What are the key requirements for establishing a prima facie case of obviousness?
The key requirements for establishing a prima facie case of obviousness are: Resolving the Graham factual inquiries Articulating a clear rationale for why the claimed invention would have been obvious Providing a reasoned explanation that avoids conclusory generalizations As stated in the MPEP: “The key to supporting any rejection under 35 U.S.C. 103 is the…
Read MoreWhat are the requirements for taking official notice in patent examination?
What are the requirements for taking official notice in patent examination? In patent examination, official notice can be taken under specific conditions. According to MPEP 2144.03: “The examiner must provide specific factual findings predicated on sound technical and scientific reasoning to support the conclusion of common knowledge.” This means that: The examiner must have a…
Read MoreWhat are the requirements for invoking the joint research agreement exception?
What are the requirements for invoking the joint research agreement exception? To invoke the joint research agreement (JRA) exception and disqualify certain prior art, specific requirements must be met. According to MPEP 2156, these requirements include: The subject matter disclosed must have been developed and the claimed invention made by, or on behalf of, one…
Read MoreWhat are the requirements for invoking the exception under AIA 35 U.S.C. 102(b)(1)(B)?
To invoke the exception under AIA 35 U.S.C. 102(b)(1)(B), certain requirements must be met. MPEP 2155.02 outlines these requirements: “In order for the exception under AIA 35 U.S.C. 102(b)(1)(B) to apply, the subject matter of the intervening disclosure must be the same as the subject matter of the inventor’s previous public disclosure.” The key requirements…
Read MoreWhat are the two requirements for claims under 35 U.S.C. 112(b)?
According to MPEP 2171, there are two separate requirements set forth in 35 U.S.C. 112(b) and pre-AIA 35 U.S.C. 112, second paragraph: Subjective Requirement: The claims must set forth the subject matter that the inventor or a joint inventor regards as the invention. Objective Requirement: The claims must particularly point out and distinctly define the…
Read MoreWhat is required for a drawing to anticipate a claim?
For a drawing to anticipate a claim, it must clearly show all the claimed structural features and how they are put together. The MPEP 2125 cites the case of In re Mraz, 455 F.2d 1069, 173 USPQ 25 (CCPA 1972), which established that: “Drawings and pictures can anticipate claims if they clearly show the structure…
Read MoreWhat are the requirements for a negative limitation to be considered definite?
For a negative limitation to be considered definite, it must clearly set forth the boundaries of the patent protection sought. According to MPEP 2173.05(i), the key requirement is that the claim complies with 35 U.S.C. 112(b), which requires the claims to particularly point out and distinctly claim the subject matter of the invention. The MPEP…
Read MoreWhat are the requirements for establishing an actual reduction to practice?
To establish an actual reduction to practice, an inventor must meet a two-prong test as described in MPEP 2138.05: The inventor must have constructed an embodiment or performed a process that meets every element of the patent claim. The embodiment or process must have operated for its intended purpose. As stated in the MPEP: “In…
Read MoreWhat is the ‘representative number of species’ concept in written description?
The ‘representative number of species’ concept is crucial in demonstrating adequate written description for a claimed genus. The MPEP explains: “A “representative number of species” means that the species which are adequately described are representative of the entire genus. Thus, when there is substantial variation within the genus, one must describe a sufficient variety of…
Read MoreIs rephrasing a passage in a patent application considered new matter?
Mere rephrasing of a passage in a patent application does not constitute new matter, as long as the meaning remains intact. The MPEP Section 2163.07 clarifies: “Mere rephrasing of a passage does not constitute new matter. Accordingly, a rewording of a passage where the same meaning remains intact is permissible.” This guideline allows applicants to…
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