Patent Law FAQ
This FAQ answers all your questions about patent law, patent procedure, and the patent examination process.
MPEP 2100 – Patentability (2)
When rejecting a claim for lack of written description, a patent examiner must fulfill specific requirements. According to MPEP 2163.04, the examiner must:
- Identify the claim limitation(s) at issue
- Establish a prima facie case by providing reasons why a person skilled in the art would not have recognized that the inventor was in possession of the invention as claimed
The MPEP further states:
“A simple statement such as ‘Applicant has not pointed out where the new (or amended) claim is supported, nor does there appear to be a written description of the claim limitation ‘____’ in the application as filed.’ may be sufficient where the claim is a new or amended claim, the support for the limitation is not apparent, and applicant has not pointed out where the limitation is supported.”
This guidance helps ensure that rejections are specific and well-supported, allowing applicants to respond effectively.
To learn more:
The material or article worked upon generally does not limit apparatus claims. As stated in MPEP 2115: “Inclusion of the material or article worked upon by a structure being claimed does not impart patentability to the claims.” This principle is based on legal precedents such as In re Otto and In re Young.
The MPEP further explains: “Claim analysis is highly fact-dependent. A claim is only limited by positively recited elements.” This means that the focus should be on the structural elements of the apparatus itself, not the materials it processes.
To learn more:
MPEP 2115 – Material Or Article Worked Upon By Apparatus (1)
The material or article worked upon generally does not limit apparatus claims. As stated in MPEP 2115: “Inclusion of the material or article worked upon by a structure being claimed does not impart patentability to the claims.” This principle is based on legal precedents such as In re Otto and In re Young.
The MPEP further explains: “Claim analysis is highly fact-dependent. A claim is only limited by positively recited elements.” This means that the focus should be on the structural elements of the apparatus itself, not the materials it processes.
To learn more:
MPEP 2163.04 – Burden On The Examiner With Regard To The Written Description Requirement (1)
When rejecting a claim for lack of written description, a patent examiner must fulfill specific requirements. According to MPEP 2163.04, the examiner must:
- Identify the claim limitation(s) at issue
- Establish a prima facie case by providing reasons why a person skilled in the art would not have recognized that the inventor was in possession of the invention as claimed
The MPEP further states:
“A simple statement such as ‘Applicant has not pointed out where the new (or amended) claim is supported, nor does there appear to be a written description of the claim limitation ‘____’ in the application as filed.’ may be sufficient where the claim is a new or amended claim, the support for the limitation is not apparent, and applicant has not pointed out where the limitation is supported.”
This guidance helps ensure that rejections are specific and well-supported, allowing applicants to respond effectively.
To learn more:
Patent Law (2)
When rejecting a claim for lack of written description, a patent examiner must fulfill specific requirements. According to MPEP 2163.04, the examiner must:
- Identify the claim limitation(s) at issue
- Establish a prima facie case by providing reasons why a person skilled in the art would not have recognized that the inventor was in possession of the invention as claimed
The MPEP further states:
“A simple statement such as ‘Applicant has not pointed out where the new (or amended) claim is supported, nor does there appear to be a written description of the claim limitation ‘____’ in the application as filed.’ may be sufficient where the claim is a new or amended claim, the support for the limitation is not apparent, and applicant has not pointed out where the limitation is supported.”
This guidance helps ensure that rejections are specific and well-supported, allowing applicants to respond effectively.
To learn more:
The material or article worked upon generally does not limit apparatus claims. As stated in MPEP 2115: “Inclusion of the material or article worked upon by a structure being claimed does not impart patentability to the claims.” This principle is based on legal precedents such as In re Otto and In re Young.
The MPEP further explains: “Claim analysis is highly fact-dependent. A claim is only limited by positively recited elements.” This means that the focus should be on the structural elements of the apparatus itself, not the materials it processes.
To learn more:
Patent Procedure (2)
When rejecting a claim for lack of written description, a patent examiner must fulfill specific requirements. According to MPEP 2163.04, the examiner must:
- Identify the claim limitation(s) at issue
- Establish a prima facie case by providing reasons why a person skilled in the art would not have recognized that the inventor was in possession of the invention as claimed
The MPEP further states:
“A simple statement such as ‘Applicant has not pointed out where the new (or amended) claim is supported, nor does there appear to be a written description of the claim limitation ‘____’ in the application as filed.’ may be sufficient where the claim is a new or amended claim, the support for the limitation is not apparent, and applicant has not pointed out where the limitation is supported.”
This guidance helps ensure that rejections are specific and well-supported, allowing applicants to respond effectively.
To learn more:
The material or article worked upon generally does not limit apparatus claims. As stated in MPEP 2115: “Inclusion of the material or article worked upon by a structure being claimed does not impart patentability to the claims.” This principle is based on legal precedents such as In re Otto and In re Young.
The MPEP further explains: “Claim analysis is highly fact-dependent. A claim is only limited by positively recited elements.” This means that the focus should be on the structural elements of the apparatus itself, not the materials it processes.
To learn more: