Can a terminal disclaimer be used to overcome a prior art rejection?
No, a terminal disclaimer cannot be used to overcome a prior art rejection. Terminal disclaimers are specifically designed to address nonstatutory double patenting issues, not prior art rejections under 35 U.S.C. 102 or 103. MPEP 804.02 clearly states: “It should be emphasized that a terminal disclaimer cannot be used to overcome a prior art rejection…
Read MoreWhat are the common grounds for rejecting a plant patent claim?
Plant patent claims can be rejected on similar grounds as other patent types. The MPEP 1610 mentions two common grounds for rejection: 35 U.S.C. 102 (Novelty): A claim may be rejected if it fails to patentably distinguish over prior art. The following form paragraph may be used: “The claim is rejected under 35 U.S.C. 102…
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 apply to anticipation under 35 U.S.C. 102?
The concept of analogous arts also has relevance in the context of anticipation under 35 U.S.C. 102. The MPEP provides a reference for this application: See MPEP § 2131.05 for a discussion of analogous and nonanalogous art in the context of 35 U.S.C. 102. (MPEP 904.01(c)) In the context of anticipation, the relevance of analogous…
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