Patent Law FAQ
This FAQ answers all your questions about patent law, patent procedure, and the patent examination process.
MPEP 2100 – Patentability (2)
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.
To learn more:
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.
To learn more:
MPEP 2143 – Examples Of Basic Requirements Of A Prima Facie Case Of Obviousness (1)
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.
To learn more:
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.
To learn more:
Patent Law (2)
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.
To learn more:
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.
To learn more:
Patent Procedure (2)
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.
To learn more:
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.
To learn more: