101_interim_training

101_interim_training - INTERIM EXAMINATION INSTRUCTIONS FOR...

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INTERIM EXAMINATION INSTRUCTIONS FOR EVALUATING SUBJECT MATTER ELIGIBILITY UNDER 35 U.S.C. §101 Andrew Hirshfeld, Acting DCPEP Caroline Dennison, Michael Cygan, Nicole Dretar, and Pinchus Laufer, OPLA Marjorie Moran, Robert Weinhardt, Brian Werner, Tom Hughes, Tod Swann, Brian Sircus, and Wil Grant, TC/OPQA August 2009 United States Patent and Trademark Office
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8/25/2009 2 IMPLEMENTATION PLAN OVERVIEW OF INTERIM EXAMINATION INSTRUCTIONS FOR SUBJECT MATTER ELIGIBLITY INSTRUCTIONS WILL BE POSTED ON USPTO INTERNET WEBSITE TC SPECIFIC TRAINING TO FOLLOW QUESTIONS SHOULD BE DIRECTED TO SPEs, THEN TO TC 101 REPRESENTATIVES
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8/25/2009 3 OVERVIEW TRAINING OVERVIEW: • THE TWO-STEP 101 ANALYSIS • PRODUCT FLOWCHART AND EXAMPLES • PROCESS FLOWCHART AND EXAMPLES
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8/25/2009 4 STEP 1 Is the claim directed to one of the four patent-eligible subject matter categories? – Process, Machine, Manufacture, Composition of Matter If not in one of the four categories, the claim is not eligible. – Examples of claims that are not eligible: • Transitory signals per se, humans per se, a company per se , or a set of instructions per se (such as a game or software per se)
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8/25/2009 5 STEP 2 A claim satisfying Step 1 is subject-matter eligible under 101 unless it wholly embraces a judicially recognized exception. Does the claim wholly embrace a judicially recognized exception? Abstract Idea – Law of Nature – Natural Phenomena – The exceptions also include, for example: • Mental Processes • Mathematical Algorithms • Scientific Principles If the claim is directed to a judicial exception itself, it is not eligible. A particular practical application of a judicial exception is eligible.
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8/25/2009 6 PRODUCT CLAIM ANALYSIS Begin with the broadest reasonable interpretation (BRI) of the claim in view of the specification consistent with the interpretation those skilled in the art would reach. MPEP 2111 Product Focus: – Does the claim meet definitions of machine, manufacture or composition of matter? – Is there a judicial exception recited in the claim?
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8/25/2009 7 Product Flowchart P1 P2 P3 P4 P7 P5 P6 To M1
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8/25/2009 8 PRODUCT EXAMPLE: CLAIM 1 No Judicial Exception Claim 1. A hand tool, comprising: – a handle; and – a head coupled to the handle having a striking surface and a claw. Is the claim directed to a machine or manufacture? (P1)
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This note was uploaded on 04/05/2010 for the course LAW LAW6571 taught by Professor Abbott during the Spring '10 term at Florida State College.

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101_interim_training - INTERIM EXAMINATION INSTRUCTIONS FOR...

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