Comments on: Q) 35 USC 101 http://mypatentbar.com/2008/09/04/q-35-usc-101/ Patent Bar Review and Study Guide Tue, 22 May 2012 00:33:43 +0000 http://wordpress.org/?v=2.9.2 hourly 1 By: scruff http://mypatentbar.com/2008/09/04/q-35-usc-101/#comment-1468 scruff Sat, 20 Jun 2009 18:25:03 +0000 http://patentbar.wordpress.com/?p=789#comment-1468 I suppose I agree with you. This particular type of rejection assumes that there is no utility of invention, even though the invention might comply with one of the statutory classes: machine, manufacture, composition of matter, process. However, you can imagine a case where the invention has utility, but is rejected under 101 because it is not a machine, manufacture, composition of matter, or process. In that case, a rejection under 112(1) would not necessarily follow, unless the specification is independently non-enabling. I suppose I agree with you. This particular type of rejection assumes that there is no utility of invention, even though the invention might comply with one of the statutory classes: machine, manufacture, composition of matter, process. However, you can imagine a case where the invention has utility, but is rejected under 101 because it is not a machine, manufacture, composition of matter, or process. In that case, a rejection under 112(1) would not necessarily follow, unless the specification is independently non-enabling.

]]> By: triedandtested http://mypatentbar.com/2008/09/04/q-35-usc-101/#comment-1467 triedandtested Sat, 23 May 2009 00:41:00 +0000 http://patentbar.wordpress.com/?p=789#comment-1467 I agree with this answer but in real life I guess such a situation arises only when there is a specific rejection of "utility" under 101, as opposed to other type of 101 rejection (like the non-statutory type rejection), and then 101 is followed by 112 (1), not always. Any thoughts anyone? I agree with this answer but in real life I guess such a situation arises only when there is a specific rejection of “utility” under 101, as opposed to other type of 101 rejection (like the non-statutory type rejection), and then 101 is followed by 112 (1), not always.

Any thoughts anyone?

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