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Thursday, March 5, 2009

Machine or Transformation - PTO's new 101 Guidelines

Patently-O has a new entry discussing the Examining Corps' new instructions on applying Section 101 to claim rejections. It purports to apply the "clarification" provided in In re Bilski, 545 F.3d 943, 88 USPQ2d 1385 (Fed. Cir. 2008), but some may disagree with their interpretation. As pointed out by Professor Crouch:

There are two corollaries to the machine-or-transformation test. First, a mere field-of-use limitation is generally insufficient to render an otherwise ineligible method claim patent- eligible. This means the machine or transformation must impose meaningful limits on the method claim's scope to pass the test. Second, insignificant extra-solution activity will not transform an unpatentable principle into a patentable process. This means reciting a specific machine or a particular transformation of a specific article in an insignificant step, such a data gathering or outputting, is not sufficient to pass the test.