Question 1

What is the three-prong test for identifying limitations under 35 U.S.C. 112(f)?

Accepted Answer

The three-prong test is used to determine whether a claim limitation invokes 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph. According to MPEP § 2181, the test consists of the following prongs:

The claim limitation uses the term "means" or "step" or a term used as a substitute for "means" that is a generic placeholder (also called a nonce term or a non-structural term having no specific structural meaning) for performing the claimed function;
The term "means" or "step" or the generic placeholder is modified by functional language, typically, but not always linked by the transition word "for" (e.g., "means for") or another linking word or phrase, such as "configured to" or "so that"; and
The term "means" or "step" or the generic placeholder is not modified by sufficient structure, material, or acts for performing the claimed function.

If a claim limitation meets all three prongs, it is interpreted under 35 U.S.C. 112(f). The MPEP provides this guidance:

"As explained in MPEP § 2181, subsection I, claim limitations that meet the following three-prong test will be interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph."

It's important to note that the presence or absence of the word "means" creates a rebuttable presumption regarding the application of 35 U.S.C. 112(f). Examiners and practitioners should carefully apply this test to determine the proper claim interpretation.

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Question 2

What types of technical information are classified in the CPC system?

Accepted Answer

The CPC system classifies two main types of technical information found in patent documents:

Invention Information: This is mandatory to classify and represents an addition to the state of the art. The MPEP defines it as:

"Invention information is technical information in the total disclosure of a patent document (for example, description, drawings, claims) that represents an addition to the state of the art."

Additional Information: This is discretionary and includes non-trivial technical information that doesn't represent an addition to the state of the art but might be useful for searchers.

The MPEP states:

"Additional information is non-trivial technical information which does not in itself represent an addition to the state of the art but might constitute useful information for the searcher."

Both types of information contribute to the overall classification picture of a patent application, ensuring comprehensive and accurate classification for search and retrieval purposes.

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Question 3

What technical information can examiners request about the invention?

Accepted Answer

What technical information can examiners request about the invention?

Examiners can request a wide range of technical information about the invention. According to MPEP 704.11, this may include:

'Technical information known to applicant concerning the related art, the disclosure, the claimed subject matter, other factual information pertinent to patentability, or concerning the accuracy of the examiner's stated interpretation of such items.'
Explanations of specific technical terms or phrases used in the application
Details about the invention's operation, structure, or chemical composition
Information about the invention's utility or practical applications
Clarification on any ambiguities in the specification or claims

This technical information helps examiners fully understand the invention and assess its patentability in light of the prior art and statutory requirements.

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Question 4

What is a substantial new question of patentability (SNQ) in patent reexamination?

Accepted Answer

A substantial new question of patentability (SNQ) is a crucial concept in patent reexamination. According to MPEP 2242:

"If the prior art patents and/or printed publications raise a substantial new question of patentability as to at least one claim of the patent, then a substantial new question of patentability as to the patent is present, unless the same question of patentability has already been: (A) decided in a final holding of invalidity by a federal court in a decision on the merits involving the claim; (B) decided in an earlier concluded examination or review of the patent by the Office; or (C) raised to or by the Office in a pending reexamination or supplemental examination of the patent."

In essence, an SNQ is a new, non-cumulative technological teaching that was not previously considered and discussed during the original examination, and that is relevant to determining the patentability of at least one claim.

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Question 5

What is the "two-way distinctness" test for process and apparatus claims?

Accepted Answer

What is the "two-way distinctness" test for process and apparatus claims?

The "two-way distinctness" test is a criterion used by patent examiners to determine whether process and apparatus claims are distinct for the purposes of restriction requirements. According to MPEP 806.05(e):

"Process and apparatus for its practice can be shown to be distinct inventions, if either or both of the following can be shown: (A) that the process as claimed can be practiced by another materially different apparatus or by hand; or (B) that the apparatus as claimed can be used to practice another materially different process."

This test ensures that:

The process is not solely dependent on the specific apparatus claimed
The apparatus is not limited to performing only the claimed process

If either condition is met, the process and apparatus are considered distinct, potentially leading to a restriction requirement. This test helps maintain the integrity of the patent system by preventing overly broad claims that could unfairly limit competition or innovation.

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Question 6

How can examiners search for foreign patents for pre-AIA 35 U.S.C. 102(d) rejections?

Accepted Answer

Examiners have several methods to search for foreign patents that could be used for pre-AIA 35 U.S.C. 102(d) rejections. The MPEP outlines the following approaches:

Electronic database search:
"The search for a granted patent can be accomplished on an electronic database either by the examiner or by the staff of the Scientific and Technical Information Center."
Online searching: For more information on online searching, examiners can refer to MPEP § 901.06(a), subsection IV.B.
Requirement for information:
"Alternatively, if the examiner has a reasonable basis for concluding that pre-AIA 35 U.S.C. 102(d) prior art might exist, the examiner may make a requirement for information under 37 CFR 1.105."

For more details on requirements for information, examiners can consult MPEP § 704.10 et seq.

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Question 7

How are open-ended numerical ranges evaluated in patent claims?

Accepted Answer

Open-ended numerical ranges in patent claims require careful analysis for definiteness. The MPEP provides guidance on how these ranges are evaluated:

Ambiguities can arise when an independent claim recites an open-ended range and a dependent claim sets forth specific amounts that appear to exclude the open-ended component.
Claims that include theoretical content greater than 100% are not necessarily indefinite if they cannot exist in fact.
Maximum limits without specified minimums may be acceptable in certain contexts.

As stated in MPEP 2173.05(c): "Open-ended numerical ranges should be carefully analyzed for definiteness." The MPEP also notes: "It was observed that subject matter which cannot exist in fact can neither anticipate nor infringe a claim." (In re Kroekel, 504 F.2d 1143, 183 USPQ 610 (CCPA 1974))

Additionally, the MPEP clarifies certain terms: "the term 'up to' includes zero as a lower limit, In re Mochel, 470 F.2d 638, 176 USPQ 194 (CCPA 1974); and 'a moisture content of not more than 70% by weight' reads on dry material, Ex parte Khusid, 174 USPQ 59 (Bd. App. 1971)."

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Question 8

How does the "suggestion test" apply to design patent obviousness determinations?

Accepted Answer

The "suggestion test" is an important aspect of design patent obviousness determinations. The MPEP describes its application:

"If a designer of ordinary skill would have been motivated to modify a primary reference by deleting features thereof or by interchanging with or adding features from pertinent secondary references, the claimed design would have been obvious."

Key points about the suggestion test in design patents:

It assesses whether the prior art would have suggested the modifications necessary to arrive at the claimed design.
The test considers what would be obvious to an ordinary designer in the field.
It requires a proper motivation or reason for combining or modifying references.
The suggestion can come from the prior art itself, market forces, or other sources.

When applying or responding to the suggestion test, it's crucial to articulate clear reasoning for why an ordinary designer would or would not have been motivated to make the specific modifications that result in the claimed design.

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Question 9

What is the relationship between "undue experimentation" and the level of skill in the art?

Accepted Answer

The relationship between "undue experimentation" and the level of skill in the art is crucial in determining whether a specification is enabling. According to MPEP 2164.05(b):

"The relative skill of those in the art refers to the skill level of those in the art in the technological field to which the claimed invention pertains. Where the level of skill is high, one would expect a lower amount of disclosure to be sufficient to comply with the enablement requirement."

This means that:

For fields with highly skilled practitioners, less detailed disclosure may be required for enablement.
In fields with lower skill levels, more comprehensive disclosure might be necessary to avoid undue experimentation.
The examiner must consider the level of skill in the art when assessing whether the disclosure is sufficient for enablement.

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Question 10

What is the deadline for filing a certified copy of a foreign application for priority claim?

Accepted Answer

For applications filed before March 16, 2013, the certified copy of the foreign application must be filed within the pendency of the application. According to 37 CFR 1.55(g)(1):

The claim for priority and the certified copy of the foreign application specified in 35 U.S.C. 119(b) or PCT Rule 17 must, in any event, be filed within the pendency of the application, unless filed with a petition under paragraph (e) or (f) of this section, or with a petition accompanied by the fee set forth in § 1.17(g) which includes a showing of good and sufficient cause for the delay in filing the certified copy of the foreign application in a design application.

However, it's important to note that if the claim for priority or the certified copy is filed after the issue fee is paid, the patent will not include the priority claim unless corrected by a certificate of correction.

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What is the three-prong test for identifying limitations under 35 U.S.C. 112(f)?

What types of technical information are classified in the CPC system?

What technical information can examiners request about the invention?

What is a substantial new question of patentability (SNQ) in patent reexamination?

What is the “two-way distinctness” test for process and apparatus claims?

How can examiners search for foreign patents for pre-AIA 35 U.S.C. 102(d) rejections?

How are open-ended numerical ranges evaluated in patent claims?

How does the “suggestion test” apply to design patent obviousness determinations?

What is the relationship between “undue experimentation” and the level of skill in the art?

What is the deadline for filing a certified copy of a foreign application for priority claim?