How does the USPTO handle cases where a biological deposit becomes unavailable?
When the USPTO becomes aware that a biological deposit referenced in a patent application is unavailable, it takes the following steps: The examiner treats the application as if no deposit existed. The applicant may be required to make a replacement or supplemental deposit. The new deposit must satisfy the requirements for patentability under 35 U.S.C.…
Read MoreHow does the USPTO determine if a claim is too broad?
The United States Patent and Trademark Office (USPTO) uses several criteria to determine if a claim is too broad. According to MPEP 2173.04, the assessment depends on the specific issues with the claim: Inventor’s Regard: If the claim is broader than what the inventor regards as the invention, it may be rejected under 35 U.S.C.…
Read MoreHow does the USPTO apply the “Mere Function of Machine” rule during patent examination?
The United States Patent and Trademark Office (USPTO) applies the “Mere Function of Machine” rule by not rejecting process or method claims solely because they describe the function of a disclosed machine. As stated in MPEP 2173.05(v): “Process or method claims are not subject to rejection by U.S. Patent and Trademark Office examiners under 35…
Read MoreWhat happens if an applicant successfully rebuts a utility rejection?
When an applicant successfully rebuts a utility rejection, the patent examiner is required to withdraw both the utility rejection and any related rejections. The MPEP clearly states: “If the applicant satisfactorily rebuts a prima facie rejection based on lack of utility under 35 U.S.C. 101, withdraw the 35 U.S.C. 101 rejection and the corresponding rejection…
Read MoreWhat statutory provisions address undue breadth in patent claims?
Undue breadth in patent claims can be addressed under different statutory provisions, depending on the specific issues. The MPEP 2173.04 outlines three main scenarios: 35 U.S.C. 112(b) or pre-AIA 35 U.S.C. 112, second paragraph: “If the claim is too broad because it does not set forth that which the inventor or a joint inventor regards…
Read MoreDo the sequence identifier rules affect 35 U.S.C. 112 requirements?
No, the sequence identifier rules do not alter the requirements of 35 U.S.C. 112. The MPEP clarifies: “The rules do not alter, in any way, the requirements of 35 U.S.C. 112. The implementation of the rules has had no effect on disclosure and/or claiming requirements. The rules, in general, or the use of sequence identifiers…
Read MoreWhat is the scope of inter partes reexamination?
The scope of inter partes reexamination is defined by 37 CFR 1.906, which states: Claims will be examined based on patents or printed publications. For subject matter added or deleted during reexamination, claims will be examined based on 35 U.S.C. 112 requirements. Claims cannot enlarge the scope of the original patent claims. Issues outside of…
Read MoreWhat is the scope of an ex parte reexamination under 35 U.S.C. 304?
An ex parte reexamination under 35 U.S.C. 304 provides a complete reexamination of the patent claims based on prior art patents and printed publications. The MPEP states: “A reexamination proceeding ordered under 35 U.S.C. 304 provides a complete reexamination of the patent claims on the basis of prior art patents and printed publications.” Additionally, double…
Read MoreWhat is required to satisfy 35 U.S.C. 112 regarding how to use a claimed invention?
To satisfy 35 U.S.C. 112 regarding how to use a claimed invention, the following conditions are sufficient: A statement of utility in the specification that contains a connotation of how to use The art recognizes that standard modes of administration are known and contemplated As stated in the MPEP, If a statement of utility in…
Read MoreHow can I respond to a rejection based on a biological material deposit issue?
According to MPEP 2411.02, there are three ways to respond to a rejection under 35 U.S.C. 112 based on the absence of access to a biological material: Make an acceptable original, replacement, or supplemental deposit in accordance with the regulations. Provide a written assurance that an acceptable deposit will be made on or before the…
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