When should restriction not be required despite distinct inventions?
Restriction should not be required when there is an express admission that the claimed inventions would have been obvious over each other within the meaning of 35 U.S.C. 103. The MPEP 803 cites a specific case: “If there is an express admission that the claimed inventions would have been obvious over each other within the…
Read MoreHow does the MPEP address the reliance on fewer than all references in an Examiner’s Answer?
The MPEP 1207.03 provides guidance on how reliance on fewer than all references in support of a rejection in an Examiner’s Answer is treated. Specifically: “Relying on fewer than all references in support of a 35 U.S.C. 103 rejection, but relying on the same teachings. Assuming the rejection is otherwise proper, if the examiner’s answer…
Read MoreHow does changing the statutory basis affect grounds of rejection?
Changing the statutory basis of a rejection from one section of the statute to another typically constitutes a new ground of rejection in patent appeals. According to MPEP 1207.03(a): “Factual situations that have been found to constitute a new ground of rejection include… Changing the statutory basis of rejection from one section of the statute…
Read MoreHow does the concept of analogous arts relate to obviousness in patent law?
The concept of analogous arts is closely related to the assessment of obviousness in patent law. The MPEP provides guidance on this relationship: See MPEP § 2141.01(a) for a discussion of analogous and nonanalogous art in the context of establishing a prima facie case of obviousness under 35 U.S.C. 103. (MPEP 904.01(c)) In determining obviousness,…
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