What is the current basis for evaluating patent claims that might have previously fallen under the Old Combination principle?
The current basis for evaluating patent claims that might have previously fallen under the Old Combination principle is their compliance with statutory requirements, particularly 35 U.S.C. 112(b). The MPEP 2173.05(j) states:
“Claims should be considered proper so long as they comply with the provisions of 35 U.S.C. 112(b) or pre-AIA 35 U.S.C. 112, second paragraph.”
This means that patent examiners and courts should focus on whether the claims particularly point out and distinctly claim the subject matter which the inventor regards as the invention. The novelty or non-obviousness of the combination itself is evaluated under other sections of patent law, such as 35 U.S.C. 102 and 103, rather than using the outdated Old Combination principle.
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