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Deficiencies should be explained clearly, particularly when they serve as a basis for a rejection.
Whenever practicable, Office personnel should indicate how rejections may be overcome and how problems may be resolved.
The written description will provide the clearest explanation of the applicant’s invention, by exemplifying the invention, explaining how it relates to the prior art and explaining the relative significance of various features of the invention.
Accordingly, Office personnel should begin their evaluation of a computer-related invention as follows: – determine what the programmed computer does when it performs the processes dictated by the software (i.e., the functionality of the programmed computer) (Arrhythmia, 958 F.2d at 1057, 22 USPQ at 1036, “It is of course true that a modern digital computer manipulates data, usually in binary form, by performing mathematical operations, such as addition, subtraction, multiplication, division, or bit shifting, on the data.
In reality, the failure to switch from agent to attorney is likely only an oversight in the vast majority of situations.
The Guidelines also clarify the Office’s position on certain patentability standards related to this field of technology. Claims should not be categorized as methods of doing business. The appendix which appears at the end of this section includes a flow chart of the process Office personnel will follow in conducting examinations for computer-related inventions.
Office personnel are to rely on these Guidelines in the event of any inconsistent treatment of issues between these Guidelines and any earlier provided guidance from the Office. Instead, such claims should be treated like any other process claims, pursuant to these Guidelines when relevant. It is essential that patent applicants obtain a prompt yet complete examination of their applications.
I looked at the FR website for ten of their listed patent agents and found that nine of them are actually attorneys. Their top litigator, Joe Re, is listed as a patent agent on the USPTO rolls.
I was already aware of this issue, but it came to a head recently as I began working on a project that considers the professional role of patent agents as compared with patent attorneys.