What is an “enabled disclosure” in the context of 35 U.S.C. 102 rejections?
An “enabled disclosure” in the context of 35 U.S.C. 102 rejections refers to a prior art reference that not only discloses the claimed invention but also provides sufficient information to enable a person skilled in the art to make and use the invention without undue experimentation. According to MPEP 2131.01, when a primary reference identically…
Read MoreWhat is the effective filing date under pre-AIA 35 U.S.C. 102?
The effective filing date of a claimed invention under pre-AIA 35 U.S.C. 102 is generally the actual filing date of the U.S. application. However, there are three exceptions to this rule: (A) For continuation or divisional applications (B) For continuation-in-part applications (C) For applications claiming benefit to a provisional application As stated in the MPEP,…
Read MoreWhat is the significance of the effective filing date under AIA 35 U.S.C. 102?
The effective filing date is a crucial concept in determining prior art under the AIA. According to the MPEP: “The availability of a U.S. patent document as prior art to a claimed invention is measured from the effective filing date of the claimed invention as defined in 35 U.S.C. 100(i), which takes into account both…
Read MoreWhat is the difference between using prior art for 35 U.S.C. 102 and 35 U.S.C. 103 rejections?
The use of prior art differs for 35 U.S.C. 102 (anticipation) and 35 U.S.C. 103 (obviousness) rejections. For 35 U.S.C. 102 rejections, the MPEP Section 2121.01 indicates that the reference must contain an enabling disclosure: “The disclosure in an assertedly anticipating reference must provide an enabling disclosure of the desired subject matter; mere naming or…
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 MoreHow do I determine which version of 35 U.S.C. 102 applies to my patent application?
To determine which version of 35 U.S.C. 102 applies to your patent application, you need to consider the filing date of your application. The MPEP provides clear guidance: Form paragraph 7.03.aia or 7.03.fti should be used in an Office action to indicate whether the application is being examined under the first inventor to file provisions…
Read MoreHow do I determine if my patent application is subject to pre-AIA or AIA provisions?
To determine whether your application is subject to pre-AIA or AIA provisions, consider the following guidelines from the MPEP: Applications filed before March 16, 2013, are governed by pre-AIA 35 U.S.C. 102 and 103. Applications filed on or after March 16, 2013, are subject to AIA provisions, unless they have never contained a claim with…
Read MoreHow does the “described” requirement differ between AIA and pre-AIA patent law?
The MPEP clarifies that the “described” requirement remains essentially unchanged between pre-AIA and AIA patent law. It states: “The Office does not view the AIA as changing the extent to which a claimed invention must be described for a prior art document to anticipate the claimed invention under 35 U.S.C. 102.” This means that the…
Read MoreWhat is anticipation in patent law?
Anticipation in patent law refers to a situation where a claimed invention is rejected under 35 U.S.C. 102 because it is not novel over a prior art disclosure. The MPEP states: A claimed invention may be rejected under 35 U.S.C. 102 when the invention is anticipated (or is “not novel”) over a disclosure that is…
Read MoreWhat is the significance of the America Invents Act (AIA) in determining which version of 35 U.S.C. 102 to apply?
The America Invents Act (AIA) introduced significant changes to U.S. patent law, particularly regarding the application of 35 U.S.C. 102. According to MPEP 2139.02: “The America Invents Act (AIA) revised 35 U.S.C. 102 and thereby, the provisions that govern which version of 35 U.S.C. 102 to apply to any particular application or patent.” This means…
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