Does a system claim which state tangible items, for example "processor configured to" help satisfy the "practical application" aspect of the new guidelines which were released in January 2019? I am also looking for any definitions in MPEP which define a method claim as well as a system claim. According to the MPEP, are they really different or merely a different flavor?
2 Answers
35 USC 101 says -
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.
A method is a process and a system is a machine. They are clearly in two different statutory categories.
EDIT
If you mix things (system, for example) and steps (methods) in a single claim it will be ruled as indefinite.
From MPEP
I. PRODUCT AND PROCESS IN THE SAME CLAIM
A single claim which claims both an apparatus and the method steps of using the apparatus is indefinite under 35 U.S.C. 112(b) or pre-AIA 35 U.S.C. 112, second paragraph. See In re Katz Interactive Call Processing Patent Litigation, 639 F.3d 1303, 1318, 97 USPQ2d 1737, 1748-49 (Fed. Cir. 2011). In Katz, a claim directed to "[a] system with an interface means for providing automated voice messages…to certain of said individual callers, wherein said certain of said individual callers digitally enter data" was determined to be indefinite because the italicized claim limitation is not directed to the system, but rather to actions of the individual callers, which creates confusion as to when direct infringement occurs. Katz, 639 F.3d at 1318 (citing IPXL Holdings v. Amazon.com, Inc., 430 F.3d 1377, 1384, 77 USPQ2d 1140, 1145 (Fed. Cir. 2005), in which a system claim that recited "an input means" and required a user to use the input means was found to be indefinite because it was unclear "whether infringement … occurs when one creates a system that allows the user [to use the input means], or whether infringement occurs when the user actually uses the input means."); Ex parte Lyell, 17 USPQ2d 1548 (Bd. Pat. App. & Inter. 1990) (claim directed to an automatic transmission workstand and the method of using it held ambiguous and properly rejected under 35 U.S.C. 112, second paragraph).
MORE EDITING
A way claim wording can cross the line into including both steps and a claim for a system is that system claims can be written as a system that is defined by its behavior. That can be a legitimate way to define a system. But defining the behavior is usually done as steps. "A system configured to execute . . . " is frequently seen in a claim preamble. Even though a definition of what looks like a method follows, this is not a method claim.
If this type of claim is attempted and not worded correctly it can be ambiguous as to whether a thing or a method is being claimed.
answered Oct 24, 2019 at 2:08
In 2nd prong test of Step 2A of "2019 Revised Patent Subject Matter Eligibility Guidance", "practical application" is to be 'evaluated on the claim as a whole'(note 24 page') 1.
The term 'additional element' requirement in this context connotes 'claim features, limitations, and/or steps that are recited in the claim beyond the identified judicial exception, (same note)1
Hence, it may be construed that mere mention of a tangible item is not enough. What is required is integration of 'judicial exception' to a 'practical application'(e.g. note 26 page 20 of 1).
If, your "processor configured to" is 'aimed to' usher any improvement in any practical application (e.g. improvement in field of computer technology, computer performance etc (note 25) 1) than (if 102, 103 and 112 do not stand on your way) perhaps.
As regards "definitions in MPEP" for definition of "method claim as well as a system claim", I too looked for the same for years but could not locate one. However, these two documents may be useful for you. Patent claim Formats and Types of Claims from WIPO 2 and also this one from USPTO 3
This site also is rich with highly educative content on this subject e.g 4. Please search tab related to question to find them out.
