What is a result-effective variable in patent law?
A result-effective variable is a parameter that is recognized in the prior art as affecting a particular result or outcome. The concept is important in patent law, particularly in obviousness determinations. According to MPEP 2144.05: “A recognition in the prior art that a property is affected by the variable is sufficient to find the variable…
Read MoreHow can an applicant respond to a patent-eligible subject matter rejection?
According to MPEP 2106.07(b), an applicant can respond to a rejection based on failure to claim patent-eligible subject matter in three main ways: Amend the claim to add additional elements or modify existing elements Present persuasive arguments based on a good faith belief as to why the rejection is in error Submit evidence traversing the…
Read MoreHow should applicants respond to obviousness rejections?
Applicants responding to obviousness rejections should consider the following strategies outlined in the MPEP: Show that the Office erred in its factual findings Provide evidence to demonstrate nonobviousness Present arguments pointing out specific distinctions that render the claims patentable Submit rebuttal evidence, including evidence of secondary considerations The MPEP states: “37 CFR 1.111(b) requires applicant…
Read MoreHow can an applicant respond to a prima facie obviousness rejection?
When faced with a prima facie obviousness rejection, an applicant has several options to respond. The MPEP states: “Once the examiner sets out this prima facie case, the burden shifts to the patentee to provide evidence, in the prior art or beyond it, or argument sufficient to rebut the examiner’s evidence.” Applicants can respond by:…
Read MoreHow should applicants respond to new matter objections or rejections?
When responding to new matter objections or rejections, applicants should take the following steps: Review the objection or rejection carefully: Understand whether the issue is with the specification, drawings, or claims. Identify the alleged new matter: Determine which specific content the examiner has identified as new matter. Locate support in the original disclosure: Thoroughly review…
Read MoreHow can applicants respond to indefiniteness rejections?
Applicants have several options to respond to indefiniteness rejections. The MPEP outlines these approaches: “In response to an examiner’s rejection for indefiniteness, an applicant may resolve the ambiguity by amending the claim, or by providing a persuasive explanation on the record that a person of ordinary skill in the relevant art would not consider the…
Read MoreHow can an applicant respond to a rejection based on lack of utility?
When faced with a rejection based on lack of utility, an applicant has several options to respond. According to the MPEP: An applicant can do this using any combination of the following: amendments to the claims, arguments or reasoning, or new evidence submitted in an affidavit or declaration under 37 CFR 1.132, or in a…
Read MoreHow can applicants respond to obviousness rejections based on scientific theory?
How can applicants respond to obviousness rejections based on scientific theory? When faced with obviousness rejections based on scientific theory, applicants have several strategies to respond effectively. The MPEP 2144.02 provides guidance on how examiners use scientific principles, but applicants can counter these arguments in several ways: Challenge the applicability of the theory: Demonstrate that…
Read MoreHow can an applicant resolve ambiguities in functional limitations?
The MPEP provides several ways an applicant can resolve ambiguities in functional limitations during prosecution: Use a quantitative metric instead of a qualitative functional feature. For example, include a numeric limitation for a physical property. Demonstrate that the specification provides a formula for calculating a property, along with examples that meet and do not meet…
Read MoreHow does res judicata apply in patent law?
Res judicata in patent law prevents patent owners or applicants from seeking claims that are not patentably distinct from claims previously refused or canceled during administrative trials or federal court proceedings. According to MPEP 2190: “A patent owner or applicant may be precluded from seeking a claim that is not patentably distinct from a claim…
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