How does the USPTO evaluate the nature of a transformation in patent claims?
The USPTO evaluates the nature of a transformation in patent claims by considering several factors. According to MPEP 2106.05(c), examiners should consider the following:
- The particularity or generality of the transformation: More specific transformations are more likely to be meaningful.
- The degree to which the recited article is particular: A transformation applied to a specific article is more likely to provide significantly more than a general transformation.
- The nature of the transformation in terms of the type or extent of change in state or thing: Transformations resulting in fundamental changes are more likely to be meaningful.
- The nature of the article transformed: Transformation of physical or tangible objects is more likely to provide significantly more than transformation of intangible concepts or data.
- Whether the transformation is extra-solution activity or a field-of-use: Transformations that are mere data gathering or post-solution activity are less likely to be meaningful.
These factors help examiners determine whether a claimed transformation is “particular” and thus potentially patent-eligible under 35 U.S.C. 101.
To learn more:
Topics:
MPEP 2100 - Patentability,
MPEP 2106.05(C) - Particular Transformation,
Patent Law,
Patent Procedure