Question 1

How should language-dependent free text be presented in a Sequence Listing XML?

Accepted Answer

Language-dependent free text in a Sequence Listing XML should be presented as follows:

In English within the INSDQualifier_value element
In a language other than English within the NonEnglishQualifier_value element
Or in both elements

The MPEP states: "Language-dependent free text must be presented in the INSDQualifier_value element in English, or in the NonEnglishQualifier_value element in a language other than English, or in both elements."

It's important to note that Latin genus and species names do not require translation, and certain technical terms and proper names originating from non-English words that are used internationally are considered English for this purpose.

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Question 2

What is the Scientific and Technical Information Center (STIC) and how does it assist patent examiners?

Accepted Answer

The Scientific and Technical Information Center (STIC) is a vital resource for patent examiners at the USPTO. According to MPEP 902:

"The Scientific and Technical Information Center (STIC) provides technical literature, foreign patents, and database searching for patent examiners."

The STIC assists patent examiners in several ways:

Literature Access: Provides access to a vast collection of scientific and technical literature
Foreign Patent Documents: Offers resources for searching and retrieving foreign patent documents
Database Searching: Facilitates access to specialized databases for comprehensive prior art searches
Research Support: Offers research assistance and training on various search tools and techniques
Translation Services: Provides translation services for foreign language documents

By leveraging the resources of the STIC, patent examiners can conduct more thorough and efficient prior art searches, enhancing the quality of patent examination.

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Question 3

What is the relationship between "other meaningful limitations" and the machine-or-transformation test?

Accepted Answer

The concept of "other meaningful limitations" in MPEP 2106.05(e) is related to, but distinct from, the machine-or-transformation test. Here's how they are connected:

The machine-or-transformation test is a useful tool for determining patent eligibility, but it is not the sole test.
"Other meaningful limitations" can include elements that satisfy the machine-or-transformation test, such as applying the judicial exception with a particular machine or transforming an article to a different state or thing.
However, "other meaningful limitations" are broader and can encompass additional ways of integrating an abstract idea into a practical application.

The MPEP notes: "While the machine-or-transformation test is an important clue to eligibility, it should not be used as a separate test for eligibility, but instead should be considered as part of the 'integration' determination or 'significantly more' determination."

In essence, while passing the machine-or-transformation test can indicate the presence of other meaningful limitations, it is not the only way to demonstrate such limitations. The focus remains on whether the claim as a whole integrates the judicial exception into a practical application.

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Question 4

What is the time limit for submitting a certified copy of a foreign application for priority claim?

Accepted Answer

What is the time limit for submitting a certified copy of a foreign application for priority claim?

The time limit for submitting a certified copy of a foreign application for a priority claim depends on the specific circumstances of your application. According to MPEP 213.04:

The time period for filing a certified copy of the foreign application in the United States application (or written statement) is no later than the date the issue fee is paid.

However, there are some exceptions and additional considerations:

If you file the priority claim within the later of four months from the actual filing date of the application or sixteen months from the filing date of the prior foreign application, you may not need to file a certified copy immediately.
If the foreign application was filed in a foreign intellectual property office participating in a priority document exchange agreement with the USPTO, the exchange may satisfy the certified copy requirement.
In some cases, an interim copy of the foreign application or a statement that the copy was previously filed may be sufficient.

Note: While it's possible to file the certified copy after paying the issue fee, it requires an additional processing fee and must be done before the patent is granted. To avoid complications and extra fees, it's best to submit the certified copy as early as possible during the application process.

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Question 5

How can I satisfy the requirement for a certified copy of a foreign application in a continuing application?

Accepted Answer

In a continuing application, you can satisfy the requirement for a certified copy of a foreign application without actually filing the certified copy again. According to 37 CFR 1.55(h):

The requirement for a certified copy of the foreign application will be considered satisfied in an application if a prior-filed nonprovisional application for which a benefit is claimed under 35 U.S.C. 120, 121, 365(c), or 386(c) contains a certified copy of the foreign application and the prior-filed nonprovisional application is identified as containing a certified copy of the foreign application.

This means that if you have already filed a certified copy in a parent application, you can simply identify that application as containing the certified copy when filing your continuing application. This approach can save time and reduce the paperwork required for perfecting priority claims in continuing applications.

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certified copy
foreign application
continuing application
37 CFR 1.55

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37 CFR 1.55

Question 6

How does the 'teaching, suggestion, or motivation' (TSM) test apply in obviousness determinations?

Accepted Answer

How does the 'teaching, suggestion, or motivation' (TSM) test apply in obviousness determinations?

The 'teaching, suggestion, or motivation' (TSM) test is an important concept in determining obviousness in patent examination. According to MPEP 2143, while the TSM test is not the sole test for obviousness, it remains a valid approach:

"The Supreme Court in KSR noted that the analysis supporting a rejection under 35 U.S.C. 103 should be made explicit. The Court quoting In re Kahn, 441 F.3d 977, 988, 78 USPQ2d 1329, 1336 (Fed. Cir. 2006), stated that '[R]ejections on obviousness cannot be sustained by mere conclusory statements; instead, there must be some articulated reasoning with some rational underpinning to support the legal conclusion of obviousness.'"

The TSM test applies in obviousness determinations as follows:

Examiners must articulate a reason why a person of ordinary skill in the art would have been motivated to combine the prior art references.
This reason can come from the prior art itself, the knowledge of one of ordinary skill in the art, or the nature of the problem to be solved.
The motivation does not need to be explicitly stated in the references but can be implied from the prior art as a whole.
While TSM is not the only way to establish obviousness, it provides a structured approach to support the rationale for combining references.

Examiners should use the TSM test as one of several tools to provide a clear and reasoned explanation for obviousness rejections.

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Question 7

How does the level of skill in the art affect enablement requirements?

Accepted Answer

The level of skill in the art is a significant factor in determining whether a patent specification meets the enablement requirement. This factor is part of the Wands factors established in In re Wands, 858 F.2d 731 (Fed. Cir. 1988). The MPEP Section 2164.06(b) provides insights on how this factor is considered:

In the Wands case, the court noted that "there was a high level of skill in the art at the time the application was filed." This high skill level contributed to the court's conclusion that the invention was enabled, despite the complex nature of monoclonal antibody technology.

The level of skill in the art affects enablement requirements in several ways:

It determines the amount of guidance needed in the specification
It influences the assessment of whether experimentation is "undue"
It helps define what knowledge can be assumed to be common in the field
It impacts the interpretation of the prior art

Inventors should consider the level of skill in their field when drafting their specifications. In fields with a high level of skill, less detailed disclosure may be necessary, while in fields with a lower level of skill or for groundbreaking inventions, more comprehensive guidance may be required to satisfy the enablement requirement.

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How should language-dependent free text be presented in a Sequence Listing XML?

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What is the Scientific and Technical Information Center (STIC) and how does it assist patent examiners?

What is the relationship between “other meaningful limitations” and the machine-or-transformation test?

What is the time limit for submitting a certified copy of a foreign application for priority claim?

How can I satisfy the requirement for a certified copy of a foreign application in a continuing application?

How does the ‘teaching, suggestion, or motivation’ (TSM) test apply in obviousness determinations?

How does the level of skill in the art affect enablement requirements?