Patent Law FAQ
This FAQ answers all your questions about patent law, patent procedure, and the patent examination process.
(B) (1)
Pre-AIA 35 U.S.C. 102 subsections (a), (b), and (e) each define different types of prior art. According to MPEP 2139.02:
- 35 U.S.C. 102(a) covers knowledge or use by others in the U.S., or patents or printed publications anywhere, before the invention by the applicant.
- 35 U.S.C. 102(b) relates to public use or sale in the U.S., or patents or printed publications anywhere, more than one year before the application date.
- 35 U.S.C. 102(e) pertains to earlier-filed U.S. patent applications that are published or granted as patents.
Understanding these differences is crucial for patent examiners when evaluating prior art and determining patentability under the pre-AIA system. Each subsection has its own specific criteria and time frame for what qualifies as prior art.
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MPEP 130-Examination of Secrecy Order Cases (1)
When an examiner encounters an application with national security markings but no Secrecy Order, they must take specific actions. The MPEP instructs: In this case, the examiner should require the applicant to seek imposition of a Secrecy Order or authority to cancel the markings. This should preferably be done with the first action and, in any event, prior to final disposition of the application.
This ensures that potentially sensitive information is properly handled during the examination process.
For more information on national security markings, visit: national security markings.
For more information on patent examination, visit: patent examination.
MPEP 1900 – Protest (1)
A protest filed after final rejection but before the notice of allowance is issued may still be considered, subject to certain conditions. According to MPEP 1901.04:
“A protest filed after final rejection (and prior to the date the notice of allowance is given or mailed) and complying with all the requirements of 37 CFR 1.291 will be considered if the application is still pending.“
However, the MPEP also notes:
“However, prosecution will not ordinarily be reopened after final rejection if the prior art cited in the protest is merely cumulative of the prior art cited in the final rejection.“
This means that while the protest may be considered, it’s less likely to impact the examination if it doesn’t provide new, non-cumulative prior art or information.
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MPEP 1901.04 – When Can The Protest Be Submitted (1)
A protest filed after final rejection but before the notice of allowance is issued may still be considered, subject to certain conditions. According to MPEP 1901.04:
“A protest filed after final rejection (and prior to the date the notice of allowance is given or mailed) and complying with all the requirements of 37 CFR 1.291 will be considered if the application is still pending.“
However, the MPEP also notes:
“However, prosecution will not ordinarily be reopened after final rejection if the prior art cited in the protest is merely cumulative of the prior art cited in the final rejection.“
This means that while the protest may be considered, it’s less likely to impact the examination if it doesn’t provide new, non-cumulative prior art or information.
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MPEP 200 – Types and Status of Application; Benefit and Priority (2)
A Request to Delete a Named Inventor in a Continued Prosecution Application (CPA) for Design Applications is a procedure that allows for the correction of inventorship when filing a CPA. This request is specifically used to remove the name(s) of person(s) who are not inventors of the invention being claimed in the new application.
According to MPEP ¶ 2.32:
Receipt is acknowledged of the statement requesting that [1] be deleted as a named inventor which was filed with the Continued Prosecution Application (CPA) on [2]. The inventorship has been corrected as requested.
This paragraph confirms that the USPTO recognizes and processes such requests when submitted with a CPA filing.
For more information on continued prosecution application, visit: continued prosecution application.
For more information on CPA, visit: CPA.
For more information on design applications, visit: design applications.
For more information on inventorship, visit: inventorship.
For more information on patent examination, visit: patent examination.
An examiner determines if an application qualifies as a continuation under MPEP ¶ 2.05 by assessing the following criteria:
- The application discloses only subject matter that was previously disclosed in a prior application
- The application claims only subject matter that was disclosed in the prior application
- The application names at least one inventor who was also named in the prior application
The MPEP provides specific language for this assessment: “This application discloses and claims only subject matter disclosed in prior Application No. [1], filed [2], and names an inventor or inventors named in the prior application.” (MPEP ¶ 2.05)
If all these criteria are met, the examiner may notify the applicant that the application may constitute a continuation. The examiner will then proceed with the appropriate examination procedures for continuation applications.
For more information on continuation application, visit: continuation application.
For more information on patent examination, visit: patent examination.
MPEP 2000 – Duty Of Disclosure (1)
Individuals covered by 37 CFR 1.56 must disclose information about copending U.S. patent applications that are “material to patentability” of the application in question. This includes:
- Identification of pending or abandoned applications filed by at least one of the inventors or assigned to the same assignee
- Applications that disclose similar subject matter
- Prior art references from one application that are material to patentability of another application
The MPEP emphasizes: [T]he applicant has the burden of presenting the examiner with a complete and accurate record to support the allowance of letters patent.
It’s important to note that examiners cannot be assumed to be aware of all related applications, so applicants must bring this information to their attention.
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MPEP 2001.06 – Sources Of Information Under 37 Cfr 1.56 (1)
Individuals covered by 37 CFR 1.56 must disclose information about copending U.S. patent applications that are “material to patentability” of the application in question. This includes:
- Identification of pending or abandoned applications filed by at least one of the inventors or assigned to the same assignee
- Applications that disclose similar subject matter
- Prior art references from one application that are material to patentability of another application
The MPEP emphasizes: [T]he applicant has the burden of presenting the examiner with a complete and accurate record to support the allowance of letters patent.
It’s important to note that examiners cannot be assumed to be aware of all related applications, so applicants must bring this information to their attention.
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MPEP 201 – Types of Applications (2)
A Request to Delete a Named Inventor in a Continued Prosecution Application (CPA) for Design Applications is a procedure that allows for the correction of inventorship when filing a CPA. This request is specifically used to remove the name(s) of person(s) who are not inventors of the invention being claimed in the new application.
According to MPEP ¶ 2.32:
Receipt is acknowledged of the statement requesting that [1] be deleted as a named inventor which was filed with the Continued Prosecution Application (CPA) on [2]. The inventorship has been corrected as requested.
This paragraph confirms that the USPTO recognizes and processes such requests when submitted with a CPA filing.
For more information on continued prosecution application, visit: continued prosecution application.
For more information on CPA, visit: CPA.
For more information on design applications, visit: design applications.
For more information on inventorship, visit: inventorship.
For more information on patent examination, visit: patent examination.
An examiner determines if an application qualifies as a continuation under MPEP ¶ 2.05 by assessing the following criteria:
- The application discloses only subject matter that was previously disclosed in a prior application
- The application claims only subject matter that was disclosed in the prior application
- The application names at least one inventor who was also named in the prior application
The MPEP provides specific language for this assessment: “This application discloses and claims only subject matter disclosed in prior Application No. [1], filed [2], and names an inventor or inventors named in the prior application.” (MPEP ¶ 2.05)
If all these criteria are met, the examiner may notify the applicant that the application may constitute a continuation. The examiner will then proceed with the appropriate examination procedures for continuation applications.
For more information on continuation application, visit: continuation application.
For more information on patent examination, visit: patent examination.
MPEP 2100 – Patentability (34)
The MPEP addresses the use of phrases like “for example,” “such as,” or “or the like” in patent claims through specific form paragraphs. These phrases can render claims indefinite under 35 U.S.C. 112(b) or pre-AIA 35 U.S.C. 112, second paragraph.
1. For the phrase “for example,” form paragraph 7.34.08 states:
Regarding claim [1], the phrase “for example” renders the claim indefinite because it is unclear whether the limitation(s) following the phrase are part of the claimed invention. See MPEP § 2173.05(d).
2. For the phrase “or the like,” form paragraph 7.34.09 states:
Regarding claim [1], the phrase “or the like” renders the claim(s) indefinite because the claim(s) include(s) elements not actually disclosed (those encompassed by “or the like”), thereby rendering the scope of the claim(s) unascertainable. See MPEP § 2173.05(d).
3. For the phrase “such as,” form paragraph 7.34.10 states:
Regarding claim [1], the phrase “such as” renders the claim indefinite because it is unclear whether the limitations following the phrase are part of the claimed invention. See MPEP § 2173.05(d).
These phrases create uncertainty about whether the examples or items following them are part of the claimed invention or merely illustrative, making the scope of the claims unclear.
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In product-by-process claim rejections, the burden of proof is initially on the patent examiner, but it’s lower than for conventional product claims. According to MPEP 2113:
“The Patent Office bears a lesser burden of proof in making out a case of prima facie obviousness for product-by-process claims because of their peculiar nature” than when a product is claimed in the conventional fashion.
Once the examiner provides a rationale showing that the claimed product appears to be the same or similar to a prior art product, the burden shifts to the applicant. The applicant must then provide evidence establishing a nonobvious difference between the claimed product and the prior art product.
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Reviewing claims is a crucial part of patent examination. According to MPEP 2103, the key steps in reviewing claims are:
- Identify and evaluate each claim limitation:
- For processes, identify steps or acts to be performed
- For products, identify discrete physical structures or materials
- Correlate claim limitations with the disclosure:
- Match each claim limitation to portions of the specification that describe it
- Do this for all claims, including those using means- (or step-) plus-function language
- Interpret claims using broadest reasonable interpretation:
- Consider the plain meaning of terms as understood by one having ordinary skill in the art
- Evaluate any limiting effect of claim language
- Consider every limitation in the claim:
- Evaluate the claim as a whole, not as isolated elements
The MPEP emphasizes, The goal of claim analysis is to identify the boundaries of the protection sought by the applicant and to understand how the claims relate to and define what the applicant has indicated is the invention.
It’s important to note that examiners should not dissect a claimed invention into discrete elements and then evaluate the elements in isolation. Instead, the claim as a whole must be considered.
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Interchangeability plays a crucial role in determining equivalence in patent examination. It is one of the factors that support a conclusion that a prior art element is an equivalent to a claimed limitation. Specifically:
MPEP 2183 states: “A person of ordinary skill in the art would have recognized the interchangeability of the element shown in the prior art for the corresponding element disclosed in the specification.“
This means that if a person with ordinary skill in the relevant field would consider the prior art element and the claimed element to be interchangeable, it supports the argument for equivalence. Examiners may cite this factor when making a prima facie case of equivalence, and it’s an important consideration for both applicants and examiners in patent prosecution.
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The use of new terminology in patent claims can make it challenging to compare the claimed invention with prior art. The MPEP acknowledges this difficulty in MPEP 2173.05(a):
“Although it is difficult to compare the claimed invention with the prior art when new terms are used that do not appear in the prior art, this does not make the new terms indefinite.”
Key points to consider:
- New terms are often necessary when describing new technologies or rapidly evolving fields.
- The difficulty in comparison doesn’t automatically make the new terms indefinite.
- Examiners must still assess whether the claims, read in light of the specification, reasonably apprise those skilled in the art of the invention’s utilization and scope.
- The language should be as precise as the subject matter permits.
While new terminology can complicate prior art comparisons, it’s the examiner’s job to determine if the claims are clear and supported by the specification, regardless of the specific terms used.
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The USPTO uses a two-step process to determine if a claim recites an abstract idea:
- Evaluate the claim language: Examiners analyze the claim to identify any concepts that may be abstract ideas.
- Compare to established abstract idea categories: The identified concepts are compared to the enumerated groupings of abstract ideas and previous court decisions.
According to MPEP 2106.04(a): “To determine whether a claim recites an abstract idea in Prong One, examiners are now to: (a) Identify the specific limitation(s) in the claim under examination (individually or in combination) that the examiner believes recites an abstract idea; and (b) determine whether the identified limitation(s) falls within the subject matter groupings of abstract ideas enumerated in Section I of the 2019 Revised Patent Subject Matter Eligibility Guidance.”
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What are the Graham factors in patent obviousness analysis?
The Graham factors, established by the Supreme Court in Graham v. John Deere Co., are four key considerations used in determining obviousness under 35 U.S.C. 103. These factors are:
- The scope and content of the prior art
- The differences between the prior art and the claimed invention
- The level of ordinary skill in the pertinent art
- Objective evidence of nonobviousness (secondary considerations)
As stated in MPEP 2141: “The Graham factual inquiries … are to be considered when making a determination of obviousness.” Examiners must consider these factors when evaluating whether a claimed invention is obvious in light of the prior art.
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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.
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The United States Patent and Trademark Office (USPTO) uses several criteria to determine if a claim is too broad. According to MPEP 2173.04, the assessment depends on the specific issues with the claim:
- Inventor’s Regard: If the claim is broader than what the inventor regards as the invention, it may be rejected under 35 U.S.C. 112(b).
- Lack of Support or Enablement: If the claim is not supported by the original description or lacks an enabling disclosure, it may be rejected under 35 U.S.C. 112(a).
- Prior Art: If the claim is so broad that it reads on prior art, it may be rejected under 35 U.S.C. 102 or 103.
The MPEP states: “Undue breadth of the claim may be addressed under different statutory provisions, depending on the reasons for concluding that the claim is too broad.“
Examiners will analyze the claim language, specification, and prior art to make these determinations. It’s important to note that breadth alone does not make a claim too broad; the issue arises when the breadth leads to indefiniteness, lack of support, or overlap with prior art.
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Before conducting an enablement analysis, it is crucial for the examiner to construe the claims. The MPEP 2164.04 emphasizes this point:
“Before any analysis of enablement can occur, it is necessary for the examiner to construe the claims.“
For terms that are not well-known in the art or could have multiple meanings, the examiner must:
- Select the definition they intend to use when examining the application
- Base this definition on their understanding of what the applicant intends it to mean
- Explicitly set forth the meaning of the term and the scope of the claim when writing an Office action
This step is crucial because the enablement requirement is directly related to the scope of the claims, and a proper understanding of the claim terms is necessary to assess whether the disclosure enables the full scope of the claimed invention.
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Yes, patent examiners can and often do suggest amendments to claims to address written description issues. This practice is encouraged as part of the examination process to help applicants overcome rejections and move their applications forward.
The MPEP 2163.04 states:
“When appropriate, suggest amendments to the claims which can be supported by the application’s written description, being mindful of the prohibition against the addition of new matter in the claims or description.”
However, examiners must be careful not to suggest amendments that would introduce new matter into the application. Any suggested amendments must be fully supported by the original disclosure to comply with the written description requirement and avoid new matter issues.
This guidance encourages a collaborative approach between examiners and applicants to resolve written description issues while maintaining the integrity of the patent application.
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If the specification doesn’t provide adequate support or antecedent basis for claim terms, an examiner can take several actions. According to MPEP 2173.03:
“If the specification does not provide the needed support or antecedent basis for the claim terms, the specification should be objected to under 37 CFR 1.75(d)(1).”
The examiner’s actions may include:
- Objecting to the specification under 37 CFR 1.75(d)(1)
- Requiring the applicant to make appropriate amendments to the description
- Asking the applicant to amend the claims
The MPEP further states:
“Applicant will be required to make appropriate amendment to the description to provide clear support or antecedent basis for the claim terms provided no new matter is introduced, or amend the claim.”
It’s important to note that any amendments to the specification must not introduce new matter, as this would violate 35 U.S.C. 132(a).
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How does the ‘teaching, suggestion, or motivation’ (TSM) test apply in obviousness determinations?
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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Pre-AIA 35 U.S.C. 102 subsections (a), (b), and (e) each define different types of prior art. According to MPEP 2139.02:
- 35 U.S.C. 102(a) covers knowledge or use by others in the U.S., or patents or printed publications anywhere, before the invention by the applicant.
- 35 U.S.C. 102(b) relates to public use or sale in the U.S., or patents or printed publications anywhere, more than one year before the application date.
- 35 U.S.C. 102(e) pertains to earlier-filed U.S. patent applications that are published or granted as patents.
Understanding these differences is crucial for patent examiners when evaluating prior art and determining patentability under the pre-AIA system. Each subsection has its own specific criteria and time frame for what qualifies as prior art.
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According to MPEP 2113, the evaluation of product-by-process claims focuses on the final product, not the process of making it. The MPEP states:
“If the product in the product-by-process claim is the same as or obvious from a product of the prior art, the claim is unpatentable even though the prior product was made by a different process.”
This means that examiners will compare the claimed product to prior art products, regardless of how those products were made. If the claimed product appears to be the same or obvious in light of a prior art product, it may be rejected under 35 U.S.C. 102 (anticipation) or 35 U.S.C. 103 (obviousness).
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When determining whether a reference is in the “same field of endeavor” as the claimed invention, examiners should consider:
- Explanations of the invention’s subject matter in the patent application
- The embodiments, function, and structure of the claimed invention
The MPEP states: “When determining whether the ‘relevant field of endeavor’ test is met, the examiner should consider ‘explanations of the invention’s subject matter in the patent application, including the embodiments, function, and structure of the claimed invention.’” (MPEP 2141.01(a))
Examiners must consider the disclosure of each reference “in view of the ‘the reality of the circumstances’” and weigh these circumstances “from the vantage point of the common sense likely to be exerted by one of ordinary skill in the art in assessing the scope of the endeavor.”
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The ‘teaching away’ doctrine is an important concept in patent law related to obviousness rejections. A prior art reference is said to ‘teach away’ from the claimed invention if it criticizes, discredits, or otherwise discourages the solution claimed. However, as MPEP 2145 explains:
Key points about the ‘teaching away’ doctrine:
- It’s a factor in determining non-obviousness, but not necessarily conclusive
- The substance and nature of the teaching must be considered
- Mere disclosure of alternatives doesn’t constitute teaching away
- A reference must actively criticize, discredit, or discourage the claimed solution to teach away
Examiners and applicants should carefully evaluate the context and substance of prior art teachings when considering this doctrine.
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When considering the substitution of equivalents in patent obviousness determinations, there are specific requirements outlined in MPEP 2144.06. The key requirement is that the equivalency must be recognized in the prior art. As stated in the MPEP:
“In order to rely on equivalence as a rationale supporting an obviousness rejection, the equivalency must be recognized in the prior art, and cannot be based on applicant’s disclosure or the mere fact that the components at issue are functional or mechanical equivalents.”
This means that the patent examiner cannot simply declare two components as equivalent based on the current application or their similar functions. There must be evidence in the prior art that recognizes the equivalency. However, it’s important to note that “An express suggestion to substitute one equivalent component or process for another is not necessary to render such substitution obvious.” This principle allows for some flexibility in applying the doctrine of equivalents in obviousness determinations.
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The USPTO generally discourages the use of post-filing date evidence in enablement determinations. According to MPEP 2164.05(a):
“In general, the examiner should not use post-filing date references to demonstrate that a patent is not enabled.” However, there are exceptions:
- A later-dated reference may provide evidence of what one skilled in the art would have known on or before the effective filing date.
- If a publication demonstrates that those of ordinary skill in the art would find a particular invention was not enabled years after the filing date, it could be evidence that the claimed invention was not possible at the time of filing.
The MPEP also notes: “While a later dated publication cannot supplement an insufficient disclosure in a prior dated application to make it enabling, an applicant can offer the testimony of an expert based on the publication as evidence of the level of skill in the art at the time the application was filed.”
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AIA 35 U.S.C. 102(b) plays a crucial role in determining whether certain disclosures qualify as prior art. According to MPEP 2152.04:
“AIA 35 U.S.C. 102(b)(1) and (b)(2), however, each state conditions under which a “disclosure” that otherwise falls within AIA 35 U.S.C. 102(a)(1) or 102(a)(2) is not prior art under AIA 35 U.S.C. 102(a)(1) or 102(a)(2).”
This means that 102(b) provides exceptions to what would otherwise be considered prior art under 102(a). These exceptions can include:
- Disclosures made by the inventor or joint inventor
- Disclosures that appeared in applications and patents having a common assignee or inventor
- Disclosures made after public disclosure by the inventor
Understanding these exceptions is crucial for inventors and patent practitioners in determining the novelty and patentability of an invention.
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What are secondary considerations in obviousness analysis?
Secondary considerations, also known as objective evidence of nonobviousness, are factors that can provide evidence against an obviousness rejection in patent examination. According to MPEP 2141:
“The examiner should consider all of the evidence in the record, including any objective indicia of nonobviousness presented by applicant.”
Common types of secondary considerations include:
- Commercial success of the invention
- Long-felt but unsolved needs addressed by the invention
- Failure of others to achieve the invention
- Unexpected results or properties
- Skepticism of experts
- Copying by others
- Licensing or praise by others in the field
The importance of secondary considerations is emphasized in MPEP 2141: “Evidence of secondary considerations may be relevant to the issue of obviousness, and should be evaluated on a case-by-case basis.” When presented with such evidence, examiners must carefully consider it in the context of the Graham factors and the overall obviousness analysis.
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The “field of endeavor test” is one of the criteria used to determine if a reference qualifies as analogous art. According to MPEP 2141.01(a):
“Under the field of endeavor test, if the reference is from the same field of endeavor as the claimed invention, irrespective of the problem addressed, then the reference is analogous art.”
This test focuses on whether the reference and the claimed invention are in the same technical field, regardless of the specific problem being solved. It’s important to note that the field of endeavor should be defined broadly to encompass the full scope of the inventor’s work.
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In patent law, “prolix” refers to claims that are excessively wordy, lengthy, or contain unnecessary details that make it difficult to determine the scope of the claimed invention. According to MPEP 2173.05(m), examiners may reject claims as prolix “when they contain such long recitations or unimportant details that the scope of the claimed invention is rendered indefinite thereby.”
Prolix claims can make it challenging for patent examiners and others to understand the boundaries of the invention, potentially leading to indefiniteness rejections under 35 U.S.C. 112(b).
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How does the USPTO determine if a Markush grouping is improper?
The USPTO determines if a Markush grouping is improper based on two main criteria, as outlined in MPEP 2117:
- Lack of a single structural similarity: The members of the Markush group do not share a common structure or feature.
- Lack of a common use: The members do not share a common function or purpose.
The MPEP provides specific guidance:
“A Markush claim contains an ‘improper Markush grouping’ if either: (1) the members of the Markush group do not share a ‘single structural similarity’ or (2) the members do not share a common use. Supplementary Guidelines at 7166 (citing In re Harnisch, 631 F.2d 716, 721-22, 206 USPQ 300, 305 (CCPA 1980)).”
Examiners are instructed to consider both the structure and the use of the alternatives in the Markush grouping. If either criterion is not met, the grouping may be considered improper, and the examiner may reject the claim.
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Applicants often argue that an examiner’s obviousness rejection is based on improper hindsight reasoning. MPEP 2145 addresses this issue:
Key points about hindsight arguments:
- Some degree of hindsight is inherent in obviousness analyses
- Proper hindsight uses only knowledge available to a person of ordinary skill at the time of invention
- Improper hindsight relies on knowledge gleaned solely from the applicant’s disclosure
- Examiners should explain how their reasoning is based on prior art teachings, not applicant’s disclosure
- Lack of express motivation to combine in prior art doesn’t necessarily mean improper hindsight was used
Examiners should carefully articulate their reasoning to show they are not relying on improper hindsight.
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The objective inquiry is the second component of the best mode analysis, as outlined in MPEP 2165.03. This inquiry is only conducted if the subjective inquiry indicates that the inventor knew of a better mode at the time of filing. The objective inquiry involves:
“Compare what was known in (A) with what was disclosed – is the disclosure adequate to enable one skilled in the art to practice the best mode?”
This inquiry is objective because it focuses on whether the disclosure in the patent application is sufficient for a person skilled in the relevant art to practice the best mode. It depends on the level of skill in the art and the adequacy of the information provided in the specification.
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A provisional rejection under 35 U.S.C. 102(a)(2) is a type of patent rejection that can be made when there are copending U.S. patent applications with overlapping subject matter. According to MPEP 2154.01(d):
“If an earlier filed, copending, and unpublished U.S. patent application discloses subject matter which would anticipate the claims in a later filed pending U.S. application which has a different inventive entity, the examiner should determine whether a provisional rejection under 35 U.S.C. 102(a)(2) of the later filed application can be made.”
This type of rejection is considered ‘provisional’ because it is based on an unpublished application that may change before it is published or issued as a patent.
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How does the ‘design choice’ rationale apply in obviousness rejections?
The ‘design choice’ rationale is one of the exemplary rationales used to support a conclusion of obviousness in patent examination. According to MPEP 2143, this rationale can be applied when:
“The claimed structure and the prior art structure are identical or substantially identical, or are produced by identical or substantially identical processes, but the prior art is silent as to an inherent characteristic.”
The ‘design choice’ rationale applies in obviousness rejections as follows:
- When the difference between the claimed invention and the prior art is a matter of design choice that would have been obvious to one of ordinary skill in the art.
- When the claimed design choice does not result in a new or unexpected result compared to the prior art.
- When the prior art teaches the general conditions of the claim, discovering the optimum or workable ranges involves only routine skill in the art.
- When the selection of a specific material or shape is recognized as being within the level of ordinary skill in the art.
Examiners must provide a reasoned explanation for why the differences between the claimed invention and the prior art are considered design choices. This explanation should include:
- Identification of the relevant teachings of the prior art.
- Articulation of the reasons why one of ordinary skill in the art would have found the claimed invention to be a matter of design choice.
- Explanation of why the claimed design choice does not produce a new or unexpected result.
It’s important to note that the ‘design choice’ rationale should be applied cautiously and supported by evidence to avoid relying on impermissible hindsight reasoning.
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An examiner should conduct a search for foreign patents under pre-AIA 35 U.S.C. 102(d) only under specific circumstances. The MPEP provides guidance on this:
The MPEP also notes that such searches are typically unproductive due to the low probability of foreign patents issuing before the U.S. filing date. However, examiners should be aware that average pendency varies significantly between countries.
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Indexing plays a crucial role in determining the public accessibility of a document for patent purposes. MPEP 2128.01 emphasizes the importance of indexing:
“A document may be considered publicly accessible if it is indexed or cataloged and available in a library or other public collection.”
Proper indexing makes a document discoverable by those interested in the subject matter. For example:
- A thesis properly indexed in a university library catalog
- A technical report with a searchable entry in a database
- A paper listed in a conference proceedings index
These could all be considered publicly accessible due to their indexing, even if they have limited distribution. The key is that indexing allows interested parties to locate the document through reasonable effort.
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Courts consider several factors to determine if a claimed invention was offered for sale primarily for experimentation. According to MPEP 2133.03(e)(4), these factors include:
“(1) the necessity for public testing, (2) the amount of control over the experiment retained by the inventor, (3) the nature of the invention, (4) the length of the test period, (5) whether payment was made, (6) whether there was a secrecy obligation, (7) whether records of the experiment were kept, (8) who conducted the experiment, … (9) the degree of commercial exploitation during testing[,] … (10) whether the invention reasonably requires evaluation under actual conditions of use, (11) whether testing was systematically performed, (12) whether the inventor continually monitored the invention during testing, and (13) the nature of contacts made with potential customers.”
It’s important to note that no single factor or combination of factors is necessarily determinative. The examiner must assess the scope and length of the activity in relation to the experimental purpose and the nature of the subject matter involved.
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According to MPEP 2182, when applying prior art to a means-plus-function limitation, the examiner has specific burdens of proof:
- The examiner must show that the prior art element performs the identical function specified in the claim.
- If the prior art only teaches identity of function, the examiner carries the initial burden of proof for showing that the prior art structure or step is the same as or equivalent to the structure, material, or acts described in the specification.
- If the prior art reference teaches the identical structure or acts but is silent about performing the claimed function, the examiner must provide a “sound basis for believing” that the prior art structure inherently performs the same function.
The MPEP states: “The examiner must provide a ‘sound basis for believing’ that the prior art structure or acts would be capable of performing the claimed function.” This requirement ensures that examiners thoroughly analyze the prior art before rejecting a claim with a means-plus-function limitation.
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The In re Grose case, cited in MPEP 2144.02, is significant in patent examination because it demonstrates the limitations of applying structural obviousness to complex mixtures. The MPEP states:
“In re Grose, 592 F.2d 1161, 201 USPQ 57 (CCPA 1979) (Court held that different crystal forms of zeolites would not have been structurally obvious one from the other because there was no chemical theory supporting such a conclusion.)”
This case highlights that patent examiners must be cautious when applying general chemical principles to complex structures. It emphasizes the need for specific scientific theories or evidence to support obviousness rejections, especially when dealing with intricate chemical structures or mixtures like zeolites.
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Yes, a reference with no stated utility can still be used as prior art. According to MPEP 2122:
“In evaluating the utility of the disclosed subject matter of a reference, it is not necessary that the reference disclose the utility.”
This means that even if a prior art reference doesn’t explicitly mention the usefulness or practical application of the invention it describes, it can still be valid prior art. The key factor is whether the reference discloses the claimed subject matter, not whether it states its utility.
The MPEP further clarifies that the examiner should focus on the disclosed subject matter itself, rather than any stated or unstated utility, when considering prior art references.
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MPEP 2103 – Patent Examination Process (1)
Reviewing claims is a crucial part of patent examination. According to MPEP 2103, the key steps in reviewing claims are:
- Identify and evaluate each claim limitation:
- For processes, identify steps or acts to be performed
- For products, identify discrete physical structures or materials
- Correlate claim limitations with the disclosure:
- Match each claim limitation to portions of the specification that describe it
- Do this for all claims, including those using means- (or step-) plus-function language
- Interpret claims using broadest reasonable interpretation:
- Consider the plain meaning of terms as understood by one having ordinary skill in the art
- Evaluate any limiting effect of claim language
- Consider every limitation in the claim:
- Evaluate the claim as a whole, not as isolated elements
The MPEP emphasizes, The goal of claim analysis is to identify the boundaries of the protection sought by the applicant and to understand how the claims relate to and define what the applicant has indicated is the invention.
It’s important to note that examiners should not dissect a claimed invention into discrete elements and then evaluate the elements in isolation. Instead, the claim as a whole must be considered.
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MPEP 2106.04(A) – Abstract Ideas (1)
The USPTO uses a two-step process to determine if a claim recites an abstract idea:
- Evaluate the claim language: Examiners analyze the claim to identify any concepts that may be abstract ideas.
- Compare to established abstract idea categories: The identified concepts are compared to the enumerated groupings of abstract ideas and previous court decisions.
According to MPEP 2106.04(a): “To determine whether a claim recites an abstract idea in Prong One, examiners are now to: (a) Identify the specific limitation(s) in the claim under examination (individually or in combination) that the examiner believes recites an abstract idea; and (b) determine whether the identified limitation(s) falls within the subject matter groupings of abstract ideas enumerated in Section I of the 2019 Revised Patent Subject Matter Eligibility Guidance.”
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MPEP 2113 – Product – By – Process Claims (2)
In product-by-process claim rejections, the burden of proof is initially on the patent examiner, but it’s lower than for conventional product claims. According to MPEP 2113:
“The Patent Office bears a lesser burden of proof in making out a case of prima facie obviousness for product-by-process claims because of their peculiar nature” than when a product is claimed in the conventional fashion.
Once the examiner provides a rationale showing that the claimed product appears to be the same or similar to a prior art product, the burden shifts to the applicant. The applicant must then provide evidence establishing a nonobvious difference between the claimed product and the prior art product.
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According to MPEP 2113, the evaluation of product-by-process claims focuses on the final product, not the process of making it. The MPEP states:
“If the product in the product-by-process claim is the same as or obvious from a product of the prior art, the claim is unpatentable even though the prior product was made by a different process.”
This means that examiners will compare the claimed product to prior art products, regardless of how those products were made. If the claimed product appears to be the same or obvious in light of a prior art product, it may be rejected under 35 U.S.C. 102 (anticipation) or 35 U.S.C. 103 (obviousness).
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MPEP 2117 – Markush Claims (1)
How does the USPTO determine if a Markush grouping is improper?
The USPTO determines if a Markush grouping is improper based on two main criteria, as outlined in MPEP 2117:
- Lack of a single structural similarity: The members of the Markush group do not share a common structure or feature.
- Lack of a common use: The members do not share a common function or purpose.
The MPEP provides specific guidance:
“A Markush claim contains an ‘improper Markush grouping’ if either: (1) the members of the Markush group do not share a ‘single structural similarity’ or (2) the members do not share a common use. Supplementary Guidelines at 7166 (citing In re Harnisch, 631 F.2d 716, 721-22, 206 USPQ 300, 305 (CCPA 1980)).”
Examiners are instructed to consider both the structure and the use of the alternatives in the Markush grouping. If either criterion is not met, the grouping may be considered improper, and the examiner may reject the claim.
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MPEP 2122 – Discussion Of Utility In The Prior Art (1)
Yes, a reference with no stated utility can still be used as prior art. According to MPEP 2122:
“In evaluating the utility of the disclosed subject matter of a reference, it is not necessary that the reference disclose the utility.”
This means that even if a prior art reference doesn’t explicitly mention the usefulness or practical application of the invention it describes, it can still be valid prior art. The key factor is whether the reference discloses the claimed subject matter, not whether it states its utility.
The MPEP further clarifies that the examiner should focus on the disclosed subject matter itself, rather than any stated or unstated utility, when considering prior art references.
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MPEP 2128.01 – Level Of Public Accessibility Required (1)
Indexing plays a crucial role in determining the public accessibility of a document for patent purposes. MPEP 2128.01 emphasizes the importance of indexing:
“A document may be considered publicly accessible if it is indexed or cataloged and available in a library or other public collection.”
Proper indexing makes a document discoverable by those interested in the subject matter. For example:
- A thesis properly indexed in a university library catalog
- A technical report with a searchable entry in a database
- A paper listed in a conference proceedings index
These could all be considered publicly accessible due to their indexing, even if they have limited distribution. The key is that indexing allows interested parties to locate the document through reasonable effort.
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MPEP 2133.03(E)(4) – Factors Indicative Of An Experimental Purpose (1)
Courts consider several factors to determine if a claimed invention was offered for sale primarily for experimentation. According to MPEP 2133.03(e)(4), these factors include:
“(1) the necessity for public testing, (2) the amount of control over the experiment retained by the inventor, (3) the nature of the invention, (4) the length of the test period, (5) whether payment was made, (6) whether there was a secrecy obligation, (7) whether records of the experiment were kept, (8) who conducted the experiment, … (9) the degree of commercial exploitation during testing[,] … (10) whether the invention reasonably requires evaluation under actual conditions of use, (11) whether testing was systematically performed, (12) whether the inventor continually monitored the invention during testing, and (13) the nature of contacts made with potential customers.”
It’s important to note that no single factor or combination of factors is necessarily determinative. The examiner must assess the scope and length of the activity in relation to the experimental purpose and the nature of the subject matter involved.
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MPEP 2135 – Pre – Aia 35 U.S.C. 102(D) (1)
An examiner should conduct a search for foreign patents under pre-AIA 35 U.S.C. 102(d) only under specific circumstances. The MPEP provides guidance on this:
The MPEP also notes that such searches are typically unproductive due to the low probability of foreign patents issuing before the U.S. filing date. However, examiners should be aware that average pendency varies significantly between countries.
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MPEP 2139.02 – Determining Whether To Apply Pre – Aia 35 U.S.C. 102(A) (1)
Pre-AIA 35 U.S.C. 102 subsections (a), (b), and (e) each define different types of prior art. According to MPEP 2139.02:
- 35 U.S.C. 102(a) covers knowledge or use by others in the U.S., or patents or printed publications anywhere, before the invention by the applicant.
- 35 U.S.C. 102(b) relates to public use or sale in the U.S., or patents or printed publications anywhere, more than one year before the application date.
- 35 U.S.C. 102(e) pertains to earlier-filed U.S. patent applications that are published or granted as patents.
Understanding these differences is crucial for patent examiners when evaluating prior art and determining patentability under the pre-AIA system. Each subsection has its own specific criteria and time frame for what qualifies as prior art.
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MPEP 2141 – Examination Guidelines For Determining Obviousness Under 35 U.S.C. 103 (2)
What are the Graham factors in patent obviousness analysis?
The Graham factors, established by the Supreme Court in Graham v. John Deere Co., are four key considerations used in determining obviousness under 35 U.S.C. 103. These factors are:
- The scope and content of the prior art
- The differences between the prior art and the claimed invention
- The level of ordinary skill in the pertinent art
- Objective evidence of nonobviousness (secondary considerations)
As stated in MPEP 2141: “The Graham factual inquiries … are to be considered when making a determination of obviousness.” Examiners must consider these factors when evaluating whether a claimed invention is obvious in light of the prior art.
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What are secondary considerations in obviousness analysis?
Secondary considerations, also known as objective evidence of nonobviousness, are factors that can provide evidence against an obviousness rejection in patent examination. According to MPEP 2141:
“The examiner should consider all of the evidence in the record, including any objective indicia of nonobviousness presented by applicant.”
Common types of secondary considerations include:
- Commercial success of the invention
- Long-felt but unsolved needs addressed by the invention
- Failure of others to achieve the invention
- Unexpected results or properties
- Skepticism of experts
- Copying by others
- Licensing or praise by others in the field
The importance of secondary considerations is emphasized in MPEP 2141: “Evidence of secondary considerations may be relevant to the issue of obviousness, and should be evaluated on a case-by-case basis.” When presented with such evidence, examiners must carefully consider it in the context of the Graham factors and the overall obviousness analysis.
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MPEP 2141.01 – Scope And Content Of The Prior Art (1)
When determining whether a reference is in the “same field of endeavor” as the claimed invention, examiners should consider:
- Explanations of the invention’s subject matter in the patent application
- The embodiments, function, and structure of the claimed invention
The MPEP states: “When determining whether the ‘relevant field of endeavor’ test is met, the examiner should consider ‘explanations of the invention’s subject matter in the patent application, including the embodiments, function, and structure of the claimed invention.’” (MPEP 2141.01(a))
Examiners must consider the disclosure of each reference “in view of the ‘the reality of the circumstances’” and weigh these circumstances “from the vantage point of the common sense likely to be exerted by one of ordinary skill in the art in assessing the scope of the endeavor.”
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MPEP 2141.01(A) – Analogous And Nonanalogous Art (1)
The “field of endeavor test” is one of the criteria used to determine if a reference qualifies as analogous art. According to MPEP 2141.01(a):
“Under the field of endeavor test, if the reference is from the same field of endeavor as the claimed invention, irrespective of the problem addressed, then the reference is analogous art.”
This test focuses on whether the reference and the claimed invention are in the same technical field, regardless of the specific problem being solved. It’s important to note that the field of endeavor should be defined broadly to encompass the full scope of the inventor’s work.
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MPEP 2143 – Examples Of Basic Requirements Of A Prima Facie Case Of Obviousness (2)
How does the ‘teaching, suggestion, or motivation’ (TSM) test apply in obviousness determinations?
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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How does the ‘design choice’ rationale apply in obviousness rejections?
The ‘design choice’ rationale is one of the exemplary rationales used to support a conclusion of obviousness in patent examination. According to MPEP 2143, this rationale can be applied when:
“The claimed structure and the prior art structure are identical or substantially identical, or are produced by identical or substantially identical processes, but the prior art is silent as to an inherent characteristic.”
The ‘design choice’ rationale applies in obviousness rejections as follows:
- When the difference between the claimed invention and the prior art is a matter of design choice that would have been obvious to one of ordinary skill in the art.
- When the claimed design choice does not result in a new or unexpected result compared to the prior art.
- When the prior art teaches the general conditions of the claim, discovering the optimum or workable ranges involves only routine skill in the art.
- When the selection of a specific material or shape is recognized as being within the level of ordinary skill in the art.
Examiners must provide a reasoned explanation for why the differences between the claimed invention and the prior art are considered design choices. This explanation should include:
- Identification of the relevant teachings of the prior art.
- Articulation of the reasons why one of ordinary skill in the art would have found the claimed invention to be a matter of design choice.
- Explanation of why the claimed design choice does not produce a new or unexpected result.
It’s important to note that the ‘design choice’ rationale should be applied cautiously and supported by evidence to avoid relying on impermissible hindsight reasoning.
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MPEP 2144.02 – Reliance On Scientific Theory (1)
The In re Grose case, cited in MPEP 2144.02, is significant in patent examination because it demonstrates the limitations of applying structural obviousness to complex mixtures. The MPEP states:
“In re Grose, 592 F.2d 1161, 201 USPQ 57 (CCPA 1979) (Court held that different crystal forms of zeolites would not have been structurally obvious one from the other because there was no chemical theory supporting such a conclusion.)”
This case highlights that patent examiners must be cautious when applying general chemical principles to complex structures. It emphasizes the need for specific scientific theories or evidence to support obviousness rejections, especially when dealing with intricate chemical structures or mixtures like zeolites.
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MPEP 2144.06 – Art Recognized Equivalence For The Same Purpose (1)
When considering the substitution of equivalents in patent obviousness determinations, there are specific requirements outlined in MPEP 2144.06. The key requirement is that the equivalency must be recognized in the prior art. As stated in the MPEP:
“In order to rely on equivalence as a rationale supporting an obviousness rejection, the equivalency must be recognized in the prior art, and cannot be based on applicant’s disclosure or the mere fact that the components at issue are functional or mechanical equivalents.”
This means that the patent examiner cannot simply declare two components as equivalent based on the current application or their similar functions. There must be evidence in the prior art that recognizes the equivalency. However, it’s important to note that “An express suggestion to substitute one equivalent component or process for another is not necessary to render such substitution obvious.” This principle allows for some flexibility in applying the doctrine of equivalents in obviousness determinations.
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MPEP 2145 – Consideration Of Applicant'S Rebuttal Arguments And Evidence (2)
The ‘teaching away’ doctrine is an important concept in patent law related to obviousness rejections. A prior art reference is said to ‘teach away’ from the claimed invention if it criticizes, discredits, or otherwise discourages the solution claimed. However, as MPEP 2145 explains:
Key points about the ‘teaching away’ doctrine:
- It’s a factor in determining non-obviousness, but not necessarily conclusive
- The substance and nature of the teaching must be considered
- Mere disclosure of alternatives doesn’t constitute teaching away
- A reference must actively criticize, discredit, or discourage the claimed solution to teach away
Examiners and applicants should carefully evaluate the context and substance of prior art teachings when considering this doctrine.
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Applicants often argue that an examiner’s obviousness rejection is based on improper hindsight reasoning. MPEP 2145 addresses this issue:
Key points about hindsight arguments:
- Some degree of hindsight is inherent in obviousness analyses
- Proper hindsight uses only knowledge available to a person of ordinary skill at the time of invention
- Improper hindsight relies on knowledge gleaned solely from the applicant’s disclosure
- Examiners should explain how their reasoning is based on prior art teachings, not applicant’s disclosure
- Lack of express motivation to combine in prior art doesn’t necessarily mean improper hindsight was used
Examiners should carefully articulate their reasoning to show they are not relying on improper hindsight.
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MPEP 2152.04 – The Meaning Of "Disclosure" (1)
AIA 35 U.S.C. 102(b) plays a crucial role in determining whether certain disclosures qualify as prior art. According to MPEP 2152.04:
“AIA 35 U.S.C. 102(b)(1) and (b)(2), however, each state conditions under which a “disclosure” that otherwise falls within AIA 35 U.S.C. 102(a)(1) or 102(a)(2) is not prior art under AIA 35 U.S.C. 102(a)(1) or 102(a)(2).”
This means that 102(b) provides exceptions to what would otherwise be considered prior art under 102(a). These exceptions can include:
- Disclosures made by the inventor or joint inventor
- Disclosures that appeared in applications and patents having a common assignee or inventor
- Disclosures made after public disclosure by the inventor
Understanding these exceptions is crucial for inventors and patent practitioners in determining the novelty and patentability of an invention.
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MPEP 2154.01(D) – Provisional Rejections Under 35 U.S.C. 102(A)(2); Reference Is A Copending U.S. Patent Application (1)
A provisional rejection under 35 U.S.C. 102(a)(2) is a type of patent rejection that can be made when there are copending U.S. patent applications with overlapping subject matter. According to MPEP 2154.01(d):
“If an earlier filed, copending, and unpublished U.S. patent application discloses subject matter which would anticipate the claims in a later filed pending U.S. application which has a different inventive entity, the examiner should determine whether a provisional rejection under 35 U.S.C. 102(a)(2) of the later filed application can be made.”
This type of rejection is considered ‘provisional’ because it is based on an unpublished application that may change before it is published or issued as a patent.
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MPEP 2163.04 – Burden On The Examiner With Regard To The Written Description Requirement (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.
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Yes, patent examiners can and often do suggest amendments to claims to address written description issues. This practice is encouraged as part of the examination process to help applicants overcome rejections and move their applications forward.
The MPEP 2163.04 states:
“When appropriate, suggest amendments to the claims which can be supported by the application’s written description, being mindful of the prohibition against the addition of new matter in the claims or description.”
However, examiners must be careful not to suggest amendments that would introduce new matter into the application. Any suggested amendments must be fully supported by the original disclosure to comply with the written description requirement and avoid new matter issues.
This guidance encourages a collaborative approach between examiners and applicants to resolve written description issues while maintaining the integrity of the patent application.
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MPEP 2164.04 – Burden On The Examiner Under The Enablement Requirement (1)
Before conducting an enablement analysis, it is crucial for the examiner to construe the claims. The MPEP 2164.04 emphasizes this point:
“Before any analysis of enablement can occur, it is necessary for the examiner to construe the claims.“
For terms that are not well-known in the art or could have multiple meanings, the examiner must:
- Select the definition they intend to use when examining the application
- Base this definition on their understanding of what the applicant intends it to mean
- Explicitly set forth the meaning of the term and the scope of the claim when writing an Office action
This step is crucial because the enablement requirement is directly related to the scope of the claims, and a proper understanding of the claim terms is necessary to assess whether the disclosure enables the full scope of the claimed invention.
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MPEP 2164.05 – Determination Of Enablement Based On Evidence As A Whole (1)
The USPTO generally discourages the use of post-filing date evidence in enablement determinations. According to MPEP 2164.05(a):
“In general, the examiner should not use post-filing date references to demonstrate that a patent is not enabled.” However, there are exceptions:
- A later-dated reference may provide evidence of what one skilled in the art would have known on or before the effective filing date.
- If a publication demonstrates that those of ordinary skill in the art would find a particular invention was not enabled years after the filing date, it could be evidence that the claimed invention was not possible at the time of filing.
The MPEP also notes: “While a later dated publication cannot supplement an insufficient disclosure in a prior dated application to make it enabling, an applicant can offer the testimony of an expert based on the publication as evidence of the level of skill in the art at the time the application was filed.”
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MPEP 2165.03 – Requirements For Rejection For Lack Of Best Mode (1)
The objective inquiry is the second component of the best mode analysis, as outlined in MPEP 2165.03. This inquiry is only conducted if the subjective inquiry indicates that the inventor knew of a better mode at the time of filing. The objective inquiry involves:
“Compare what was known in (A) with what was disclosed – is the disclosure adequate to enable one skilled in the art to practice the best mode?”
This inquiry is objective because it focuses on whether the disclosure in the patent application is sufficient for a person skilled in the relevant art to practice the best mode. It depends on the level of skill in the art and the adequacy of the information provided in the specification.
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MPEP 2173.03 – Correspondence Between Specification And Claims (1)
If the specification doesn’t provide adequate support or antecedent basis for claim terms, an examiner can take several actions. According to MPEP 2173.03:
“If the specification does not provide the needed support or antecedent basis for the claim terms, the specification should be objected to under 37 CFR 1.75(d)(1).”
The examiner’s actions may include:
- Objecting to the specification under 37 CFR 1.75(d)(1)
- Requiring the applicant to make appropriate amendments to the description
- Asking the applicant to amend the claims
The MPEP further states:
“Applicant will be required to make appropriate amendment to the description to provide clear support or antecedent basis for the claim terms provided no new matter is introduced, or amend the claim.”
It’s important to note that any amendments to the specification must not introduce new matter, as this would violate 35 U.S.C. 132(a).
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MPEP 2173.04 – Breadth Is Not Indefiniteness (1)
The United States Patent and Trademark Office (USPTO) uses several criteria to determine if a claim is too broad. According to MPEP 2173.04, the assessment depends on the specific issues with the claim:
- Inventor’s Regard: If the claim is broader than what the inventor regards as the invention, it may be rejected under 35 U.S.C. 112(b).
- Lack of Support or Enablement: If the claim is not supported by the original description or lacks an enabling disclosure, it may be rejected under 35 U.S.C. 112(a).
- Prior Art: If the claim is so broad that it reads on prior art, it may be rejected under 35 U.S.C. 102 or 103.
The MPEP states: “Undue breadth of the claim may be addressed under different statutory provisions, depending on the reasons for concluding that the claim is too broad.“
Examiners will analyze the claim language, specification, and prior art to make these determinations. It’s important to note that breadth alone does not make a claim too broad; the issue arises when the breadth leads to indefiniteness, lack of support, or overlap with prior art.
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MPEP 2173.05(A) – New Terminology (1)
The use of new terminology in patent claims can make it challenging to compare the claimed invention with prior art. The MPEP acknowledges this difficulty in MPEP 2173.05(a):
“Although it is difficult to compare the claimed invention with the prior art when new terms are used that do not appear in the prior art, this does not make the new terms indefinite.”
Key points to consider:
- New terms are often necessary when describing new technologies or rapidly evolving fields.
- The difficulty in comparison doesn’t automatically make the new terms indefinite.
- Examiners must still assess whether the claims, read in light of the specification, reasonably apprise those skilled in the art of the invention’s utilization and scope.
- The language should be as precise as the subject matter permits.
While new terminology can complicate prior art comparisons, it’s the examiner’s job to determine if the claims are clear and supported by the specification, regardless of the specific terms used.
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MPEP 2173.05(M) – Prolix (1)
In patent law, “prolix” refers to claims that are excessively wordy, lengthy, or contain unnecessary details that make it difficult to determine the scope of the claimed invention. According to MPEP 2173.05(m), examiners may reject claims as prolix “when they contain such long recitations or unimportant details that the scope of the claimed invention is rendered indefinite thereby.”
Prolix claims can make it challenging for patent examiners and others to understand the boundaries of the invention, potentially leading to indefiniteness rejections under 35 U.S.C. 112(b).
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MPEP 2175 – Form Paragraphs For Use In Rejections Under 35 U.S.C. 112 (1)
The MPEP addresses the use of phrases like “for example,” “such as,” or “or the like” in patent claims through specific form paragraphs. These phrases can render claims indefinite under 35 U.S.C. 112(b) or pre-AIA 35 U.S.C. 112, second paragraph.
1. For the phrase “for example,” form paragraph 7.34.08 states:
Regarding claim [1], the phrase “for example” renders the claim indefinite because it is unclear whether the limitation(s) following the phrase are part of the claimed invention. See MPEP § 2173.05(d).
2. For the phrase “or the like,” form paragraph 7.34.09 states:
Regarding claim [1], the phrase “or the like” renders the claim(s) indefinite because the claim(s) include(s) elements not actually disclosed (those encompassed by “or the like”), thereby rendering the scope of the claim(s) unascertainable. See MPEP § 2173.05(d).
3. For the phrase “such as,” form paragraph 7.34.10 states:
Regarding claim [1], the phrase “such as” renders the claim indefinite because it is unclear whether the limitations following the phrase are part of the claimed invention. See MPEP § 2173.05(d).
These phrases create uncertainty about whether the examples or items following them are part of the claimed invention or merely illustrative, making the scope of the claims unclear.
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MPEP 2175 – Form Paragraphs For Use In Rejections Under 35 U.S.C. 112(B) Or Pre – Aia 35 U.S.C. 112 (1)
The MPEP addresses the use of phrases like “for example,” “such as,” or “or the like” in patent claims through specific form paragraphs. These phrases can render claims indefinite under 35 U.S.C. 112(b) or pre-AIA 35 U.S.C. 112, second paragraph.
1. For the phrase “for example,” form paragraph 7.34.08 states:
Regarding claim [1], the phrase “for example” renders the claim indefinite because it is unclear whether the limitation(s) following the phrase are part of the claimed invention. See MPEP § 2173.05(d).
2. For the phrase “or the like,” form paragraph 7.34.09 states:
Regarding claim [1], the phrase “or the like” renders the claim(s) indefinite because the claim(s) include(s) elements not actually disclosed (those encompassed by “or the like”), thereby rendering the scope of the claim(s) unascertainable. See MPEP § 2173.05(d).
3. For the phrase “such as,” form paragraph 7.34.10 states:
Regarding claim [1], the phrase “such as” renders the claim indefinite because it is unclear whether the limitations following the phrase are part of the claimed invention. See MPEP § 2173.05(d).
These phrases create uncertainty about whether the examples or items following them are part of the claimed invention or merely illustrative, making the scope of the claims unclear.
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MPEP 2182 – Search And Identification Of The Prior Art (1)
According to MPEP 2182, when applying prior art to a means-plus-function limitation, the examiner has specific burdens of proof:
- The examiner must show that the prior art element performs the identical function specified in the claim.
- If the prior art only teaches identity of function, the examiner carries the initial burden of proof for showing that the prior art structure or step is the same as or equivalent to the structure, material, or acts described in the specification.
- If the prior art reference teaches the identical structure or acts but is silent about performing the claimed function, the examiner must provide a “sound basis for believing” that the prior art structure inherently performs the same function.
The MPEP states: “The examiner must provide a ‘sound basis for believing’ that the prior art structure or acts would be capable of performing the claimed function.” This requirement ensures that examiners thoroughly analyze the prior art before rejecting a claim with a means-plus-function limitation.
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MPEP 2183 – Making A Prima Facie Case Of Equivalence (1)
Interchangeability plays a crucial role in determining equivalence in patent examination. It is one of the factors that support a conclusion that a prior art element is an equivalent to a claimed limitation. Specifically:
MPEP 2183 states: “A person of ordinary skill in the art would have recognized the interchangeability of the element shown in the prior art for the corresponding element disclosed in the specification.“
This means that if a person with ordinary skill in the relevant field would consider the prior art element and the claimed element to be interchangeable, it supports the argument for equivalence. Examiners may cite this factor when making a prima facie case of equivalence, and it’s an important consideration for both applicants and examiners in patent prosecution.
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MPEP 2200 – Citation Of Prior Art And Ex Parte Reexamination Of Patents (1)
The concepts of a “substantial new question of patentability” (SNQ) and a “prima facie case of unpatentability” are distinct in patent law, particularly in the context of reexamination proceedings. According to MPEP 2242:
It is not necessary that a ‘prima facie’ case of unpatentability exist as to the claim in order for ‘a substantial new question of patentability’ to be present as to the claim.
Key differences include:
- SNQ: This is the threshold for initiating a reexamination. It exists when prior art raises a substantial question about the patentability of at least one claim, even if it wouldn’t necessarily lead to a rejection.
- Prima facie case: This is a higher standard, typically used during examination, where the evidence is sufficient to establish unpatentability unless rebutted.
The MPEP notes: Thus, ‘a substantial new question of patentability’ as to a patent claim could be present even if the examiner would not necessarily reject the claim as either fully anticipated by, or obvious in view of, the prior art patents or printed publications.
This distinction allows for a broader range of issues to be considered in reexamination proceedings.
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MPEP 2242 – Criteria For Deciding Request Filed Under 35 U.S.C. 302 (1)
The concepts of a “substantial new question of patentability” (SNQ) and a “prima facie case of unpatentability” are distinct in patent law, particularly in the context of reexamination proceedings. According to MPEP 2242:
It is not necessary that a ‘prima facie’ case of unpatentability exist as to the claim in order for ‘a substantial new question of patentability’ to be present as to the claim.
Key differences include:
- SNQ: This is the threshold for initiating a reexamination. It exists when prior art raises a substantial question about the patentability of at least one claim, even if it wouldn’t necessarily lead to a rejection.
- Prima facie case: This is a higher standard, typically used during examination, where the evidence is sufficient to establish unpatentability unless rebutted.
The MPEP notes: Thus, ‘a substantial new question of patentability’ as to a patent claim could be present even if the examiner would not necessarily reject the claim as either fully anticipated by, or obvious in view of, the prior art patents or printed publications.
This distinction allows for a broader range of issues to be considered in reexamination proceedings.
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MPEP 2300 – Interference And Derivation Proceedings (2)
An interference in patent law is a proceeding to determine which party has the right to a patent when two or more parties claim the same invention. The Manual of Patent Examining Procedure (MPEP) Chapter 2300 covers interference and derivation proceedings.
According to MPEP 2304, “The suggestion for an interference may come from an applicant or from an examiner.” This process is crucial in determining priority of invention when multiple parties claim the same or similar inventions.
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No, once a patent application becomes involved in a derivation proceeding, the examiner cannot continue regular examination. According to MPEP 2313:
“The examiner may not act on an involved patent or application except as the Board may authorize.”
This means that all examination activities are suspended unless the Patent Trial and Appeal Board (PTAB) specifically authorizes an action. The PTAB has exclusive jurisdiction over the application during the proceeding.
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MPEP 2304 – Suggesting An Interference (1)
An interference in patent law is a proceeding to determine which party has the right to a patent when two or more parties claim the same invention. The Manual of Patent Examining Procedure (MPEP) Chapter 2300 covers interference and derivation proceedings.
According to MPEP 2304, “The suggestion for an interference may come from an applicant or from an examiner.” This process is crucial in determining priority of invention when multiple parties claim the same or similar inventions.
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MPEP 2313 – Action Once A Derivation Proceeding Is Instituted (1)
No, once a patent application becomes involved in a derivation proceeding, the examiner cannot continue regular examination. According to MPEP 2313:
“The examiner may not act on an involved patent or application except as the Board may authorize.”
This means that all examination activities are suspended unless the Patent Trial and Appeal Board (PTAB) specifically authorizes an action. The PTAB has exclusive jurisdiction over the application during the proceeding.
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MPEP 2800 – Supplemental Examination (1)
The USPTO determines if a Substantial New Question of Patentability (SNQ) is raised by reviewing the items of information presented in the supplemental examination request. The examiner considers whether the information would be important to a reasonable examiner in determining patentability.
According to the MPEP: For each item of information, the examiner need only identify one SNQ (e.g., a teaching that would be important to a reasonable examiner when determining patentability) for each identified claim.
The determination is made on a claim-by-claim basis, and the examiner must provide a detailed explanation in the Reasons Document.
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MPEP 2816.03 – Content Of The Determination (1)
The USPTO determines if a Substantial New Question of Patentability (SNQ) is raised by reviewing the items of information presented in the supplemental examination request. The examiner considers whether the information would be important to a reasonable examiner in determining patentability.
According to the MPEP: For each item of information, the examiner need only identify one SNQ (e.g., a teaching that would be important to a reasonable examiner when determining patentability) for each identified claim.
The determination is made on a claim-by-claim basis, and the examiner must provide a detailed explanation in the Reasons Document.
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Or (E) (1)
Pre-AIA 35 U.S.C. 102 subsections (a), (b), and (e) each define different types of prior art. According to MPEP 2139.02:
- 35 U.S.C. 102(a) covers knowledge or use by others in the U.S., or patents or printed publications anywhere, before the invention by the applicant.
- 35 U.S.C. 102(b) relates to public use or sale in the U.S., or patents or printed publications anywhere, more than one year before the application date.
- 35 U.S.C. 102(e) pertains to earlier-filed U.S. patent applications that are published or granted as patents.
Understanding these differences is crucial for patent examiners when evaluating prior art and determining patentability under the pre-AIA system. Each subsection has its own specific criteria and time frame for what qualifies as prior art.
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Patent Law (50)
The MPEP addresses the use of phrases like “for example,” “such as,” or “or the like” in patent claims through specific form paragraphs. These phrases can render claims indefinite under 35 U.S.C. 112(b) or pre-AIA 35 U.S.C. 112, second paragraph.
1. For the phrase “for example,” form paragraph 7.34.08 states:
Regarding claim [1], the phrase “for example” renders the claim indefinite because it is unclear whether the limitation(s) following the phrase are part of the claimed invention. See MPEP § 2173.05(d).
2. For the phrase “or the like,” form paragraph 7.34.09 states:
Regarding claim [1], the phrase “or the like” renders the claim(s) indefinite because the claim(s) include(s) elements not actually disclosed (those encompassed by “or the like”), thereby rendering the scope of the claim(s) unascertainable. See MPEP § 2173.05(d).
3. For the phrase “such as,” form paragraph 7.34.10 states:
Regarding claim [1], the phrase “such as” renders the claim indefinite because it is unclear whether the limitations following the phrase are part of the claimed invention. See MPEP § 2173.05(d).
These phrases create uncertainty about whether the examples or items following them are part of the claimed invention or merely illustrative, making the scope of the claims unclear.
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Individuals covered by 37 CFR 1.56 must disclose information about copending U.S. patent applications that are “material to patentability” of the application in question. This includes:
- Identification of pending or abandoned applications filed by at least one of the inventors or assigned to the same assignee
- Applications that disclose similar subject matter
- Prior art references from one application that are material to patentability of another application
The MPEP emphasizes: [T]he applicant has the burden of presenting the examiner with a complete and accurate record to support the allowance of letters patent.
It’s important to note that examiners cannot be assumed to be aware of all related applications, so applicants must bring this information to their attention.
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In product-by-process claim rejections, the burden of proof is initially on the patent examiner, but it’s lower than for conventional product claims. According to MPEP 2113:
“The Patent Office bears a lesser burden of proof in making out a case of prima facie obviousness for product-by-process claims because of their peculiar nature” than when a product is claimed in the conventional fashion.
Once the examiner provides a rationale showing that the claimed product appears to be the same or similar to a prior art product, the burden shifts to the applicant. The applicant must then provide evidence establishing a nonobvious difference between the claimed product and the prior art product.
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Reviewing claims is a crucial part of patent examination. According to MPEP 2103, the key steps in reviewing claims are:
- Identify and evaluate each claim limitation:
- For processes, identify steps or acts to be performed
- For products, identify discrete physical structures or materials
- Correlate claim limitations with the disclosure:
- Match each claim limitation to portions of the specification that describe it
- Do this for all claims, including those using means- (or step-) plus-function language
- Interpret claims using broadest reasonable interpretation:
- Consider the plain meaning of terms as understood by one having ordinary skill in the art
- Evaluate any limiting effect of claim language
- Consider every limitation in the claim:
- Evaluate the claim as a whole, not as isolated elements
The MPEP emphasizes, The goal of claim analysis is to identify the boundaries of the protection sought by the applicant and to understand how the claims relate to and define what the applicant has indicated is the invention.
It’s important to note that examiners should not dissect a claimed invention into discrete elements and then evaluate the elements in isolation. Instead, the claim as a whole must be considered.
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Interchangeability plays a crucial role in determining equivalence in patent examination. It is one of the factors that support a conclusion that a prior art element is an equivalent to a claimed limitation. Specifically:
MPEP 2183 states: “A person of ordinary skill in the art would have recognized the interchangeability of the element shown in the prior art for the corresponding element disclosed in the specification.“
This means that if a person with ordinary skill in the relevant field would consider the prior art element and the claimed element to be interchangeable, it supports the argument for equivalence. Examiners may cite this factor when making a prima facie case of equivalence, and it’s an important consideration for both applicants and examiners in patent prosecution.
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The use of new terminology in patent claims can make it challenging to compare the claimed invention with prior art. The MPEP acknowledges this difficulty in MPEP 2173.05(a):
“Although it is difficult to compare the claimed invention with the prior art when new terms are used that do not appear in the prior art, this does not make the new terms indefinite.”
Key points to consider:
- New terms are often necessary when describing new technologies or rapidly evolving fields.
- The difficulty in comparison doesn’t automatically make the new terms indefinite.
- Examiners must still assess whether the claims, read in light of the specification, reasonably apprise those skilled in the art of the invention’s utilization and scope.
- The language should be as precise as the subject matter permits.
While new terminology can complicate prior art comparisons, it’s the examiner’s job to determine if the claims are clear and supported by the specification, regardless of the specific terms used.
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The USPTO uses a two-step process to determine if a claim recites an abstract idea:
- Evaluate the claim language: Examiners analyze the claim to identify any concepts that may be abstract ideas.
- Compare to established abstract idea categories: The identified concepts are compared to the enumerated groupings of abstract ideas and previous court decisions.
According to MPEP 2106.04(a): “To determine whether a claim recites an abstract idea in Prong One, examiners are now to: (a) Identify the specific limitation(s) in the claim under examination (individually or in combination) that the examiner believes recites an abstract idea; and (b) determine whether the identified limitation(s) falls within the subject matter groupings of abstract ideas enumerated in Section I of the 2019 Revised Patent Subject Matter Eligibility Guidance.”
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What are the Graham factors in patent obviousness analysis?
The Graham factors, established by the Supreme Court in Graham v. John Deere Co., are four key considerations used in determining obviousness under 35 U.S.C. 103. These factors are:
- The scope and content of the prior art
- The differences between the prior art and the claimed invention
- The level of ordinary skill in the pertinent art
- Objective evidence of nonobviousness (secondary considerations)
As stated in MPEP 2141: “The Graham factual inquiries … are to be considered when making a determination of obviousness.” Examiners must consider these factors when evaluating whether a claimed invention is obvious in light of the prior art.
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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.
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The United States Patent and Trademark Office (USPTO) uses several criteria to determine if a claim is too broad. According to MPEP 2173.04, the assessment depends on the specific issues with the claim:
- Inventor’s Regard: If the claim is broader than what the inventor regards as the invention, it may be rejected under 35 U.S.C. 112(b).
- Lack of Support or Enablement: If the claim is not supported by the original description or lacks an enabling disclosure, it may be rejected under 35 U.S.C. 112(a).
- Prior Art: If the claim is so broad that it reads on prior art, it may be rejected under 35 U.S.C. 102 or 103.
The MPEP states: “Undue breadth of the claim may be addressed under different statutory provisions, depending on the reasons for concluding that the claim is too broad.“
Examiners will analyze the claim language, specification, and prior art to make these determinations. It’s important to note that breadth alone does not make a claim too broad; the issue arises when the breadth leads to indefiniteness, lack of support, or overlap with prior art.
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Before conducting an enablement analysis, it is crucial for the examiner to construe the claims. The MPEP 2164.04 emphasizes this point:
“Before any analysis of enablement can occur, it is necessary for the examiner to construe the claims.“
For terms that are not well-known in the art or could have multiple meanings, the examiner must:
- Select the definition they intend to use when examining the application
- Base this definition on their understanding of what the applicant intends it to mean
- Explicitly set forth the meaning of the term and the scope of the claim when writing an Office action
This step is crucial because the enablement requirement is directly related to the scope of the claims, and a proper understanding of the claim terms is necessary to assess whether the disclosure enables the full scope of the claimed invention.
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Yes, patent examiners can and often do suggest amendments to claims to address written description issues. This practice is encouraged as part of the examination process to help applicants overcome rejections and move their applications forward.
The MPEP 2163.04 states:
“When appropriate, suggest amendments to the claims which can be supported by the application’s written description, being mindful of the prohibition against the addition of new matter in the claims or description.”
However, examiners must be careful not to suggest amendments that would introduce new matter into the application. Any suggested amendments must be fully supported by the original disclosure to comply with the written description requirement and avoid new matter issues.
This guidance encourages a collaborative approach between examiners and applicants to resolve written description issues while maintaining the integrity of the patent application.
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If the specification doesn’t provide adequate support or antecedent basis for claim terms, an examiner can take several actions. According to MPEP 2173.03:
“If the specification does not provide the needed support or antecedent basis for the claim terms, the specification should be objected to under 37 CFR 1.75(d)(1).”
The examiner’s actions may include:
- Objecting to the specification under 37 CFR 1.75(d)(1)
- Requiring the applicant to make appropriate amendments to the description
- Asking the applicant to amend the claims
The MPEP further states:
“Applicant will be required to make appropriate amendment to the description to provide clear support or antecedent basis for the claim terms provided no new matter is introduced, or amend the claim.”
It’s important to note that any amendments to the specification must not introduce new matter, as this would violate 35 U.S.C. 132(a).
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How does the ‘teaching, suggestion, or motivation’ (TSM) test apply in obviousness determinations?
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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An interference in patent law is a proceeding to determine which party has the right to a patent when two or more parties claim the same invention. The Manual of Patent Examining Procedure (MPEP) Chapter 2300 covers interference and derivation proceedings.
According to MPEP 2304, “The suggestion for an interference may come from an applicant or from an examiner.” This process is crucial in determining priority of invention when multiple parties claim the same or similar inventions.
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Pre-AIA 35 U.S.C. 102 subsections (a), (b), and (e) each define different types of prior art. According to MPEP 2139.02:
- 35 U.S.C. 102(a) covers knowledge or use by others in the U.S., or patents or printed publications anywhere, before the invention by the applicant.
- 35 U.S.C. 102(b) relates to public use or sale in the U.S., or patents or printed publications anywhere, more than one year before the application date.
- 35 U.S.C. 102(e) pertains to earlier-filed U.S. patent applications that are published or granted as patents.
Understanding these differences is crucial for patent examiners when evaluating prior art and determining patentability under the pre-AIA system. Each subsection has its own specific criteria and time frame for what qualifies as prior art.
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According to MPEP 2113, the evaluation of product-by-process claims focuses on the final product, not the process of making it. The MPEP states:
“If the product in the product-by-process claim is the same as or obvious from a product of the prior art, the claim is unpatentable even though the prior product was made by a different process.”
This means that examiners will compare the claimed product to prior art products, regardless of how those products were made. If the claimed product appears to be the same or obvious in light of a prior art product, it may be rejected under 35 U.S.C. 102 (anticipation) or 35 U.S.C. 103 (obviousness).
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When determining whether a reference is in the “same field of endeavor” as the claimed invention, examiners should consider:
- Explanations of the invention’s subject matter in the patent application
- The embodiments, function, and structure of the claimed invention
The MPEP states: “When determining whether the ‘relevant field of endeavor’ test is met, the examiner should consider ‘explanations of the invention’s subject matter in the patent application, including the embodiments, function, and structure of the claimed invention.’” (MPEP 2141.01(a))
Examiners must consider the disclosure of each reference “in view of the ‘the reality of the circumstances’” and weigh these circumstances “from the vantage point of the common sense likely to be exerted by one of ordinary skill in the art in assessing the scope of the endeavor.”
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The ‘teaching away’ doctrine is an important concept in patent law related to obviousness rejections. A prior art reference is said to ‘teach away’ from the claimed invention if it criticizes, discredits, or otherwise discourages the solution claimed. However, as MPEP 2145 explains:
Key points about the ‘teaching away’ doctrine:
- It’s a factor in determining non-obviousness, but not necessarily conclusive
- The substance and nature of the teaching must be considered
- Mere disclosure of alternatives doesn’t constitute teaching away
- A reference must actively criticize, discredit, or discourage the claimed solution to teach away
Examiners and applicants should carefully evaluate the context and substance of prior art teachings when considering this doctrine.
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How does the title of a patent application affect its classification?
The title of a patent application plays a significant role in its initial classification. According to MPEP 606:
The title of the invention may not exceed 500 characters in length and must be as short and specific as possible.
The title’s impact on classification includes:
- Initial sorting: The title is often the first piece of information used to categorize the application.
- Technology field identification: A clear, specific title helps quickly identify the relevant technology field.
- Examiner assignment: The title can influence which art unit and examiner are assigned to the application.
- Prior art searches: An accurate title can guide more effective prior art searches.
While the abstract and claims ultimately determine the final classification, a well-crafted title ensures the application starts in the right direction, potentially speeding up the examination process and improving the quality of the initial review.
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When considering the substitution of equivalents in patent obviousness determinations, there are specific requirements outlined in MPEP 2144.06. The key requirement is that the equivalency must be recognized in the prior art. As stated in the MPEP:
“In order to rely on equivalence as a rationale supporting an obviousness rejection, the equivalency must be recognized in the prior art, and cannot be based on applicant’s disclosure or the mere fact that the components at issue are functional or mechanical equivalents.”
This means that the patent examiner cannot simply declare two components as equivalent based on the current application or their similar functions. There must be evidence in the prior art that recognizes the equivalency. However, it’s important to note that “An express suggestion to substitute one equivalent component or process for another is not necessary to render such substitution obvious.” This principle allows for some flexibility in applying the doctrine of equivalents in obviousness determinations.
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The USPTO generally discourages the use of post-filing date evidence in enablement determinations. According to MPEP 2164.05(a):
“In general, the examiner should not use post-filing date references to demonstrate that a patent is not enabled.” However, there are exceptions:
- A later-dated reference may provide evidence of what one skilled in the art would have known on or before the effective filing date.
- If a publication demonstrates that those of ordinary skill in the art would find a particular invention was not enabled years after the filing date, it could be evidence that the claimed invention was not possible at the time of filing.
The MPEP also notes: “While a later dated publication cannot supplement an insufficient disclosure in a prior dated application to make it enabling, an applicant can offer the testimony of an expert based on the publication as evidence of the level of skill in the art at the time the application was filed.”
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AIA 35 U.S.C. 102(b) plays a crucial role in determining whether certain disclosures qualify as prior art. According to MPEP 2152.04:
“AIA 35 U.S.C. 102(b)(1) and (b)(2), however, each state conditions under which a “disclosure” that otherwise falls within AIA 35 U.S.C. 102(a)(1) or 102(a)(2) is not prior art under AIA 35 U.S.C. 102(a)(1) or 102(a)(2).”
This means that 102(b) provides exceptions to what would otherwise be considered prior art under 102(a). These exceptions can include:
- Disclosures made by the inventor or joint inventor
- Disclosures that appeared in applications and patents having a common assignee or inventor
- Disclosures made after public disclosure by the inventor
Understanding these exceptions is crucial for inventors and patent practitioners in determining the novelty and patentability of an invention.
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What happens if an IDS is filed after the mailing of a final Office action?
If an Information Disclosure Statement (IDS) is filed after the mailing of a final Office action, the examiner will consider it according to specific guidelines:
- The IDS will be considered if it’s accompanied by either a statement as specified in 37 CFR 1.97(e) or the fee set forth in 37 CFR 1.17(p).
- If these requirements are not met, the IDS will be placed in the application file but will not be considered by the examiner.
As stated in MPEP 609.05(c): ‘Consideration by the examiner of an IDS submitted after the mailing of a final Office action is limited to the requirements set forth in 37 CFR 1.97(d) and to documents which the examiner determines to be relevant.’ This means that even if the IDS is considered, the examiner is not required to reopen prosecution or issue a new Office action based on the newly submitted information.
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Can an examiner request copies of cited NPL documents not submitted with an IDS?
Yes, an examiner can request copies of cited Non-Patent Literature (NPL) documents that were not submitted with an Information Disclosure Statement (IDS) under certain circumstances:
- If the NPL citation is incomplete or illegible, the examiner may request a legible copy.
- If the NPL document is not readily available to the examiner, they may request a copy from the applicant.
- The examiner should only request copies of documents that seem particularly relevant to the claimed invention.
According to MPEP 609.05(c): “The examiner may request copies of only those documents cited in the information disclosure statement that are not present in the Office’s files if the examiner believes the documents to be readily available.”
However, it’s important to note that: “The Office should not require copies of U.S. patents and U.S. patent application publications cited in an IDS, unless required by the first sentence of 37 CFR 1.98(d).”
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What are secondary considerations in obviousness analysis?
Secondary considerations, also known as objective evidence of nonobviousness, are factors that can provide evidence against an obviousness rejection in patent examination. According to MPEP 2141:
“The examiner should consider all of the evidence in the record, including any objective indicia of nonobviousness presented by applicant.”
Common types of secondary considerations include:
- Commercial success of the invention
- Long-felt but unsolved needs addressed by the invention
- Failure of others to achieve the invention
- Unexpected results or properties
- Skepticism of experts
- Copying by others
- Licensing or praise by others in the field
The importance of secondary considerations is emphasized in MPEP 2141: “Evidence of secondary considerations may be relevant to the issue of obviousness, and should be evaluated on a case-by-case basis.” When presented with such evidence, examiners must carefully consider it in the context of the Graham factors and the overall obviousness analysis.
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The “field of endeavor test” is one of the criteria used to determine if a reference qualifies as analogous art. According to MPEP 2141.01(a):
“Under the field of endeavor test, if the reference is from the same field of endeavor as the claimed invention, irrespective of the problem addressed, then the reference is analogous art.”
This test focuses on whether the reference and the claimed invention are in the same technical field, regardless of the specific problem being solved. It’s important to note that the field of endeavor should be defined broadly to encompass the full scope of the inventor’s work.
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In patent law, “prolix” refers to claims that are excessively wordy, lengthy, or contain unnecessary details that make it difficult to determine the scope of the claimed invention. According to MPEP 2173.05(m), examiners may reject claims as prolix “when they contain such long recitations or unimportant details that the scope of the claimed invention is rendered indefinite thereby.”
Prolix claims can make it challenging for patent examiners and others to understand the boundaries of the invention, potentially leading to indefiniteness rejections under 35 U.S.C. 112(b).
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How does the USPTO determine if a Markush grouping is improper?
The USPTO determines if a Markush grouping is improper based on two main criteria, as outlined in MPEP 2117:
- Lack of a single structural similarity: The members of the Markush group do not share a common structure or feature.
- Lack of a common use: The members do not share a common function or purpose.
The MPEP provides specific guidance:
“A Markush claim contains an ‘improper Markush grouping’ if either: (1) the members of the Markush group do not share a ‘single structural similarity’ or (2) the members do not share a common use. Supplementary Guidelines at 7166 (citing In re Harnisch, 631 F.2d 716, 721-22, 206 USPQ 300, 305 (CCPA 1980)).”
Examiners are instructed to consider both the structure and the use of the alternatives in the Markush grouping. If either criterion is not met, the grouping may be considered improper, and the examiner may reject the claim.
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Applicants often argue that an examiner’s obviousness rejection is based on improper hindsight reasoning. MPEP 2145 addresses this issue:
Key points about hindsight arguments:
- Some degree of hindsight is inherent in obviousness analyses
- Proper hindsight uses only knowledge available to a person of ordinary skill at the time of invention
- Improper hindsight relies on knowledge gleaned solely from the applicant’s disclosure
- Examiners should explain how their reasoning is based on prior art teachings, not applicant’s disclosure
- Lack of express motivation to combine in prior art doesn’t necessarily mean improper hindsight was used
Examiners should carefully articulate their reasoning to show they are not relying on improper hindsight.
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The objective inquiry is the second component of the best mode analysis, as outlined in MPEP 2165.03. This inquiry is only conducted if the subjective inquiry indicates that the inventor knew of a better mode at the time of filing. The objective inquiry involves:
“Compare what was known in (A) with what was disclosed – is the disclosure adequate to enable one skilled in the art to practice the best mode?”
This inquiry is objective because it focuses on whether the disclosure in the patent application is sufficient for a person skilled in the relevant art to practice the best mode. It depends on the level of skill in the art and the adequacy of the information provided in the specification.
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A provisional rejection under 35 U.S.C. 102(a)(2) is a type of patent rejection that can be made when there are copending U.S. patent applications with overlapping subject matter. According to MPEP 2154.01(d):
“If an earlier filed, copending, and unpublished U.S. patent application discloses subject matter which would anticipate the claims in a later filed pending U.S. application which has a different inventive entity, the examiner should determine whether a provisional rejection under 35 U.S.C. 102(a)(2) of the later filed application can be made.”
This type of rejection is considered ‘provisional’ because it is based on an unpublished application that may change before it is published or issued as a patent.
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How does the ‘design choice’ rationale apply in obviousness rejections?
The ‘design choice’ rationale is one of the exemplary rationales used to support a conclusion of obviousness in patent examination. According to MPEP 2143, this rationale can be applied when:
“The claimed structure and the prior art structure are identical or substantially identical, or are produced by identical or substantially identical processes, but the prior art is silent as to an inherent characteristic.”
The ‘design choice’ rationale applies in obviousness rejections as follows:
- When the difference between the claimed invention and the prior art is a matter of design choice that would have been obvious to one of ordinary skill in the art.
- When the claimed design choice does not result in a new or unexpected result compared to the prior art.
- When the prior art teaches the general conditions of the claim, discovering the optimum or workable ranges involves only routine skill in the art.
- When the selection of a specific material or shape is recognized as being within the level of ordinary skill in the art.
Examiners must provide a reasoned explanation for why the differences between the claimed invention and the prior art are considered design choices. This explanation should include:
- Identification of the relevant teachings of the prior art.
- Articulation of the reasons why one of ordinary skill in the art would have found the claimed invention to be a matter of design choice.
- Explanation of why the claimed design choice does not produce a new or unexpected result.
It’s important to note that the ‘design choice’ rationale should be applied cautiously and supported by evidence to avoid relying on impermissible hindsight reasoning.
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An examiner should conduct a search for foreign patents under pre-AIA 35 U.S.C. 102(d) only under specific circumstances. The MPEP provides guidance on this:
The MPEP also notes that such searches are typically unproductive due to the low probability of foreign patents issuing before the U.S. filing date. However, examiners should be aware that average pendency varies significantly between countries.
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If an examiner determines that a continuation or divisional application contains new matter relative to the prior application, the following steps will occur:
- The examiner will notify the applicant in the next Office action.
- The examiner will indicate that the application should be redesignated as a continuation-in-part (CIP).
According to MPEP 602.05: If the examiner determines that the continuation or divisional application contains new matter relative to the prior application, the examiner should so notify the applicant in the next Office action and indicate that the application should be redesignated as a continuation-in-part.
It’s important to note that:
- Continuations and divisionals should not contain new matter relative to the prior application.
- If new matter is present, the application is more appropriately designated as a continuation-in-part.
- The redesignation as a CIP may have implications for the oath or declaration requirements and the application’s effective filing date for the new subject matter.
Applicants should carefully review their applications to ensure they are correctly designated and contain appropriate oaths or declarations based on their content and relationship to the prior application.
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When an examiner issues a new matter rejection confined to amendments in the specification, the process for review is through a petition. This is distinct from new matter rejections in claims, which require an appeal.
According to MPEP 608.04(c):
“Where the new matter is confined to amendments to the specification, review of the examiner’s requirement for cancelation is by way of petition.”
To challenge the examiner’s holding of new matter in the specification:
- Prepare a detailed petition explaining why the amendment does not introduce new matter.
- Submit the petition to the USPTO, following the guidelines for petition submission.
- The petition will be reviewed by the appropriate office, typically the Technology Center Director or their designee.
- A decision will be issued either granting or denying the petition.
It’s important to note that this process is separate from the appeal process used for claim rejections.
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When an examiner encounters an application with national security markings but no Secrecy Order, they must take specific actions. The MPEP instructs: In this case, the examiner should require the applicant to seek imposition of a Secrecy Order or authority to cancel the markings. This should preferably be done with the first action and, in any event, prior to final disposition of the application.
This ensures that potentially sensitive information is properly handled during the examination process.
For more information on national security markings, visit: national security markings.
For more information on patent examination, visit: patent examination.
Submitting documents as evidence in a reply to an Office action is distinct from filing an information disclosure statement (IDS). The MPEP clarifies:
“Compliance with the information disclosure rules is not a threshold requirement to have information considered when submitted by applicant to support an argument being made in a reply to an Office action.”
When submitting documents as evidence, applicants don’t need to comply with the requirements of 37 CFR 1.97 and 37 CFR 1.98. However, if the same documents are also listed on an IDS form (e.g., PTO/SB/08), the applicant must comply with IDS rules for those documents to be considered as part of the IDS.
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A Request to Delete a Named Inventor in a Continued Prosecution Application (CPA) for Design Applications is a procedure that allows for the correction of inventorship when filing a CPA. This request is specifically used to remove the name(s) of person(s) who are not inventors of the invention being claimed in the new application.
According to MPEP ¶ 2.32:
Receipt is acknowledged of the statement requesting that [1] be deleted as a named inventor which was filed with the Continued Prosecution Application (CPA) on [2]. The inventorship has been corrected as requested.
This paragraph confirms that the USPTO recognizes and processes such requests when submitted with a CPA filing.
For more information on continued prosecution application, visit: continued prosecution application.
For more information on CPA, visit: CPA.
For more information on design applications, visit: design applications.
For more information on inventorship, visit: inventorship.
For more information on patent examination, visit: patent examination.
An examiner determines if an application qualifies as a continuation under MPEP ¶ 2.05 by assessing the following criteria:
- The application discloses only subject matter that was previously disclosed in a prior application
- The application claims only subject matter that was disclosed in the prior application
- The application names at least one inventor who was also named in the prior application
The MPEP provides specific language for this assessment: “This application discloses and claims only subject matter disclosed in prior Application No. [1], filed [2], and names an inventor or inventors named in the prior application.” (MPEP ¶ 2.05)
If all these criteria are met, the examiner may notify the applicant that the application may constitute a continuation. The examiner will then proceed with the appropriate examination procedures for continuation applications.
For more information on continuation application, visit: continuation application.
For more information on patent examination, visit: patent examination.
What are the consequences of filing an IDS after the mailing of a notice of allowance?
Filing an Information Disclosure Statement (IDS) after the mailing of a notice of allowance can have significant consequences:
- The application will be withdrawn from issue
- The IDS will be considered by the examiner
- If the examiner determines that the application is still allowable, the application may be returned to issue
- If the examiner determines that one or more claims are no longer allowable, the applicant will be notified and the claims will be rejected
As stated in MPEP 609.04(b): “If an IDS is filed after the mailing date of a Notice of Allowance under 37 CFR 1.311, the application will be withdrawn from issue.” This emphasizes the importance of timely IDS submission to avoid potential delays in patent issuance.
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No, once a patent application becomes involved in a derivation proceeding, the examiner cannot continue regular examination. According to MPEP 2313:
“The examiner may not act on an involved patent or application except as the Board may authorize.”
This means that all examination activities are suspended unless the Patent Trial and Appeal Board (PTAB) specifically authorizes an action. The PTAB has exclusive jurisdiction over the application during the proceeding.
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Indexing plays a crucial role in determining the public accessibility of a document for patent purposes. MPEP 2128.01 emphasizes the importance of indexing:
“A document may be considered publicly accessible if it is indexed or cataloged and available in a library or other public collection.”
Proper indexing makes a document discoverable by those interested in the subject matter. For example:
- A thesis properly indexed in a university library catalog
- A technical report with a searchable entry in a database
- A paper listed in a conference proceedings index
These could all be considered publicly accessible due to their indexing, even if they have limited distribution. The key is that indexing allows interested parties to locate the document through reasonable effort.
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The USPTO determines if a Substantial New Question of Patentability (SNQ) is raised by reviewing the items of information presented in the supplemental examination request. The examiner considers whether the information would be important to a reasonable examiner in determining patentability.
According to the MPEP: For each item of information, the examiner need only identify one SNQ (e.g., a teaching that would be important to a reasonable examiner when determining patentability) for each identified claim.
The determination is made on a claim-by-claim basis, and the examiner must provide a detailed explanation in the Reasons Document.
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Courts consider several factors to determine if a claimed invention was offered for sale primarily for experimentation. According to MPEP 2133.03(e)(4), these factors include:
“(1) the necessity for public testing, (2) the amount of control over the experiment retained by the inventor, (3) the nature of the invention, (4) the length of the test period, (5) whether payment was made, (6) whether there was a secrecy obligation, (7) whether records of the experiment were kept, (8) who conducted the experiment, … (9) the degree of commercial exploitation during testing[,] … (10) whether the invention reasonably requires evaluation under actual conditions of use, (11) whether testing was systematically performed, (12) whether the inventor continually monitored the invention during testing, and (13) the nature of contacts made with potential customers.”
It’s important to note that no single factor or combination of factors is necessarily determinative. The examiner must assess the scope and length of the activity in relation to the experimental purpose and the nature of the subject matter involved.
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According to MPEP 2182, when applying prior art to a means-plus-function limitation, the examiner has specific burdens of proof:
- The examiner must show that the prior art element performs the identical function specified in the claim.
- If the prior art only teaches identity of function, the examiner carries the initial burden of proof for showing that the prior art structure or step is the same as or equivalent to the structure, material, or acts described in the specification.
- If the prior art reference teaches the identical structure or acts but is silent about performing the claimed function, the examiner must provide a “sound basis for believing” that the prior art structure inherently performs the same function.
The MPEP states: “The examiner must provide a ‘sound basis for believing’ that the prior art structure or acts would be capable of performing the claimed function.” This requirement ensures that examiners thoroughly analyze the prior art before rejecting a claim with a means-plus-function limitation.
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The In re Grose case, cited in MPEP 2144.02, is significant in patent examination because it demonstrates the limitations of applying structural obviousness to complex mixtures. The MPEP states:
“In re Grose, 592 F.2d 1161, 201 USPQ 57 (CCPA 1979) (Court held that different crystal forms of zeolites would not have been structurally obvious one from the other because there was no chemical theory supporting such a conclusion.)”
This case highlights that patent examiners must be cautious when applying general chemical principles to complex structures. It emphasizes the need for specific scientific theories or evidence to support obviousness rejections, especially when dealing with intricate chemical structures or mixtures like zeolites.
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Yes, a reference with no stated utility can still be used as prior art. According to MPEP 2122:
“In evaluating the utility of the disclosed subject matter of a reference, it is not necessary that the reference disclose the utility.”
This means that even if a prior art reference doesn’t explicitly mention the usefulness or practical application of the invention it describes, it can still be valid prior art. The key factor is whether the reference discloses the claimed subject matter, not whether it states its utility.
The MPEP further clarifies that the examiner should focus on the disclosed subject matter itself, rather than any stated or unstated utility, when considering prior art references.
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A protest filed after final rejection but before the notice of allowance is issued may still be considered, subject to certain conditions. According to MPEP 1901.04:
“A protest filed after final rejection (and prior to the date the notice of allowance is given or mailed) and complying with all the requirements of 37 CFR 1.291 will be considered if the application is still pending.“
However, the MPEP also notes:
“However, prosecution will not ordinarily be reopened after final rejection if the prior art cited in the protest is merely cumulative of the prior art cited in the final rejection.“
This means that while the protest may be considered, it’s less likely to impact the examination if it doesn’t provide new, non-cumulative prior art or information.
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The concepts of a “substantial new question of patentability” (SNQ) and a “prima facie case of unpatentability” are distinct in patent law, particularly in the context of reexamination proceedings. According to MPEP 2242:
It is not necessary that a ‘prima facie’ case of unpatentability exist as to the claim in order for ‘a substantial new question of patentability’ to be present as to the claim.
Key differences include:
- SNQ: This is the threshold for initiating a reexamination. It exists when prior art raises a substantial question about the patentability of at least one claim, even if it wouldn’t necessarily lead to a rejection.
- Prima facie case: This is a higher standard, typically used during examination, where the evidence is sufficient to establish unpatentability unless rebutted.
The MPEP notes: Thus, ‘a substantial new question of patentability’ as to a patent claim could be present even if the examiner would not necessarily reject the claim as either fully anticipated by, or obvious in view of, the prior art patents or printed publications.
This distinction allows for a broader range of issues to be considered in reexamination proceedings.
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Patent Procedure (50)
The MPEP addresses the use of phrases like “for example,” “such as,” or “or the like” in patent claims through specific form paragraphs. These phrases can render claims indefinite under 35 U.S.C. 112(b) or pre-AIA 35 U.S.C. 112, second paragraph.
1. For the phrase “for example,” form paragraph 7.34.08 states:
Regarding claim [1], the phrase “for example” renders the claim indefinite because it is unclear whether the limitation(s) following the phrase are part of the claimed invention. See MPEP § 2173.05(d).
2. For the phrase “or the like,” form paragraph 7.34.09 states:
Regarding claim [1], the phrase “or the like” renders the claim(s) indefinite because the claim(s) include(s) elements not actually disclosed (those encompassed by “or the like”), thereby rendering the scope of the claim(s) unascertainable. See MPEP § 2173.05(d).
3. For the phrase “such as,” form paragraph 7.34.10 states:
Regarding claim [1], the phrase “such as” renders the claim indefinite because it is unclear whether the limitations following the phrase are part of the claimed invention. See MPEP § 2173.05(d).
These phrases create uncertainty about whether the examples or items following them are part of the claimed invention or merely illustrative, making the scope of the claims unclear.
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Individuals covered by 37 CFR 1.56 must disclose information about copending U.S. patent applications that are “material to patentability” of the application in question. This includes:
- Identification of pending or abandoned applications filed by at least one of the inventors or assigned to the same assignee
- Applications that disclose similar subject matter
- Prior art references from one application that are material to patentability of another application
The MPEP emphasizes: [T]he applicant has the burden of presenting the examiner with a complete and accurate record to support the allowance of letters patent.
It’s important to note that examiners cannot be assumed to be aware of all related applications, so applicants must bring this information to their attention.
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In product-by-process claim rejections, the burden of proof is initially on the patent examiner, but it’s lower than for conventional product claims. According to MPEP 2113:
“The Patent Office bears a lesser burden of proof in making out a case of prima facie obviousness for product-by-process claims because of their peculiar nature” than when a product is claimed in the conventional fashion.
Once the examiner provides a rationale showing that the claimed product appears to be the same or similar to a prior art product, the burden shifts to the applicant. The applicant must then provide evidence establishing a nonobvious difference between the claimed product and the prior art product.
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Reviewing claims is a crucial part of patent examination. According to MPEP 2103, the key steps in reviewing claims are:
- Identify and evaluate each claim limitation:
- For processes, identify steps or acts to be performed
- For products, identify discrete physical structures or materials
- Correlate claim limitations with the disclosure:
- Match each claim limitation to portions of the specification that describe it
- Do this for all claims, including those using means- (or step-) plus-function language
- Interpret claims using broadest reasonable interpretation:
- Consider the plain meaning of terms as understood by one having ordinary skill in the art
- Evaluate any limiting effect of claim language
- Consider every limitation in the claim:
- Evaluate the claim as a whole, not as isolated elements
The MPEP emphasizes, The goal of claim analysis is to identify the boundaries of the protection sought by the applicant and to understand how the claims relate to and define what the applicant has indicated is the invention.
It’s important to note that examiners should not dissect a claimed invention into discrete elements and then evaluate the elements in isolation. Instead, the claim as a whole must be considered.
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Interchangeability plays a crucial role in determining equivalence in patent examination. It is one of the factors that support a conclusion that a prior art element is an equivalent to a claimed limitation. Specifically:
MPEP 2183 states: “A person of ordinary skill in the art would have recognized the interchangeability of the element shown in the prior art for the corresponding element disclosed in the specification.“
This means that if a person with ordinary skill in the relevant field would consider the prior art element and the claimed element to be interchangeable, it supports the argument for equivalence. Examiners may cite this factor when making a prima facie case of equivalence, and it’s an important consideration for both applicants and examiners in patent prosecution.
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The use of new terminology in patent claims can make it challenging to compare the claimed invention with prior art. The MPEP acknowledges this difficulty in MPEP 2173.05(a):
“Although it is difficult to compare the claimed invention with the prior art when new terms are used that do not appear in the prior art, this does not make the new terms indefinite.”
Key points to consider:
- New terms are often necessary when describing new technologies or rapidly evolving fields.
- The difficulty in comparison doesn’t automatically make the new terms indefinite.
- Examiners must still assess whether the claims, read in light of the specification, reasonably apprise those skilled in the art of the invention’s utilization and scope.
- The language should be as precise as the subject matter permits.
While new terminology can complicate prior art comparisons, it’s the examiner’s job to determine if the claims are clear and supported by the specification, regardless of the specific terms used.
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The USPTO uses a two-step process to determine if a claim recites an abstract idea:
- Evaluate the claim language: Examiners analyze the claim to identify any concepts that may be abstract ideas.
- Compare to established abstract idea categories: The identified concepts are compared to the enumerated groupings of abstract ideas and previous court decisions.
According to MPEP 2106.04(a): “To determine whether a claim recites an abstract idea in Prong One, examiners are now to: (a) Identify the specific limitation(s) in the claim under examination (individually or in combination) that the examiner believes recites an abstract idea; and (b) determine whether the identified limitation(s) falls within the subject matter groupings of abstract ideas enumerated in Section I of the 2019 Revised Patent Subject Matter Eligibility Guidance.”
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What are the Graham factors in patent obviousness analysis?
The Graham factors, established by the Supreme Court in Graham v. John Deere Co., are four key considerations used in determining obviousness under 35 U.S.C. 103. These factors are:
- The scope and content of the prior art
- The differences between the prior art and the claimed invention
- The level of ordinary skill in the pertinent art
- Objective evidence of nonobviousness (secondary considerations)
As stated in MPEP 2141: “The Graham factual inquiries … are to be considered when making a determination of obviousness.” Examiners must consider these factors when evaluating whether a claimed invention is obvious in light of the prior art.
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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.
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The United States Patent and Trademark Office (USPTO) uses several criteria to determine if a claim is too broad. According to MPEP 2173.04, the assessment depends on the specific issues with the claim:
- Inventor’s Regard: If the claim is broader than what the inventor regards as the invention, it may be rejected under 35 U.S.C. 112(b).
- Lack of Support or Enablement: If the claim is not supported by the original description or lacks an enabling disclosure, it may be rejected under 35 U.S.C. 112(a).
- Prior Art: If the claim is so broad that it reads on prior art, it may be rejected under 35 U.S.C. 102 or 103.
The MPEP states: “Undue breadth of the claim may be addressed under different statutory provisions, depending on the reasons for concluding that the claim is too broad.“
Examiners will analyze the claim language, specification, and prior art to make these determinations. It’s important to note that breadth alone does not make a claim too broad; the issue arises when the breadth leads to indefiniteness, lack of support, or overlap with prior art.
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Before conducting an enablement analysis, it is crucial for the examiner to construe the claims. The MPEP 2164.04 emphasizes this point:
“Before any analysis of enablement can occur, it is necessary for the examiner to construe the claims.“
For terms that are not well-known in the art or could have multiple meanings, the examiner must:
- Select the definition they intend to use when examining the application
- Base this definition on their understanding of what the applicant intends it to mean
- Explicitly set forth the meaning of the term and the scope of the claim when writing an Office action
This step is crucial because the enablement requirement is directly related to the scope of the claims, and a proper understanding of the claim terms is necessary to assess whether the disclosure enables the full scope of the claimed invention.
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Yes, patent examiners can and often do suggest amendments to claims to address written description issues. This practice is encouraged as part of the examination process to help applicants overcome rejections and move their applications forward.
The MPEP 2163.04 states:
“When appropriate, suggest amendments to the claims which can be supported by the application’s written description, being mindful of the prohibition against the addition of new matter in the claims or description.”
However, examiners must be careful not to suggest amendments that would introduce new matter into the application. Any suggested amendments must be fully supported by the original disclosure to comply with the written description requirement and avoid new matter issues.
This guidance encourages a collaborative approach between examiners and applicants to resolve written description issues while maintaining the integrity of the patent application.
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If the specification doesn’t provide adequate support or antecedent basis for claim terms, an examiner can take several actions. According to MPEP 2173.03:
“If the specification does not provide the needed support or antecedent basis for the claim terms, the specification should be objected to under 37 CFR 1.75(d)(1).”
The examiner’s actions may include:
- Objecting to the specification under 37 CFR 1.75(d)(1)
- Requiring the applicant to make appropriate amendments to the description
- Asking the applicant to amend the claims
The MPEP further states:
“Applicant will be required to make appropriate amendment to the description to provide clear support or antecedent basis for the claim terms provided no new matter is introduced, or amend the claim.”
It’s important to note that any amendments to the specification must not introduce new matter, as this would violate 35 U.S.C. 132(a).
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How does the ‘teaching, suggestion, or motivation’ (TSM) test apply in obviousness determinations?
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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An interference in patent law is a proceeding to determine which party has the right to a patent when two or more parties claim the same invention. The Manual of Patent Examining Procedure (MPEP) Chapter 2300 covers interference and derivation proceedings.
According to MPEP 2304, “The suggestion for an interference may come from an applicant or from an examiner.” This process is crucial in determining priority of invention when multiple parties claim the same or similar inventions.
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Pre-AIA 35 U.S.C. 102 subsections (a), (b), and (e) each define different types of prior art. According to MPEP 2139.02:
- 35 U.S.C. 102(a) covers knowledge or use by others in the U.S., or patents or printed publications anywhere, before the invention by the applicant.
- 35 U.S.C. 102(b) relates to public use or sale in the U.S., or patents or printed publications anywhere, more than one year before the application date.
- 35 U.S.C. 102(e) pertains to earlier-filed U.S. patent applications that are published or granted as patents.
Understanding these differences is crucial for patent examiners when evaluating prior art and determining patentability under the pre-AIA system. Each subsection has its own specific criteria and time frame for what qualifies as prior art.
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According to MPEP 2113, the evaluation of product-by-process claims focuses on the final product, not the process of making it. The MPEP states:
“If the product in the product-by-process claim is the same as or obvious from a product of the prior art, the claim is unpatentable even though the prior product was made by a different process.”
This means that examiners will compare the claimed product to prior art products, regardless of how those products were made. If the claimed product appears to be the same or obvious in light of a prior art product, it may be rejected under 35 U.S.C. 102 (anticipation) or 35 U.S.C. 103 (obviousness).
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When determining whether a reference is in the “same field of endeavor” as the claimed invention, examiners should consider:
- Explanations of the invention’s subject matter in the patent application
- The embodiments, function, and structure of the claimed invention
The MPEP states: “When determining whether the ‘relevant field of endeavor’ test is met, the examiner should consider ‘explanations of the invention’s subject matter in the patent application, including the embodiments, function, and structure of the claimed invention.’” (MPEP 2141.01(a))
Examiners must consider the disclosure of each reference “in view of the ‘the reality of the circumstances’” and weigh these circumstances “from the vantage point of the common sense likely to be exerted by one of ordinary skill in the art in assessing the scope of the endeavor.”
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The ‘teaching away’ doctrine is an important concept in patent law related to obviousness rejections. A prior art reference is said to ‘teach away’ from the claimed invention if it criticizes, discredits, or otherwise discourages the solution claimed. However, as MPEP 2145 explains:
Key points about the ‘teaching away’ doctrine:
- It’s a factor in determining non-obviousness, but not necessarily conclusive
- The substance and nature of the teaching must be considered
- Mere disclosure of alternatives doesn’t constitute teaching away
- A reference must actively criticize, discredit, or discourage the claimed solution to teach away
Examiners and applicants should carefully evaluate the context and substance of prior art teachings when considering this doctrine.
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How does the title of a patent application affect its classification?
The title of a patent application plays a significant role in its initial classification. According to MPEP 606:
The title of the invention may not exceed 500 characters in length and must be as short and specific as possible.
The title’s impact on classification includes:
- Initial sorting: The title is often the first piece of information used to categorize the application.
- Technology field identification: A clear, specific title helps quickly identify the relevant technology field.
- Examiner assignment: The title can influence which art unit and examiner are assigned to the application.
- Prior art searches: An accurate title can guide more effective prior art searches.
While the abstract and claims ultimately determine the final classification, a well-crafted title ensures the application starts in the right direction, potentially speeding up the examination process and improving the quality of the initial review.
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When considering the substitution of equivalents in patent obviousness determinations, there are specific requirements outlined in MPEP 2144.06. The key requirement is that the equivalency must be recognized in the prior art. As stated in the MPEP:
“In order to rely on equivalence as a rationale supporting an obviousness rejection, the equivalency must be recognized in the prior art, and cannot be based on applicant’s disclosure or the mere fact that the components at issue are functional or mechanical equivalents.”
This means that the patent examiner cannot simply declare two components as equivalent based on the current application or their similar functions. There must be evidence in the prior art that recognizes the equivalency. However, it’s important to note that “An express suggestion to substitute one equivalent component or process for another is not necessary to render such substitution obvious.” This principle allows for some flexibility in applying the doctrine of equivalents in obviousness determinations.
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The USPTO generally discourages the use of post-filing date evidence in enablement determinations. According to MPEP 2164.05(a):
“In general, the examiner should not use post-filing date references to demonstrate that a patent is not enabled.” However, there are exceptions:
- A later-dated reference may provide evidence of what one skilled in the art would have known on or before the effective filing date.
- If a publication demonstrates that those of ordinary skill in the art would find a particular invention was not enabled years after the filing date, it could be evidence that the claimed invention was not possible at the time of filing.
The MPEP also notes: “While a later dated publication cannot supplement an insufficient disclosure in a prior dated application to make it enabling, an applicant can offer the testimony of an expert based on the publication as evidence of the level of skill in the art at the time the application was filed.”
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AIA 35 U.S.C. 102(b) plays a crucial role in determining whether certain disclosures qualify as prior art. According to MPEP 2152.04:
“AIA 35 U.S.C. 102(b)(1) and (b)(2), however, each state conditions under which a “disclosure” that otherwise falls within AIA 35 U.S.C. 102(a)(1) or 102(a)(2) is not prior art under AIA 35 U.S.C. 102(a)(1) or 102(a)(2).”
This means that 102(b) provides exceptions to what would otherwise be considered prior art under 102(a). These exceptions can include:
- Disclosures made by the inventor or joint inventor
- Disclosures that appeared in applications and patents having a common assignee or inventor
- Disclosures made after public disclosure by the inventor
Understanding these exceptions is crucial for inventors and patent practitioners in determining the novelty and patentability of an invention.
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What happens if an IDS is filed after the mailing of a final Office action?
If an Information Disclosure Statement (IDS) is filed after the mailing of a final Office action, the examiner will consider it according to specific guidelines:
- The IDS will be considered if it’s accompanied by either a statement as specified in 37 CFR 1.97(e) or the fee set forth in 37 CFR 1.17(p).
- If these requirements are not met, the IDS will be placed in the application file but will not be considered by the examiner.
As stated in MPEP 609.05(c): ‘Consideration by the examiner of an IDS submitted after the mailing of a final Office action is limited to the requirements set forth in 37 CFR 1.97(d) and to documents which the examiner determines to be relevant.’ This means that even if the IDS is considered, the examiner is not required to reopen prosecution or issue a new Office action based on the newly submitted information.
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Can an examiner request copies of cited NPL documents not submitted with an IDS?
Yes, an examiner can request copies of cited Non-Patent Literature (NPL) documents that were not submitted with an Information Disclosure Statement (IDS) under certain circumstances:
- If the NPL citation is incomplete or illegible, the examiner may request a legible copy.
- If the NPL document is not readily available to the examiner, they may request a copy from the applicant.
- The examiner should only request copies of documents that seem particularly relevant to the claimed invention.
According to MPEP 609.05(c): “The examiner may request copies of only those documents cited in the information disclosure statement that are not present in the Office’s files if the examiner believes the documents to be readily available.”
However, it’s important to note that: “The Office should not require copies of U.S. patents and U.S. patent application publications cited in an IDS, unless required by the first sentence of 37 CFR 1.98(d).”
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What are secondary considerations in obviousness analysis?
Secondary considerations, also known as objective evidence of nonobviousness, are factors that can provide evidence against an obviousness rejection in patent examination. According to MPEP 2141:
“The examiner should consider all of the evidence in the record, including any objective indicia of nonobviousness presented by applicant.”
Common types of secondary considerations include:
- Commercial success of the invention
- Long-felt but unsolved needs addressed by the invention
- Failure of others to achieve the invention
- Unexpected results or properties
- Skepticism of experts
- Copying by others
- Licensing or praise by others in the field
The importance of secondary considerations is emphasized in MPEP 2141: “Evidence of secondary considerations may be relevant to the issue of obviousness, and should be evaluated on a case-by-case basis.” When presented with such evidence, examiners must carefully consider it in the context of the Graham factors and the overall obviousness analysis.
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The “field of endeavor test” is one of the criteria used to determine if a reference qualifies as analogous art. According to MPEP 2141.01(a):
“Under the field of endeavor test, if the reference is from the same field of endeavor as the claimed invention, irrespective of the problem addressed, then the reference is analogous art.”
This test focuses on whether the reference and the claimed invention are in the same technical field, regardless of the specific problem being solved. It’s important to note that the field of endeavor should be defined broadly to encompass the full scope of the inventor’s work.
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In patent law, “prolix” refers to claims that are excessively wordy, lengthy, or contain unnecessary details that make it difficult to determine the scope of the claimed invention. According to MPEP 2173.05(m), examiners may reject claims as prolix “when they contain such long recitations or unimportant details that the scope of the claimed invention is rendered indefinite thereby.”
Prolix claims can make it challenging for patent examiners and others to understand the boundaries of the invention, potentially leading to indefiniteness rejections under 35 U.S.C. 112(b).
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How does the USPTO determine if a Markush grouping is improper?
The USPTO determines if a Markush grouping is improper based on two main criteria, as outlined in MPEP 2117:
- Lack of a single structural similarity: The members of the Markush group do not share a common structure or feature.
- Lack of a common use: The members do not share a common function or purpose.
The MPEP provides specific guidance:
“A Markush claim contains an ‘improper Markush grouping’ if either: (1) the members of the Markush group do not share a ‘single structural similarity’ or (2) the members do not share a common use. Supplementary Guidelines at 7166 (citing In re Harnisch, 631 F.2d 716, 721-22, 206 USPQ 300, 305 (CCPA 1980)).”
Examiners are instructed to consider both the structure and the use of the alternatives in the Markush grouping. If either criterion is not met, the grouping may be considered improper, and the examiner may reject the claim.
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Applicants often argue that an examiner’s obviousness rejection is based on improper hindsight reasoning. MPEP 2145 addresses this issue:
Key points about hindsight arguments:
- Some degree of hindsight is inherent in obviousness analyses
- Proper hindsight uses only knowledge available to a person of ordinary skill at the time of invention
- Improper hindsight relies on knowledge gleaned solely from the applicant’s disclosure
- Examiners should explain how their reasoning is based on prior art teachings, not applicant’s disclosure
- Lack of express motivation to combine in prior art doesn’t necessarily mean improper hindsight was used
Examiners should carefully articulate their reasoning to show they are not relying on improper hindsight.
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The objective inquiry is the second component of the best mode analysis, as outlined in MPEP 2165.03. This inquiry is only conducted if the subjective inquiry indicates that the inventor knew of a better mode at the time of filing. The objective inquiry involves:
“Compare what was known in (A) with what was disclosed – is the disclosure adequate to enable one skilled in the art to practice the best mode?”
This inquiry is objective because it focuses on whether the disclosure in the patent application is sufficient for a person skilled in the relevant art to practice the best mode. It depends on the level of skill in the art and the adequacy of the information provided in the specification.
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A provisional rejection under 35 U.S.C. 102(a)(2) is a type of patent rejection that can be made when there are copending U.S. patent applications with overlapping subject matter. According to MPEP 2154.01(d):
“If an earlier filed, copending, and unpublished U.S. patent application discloses subject matter which would anticipate the claims in a later filed pending U.S. application which has a different inventive entity, the examiner should determine whether a provisional rejection under 35 U.S.C. 102(a)(2) of the later filed application can be made.”
This type of rejection is considered ‘provisional’ because it is based on an unpublished application that may change before it is published or issued as a patent.
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How does the ‘design choice’ rationale apply in obviousness rejections?
The ‘design choice’ rationale is one of the exemplary rationales used to support a conclusion of obviousness in patent examination. According to MPEP 2143, this rationale can be applied when:
“The claimed structure and the prior art structure are identical or substantially identical, or are produced by identical or substantially identical processes, but the prior art is silent as to an inherent characteristic.”
The ‘design choice’ rationale applies in obviousness rejections as follows:
- When the difference between the claimed invention and the prior art is a matter of design choice that would have been obvious to one of ordinary skill in the art.
- When the claimed design choice does not result in a new or unexpected result compared to the prior art.
- When the prior art teaches the general conditions of the claim, discovering the optimum or workable ranges involves only routine skill in the art.
- When the selection of a specific material or shape is recognized as being within the level of ordinary skill in the art.
Examiners must provide a reasoned explanation for why the differences between the claimed invention and the prior art are considered design choices. This explanation should include:
- Identification of the relevant teachings of the prior art.
- Articulation of the reasons why one of ordinary skill in the art would have found the claimed invention to be a matter of design choice.
- Explanation of why the claimed design choice does not produce a new or unexpected result.
It’s important to note that the ‘design choice’ rationale should be applied cautiously and supported by evidence to avoid relying on impermissible hindsight reasoning.
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An examiner should conduct a search for foreign patents under pre-AIA 35 U.S.C. 102(d) only under specific circumstances. The MPEP provides guidance on this:
The MPEP also notes that such searches are typically unproductive due to the low probability of foreign patents issuing before the U.S. filing date. However, examiners should be aware that average pendency varies significantly between countries.
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If an examiner determines that a continuation or divisional application contains new matter relative to the prior application, the following steps will occur:
- The examiner will notify the applicant in the next Office action.
- The examiner will indicate that the application should be redesignated as a continuation-in-part (CIP).
According to MPEP 602.05: If the examiner determines that the continuation or divisional application contains new matter relative to the prior application, the examiner should so notify the applicant in the next Office action and indicate that the application should be redesignated as a continuation-in-part.
It’s important to note that:
- Continuations and divisionals should not contain new matter relative to the prior application.
- If new matter is present, the application is more appropriately designated as a continuation-in-part.
- The redesignation as a CIP may have implications for the oath or declaration requirements and the application’s effective filing date for the new subject matter.
Applicants should carefully review their applications to ensure they are correctly designated and contain appropriate oaths or declarations based on their content and relationship to the prior application.
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When an examiner issues a new matter rejection confined to amendments in the specification, the process for review is through a petition. This is distinct from new matter rejections in claims, which require an appeal.
According to MPEP 608.04(c):
“Where the new matter is confined to amendments to the specification, review of the examiner’s requirement for cancelation is by way of petition.”
To challenge the examiner’s holding of new matter in the specification:
- Prepare a detailed petition explaining why the amendment does not introduce new matter.
- Submit the petition to the USPTO, following the guidelines for petition submission.
- The petition will be reviewed by the appropriate office, typically the Technology Center Director or their designee.
- A decision will be issued either granting or denying the petition.
It’s important to note that this process is separate from the appeal process used for claim rejections.
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When an examiner encounters an application with national security markings but no Secrecy Order, they must take specific actions. The MPEP instructs: In this case, the examiner should require the applicant to seek imposition of a Secrecy Order or authority to cancel the markings. This should preferably be done with the first action and, in any event, prior to final disposition of the application.
This ensures that potentially sensitive information is properly handled during the examination process.
For more information on national security markings, visit: national security markings.
For more information on patent examination, visit: patent examination.
Submitting documents as evidence in a reply to an Office action is distinct from filing an information disclosure statement (IDS). The MPEP clarifies:
“Compliance with the information disclosure rules is not a threshold requirement to have information considered when submitted by applicant to support an argument being made in a reply to an Office action.”
When submitting documents as evidence, applicants don’t need to comply with the requirements of 37 CFR 1.97 and 37 CFR 1.98. However, if the same documents are also listed on an IDS form (e.g., PTO/SB/08), the applicant must comply with IDS rules for those documents to be considered as part of the IDS.
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A Request to Delete a Named Inventor in a Continued Prosecution Application (CPA) for Design Applications is a procedure that allows for the correction of inventorship when filing a CPA. This request is specifically used to remove the name(s) of person(s) who are not inventors of the invention being claimed in the new application.
According to MPEP ¶ 2.32:
Receipt is acknowledged of the statement requesting that [1] be deleted as a named inventor which was filed with the Continued Prosecution Application (CPA) on [2]. The inventorship has been corrected as requested.
This paragraph confirms that the USPTO recognizes and processes such requests when submitted with a CPA filing.
For more information on continued prosecution application, visit: continued prosecution application.
For more information on CPA, visit: CPA.
For more information on design applications, visit: design applications.
For more information on inventorship, visit: inventorship.
For more information on patent examination, visit: patent examination.
An examiner determines if an application qualifies as a continuation under MPEP ¶ 2.05 by assessing the following criteria:
- The application discloses only subject matter that was previously disclosed in a prior application
- The application claims only subject matter that was disclosed in the prior application
- The application names at least one inventor who was also named in the prior application
The MPEP provides specific language for this assessment: “This application discloses and claims only subject matter disclosed in prior Application No. [1], filed [2], and names an inventor or inventors named in the prior application.” (MPEP ¶ 2.05)
If all these criteria are met, the examiner may notify the applicant that the application may constitute a continuation. The examiner will then proceed with the appropriate examination procedures for continuation applications.
For more information on continuation application, visit: continuation application.
For more information on patent examination, visit: patent examination.
What are the consequences of filing an IDS after the mailing of a notice of allowance?
Filing an Information Disclosure Statement (IDS) after the mailing of a notice of allowance can have significant consequences:
- The application will be withdrawn from issue
- The IDS will be considered by the examiner
- If the examiner determines that the application is still allowable, the application may be returned to issue
- If the examiner determines that one or more claims are no longer allowable, the applicant will be notified and the claims will be rejected
As stated in MPEP 609.04(b): “If an IDS is filed after the mailing date of a Notice of Allowance under 37 CFR 1.311, the application will be withdrawn from issue.” This emphasizes the importance of timely IDS submission to avoid potential delays in patent issuance.
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No, once a patent application becomes involved in a derivation proceeding, the examiner cannot continue regular examination. According to MPEP 2313:
“The examiner may not act on an involved patent or application except as the Board may authorize.”
This means that all examination activities are suspended unless the Patent Trial and Appeal Board (PTAB) specifically authorizes an action. The PTAB has exclusive jurisdiction over the application during the proceeding.
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Indexing plays a crucial role in determining the public accessibility of a document for patent purposes. MPEP 2128.01 emphasizes the importance of indexing:
“A document may be considered publicly accessible if it is indexed or cataloged and available in a library or other public collection.”
Proper indexing makes a document discoverable by those interested in the subject matter. For example:
- A thesis properly indexed in a university library catalog
- A technical report with a searchable entry in a database
- A paper listed in a conference proceedings index
These could all be considered publicly accessible due to their indexing, even if they have limited distribution. The key is that indexing allows interested parties to locate the document through reasonable effort.
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The USPTO determines if a Substantial New Question of Patentability (SNQ) is raised by reviewing the items of information presented in the supplemental examination request. The examiner considers whether the information would be important to a reasonable examiner in determining patentability.
According to the MPEP: For each item of information, the examiner need only identify one SNQ (e.g., a teaching that would be important to a reasonable examiner when determining patentability) for each identified claim.
The determination is made on a claim-by-claim basis, and the examiner must provide a detailed explanation in the Reasons Document.
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Courts consider several factors to determine if a claimed invention was offered for sale primarily for experimentation. According to MPEP 2133.03(e)(4), these factors include:
“(1) the necessity for public testing, (2) the amount of control over the experiment retained by the inventor, (3) the nature of the invention, (4) the length of the test period, (5) whether payment was made, (6) whether there was a secrecy obligation, (7) whether records of the experiment were kept, (8) who conducted the experiment, … (9) the degree of commercial exploitation during testing[,] … (10) whether the invention reasonably requires evaluation under actual conditions of use, (11) whether testing was systematically performed, (12) whether the inventor continually monitored the invention during testing, and (13) the nature of contacts made with potential customers.”
It’s important to note that no single factor or combination of factors is necessarily determinative. The examiner must assess the scope and length of the activity in relation to the experimental purpose and the nature of the subject matter involved.
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According to MPEP 2182, when applying prior art to a means-plus-function limitation, the examiner has specific burdens of proof:
- The examiner must show that the prior art element performs the identical function specified in the claim.
- If the prior art only teaches identity of function, the examiner carries the initial burden of proof for showing that the prior art structure or step is the same as or equivalent to the structure, material, or acts described in the specification.
- If the prior art reference teaches the identical structure or acts but is silent about performing the claimed function, the examiner must provide a “sound basis for believing” that the prior art structure inherently performs the same function.
The MPEP states: “The examiner must provide a ‘sound basis for believing’ that the prior art structure or acts would be capable of performing the claimed function.” This requirement ensures that examiners thoroughly analyze the prior art before rejecting a claim with a means-plus-function limitation.
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The In re Grose case, cited in MPEP 2144.02, is significant in patent examination because it demonstrates the limitations of applying structural obviousness to complex mixtures. The MPEP states:
“In re Grose, 592 F.2d 1161, 201 USPQ 57 (CCPA 1979) (Court held that different crystal forms of zeolites would not have been structurally obvious one from the other because there was no chemical theory supporting such a conclusion.)”
This case highlights that patent examiners must be cautious when applying general chemical principles to complex structures. It emphasizes the need for specific scientific theories or evidence to support obviousness rejections, especially when dealing with intricate chemical structures or mixtures like zeolites.
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Yes, a reference with no stated utility can still be used as prior art. According to MPEP 2122:
“In evaluating the utility of the disclosed subject matter of a reference, it is not necessary that the reference disclose the utility.”
This means that even if a prior art reference doesn’t explicitly mention the usefulness or practical application of the invention it describes, it can still be valid prior art. The key factor is whether the reference discloses the claimed subject matter, not whether it states its utility.
The MPEP further clarifies that the examiner should focus on the disclosed subject matter itself, rather than any stated or unstated utility, when considering prior art references.
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A protest filed after final rejection but before the notice of allowance is issued may still be considered, subject to certain conditions. According to MPEP 1901.04:
“A protest filed after final rejection (and prior to the date the notice of allowance is given or mailed) and complying with all the requirements of 37 CFR 1.291 will be considered if the application is still pending.“
However, the MPEP also notes:
“However, prosecution will not ordinarily be reopened after final rejection if the prior art cited in the protest is merely cumulative of the prior art cited in the final rejection.“
This means that while the protest may be considered, it’s less likely to impact the examination if it doesn’t provide new, non-cumulative prior art or information.
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The concepts of a “substantial new question of patentability” (SNQ) and a “prima facie case of unpatentability” are distinct in patent law, particularly in the context of reexamination proceedings. According to MPEP 2242:
It is not necessary that a ‘prima facie’ case of unpatentability exist as to the claim in order for ‘a substantial new question of patentability’ to be present as to the claim.
Key differences include:
- SNQ: This is the threshold for initiating a reexamination. It exists when prior art raises a substantial question about the patentability of at least one claim, even if it wouldn’t necessarily lead to a rejection.
- Prima facie case: This is a higher standard, typically used during examination, where the evidence is sufficient to establish unpatentability unless rebutted.
The MPEP notes: Thus, ‘a substantial new question of patentability’ as to a patent claim could be present even if the examiner would not necessarily reject the claim as either fully anticipated by, or obvious in view of, the prior art patents or printed publications.
This distinction allows for a broader range of issues to be considered in reexamination proceedings.
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Second Paragraph (1)
The MPEP addresses the use of phrases like “for example,” “such as,” or “or the like” in patent claims through specific form paragraphs. These phrases can render claims indefinite under 35 U.S.C. 112(b) or pre-AIA 35 U.S.C. 112, second paragraph.
1. For the phrase “for example,” form paragraph 7.34.08 states:
Regarding claim [1], the phrase “for example” renders the claim indefinite because it is unclear whether the limitation(s) following the phrase are part of the claimed invention. See MPEP § 2173.05(d).
2. For the phrase “or the like,” form paragraph 7.34.09 states:
Regarding claim [1], the phrase “or the like” renders the claim(s) indefinite because the claim(s) include(s) elements not actually disclosed (those encompassed by “or the like”), thereby rendering the scope of the claim(s) unascertainable. See MPEP § 2173.05(d).
3. For the phrase “such as,” form paragraph 7.34.10 states:
Regarding claim [1], the phrase “such as” renders the claim indefinite because it is unclear whether the limitations following the phrase are part of the claimed invention. See MPEP § 2173.05(d).
These phrases create uncertainty about whether the examples or items following them are part of the claimed invention or merely illustrative, making the scope of the claims unclear.
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