What types of prior art are considered under AIA 35 U.S.C. 102(a)(1)?
AIA 35 U.S.C. 102(a)(1) considers the following types of prior art: Prior patenting of the claimed invention Descriptions of the claimed invention in a printed publication Public use of the claimed invention Placing the claimed invention on sale Otherwise making the claimed invention available to the public As stated in the MPEP: “Prior art documents…
Read MoreWhat types of evidence can an applicant submit to support enablement?
Applicants can submit various types of evidence to support enablement claims. According to MPEP 2164.05: Factual affidavits under 37 CFR 1.132 References showing what one skilled in the art knew at the time of filing Declarations or affidavits containing factual evidence In chemical and biotechnical applications, evidence submitted to the FDA for clinical trial approval…
Read MoreWhat types of disclosures are considered under AIA 35 U.S.C. 102?
Under AIA 35 U.S.C. 102, various types of disclosures are considered. According to MPEP 2152.04, the term “disclosure” encompasses the following: Being patented Described in a printed publication In public use On sale Otherwise available to the public Being described in a U.S. patent, U.S. patent application publication, or WIPO published application The MPEP states:…
Read MoreHow 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…
Read MoreHow do treatment or prophylaxis limitations relate to other meaningful limitations?
Treatment or prophylaxis limitations are a specific type of meaningful limitation that can render a claim patent-eligible. These limitations are particularly relevant in medical and biotechnology fields. MPEP 2106.05(e) notes: “With respect to treatment or prophylaxis limitations, such as the immunization step in Classen, examiners should note that the other meaningful limitations consideration overlaps with…
Read MoreWhat is the significance of transitional phrases in patent claims?
Transitional phrases in patent claims are crucial as they define the scope of a claim with respect to additional components or steps. The MPEP states, The transitional phrases “comprising”, “consisting essentially of” and “consisting of” define the scope of a claim with respect to what unrecited additional components or steps, if any, are excluded from…
Read MoreHow do transitional phrases affect the interpretation of Markush groups in patent claims?
How do transitional phrases affect the interpretation of Markush groups in patent claims? Transitional phrases can significantly impact the interpretation of Markush groups in patent claims: “Consisting of” with Markush groups: Limits the claim to only the listed members of the Markush group. “Comprising” or “including” with Markush groups: Generally interpreted as open-ended, allowing for…
Read MoreWhat is the “transformation or reduction of an article” consideration in practical application analysis?
What is the “transformation or reduction of an article” consideration in practical application analysis? The “transformation or reduction of an article” consideration is one of the factors used to determine if a claim integrates a judicial exception into a practical application. According to MPEP 2106.04(d): “Effecting a transformation or reduction of a particular article to…
Read MoreWhat qualifies as a “transformation” under MPEP 2106.05(c)?
According to MPEP 2106.05(c), a transformation under the particular transformation consideration involves changing an “article” to a different state or thing. The MPEP provides the following guidance: Article: “An ‘article’ includes a physical object or substance.” Particularity: “The physical object or substance must be particular, meaning it can be specifically identified.” Change: “‘Transformation’ of an…
Read MoreHow does “transformation” factor into patent eligibility?
Transformation of an article to a different state or thing is an important consideration in patent eligibility analysis. MPEP 2106.05(c) states: “Transformation and reduction of an article ‘to a different state or thing’ is the clue to patentability of a process claim that does not include particular machines.” The MPEP provides some factors to consider:…
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