What is the burden on the examiner regarding the written description requirement?
The examiner has the initial burden of presenting evidence why a person skilled in the art would not recognize in an applicant’s disclosure a description of the invention defined by the claims. This is known as establishing a prima facie case. According to MPEP 2163.04, “The examiner has the initial burden of presenting by a…
Read MoreHow can an applicant challenge a prior art reference for lack of enablement?
An applicant can challenge a prior art reference for lack of enablement in two main ways, depending on the nature of the reference: For references that appear enabling on their face: The applicant must submit rebuttal evidence of non-enablement. This is typically done through declarations or affidavits demonstrating that a person of ordinary skill in…
Read MoreWhat is the burden of proof in product-by-process claim rejections?
In product-by-process claim rejections, the burden of proof is initially on the patent examiner, but it’s lower than for conventional product claims. According to MPEP 2113: “The Patent Office bears a lesser burden of proof in making out a case of prima facie obviousness for product-by-process claims because of their peculiar nature” than when a…
Read MoreWhat is the burden of establishing disqualification under pre-AIA 35 U.S.C. 103(c)?
The burden of establishing that subject matter is disqualified as prior art under pre-AIA 35 U.S.C. 103(c) lies with the applicant. The MPEP states: “The burden of establishing that subject matter is disqualified as prior art is placed on applicant once the examiner has established a prima facie case of obviousness based on the subject…
Read MoreWhat is the burden of proof for nonequivalence in means-plus-function claims?
When a prima facie case of equivalence has been made by the examiner, the burden shifts to the applicant to prove nonequivalence. According to MPEP 2184, “Where, however, the specification is silent as to what constitutes equivalents and the examiner has made out a prima facie case of equivalence, the burden is placed upon the…
Read MoreWhat is the burden of proof for inherency in patent rejections?
The burden of proof for inherency in patent rejections initially lies with the examiner. The MPEP states: “In relying upon the theory of inherency, the examiner must provide a basis in fact and/or technical reasoning to reasonably support the determination that the allegedly inherent characteristic necessarily flows from the teachings of the applied prior art.”…
Read MoreHow does the MPEP address the burden of proof in priority disputes?
The MPEP 2304.02(c) addresses the burden of proof in priority disputes by stating: “The burden of proof is on a party seeking the benefit of the filing date of an earlier application.” This means that: The party claiming priority has the responsibility to demonstrate their entitlement to the earlier filing date. They must provide sufficient…
Read MoreHow does the “burden of proof” work in establishing prima facie obviousness?
In establishing prima facie obviousness, the burden of proof initially lies with the patent examiner. The MPEP 2142 states: “The examiner bears the initial burden of factually supporting any prima facie conclusion of obviousness.” This means that: The examiner must provide a factual basis for the rejection. The reasoning must be clearly articulated. The burden…
Read MoreHow does the burden of proof shift in equivalence determinations?
The burden of proof in equivalence determinations shifts between the examiner and the applicant. The process typically follows these steps: The examiner establishes a prima facie case of equivalence. The burden then shifts to the applicant to show non-equivalence. If the applicant successfully demonstrates non-equivalence, the examiner must consider obviousness. As stated in MPEP 2183:…
Read MoreHow does the examiner’s burden of proof work in process of making and product made distinctness?
How does the examiner’s burden of proof work in process of making and product made distinctness? In establishing distinctness between a process of making and a product made, the examiner bears the burden of proof. According to MPEP 806.05(f): “The burden is on the examiner to provide an example, but the example need not be…
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