How should examiners evaluate the improvement to technology in a patent application?

Examiners should follow a two-step process to evaluate improvements to technology in a patent application, as outlined in MPEP 2106.04(d)(1):

1. Evaluate the specification: The examiner should first determine if the disclosure provides sufficient details for one of ordinary skill in the art to recognize the claimed invention as providing an improvement. The MPEP states: “The specification need not explicitly set forth the improvement, but it must describe the invention such that the improvement would be apparent to one of ordinary skill in the art.“
2. Evaluate the claims: If an improvement is described in the specification, the examiner must then ensure that “the claim itself reflects the disclosed improvement.” This means the claim should include the components or steps that provide the improvement described in the specification.

It’s important to note that the claim doesn’t need to explicitly recite the improvement (e.g., “thereby increasing the bandwidth of the channel”). The key is that the claim includes the elements that achieve the improvement described in the specification.

To learn more:

• patent examination
• technological improvement
• specification analysis
• claim analysis