Comments on 2019 Examining Computer-Implemented Functional Claim Limitations for Compliance With 35 U.S.C. § 112

AIPLA applauds the Office for again providing practitioners and examiners with instructions on how to analyze patent claims including functional limitations under 35 U.S.C. §§ 112(f) and 112(b) and how to analyze claims for compliance with the enablement and written-description requirements under 35 U.S.C. §112(a). We appreciate the publication of the Guidance with the 2019 Revised Patent Subject Matter Eligibility Guidance (hereinafter “the Section 101 Guidance”) as we believe that appropriate examination of proposed claims under section 112 would obviate many section 101 rejections.

As a preliminary matter, AIPLA encourages the Office to prepare training materials for analyzing claims under sections 112(a), 112(b), and 112(f) according to this guidance and to include materials encouraging examiners to identify and address overly broad or indefinite claims under section 112 rather than section 101. We also recommend that the Office prepare separate training materials on the role of the person having ordinary skill in the art in the analysis under each of sections 101 and 112, because the role of a person of ordinary skill is different when applying each of these sections. We further encourage the Office to make any such training materials available to the public.