How are rejections under both pre-AIA 35 U.S.C. 102 and 103 formulated?
In certain situations, an examiner may need to make a rejection under both pre-AIA 35 U.S.C. 102 and 103. Form paragraph 7.27.fti is provided for this purpose: Claim(s) [1] is/are rejected under pre-AIA 35 U.S.C. 102 ([2]) as anticipated by or, in the alternative, under pre-AIA 35 U.S.C. 103(a) as obvious over [3]. However, the…
Read MoreHow does an examiner reject claims for missing essential subject matter under 35 U.S.C. 112(a)?
When an examiner believes that a claim is missing subject matter essential to the practice of the invention, they can reject it under 35 U.S.C. 112(a) for lack of enablement. MPEP 2166 provides a form paragraph for this type of rejection: “Claim [1] rejected under 35 U.S.C. 112(a) or pre-AIA 35 U.S.C. 112, first paragraph,…
Read MoreHow does MPEP 2172 address the concept of “regarded as invention” in patent claims?
How does MPEP 2172 address the concept of “regarded as invention” in patent claims? MPEP 2172 addresses the concept of “regarded as invention” in patent claims by emphasizing the importance of the claims reflecting what the inventor considers to be their invention. The section states: “The subject matter which the inventor or a joint inventor…
Read MoreIs it acceptable to reference limitations from another claim?
Yes, referencing limitations from another claim is generally acceptable. According to MPEP 2173.05(f): “A claim which makes reference to a preceding claim to define a limitation is an acceptable claim construction which should not necessarily be rejected as improper or confusing under 35 U.S.C. 112(b) or pre-AIA 35 U.S.C. 112, second paragraph.” This means that…
Read MoreWhen is it acceptable to reference figures or tables in patent claims?
Referencing figures or tables in patent claims is generally discouraged, as claims should be complete in themselves. However, the MPEP 2173.05(s) states that it is permitted “only in exceptional circumstances where there is no practical way to define the invention in words and where it is more concise to incorporate by reference than duplicating a…
Read MoreCan a reference with no stated utility still be used as prior art?
Yes, a reference with no stated utility can still be used as prior art. According to MPEP 2122: “In evaluating the utility of the disclosed subject matter of a reference, it is not necessary that the reference disclose the utility.” This means that even if a prior art reference doesn’t explicitly mention the usefulness or…
Read MoreHow does MPEP address “reference to an object” in patent claims?
How does MPEP address “reference to an object” in patent claims? The MPEP 2173.05(b) addresses the use of “reference to an object” in patent claims as a form of relative terminology. This occurs when a claim term is defined by reference to an object that is variable. The MPEP states: “To determine whether a claim…
Read MoreHow do reference characters in patent claims affect their scope?
Reference characters in patent claims generally do not affect the scope of the claims. The MPEP 2173.05(s) states: “Reference characters corresponding to elements recited in the detailed description and the drawings may be used in conjunction with the recitation of the same element or group of elements in the claims. Generally, the presence or absence…
Read MoreHow does reduction to practice relate to the on-sale bar in patent law?
Reduction to practice and the on-sale bar are closely related concepts in patent law, particularly in determining the critical date for patentability. The MPEP 2138.05 does not directly address this relationship, but it’s important to understand their interaction: The on-sale bar, codified in 35 U.S.C. 102(a)(1), prevents patenting an invention that was on sale more…
Read MoreWhat constitutes a reduction to practice in the context of the on-sale bar?
In the context of the on-sale bar, reduction to practice typically requires demonstrating the practical utility of an invention under actual working conditions. The MPEP states: Actual reduction to practice in the context of an on-sale bar issue usually requires testing under actual working conditions in such a way as to demonstrate the practical utility…
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