Can new matter be introduced during ex parte reexamination?
New matter cannot be introduced into the disclosure during ex parte reexamination. The MPEP states: “35 U.S.C. 305 provides for examination under 35 U.S.C. 132, which prohibits the introduction of new matter into the disclosure.” If new matter is added to the claims or affects claim limitations, the claims should be rejected under 35 U.S.C.…
Read MoreHow are “new matter” amendments treated in inter partes reexamination?
“New matter” amendments in inter partes reexamination are treated as follows: Amendments to the disclosure that introduce new matter ( 35 U.S.C. 132 ) will be required to be canceled. Claims containing new matter will be rejected under 35 U.S.C. 112. “New matter” amendments to drawings are ordinarily not entered. MPEP 2670 states: “Any ‘new…
Read MoreHow is the agreement between claims and specification considered in patent examination?
The agreement, or lack thereof, between claims and the specification is considered differently depending on the context of the examination. According to MPEP 2172: “Agreement, or lack thereof, between the claims and the specification is properly considered only with respect to 35 U.S.C. 112(a) or pre-AIA 35 U.S.C. 112, first paragraph.” This principle is based…
Read MoreHow does MPEP 2114 address computer-implemented functional claim limitations?
MPEP 2114 provides specific guidance on computer-implemented functional claim limitations. Key points include: For computer-implemented functional claim limitations, the specification must disclose an algorithm for performing the claimed function. If the specification does not provide a disclosure of the computer and algorithm in sufficient detail, a rejection under 35 U.S.C. 112(a) or pre-AIA 35 U.S.C.…
Read MoreWhat is the “Mere Function of Machine” rule in patent law?
The “Mere Function of Machine” rule refers to a principle in patent law that protects process or method claims from being rejected solely based on their relationship to a disclosed machine or apparatus. According to 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 are the legal statutes governing biological deposits for patent applications?
The primary legal statutes governing biological deposits for patent applications are found in 35 U.S.C. 112. According to MPEP 2403: “The issue of the need to make a deposit of biological material typically arises under 35 U.S.C. 112(a) with regard to the enablement requirement, although the issue may also arise under the written description or…
Read MoreWhat is the legal basis for the best mode requirement?
The best mode requirement is derived from 35 U.S.C. 112(a), which states that the specification of a patent application “shall set forth the best mode contemplated by the inventor or joint inventor of carrying out the invention.” This requirement is further elaborated in the Manual of Patent Examining Procedure (MPEP) Section 2165. The purpose of…
Read MoreDoes the written description need to be literal to satisfy the requirement?
No, the written description does not need to be literal to satisfy the requirement. As stated in MPEP 2163.02: “The subject matter of the claim need not be described literally (i.e., using the same terms or in haec verba) in order for the disclosure to satisfy the description requirement.“ However, it’s important to note that…
Read MoreWho bears the initial burden of proof in biological material deposit cases?
In biological material deposit cases, the initial burden of proof lies with the United States Patent and Trademark Office (USPTO). According to MPEP 2411: “The burden is initially on the Office to establish that access to a biological material is necessary for the satisfaction of the statutory requirements for patentability under 35 U.S.C. 112.” This…
Read MoreWhat is the difference between inherency in 35 U.S.C. 112 and 35 U.S.C. 102 contexts?
What is the difference between inherency in 35 U.S.C. 112 and 35 U.S.C. 102 contexts? The concept of inherency is applied differently in the contexts of 35 U.S.C. 112 (written description) and 35 U.S.C. 102 (anticipation): 35 U.S.C. 112 context: Inherency is used to determine if a property, function, or characteristic is necessarily present in…
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