MPEP § 707.07(l) — Comment on Examples (Annotated Rules)
§707.07(l) Comment on Examples
This page consolidates and annotates all enforceable requirements under MPEP § 707.07(l), including statutory authority, regulatory rules, examiner guidance, and practice notes. It is provided as guidance, with links to the ground truth sources. This is information only, it is not legal advice.
Comment on Examples
This section addresses Comment on Examples. Primary authority: 35 U.S.C. 112(a), 35 U.S.C. 112, and 35 U.S.C. 101. Contains: 1 requirement and 4 guidance statements.
Key Rules
Assignee as Applicant Signature
The results of the tests and examples should not normally be questioned by the examiner unless there is reasonable basis for questioning the results. If the examiner questions the results, the appropriate claims should be rejected as being based on an insufficient disclosure under 35 U.S.C. 112(a) or pre-AIA 35 U.S.C. 112. In re Borkowski, 422 F.2d 904, 164 USPQ 642 (CCPA 1970). See MPEP §§ 2161 – 2164.08(c) for a discussion of the written description and enablement requirements of 35 U.S.C 112. The applicant must reply to the rejection, for example, by providing the results of an actual test or example which has been conducted, or by providing relevant arguments that there is strong reason to believe that the result would be as predicted. Care should be taken that new matter is not entered into the application.
The results of the tests and examples should not normally be questioned by the examiner unless there is reasonable basis for questioning the results. If the examiner questions the results, the appropriate claims should be rejected as being based on an insufficient disclosure under 35 U.S.C. 112(a) or pre-AIA 35 U.S.C. 112. In re Borkowski, 422 F.2d 904, 164 USPQ 642 (CCPA 1970). See MPEP §§ 2161 – 2164.08(c) for a discussion of the written description and enablement requirements of 35 U.S.C 112. The applicant must reply to the rejection, for example, by providing the results of an actual test or example which has been conducted, or by providing relevant arguments that there is strong reason to believe that the result would be as predicted. Care should be taken that new matter is not entered into the application.
The results of the tests and examples should not normally be questioned by the examiner unless there is reasonable basis for questioning the results. If the examiner questions the results, the appropriate claims should be rejected as being based on an insufficient disclosure under 35 U.S.C. 112(a) or pre-AIA 35 U.S.C. 112. In re Borkowski, 422 F.2d 904, 164 USPQ 642 (CCPA 1970). See MPEP §§ 2161 – 2164.08(c) for a discussion of the written description and enablement requirements of 35 U.S.C 112. The applicant must reply to the rejection, for example, by providing the results of an actual test or example which has been conducted, or by providing relevant arguments that there is strong reason to believe that the result would be as predicted. Care should be taken that new matter is not entered into the application.
AIA vs Pre-AIA Practice
The results of the tests and examples should not normally be questioned by the examiner unless there is reasonable basis for questioning the results. If the examiner questions the results, the appropriate claims should be rejected as being based on an insufficient disclosure under 35 U.S.C. 112(a) or pre-AIA 35 U.S.C. 112. In re Borkowski, 422 F.2d 904, 164 USPQ 642 (CCPA 1970). See MPEP §§ 2161 – 2164.08(c) for a discussion of the written description and enablement requirements of 35 U.S.C 112. The applicant must reply to the rejection, for example, by providing the results of an actual test or example which has been conducted, or by providing relevant arguments that there is strong reason to believe that the result would be as predicted. Care should be taken that new matter is not entered into the application.
Utility Requirement
If questions are present as to operability or utility, consideration should be given to the applicability of a rejection under 35 U.S.C. 101. See MPEP § 2107 et seq.
Citations
| Primary topic | Citation |
|---|---|
| Utility Requirement | 35 U.S.C. § 101 |
| AIA vs Pre-AIA Practice Assignee as Applicant Signature | 35 U.S.C. § 112 |
| AIA vs Pre-AIA Practice Assignee as Applicant Signature | 35 U.S.C. § 112(a) |
| Utility Requirement | MPEP § 2107 |
| AIA vs Pre-AIA Practice Assignee as Applicant Signature | MPEP § 2161 |
| AIA vs Pre-AIA Practice Assignee as Applicant Signature | In re Borkowski, 422 F.2d 904, 164 USPQ 642 (CCPA 1970) |
Source Text from USPTO’s MPEP
This is an exact copy of the MPEP from the USPTO. It is here for your reference to see the section in context.
Official MPEP § 707.07(l) — Comment on Examples
Source: USPTO707.07(l) Comment on Examples [R-10.2019]
The results of the tests and examples should not normally be questioned by the examiner unless there is reasonable basis for questioning the results. If the examiner questions the results, the appropriate claims should be rejected as being based on an insufficient disclosure under 35 U.S.C. 112(a) or pre-AIA 35 U.S.C. 112. In re Borkowski, 422 F.2d 904, 164 USPQ 642 (CCPA 1970). See MPEP §§ 2161 – 2164.08(c) for a discussion of the written description and enablement requirements of 35 U.S.C 112. The applicant must reply to the rejection, for example, by providing the results of an actual test or example which has been conducted, or by providing relevant arguments that there is strong reason to believe that the result would be as predicted. Care should be taken that new matter is not entered into the application.
If questions are present as to operability or utility, consideration should be given to the applicability of a rejection under 35 U.S.C. 101. See MPEP § 2107et seq.