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TABLE OF CONTENT

I. Introduction.......................................1

II. Determine What Applicant Has Inented and Is Seekin!to Patent.........................................."A. Identif# and Understand An# Practical

Application Asserted for the Inention........."$. %eie& the Detailed Disclosure and Specific

'm(odiments of the Inention to Determine Whatthe Applicant Has Inented.....................)

C. %eie& the Claims.............................*

III. Conduct a Thorou!h Search of the Prior Art..........+

I,. Determine Whether the Claimed Inention Complies &ith)- U.S.C. 1/1....................................+A. Consider the $readth of )- U.S.C. 1/1 Under

Controllin! 0a&...............................+$. Classif# the Claimed Inention as to Its Proper

Statutor# Cate!or#............................1. 2on3Statutor# Su(4ect 5atter...............

6a7 8unctional Descriptie 5aterial9: 9..;6(7 2on38unctional Descriptie 5aterial.1/6c7 2atural Phenomena Such as 'lectricit#

and 5a!netism......................11". Statutor# Su(4ect 5atter..................1"

6a7 Statutor# Product Claims ....A machineis9:...a concrete thin!< consistin! ofparts or of certain deices andcom(inations of deices.$urr .Dur#ee< + U.S. 61 Wall.7 -)1< -=/61+)7..............A manufacture is9:....the production of articles for usefrom ra& or prepared materials (#!iin! to these materials ne& formsualities< properties or com(inationsuirement for

patenta(ilit# in the initial reie& of the application< een if

one or more claims are found to (e deficient &ith respect to

some statutor# re>uirement. Thus< Office personnel should state

all reasons and (ases for re4ectin! claims in the first Office

action. Deficiencies should (e eplained clearl#< particularl#

&hen the# sere as a (asis for a re4ection. Wheneerpractica(le< Office personnel should indicate ho& re4ections ma#

(e oercome and ho& pro(lems ma# (e resoled. A failure to

follo& this approach can lead to unnecessar# dela#s in the

prosecution of the application.

Prior to focusin! on specific statutor# re>uirementsuirement for patenta(ilit#.

Office personnel should (e!in claim anal#sis (#

identif#in! and ealuatin! each claim limitation. 8or

processes< the claim limitations &ill define steps or acts to (e

performed. 8or products##< the claim limitations &ill define

discrete ph#sical structures. The discrete ph#sical structures

ma# (e comprised of hard&are or a com(ination of hard&are and

soft&are.

Office personnel are to correlate each claim limitation to

all portions of the disclosure that descri(e the claim

limitation. This is to (e done in all cases< i.e.< &hether or

not the claimed inention is defined usin! means or step plus

function lan!ua!e. The correlation step &ill ensure that Office

personnel correctl# interpret each claim limitation.

The su(4ect matter of a properl# construed claim is

defined (# the terms that limit its scope. It is this su(4ect

matter that must (e eamined. As a !eneral matter< the !rammar

and intended meanin! of terms used in a claim &ill dictate

&hether the lan!ua!e limits the claim scope. 0an!ua!e that

suggests or makes optional (ut does not re>uire steps to (e

performed or does not limit a claim to a particular structure

does not limit the scope of a claim or claim limitation.#$

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Office personnel must rel# on the applicants disclosure

to properl# determine the meanin! of terms used in the claims.#%

An applicant is entitled to (e his or her o&n leico!rapher< and

in man# instances &ill proide an eplicit definition for

certain terms used in the claims. Where an eplicit definitionis proided (# the applicant for a term< that definition &ill

control interpretation of the term as it is used in the claim.

Office personnel should determine if the ori!inal disclosure

proides a definition consistent &ith an# assertions made (#

applicant.#& If an applicant does not define a term in the

specification< that term &ill (e !ien its Ecommon meanin!.E#.

If the applicant asserts that a term has a meanin! that

conflicts &ith the terms art3accepted meanin!< Office personnel

should encoura!e the applicant to amend the claim to (etter

reflect &hat applicant intends to claim as the inention. Ifthe application (ecomes a patent< it (ecomes prior art a!ainst

su(se>uent applications. Therefore< it is important for later

search purposes to hae the patentee emplo# commonl# accepted

terminolo!#< particularl# for searchin! tet3searcha(le

data(ases.

Office personnel must al&a#s remem(er to use the

perspectie of one of ordinar# skill in the art. Claims and

disclosures are not to (e ealuated in a acuum. If elements of

an inention are &ell kno&n in the art< the applicant does not

hae to proide a disclosure that descri(es those elements. In

such a case the elements &ill (e construed as encompassin! an#

and eer# art3reco!niFed hard&are or com(ination of hard&are and

soft&are techni>ue for implementin! the defined re>uisite

functionalities.

Office personnel are to !ie claims their (roadest

reasona(le interpretation in li!ht of the supportin!

disclosure.#1 Where means plus function lan!ua!e is used to

define the characteristics of a machine or manufacture

inention< claim limitations must (e interpreted to read on onl#

the structures or materials disclosed in the specification and

Ee>uialents thereof.E#2 Disclosure ma# (e epress< implicit or

inherent. Thus< at the outset< Office personnel must attempt to

correlate claimed means to elements set forth in the &ritten

description. The &ritten description includes the specification

and the dra&in!s. Office personnel are to !ie the claimed

means plus function limitations their (roadest reasona(le

interpretation consistent &ith all correspondin! structures or

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materials descri(ed in the specification and their e>uialents.

8urther !uidance in interpretin! the scope of e>uialents is

proided in the Examination Guidelines For Claims Reciting

!eans or "tep #lus Function $imitation In ccordance %ith &'

(.".C. ))*+ ,th #aragraph6E5eans Plus 8unction @uidelinesE7.#3

While it is appropriate to use the specification to

determine &hat applicant intends a term to mean< a positie

limitation from the specification cannot (e read into a claim

that does not impose that limitation. A (road interpretation of

a claim (# Office personnel &ill reduce the possi(ilit# that the

claim< &hen issued< &ill (e interpreted more (roadl# than is

4ustified or intended. An applicant can al&a#s amend a claim

durin! prosecution to (etter reflect the intended scope of the

claim.

8inall#< &hen ealuatin! the scope of a claim< every

limitation in the claim must (e considered.#6 Office personnel

ma# not dissect a claimed inention into discrete elements and

then ealuate the elements in isolation. Instead< the claim as

a &hole must (e considered.

III! Condu"t a T)orou,) ear") of t)e rior Art

Prior to classif#in! the claimed inention under 1/1uialents &hich

correspond to the claimed means plus function limitation< in

accordance &ith )- U.S.C. 11"< sith para!raph and the 5eans

Plus 8unction @uidelines.$7

IV! 'etermine ()et)er t)e Claimed Invention Complies 4it)

%. 0!!C! 8 #7#

A! Consider t)e Breadt) of %. 0!!C! 8 #7# 0nder Controllin,

La4

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As the Supreme Court has held< Con!ress chose the

epansie lan!ua!e of 1/1 so as to include Ean#thin! under the

sun that is made (# man.E$# Accordin!l#< 1/1 of title )-uirements of 1/1< Office

personnel should classif# each claim into oneor morestatutor#

or non3statutor# cate!ories. If the claim falls into a non3

statutor# cate!or#< that should not preclude complete

eamination of the application for satisfaction of all otherconditions of patenta(ilit#. This classification is only an

initial findingat this point in the eamination process that

&ill (e a!ain assessed after the eamination for compliance &ith

1/"< 1/) and 11" is completed and (efore issuance of an#

Office action on the merits.

If the inention as set forth in the &ritten description

is statutor#< (ut the claims define su(4ect matter that is notuenc#uatel# define a specific computer memor#< the claim

must identif# a !eneral or specific memor# and the specificsoft&are &hich proides the functionalit# stored in the memor#.

A claim limited to a specific machine or manufactureuires one or more acts to (e performed

defines a process. Ho&eer< not all processes are statutor#

under 1/1. To (e statutor#< a claimed computer3related

process must either: 617 result in a ph#sical transformation

outside the computer for &hich a practical application in thetechnolo!ical arts is either disclosed in the specification or

&ould hae (een kno&n to a skilled artisan 6discussed in 6i7

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3 A method of curin! ru((er in a mold &hich relies upon

updatin! process parameters< usin! a computer processor to

determine a time period for curin! the ru((er< usin! the

computer processor to determine &hen the time period has (een

reached in the curin! process and then openin! the mold at thatsta!e.

3 A method of controllin! a mechanical ro(ot &hich relies

upon storin! data in a computer that represents arious t#pes of

mechanical moements of the ro(ot< usin! a computer processor to

calculate positionin! of the ro(ot in relation to !ien tasks to

(e performed (# the ro(ot< and controllin! the ro(ots moement

and position (ased on the calculated position.

- :anipulation of 'ata Representin, )/si"al O59e"ts or

A"tivities ;re-Computer ro"ess A"tivit/uires the

measurements of ph#sical o(4ects or actiities to (e transformed

outside of the computer into computer data


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difference (et&een a local alue at a data point and an aera!e

alue of the data in a re!ion surroundin! the point< and

displa#in! the difference as a !ra# scale for each point in the

ima!e< and displa#in! the resultin! ima!e. In this eample the

data is an intan!i(le representation of a ph#sical o(4ect< i.e.uired (# the mathematical operation

limitation.

;iii< ost-:at)emati"al Operation tep 0sin, olution or :erel/

Conve/in, Result of Operation

In some instances< certain kinds of post3solution EactsE

&ill not further limit a process claim (e#ond the performance of

the precedin! mathematical operation step een if the acts are

recited in the (od# of a claim. If< ho&eer< the claimed acts

represent some Esi!nificant useE of the solution< those acts

&ill inaria(l# impose an independent limitation on the claim.

A Esi!nificant useE is an# actiit# &hich is more than merel#

outputtin! the direct result of the mathematical operation.

Office personnel are reminded to rel# on the applicants

characteriFation of the si!nificance of the acts (ein! assessed

to resole >uestions related to their relationship to the

mathematical operations recited in the claim and the inention

as a &hole..2 Thus< if a claim re>uires that the direct result

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of a mathematical operation (e ealuated and transformed into

somethin! else< Office personnel cannot treat the su(se>uent

steps as (ein! indistinguishable from the performance of the

mathematical operation and thus not further limitin! on the

claim. 8or eample< acts that re>uire the conersion of aseries of num(ers representin! alues of a &aefunction e>uation

for a chemical compound into alues representin! an ima!e that

cone#s information a(out the three3dimensional structure of the

compound and the displa#in! of the three3dimensional structure

cannot (e treated as (ein! part of the mathematical operations.

Office personnel should (e especiall# careful &hen

reie&in! claim lan!ua!e that re>uires the performance of Epost3

solutionE steps to ensure that claim limitations are not

i!nored.

'amples of steps found not to independentl# limit a

process inolin! one or more mathematical operation steps

include:

3 step of Eupdatin! alarm limitsE found to constitute

chan!in! the num(er alue of a aria(le to represent the

result of the calculationG.3

3 final step of ma!neticall# recordin! the result of a

calculationG.6

3 final step of Ee>uatin!E the process outputs to the alues

of the last set of process inputs found to constitute

storin! the result of calculationsG17

3 final step of displa#in! result of a calculation Eas a

shade of !ra# rather than as simpl# a num(erE found to not

constitute distinct step &here the data &ere numerical

alues that did not represent an#thin!G1#and

3 step of Etransmittin! electrical si!nals representin!E the

result of calculations.1$

;e< :anipulation of A5stra"t Ideas (it)out a Claimed ra"ti"al

Appli"ation

A process that consists solel# of the manipulation of an

a(stract idea &ithout an# limitation to a practical application

is non3statutor#.1% Office personnel hae the (urden to

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esta(lish aprima faciecase that the claimed inention taken as

a &hole is directed to the manipulation of a(stract ideas

&ithout a practical application.

In order to determine &hether the claim is limited to apractical application of an a(stract idea< Office personnel must

anal#Fe the claim as a &hole< in li!ht of the specification< to

understand &hat su(4ect matter is (ein! manipulated and ho& it

is (ein! manipulated. Durin! this procedure< Office personnel

must ealuate an# statements of intended use or field of useuirements: 617 that the

claim6s7 set forth the su(4ect matter applicants re!ard as the

inention< and 6"7 that the claim6s7 particularl# point out and

distinctl# claim the inention. An application &ill (e

deficient under 11"< second para!raph &hen 617 eidence

includin! admissions< other than in the application as fileduirements of 11"< first

para!raph. The first para!raph contains three separate and

distinct re>uirements: 617 ade>uate &ritten descriptionuate to identif# &hat the applicant has

inented< or &hen the disclosure does not ena(le one skilled in

the art to make and use the inention as claimed &ithout undue

eperimentation. Deficiencies related to disclosure of the (est

mode for carr#in! out the claimed inention are not usuall#

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encountered durin! eamination of an application (ecause

eidence to support such a deficienc# is seldom in the record.

If deficiencies are discoered &ith respect to 11"uirement does not

satisf# the &ritten description re>uirement.11 8or the &ritten

description re>uirement< an applicants specification must

reasona(l# cone# to those skilled in the art that the applicant

&as in possession of the claimed inention as of the date ofinention. The claimed inention su(4ect matter need not (e

descri(ed literall#< i.e.< usin! the same terms< in order for

the disclosure to satisf# the description re>uirement.

$! Ena5lin, 'is"losure

An applicants specification must ena(le a person skilled

in the art to make and use the claimed inention &ithout undue

eperimentation. The fact that eperimentation is compleuisite

functionalit#< and< &here applica(le< interrelate the computer

&ith other elements to #ield the claimed inention< &ithout the

eercise of undue eperimentation. The specification should

disclose hoto confi!ure a computer to possess the re>uisite

functionalit# or hoto inte!rate the pro!rammed computer &ith

other elements of the inention< unless a skilled artisan &ould

kno& ho& to do so &ithout such disclosure.12

8or man# computer3related inentions< it is not unusual

for the claimed inention to inole more than one field of

technolo!#. 8or such inentions< the disclosure must satisf#

the ena(lement standard for each aspect of the inention.13 As

such< the disclosure must teach a person skilled in each art ho&

to make and use the releant aspect of the inention &ithout

undue eperimentation. 8or eample< to ena(le a claim to a

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pro!rammed computer that determines and displa#s the three3

dimensional structure of a chemical compound< the disclosure must

3 ena(le a person skilled in the art of molecular modelin!

to understand and practice the underl#in! molecularmodelin! processesG and

3 ena(le a person skilled in the art of computer pro!rammin!

to create a pro!ram that directs a computer to create and

displa# the ima!e representin! the three3dimensional

structure of the compound.

In other &ords< the disclosure correspondin! to each aspect of

the inention must (e ena(lin! to a person skilled in each

respectie art.

In man# instances< an applicant &ill descri(e a pro!rammed

computer (# outlinin! the si!nificant elements of the pro!rammed

computer usin! a functional (lock dia!ram. Office personnel

should reie& the specification to ensure that alon! &ith the

functional (lock dia!ram the disclosure proides information

that ade>uatel# descri(es each EelementE in hard&are or hard&are

and its associated soft&are and ho& such elements are

interrelated.16

VI! 'etermine ()et)er t)e Claimed Invention Complies 4it)

%. 0!!C! 88 #7$ and #7%

As is the case for inentions in an# field of technolo!#uation can (e used< as a practical matteruation< formula< or

al!orithm hain! an# practical use &ould (e per se su(4ect to

patentin! as a EprocessE under 1/1. Consideration of

&hether the su(stitution of specific alues is enou!h to

conert the disem(odied ideas present in the formula into an

em(odiment of those ideas< or into an application of the

formula< is foreclosed (# the current state of the la&.

&. "ee supranote */.

&1 "ee+ e.g.< In re ernhart< *1= 8."d 1);-< 1*//< 1+) USP? +11

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