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Examination Guidance and Training Materials Published Prior To 2007

WARNING: The information contained on this page was correct at the time of original publication. Some information may no longer be applicable. For example, amendments may have been made to the rules of practice since the original date of a publication, there may have been a change in any fees indicated, and certain references to publications may no longer be valid. Wherever there is a reference to a statute or rule, please check carefully whether the statute or rule in force at the date of publication of the advice has since been amended.

Computer-related inventions and Business methods
Keywords  

Business methods

White Paper on Automated Financial or Management Data Processing Methods (Business Methods)(2000)

Training:  Rejection: 35 USC 103 - Obviousness

Formulating and Communicating Rejections under 35 U.S.C. 103 for Applications Directed to Computer-Implemented Business Method Inventions (2000)
Reexamination

Exam guide: re In re Portola Packaging , Inc

Guidelines for Reexamination of Cases in View of In re Portola Packaging, Inc., 110 F.3d 786, 42 USPQ2d 1295 (Fed. Cir. 1997)(1999)
35 U.S.C. 101 - Subject Matter Eligibility

Exam guide, Interim

Interim Guidelines for Examination of Patent Applications for Patent Subject Matter Eligibility (2005)
35 U.S.C. 101 - Utility

Exam guide

Utility Examination Guidelines (2000) [PDF]

Training:  Examination guide, interim

Revised Interim Utility Guidelines Training Materials (1999) [PDF]
35 U.S.C. 102 - Novelty

Exam guide

Examination Guidelines for 35 U.S.C. §102(e)(2), as amended by the American Inventors Protection Act of 1999, and further amended by the Intellectual Property and High Technology Technical Amendments Act of 2002, and 35 U.S.C. 102(g) (2003)
35 U.S.C. 103 - Obviousness

Rejections: Computer-implemented business methods

Formulating and Communicating Rejections under 35 U.S.C. 103 for Applications Directed to Computer-Implemented Business Method Inventions (2000)

Exam guide: Chemical compositions

Exam guide, interim: Chemical compositions

Guidelines for the Examination of Claims Directed to Species of Chemical Compositions Based Upon a Single Prior Art Reference (1998)

Training:  Product & process claims In re Brouwer and In re Ochiai

Training Materials for Treatment of Product and Process Claims in Light of In re Brouwer and In re Ochiai and 35 U.S.C. 103(b)(1996)
35 U.S.C. 112, First Paragraph

Written Description, Exam guide

Guidelines for Examination of Patent Applications under 35 U.S.C. § 112, ¶1, "Written Description" Requirement (2000) [PDF]

Training:  Enablement Chemical/Biotechnical

Training Materials for Examining Patent Applications with Respect to 35 U.S.C. Section § 112, First Paragraph - Enablement Chemical/Biotechnical Applications (1996)
35 U.S.C. 112, Sixth Paragraph - "Means or Step-plus-function" - Claim limitation - element (structure, material or acts) recited as a means or step for performing a function that is adequately described elsewhere in the application (summary, specification, original claims, abstract & drawings) and clearly associated within that function's description.
Exam guide, supplemental Supplemental Examination Guidelines for Determining the Applicability of 35 U.S.C. §112, para. 6 (2000)

Exam guide, interim supplemental

Interim Supplemental Examination Guidelines for Determining the Applicability of 35 U.S.C. § 112, para. 6 (1999)

Exam guide: Means or Step-plus-function claims

Examination Guidelines for Claims Reciting a "Means or Step Plus Function" Limitation in Accordance with 35 U.S.C. § 112, 6th (1994) [PDF]

 

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Last Modified: 3/7/2011 12:58:42 PM