in order to qualify as a ‘treatment’ or ‘prophylaxis’ limitation for purposes of this consideration, the claim limitation in question must affirmatively recite an action…
Read MoreWhat role does “prophylaxis” play in Step 2A Prong Two analysis?
Prophylaxis, or preventive treatment, plays a significant role in the Step 2A Prong Two analysis as outlined in MPEP 2106.04(d)(2). The MPEP states: “[A] claim directed to a prophylaxis or treatment can integrate the recited judicial exception into a practical application by applying or using the judicial exception to effect a particular prophylaxis or treatment…
Read MoreWhat is the “practical application” test in Step 2A Prong Two of the subject matter eligibility analysis?
The “practical application” test is part of Step 2A Prong Two in the subject matter eligibility analysis, as described in MPEP 2106.04(d). This test evaluates whether the claim as a whole integrates the judicial exception into a practical application of that exception. The MPEP states: “A claim that integrates a judicial exception into a practical…
Read MoreWhat is the ‘particular treatment or prophylaxis’ consideration in Step 2A Prong Two?
The particular treatment or prophylaxis consideration is part of Step 2A Prong Two analysis. It evaluates whether the claim applies or uses a judicial exception to effect a particular treatment or prophylaxis for a disease or medical condition. As stated in MPEP 2106.04(d)(2): “To qualify as a ‘treatment’ or ‘prophylaxis’ limitation for purposes of this…
Read MoreHow does the USPTO evaluate integration of a judicial exception into a practical application?
The USPTO evaluates integration of a judicial exception into a practical application in Step 2A Prong Two by identifying whether there are any additional elements recited in the claim beyond the judicial exception and evaluating those elements to determine whether they integrate the exception into a practical application. As stated in MPEP 2106.04(d): “A claim…
Read MoreHow does insignificant extra-solution activity relate to the well-understood, routine, conventional consideration?
The relationship between insignificant extra-solution activity and the well-understood, routine, conventional consideration is addressed in MPEP 2106.05(g). The MPEP states: “Because this overlaps with the well-understood, routine, conventional consideration, it should not be considered in the Step 2A Prong Two extra-solution activity analysis.” This means that when evaluating whether an additional element is insignificant extra-solution…
Read MoreHow does the improvements analysis differ between Step 2A Prong Two and Step 2B?
The improvements analysis in Step 2A Prong Two differs from that in Step 2B in a crucial way, as explained in MPEP 2106.04(d)(1): “Specifically, the ‘improvements’ analysis in Step 2A determines whether the claim pertains to an improvement to the functioning of a computer or to another technology without reference to what is well-understood, routine,…
Read MoreWhat factors are considered when evaluating a treatment or prophylaxis limitation in Step 2A Prong Two?
According to MPEP 2106.04(d)(2), there are three main factors to consider when evaluating a treatment or prophylaxis limitation in Step 2A Prong Two: The particularity or generality of the treatment or prophylaxis: The limitation must be “particular,” i.e., specifically identified so that it does not encompass all applications of the judicial exception(s). Whether the limitation(s)…
Read MoreHow does the USPTO evaluate improvements to technology in Step 2A Prong Two?
In Step 2A Prong Two, the USPTO evaluates whether the claim as a whole integrates the judicial exception into a practical application, including by considering if the claimed invention improves the functioning of a computer or other technology/technical field. As stated in MPEP 2106.04(d)(1): “The specification need not explicitly set forth the improvement, but it…
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