What are “terms of degree” in patent claims according to MPEP?
What are “terms of degree” in patent claims according to MPEP? According to MPEP 2173.05(b), “terms of degree” are a type of relative terminology used in patent claims. These terms attempt to describe a value or characteristic by reference to a degree. The MPEP states: “Terms of degree are not necessarily indefinite. […] If the…
Read MoreCan a terminal disclaimer overcome a pre-AIA 35 U.S.C. 102(e) rejection?
No, a terminal disclaimer cannot overcome a pre-AIA 35 U.S.C. 102(e) rejection. This is explicitly stated in the MPEP: “Note that a terminal disclaimer does not overcome a pre‑AIA 35 U.S.C. 102(e) rejection. See, e.g., In re Bartfeld, 925 F.2d 1450, 17 USPQ2d 1885 (Fed. Cir. 1991).” A terminal disclaimer is typically used to overcome…
Read MoreWhat is a “tentative abstract idea” in patent law?
A “tentative abstract idea” is a rare circumstance in patent examination where an examiner believes a claim limitation should be treated as an abstract idea, even though it doesn’t fall within the usual groupings of abstract ideas (mathematical concepts, certain methods of organizing human activity, mental processes). The MPEP states: There may be rare circumstances…
Read MoreWhat is the procedure for identifying a ‘tentative abstract idea’?
The MPEP describes a procedure for identifying a ‘tentative abstract idea’ in rare circumstances where an examiner believes a claim limitation should be treated as an abstract idea, but it doesn’t fall within the established groupings. The process is as follows: The examiner evaluates the claim under the subject matter eligibility framework. If the claim…
Read MoreCan a temporarily displayed reference be considered a printed publication in patent law?
Can a temporarily displayed reference be considered a printed publication in patent law? Yes, a temporarily displayed reference can be considered a printed publication under certain circumstances. The MPEP 2152.02(b) provides guidance on this: “Even if access to the information is limited to a few people, a printed publication may be established if those few…
Read MoreCan a temporarily available document be considered a printed publication?
Yes, a temporarily available document can be considered a printed publication under certain circumstances. The MPEP 2128 provides guidance on this matter: “A reference is considered publicly accessible even if it was available only for a short time or to a limited number of people, if the interested public could have accessed the document through…
Read MoreHow does the predictability of a technology affect enablement requirements?
The predictability of a technology significantly affects enablement requirements in patent law. Generally, less predictable technologies require more detailed disclosure to satisfy the enablement requirement. The MPEP Section 2164.06(b) provides examples illustrating this principle: In the Enzo Biochem v. Calgene case, the court noted that “antisense gene technology was highly unpredictable.” This unpredictability contributed to…
Read MoreHow does the complexity of technology affect enablement requirements in patents?
The complexity of technology significantly impacts enablement requirements in patent applications. MPEP 2164.05(b) addresses this issue: “The state of the prior art and the predictability of the art are inherently intertwined and are often evaluated together.” The complexity of technology affects enablement requirements in several ways: Disclosure Detail: More complex technologies typically require more detailed…
Read MoreHow does the concept of “teaching away” apply in patent obviousness cases?
“Teaching away” is a concept in patent law that can be used to rebut a prima facie case of obviousness. According to MPEP 2144.05: “A prima facie case of obviousness may also be rebutted by showing that the art, in any material respect, teaches away from the claimed invention.” Teaching away occurs when a person…
Read MoreWhat is the significance of “teaching away” in patent law?
“Teaching away” is an important concept in patent law, particularly when considering prior art. According to MPEP 2123, the mere disclosure of alternatives does not constitute teaching away: “[T]he prior art’s mere disclosure of more than one alternative does not constitute a teaching away from any of these alternatives because such disclosure does not criticize,…
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