How should examiners use abstracts in prior art rejections?
Examiners should be cautious when using abstracts for prior art rejections. The MPEP provides the following guidance: When both the abstract and the underlying document qualify as prior art, the underlying document should normally be used to support a rejection. When relying on an abstract, “the evidence relied upon is the facts contained in the…
Read MoreCan machine translations be used for foreign language prior art documents?
Yes, examiners can use machine translations of foreign language documents in prior art rejections, but with certain considerations. The MPEP provides the following guidance: “Examiners may rely on a machine translation of a foreign language document unless the machine translation is not of sufficient quality to be adequate evidence of the contents of the document.“…
Read MoreWhat are the conditions for making a final Office action when supplying a full text document or translation?
When an examiner supplies a full text document and/or translation in an Office action, it may be made final under certain conditions. The MPEP states: “An Office action supplying a full text document and/or translation may be made final if the conditions described in MPEP § 706.07(a) or for a first Office action or RCE,…
Read MoreWhat is the difference between 35 U.S.C. 102 and 35 U.S.C. 103 rejections?
The key difference between rejections based on 35 U.S.C. 102 and 35 U.S.C. 103 lies in how the prior art is applied: 35 U.S.C. 102 (Anticipation): The claim is anticipated by the reference. As stated in the MPEP, “for anticipation under 35 U.S.C. 102, the reference must teach every aspect of the claimed invention either…
Read MoreWhat are the guidelines for using the “best available art” in prior art rejections?
The MPEP provides guidelines for using the “best available art” in prior art rejections. The general principle is stated as: “Prior art rejections should ordinarily be confined strictly to the best available art.“ However, there are exceptions to this rule. The MPEP mentions that exceptions may be properly made in certain cases, although it doesn’t…
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