Does filing a request for continued examination (RCE) change the applicable patent laws?
No, filing a request for continued examination (RCE) does not change the applicable patent laws for an application. The MPEP 2159.01 clearly states: “Note that neither the filing of a request for continued examination, nor entry into the national stage under 35 U.S.C. 371, constitutes the filing of a new application. Accordingly, even if a…
Read MoreDoes filing a request for continued examination (RCE) change an application’s status under pre-AIA or AIA rules?
No, filing a request for continued examination (RCE) does not change an application’s status under pre-AIA or AIA rules. The MPEP clearly states: Accordingly, such an application remains subject to pre-AIA 35 U.S.C. 102 and 103 even if a request for continued examination under 37 CFR 1.114 is filed on or after March 16, 2013,…
Read MoreDoes filing a request for continued examination (RCE) affect the application of AIA provisions?
No, filing a request for continued examination (RCE) does not affect the application of AIA provisions. The MPEP clearly states: “Note that neither the filing of a request for continued examination, nor entry into the national stage under 35 U.S.C. 371, constitutes the filing of a new application.” This means that even if you file…
Read MoreWhat is the “rationale to support a conclusion of obviousness” in patent examination?
The “rationale to support a conclusion of obviousness” in patent examination refers to the reasoning an examiner must provide when rejecting a claim as obvious. According to MPEP 2142: “[T]he examiner bears the initial burden of factually supporting any prima facie conclusion of obviousness. If the examiner does not produce a prima facie case, the…
Read MoreHow are range limitations evaluated under the written description requirement?
Range limitations are evaluated based on what one skilled in the art would consider inherently supported by the original disclosure. The MPEP 2163.05 provides guidance: “With respect to changing numerical range limitations, the analysis must take into account which ranges one skilled in the art would consider inherently supported by the discussion in the original…
Read MoreWhat is the “quid pro quo” for using means-plus-function claim language?
The “quid pro quo” for using means-plus-function claim language refers to the trade-off between the convenience of using such language and the duty to link or associate structure to function. This concept is explained in MPEP 2182, which cites the Federal Circuit case B. Braun Medical, Inc. v. Abbott Labs: “We hold that, pursuant to…
Read MoreHow does the “quantity of experimentation” factor relate to enablement in patent applications?
The “quantity of experimentation” factor is a crucial element in determining whether a patent application meets the enablement requirement. According to MPEP 2164.06, this factor is assessed as follows: “The quantity of experimentation needed to be performed by one skilled in the art is only one factor involved in determining whether ‘undue experimentation’ is required…
Read MoreHow does the quantity of experimentation affect enablement?
The quantity of experimentation is one factor in determining enablement, but it’s not the sole determining factor. As stated in MPEP 2164.06: “The quantity of experimentation needed to be performed by one skilled in the art is only one factor involved in determining whether ‘undue experimentation’ is required to make and use the invention.” It’s…
Read MoreHow can a treatment or prophylaxis limitation qualify for consideration in Step 2A Prong Two?
For a treatment or prophylaxis limitation to qualify for consideration in Step 2A Prong Two, it must meet certain criteria. According to MPEP 2106.04(d)(2): “Examiners should keep in mind that in order to qualify as a ‘treatment’ or ‘prophylaxis’ limitation for purposes of this consideration, the claim limitation in question must affirmatively recite an action…
Read MoreWhat is the purpose of the streamlined analysis in patent examination?
What is the purpose of the streamlined analysis in patent examination? The streamlined analysis in patent examination serves to quickly identify and allow claims that are patent-eligible without needing to fully apply the Alice/Mayo test. As stated in MPEP 2106.06: “For purposes of efficiency in examination, a streamlined eligibility analysis can be used for a…
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