Can a process claim be rejected if it describes the function of a disclosed machine?

This page is an FAQ based on guidance from the Manual of Patent Examining Procedure. It is provided as guidance, with links to the ground truth sources. This is information only: it is not legal advice.

No, a process claim cannot be rejected solely because it describes the function of a disclosed machine. The MPEP 2173.05(v) clearly states:

“Process or method claims are not subject to rejection by U.S. Patent and Trademark Office examiners under 35 U.S.C. 112(b) or pre-AIA 35 U.S.C. 112, second paragraph, solely on the ground that they define the inherent function of a disclosed machine or apparatus.”

This means that as long as a process claim is otherwise patentable, it should not be rejected merely because it describes steps that a disclosed apparatus would inherently perform. The claim should be evaluated on its own merits, independent of any related apparatus claims.