What is the significance of the ‘In re Marzocchi’ case in patent law regarding predictability and enablement?
The ‘In re Marzocchi’ case is significant in patent law for its discussion of predictability and enablement, particularly in the field of chemistry. According to MPEP 2164.03, which cites this case: “[I]n the field of chemistry generally, there may be times when the well-known unpredictability of chemical reactions will alone be enough to create a…
Read MoreCan you provide an example of implicit disclosure in patent law?
Yes, the MPEP 2144.01 provides a clear example of implicit disclosure in the case of In re Lamberti. The MPEP states: “Reference disclosure of a compound where the R-S-R’ portion has ‘at least one methylene group attached to the sulfur atom’ implies that the other R group attached to the sulfur atom can be other…
Read MoreHow do courts determine if a disclosure is enabling in biological and chemical cases?
Courts consider several factors to determine if a disclosure is enabling in biological and chemical cases, including: The breadth of the claims The amount of direction or guidance provided The presence of working examples The nature of the invention The state of the prior art The relative skill of those in the art The predictability…
Read MoreHow does conception of a species relate to conception of a genus in patent law?
The relationship between conception of a species and conception of a genus in patent law is complex and nuanced. According to MPEP 2138.04: “The first to conceive of a species is not necessarily the first to conceive of the generic invention. In re Jolley, 308 F.3d 1317, 1323 n.2, 64 USPQ2d 1901, 1905 n.2 (Fed.…
Read MoreWhat is a proper Markush grouping?
A proper Markush grouping, as defined in MPEP 803.02, must meet two criteria: The members of the Markush group share a “single structural similarity” The members share a common use The MPEP cites the Supplementary Guidelines, which state: “Where a Markush grouping describes part of a combination or process, the members following ‘selected from the…
Read MoreWhat are Markush groupings and how do they affect unity of invention?
What are Markush groupings and how do they affect unity of invention? Markush groupings are a way of claiming alternatives in patent applications, which can have implications for unity of invention. MPEP 1850 provides guidance on this: “Alternative forms of an invention may be claimed either in a plurality of independent claims, or in a…
Read MoreWhat is an example of expert skepticism in patent law?
The MPEP provides a specific example of expert skepticism in patent law: The patented process converted all the sulfur compounds in a certain effluent gas stream to hydrogen sulfide, and thereafter treated the resulting effluent for removal of hydrogen sulfide. Before learning of the patented process, chemical experts, aware of earlier failed efforts to reduce…
Read MoreHow many examples are needed to demonstrate superiority for nonobviousness in patents?
When it comes to demonstrating superiority to support nonobviousness in patent applications, there is no set number of examples required. According to MPEP 716.02(a): No set number of examples of superiority is required. This principle is illustrated by the case of In re Chupp, cited in the MPEP: Evidence showing that the claimed herbicidal compound…
Read MoreHow does the presence of an unexpected property affect patent nonobviousness?
The presence of an unexpected property can be strong evidence of nonobviousness in patent applications. According to MPEP 716.02(a): Presence of a property not possessed by the prior art is evidence of nonobviousness. This principle is illustrated by several cases cited in the MPEP: In re Papesch: Claims to a compound structurally similar to a…
Read MoreCan the absence of an expected property support nonobviousness in patent applications?
Yes, the absence of an expected property can be evidence of nonobviousness in patent applications. According to MPEP 716.02(a): Absence of property which a claimed invention would have been expected to possess based on the teachings of the prior art is evidence of unobviousness. This principle is illustrated by the case of Ex parte Mead…
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