How does the USPTO treat ‘instruction limitations’ in method claims?

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Source: FAQ (MPEP-Based) BlueIron Update: 2024-09-29 10 Rules 5 Related FAQs 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. 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’ someone about the existence of an inherent property of that method) is added to a method known in the art.” King Pharmaceuticals, Inc. v. Eon Labs, Inc. , 616 F.3d 1267, 1279, 95 USPQ2d 1833, 1842 (2010). The key inquiry for such method cases is whether a new and nonobvious functional relationship exists with the known method. If the ‘instruction limitation’ merely informs a user about an inherent property of the method without establishing a new and unobvious functional relationship, it will not be given patentable weight. Related Rules from the Manual of Patent Examining Procedure 10 rules Collapse Instruction Limitation Must Have New and Nonobvious Functional Relationship MPEP 2112.01 Instruction Limitation Must Have New and Unobvious Functional Relationship MPEP 2112.01 Method Claim with Instruction Limitation Not Obvious MPEP 2112.01 Instruction Limitation Must Not Transform Known Method MPEP 2112.01 Printed Matter Must Have Functional Relationship with Substrate MPEP 2112.01 Instruction Limitation Is Not Functional MPEP 2112.01 Instruction Limitation Non-functional for Drug Administration MPEP 2112.01 Non-Functional Instruction Limitation for Drug Administration MPEP 2112.01 Printed Matter Not Distinguishing Without Functional Relationship MPEP 2112.01 Printed Matter Not Distinguishing in Patentability MPEP 2112.01 Ot...