When can a patent examiner reject claims as prolix?
A patent examiner can reject claims as prolix under specific circumstances outlined in MPEP 2173.05(m). The manual states: “Examiners should reject claims as prolix only when they contain such long recitations or unimportant details that the scope of the claimed invention is rendered indefinite thereby.” Additionally, claims may be rejected as prolix “when they contain…
Read MoreWhen can an examiner take official notice without documentary evidence?
An examiner can take official notice without documentary evidence in certain circumstances where the facts are considered well-known or common knowledge in the art. According to MPEP 2144.03, this is permissible when the facts are “capable of instant and unquestionable demonstration as being well-known.” The MPEP states: “Official notice without documentary evidence to support an…
Read MoreWhen can an examiner make a rejection based on prosecution laches?
An examiner should exercise caution when considering a rejection based on prosecution laches. According to MPEP 2190: “An examiner should obtain approval from the TC Director before making a rejection on the grounds of prosecution history laches.” This requirement ensures that such rejections are made only in egregious cases of unreasonable and unexplained delay in…
Read MoreWhen does the best mode requirement apply in patent applications?
The best mode requirement applies at the time of filing the patent application. It requires inventors to disclose the best way they know of carrying out their invention at that specific point in time. MPEP 2165.02 clarifies this timing: “If, however, the applicant [inventor] develops specific instrumentalities or techniques which are recognized by the [inventor]…
Read MoreWhen is a 37 CFR 1.131 affidavit not an acceptable method to overcome a pre-AIA 35 U.S.C. 102(e) rejection?
A 37 CFR 1.131 affidavit is not an acceptable method to overcome a pre-AIA 35 U.S.C. 102(e) rejection in certain circumstances. According to the MPEP: “When the claims of the reference U.S. patent or U.S. patent application publication and the application are directed to the same invention or are obvious variants, an affidavit or declaration…
Read MoreWhat qualifies as a “printed publication” under 35 U.S.C. 102(a)(1)?
What qualifies as a “printed publication” under 35 U.S.C. 102(a)(1)? A “printed publication” under 35 U.S.C. 102(a)(1) is not limited to traditional paper publications. According to MPEP 2152.02(b), it includes: Paper publications Electronic publications (including web pages) Presentations at scientific meetings Microfilm Computer programs Any other medium that provides information to the public The MPEP…
Read MoreWhat is reduction to practice in patent law?
Reduction to practice in patent law refers to the process of demonstrating that an invention actually works for its intended purpose. There are two types of reduction to practice: Actual reduction to practice: This occurs when an inventor physically creates and tests the invention. Constructive reduction to practice: This occurs when a patent application is…
Read MoreWhat is prosecution laches in patent law?
Prosecution laches is a legal doctrine that can result in the forfeiture of patent rights due to unreasonable and undue delay in prosecution. The Federal Circuit affirmed this principle in In re Bogese, stating: “[Applicant] filed twelve continuation applications over an eight-year period and did not substantively advance prosecution when required and given an opportunity…
Read MoreWhat is the “on sale” bar under pre-AIA 35 U.S.C. 102(b)?
The “on sale” bar under pre-AIA 35 U.S.C. 102(b) prevents an inventor from obtaining a patent if the invention was on sale in the United States more than one year prior to the date of the application for patent. The Supreme Court in Pfaff v. Wells Electronics, Inc. established a two-part test for determining if…
Read MoreWhat is an omnibus claim in patent law?
An omnibus claim is a type of patent claim that typically reads as follows: “A device substantially as shown and described.” This type of claim is generally considered problematic in patent law. According to MPEP 2173.05(r), “This claim should be rejected under 35 U.S.C. 112(b) or pre-AIA 35 U.S.C. 112, second paragraph, because it is…
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