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706.03(a) Rejections Under 35 U.S.C. 101 [R-5] - 700 Examination of Applications
706.03(a) Rejections Under 35 U.S.C. 101 [R-5]
I. SUBJECT MATTER ELIGIBILITY
Patents are not granted for all new and useful inventions and discoveries. The subject matter of the invention or discovery must come within the boundaries set forth by 35 U.S.C. 101, which permits patents to be granted only for "any new and useful process, machine, manufacture, or composition of matter, or any new and useful improvement thereof."
The term "process" as defined in 35 U.S.C. 100, means process, art or method, and includes a new use of a known process, machine, manufacture, composition of matter, or material.
See MPEP § 2105 for **>patent eligibility of living subject matter< and MPEP § 2106 **>for guidelines pertaining to subject matter eligibility in general.<
Decisions have determined the limits of the statutory classes. Examples of subject matter not patentable under the statute follow:
A. Printed Matter
For example, a mere arrangement of printed matter, though seemingly a "manufacture," is rejected as not being within the statutory classes. See In re Miller, 418 F.2d 1392, 164 USPQ 46 (CCPA 1969); Ex parte Gwinn, 112 USPQ 439 (Bd. App. 1955); and In re Jones, 373 F.2d 1007, 153 USPQ 77 (CCPA 1967).
B. Naturally Occurring Article
Similarly, a thing occurring in nature, which is substantially unaltered, is not a "manufacture." A shrimp with the head and digestive tract removed is an example. Ex parte Grayson, 51 USPQ 413 (Bd. App. 1941).
C. Scientific Principle
A scientific principle, divorced from any tangible structure, can be rejected as not within the statutory classes. O"Reilly v. Morse, 56 U.S. (15 How.) 62 (1854).
This subject matter is further limited by the Atomic Energy Act explained in MPEP § 706.03(b).
II. UTILITY
A rejection on the ground of lack of utility includes the more specific grounds of inoperativeness, involving perpetual motion. A rejection under 35 U.S.C. 101 for lack of utility should not be based on grounds that the invention is frivolous, fraudulent or against public policy. See Juicy Whip Inc. v. Orange Bang Inc., 185 F.3d 1364, 1367-68, 51 USPQ2d 1700, 1702-03 (Fed. Cir. 1999) ("[Y]ears ago courts invalidated patents on gambling devices on the ground that they were immoral., but that is no longer the law.Congress never intended that the patent laws should displace the police powers of the States, meaning by that term those powers by which the health, good order, peace and general welfare of the community are promoted.we find no basis in section 101 to hold that inventions can be ruled unpatentable for lack of utility simply because they have the capacity to fool some members of the public."). The statutory basis for this rejection is 35 U.S.C. 101. See MPEP § 2107 for guidelines governing rejections for lack of utility. See MPEP § 2107.01 - § 2107.03 for legal precedent governing the utility requirement.
Use Form Paragraphs 7.04 through 7.05.03 to reject under 35 U.S.C. 101.
¶ 7.04 Statement of Statutory Basis, 35 U.S.C. 101
35 U.S.C. 101 reads as follows:
Whoever invents or discovers any new and useful process, machine, manufacture, or composition of matter, or any new and useful improvement thereof, may obtain a patent therefor, subject to the conditions and requirements of this title.
Examiner Note
This paragraph must precede the first use of 35 U.S.C. 101 in all first actions on the merits and final rejections.
¶ 7.05 Rejection, 35 U.S.C. 101, -Heading Only- (Utility, Non-Statutory, Inoperative)
Claim [1] rejected under 35 U.S.C. 101 because
Examiner Note
1. This form paragraph must be followed by any one of form paragraphs 7.05.01- 7.05.03 or another appropriate reason.
2. Explain the rejection following the recitation of the statute and the use of form paragraphs 7.05.01- 7.05.03 or other reason.
3. See MPEP §§ 706.03(a) and 2105- 2107.03 for other situations.
4. This form paragraph must be preceded by form paragraph 7.04 in first actions and final rejections.
**>¶ 7.05.01 Rejection, 35 U.S.C. 101, Non-Statutory
the claimed invention is directed to non-statutory subject matter because [1]
Examiner Note
In bracket 1, explain why the claimed invention is not patent eligible subject matter, e.g.,
(a) why the claimed invention does not fall within at least one of the four categories of patent eligible subject matter recited in 35 U.S.C. 101 (process, machine, manufacture, or composition of matter); or
(b) why the claimed invention is directed to a judicial exception to 35 U.S.C. 101 (i.e., an abstract idea, natural phenomenon, or law of nature) and is not directed to a practical application of such judicial exception (e.g., because the claim does not require any physical transformation and the invention as claimed does not produce a useful, concrete, and tangible result); or
(c) why the claimed invention would impermissibly cover every substantial practical application of, and thereby preempt all use of, an abstract idea, natural phenomenon, or law of nature.
¶ 7.05.02 Rejection, 35 U.S.C. 101, Utility Lacking
the claimed invention lacks patentable utility. [1]
Examiner Note
In bracket 1, provide explanation of lack of utility. See MPEP §§ 706.03(a) and 2105 - 2107.03.
<¶ 7.05.03 Rejection, 35 U.S.C. 101, Inoperative
the disclosed invention is inoperative and therefore lacks utility. [1]
Examiner Note
In bracket 1, explain why invention is inoperative.
¶ 7.05.04 Utility Rejections Under 35 U.S.C. 101 and 35 U.S.C. 112, First Paragraph
Claim [1] rejected under 35 U.S.C. 101 because the claimed invention is not supported by either a [2] asserted utility or a well established utility.
[3]
Claim [4] also rejected under 35 U.S.C. 112, first paragraph. Specifically, since the claimed invention is not supported by either a [5] asserted utility or a well established utility for the reasons set forth above, one skilled in the art clearly would not know how to use the claimed invention.
Examiner Note
1. Where the specification would not enable one skilled in the art to make the claimed invention, or where alternative reasons support the enablement rejection, a separate rejection under 35 U.S.C. 112, first paragraph, enablement should be made using the factors set forth in In re Wands, 858 F.2d 731, 8 USPQ2d 1400 (Fed. Cir. 1988) and an undue experimentation analysis. See MPEP §§ 2164- 2164.08(c).
2. Use Format A, B, or C below as appropriate.
Format A:
(a) Insert the same claim numbers in brackets 1 and 4.
(b) Insert --specific and substantial-- in inserts 2 and 5.
(c) In bracket 3, insert the explanation as to why the claimed invention is not supported by either a specific and substantial asserted utility or a well established utility.
(d) Format A is to be used when there is no asserted utility and when there is an asserted utility but that utility is not specific and substantial.
Format B:
(a) Insert the same claim numbers in brackets 1 and 4.
(b) Insert --credible-- in inserts 2 and 5.
(c) In bracket 3, insert the explanation as to why the claimed invention is not supported by either a credible asserted utility or a well established utility.
Format C:
For claims that have multiple utilities, some of which are not specific and substantial, some of which are not credible, but none of which are specific, substantial and credible:
(a) Insert the same claim numbers in brackets 1 and 4.
(b) Insert --specific and substantial asserted utility, a credible-- in inserts 2 and 5.
(c) In bracket 3, insert the explanation as to why the claimed invention is not supported by either a specific and substantial asserted utility, a credible asserted utility or a well established utility. Each utility should be addressed.
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