What constitutes a violation of the written description requirement when changing claim scope?
Changing the scope of claims after filing can violate the written description requirement of 35 U.S.C. 112(a) in several ways: Broadening claims by removing limitations Narrowing claims by adding unsupported elements Altering numerical range limitations Using claim language not synonymous with the original disclosure As stated in MPEP 2163.05: “The failure to meet the written…
Read MoreHow does the USPTO handle claim amendments during copending reexamination and interference?
How does the USPTO handle claim amendments during copending reexamination and interference? The USPTO handles claim amendments carefully during copending reexamination and interference proceedings: Claim amendments in reexamination that affect claims involved in the interference require special consideration. The Central Reexamination Unit (CRU) must consult with the Board of Patent Appeals and Interferences (BPAI) before…
Read MoreWhy does the USPTO use the broadest reasonable interpretation standard?
The USPTO uses the broadest reasonable interpretation (BRI) standard during patent examination for several important reasons. According to MPEP 2111: “Because applicant has the opportunity to amend the claims during prosecution, giving a claim its broadest reasonable interpretation will reduce the possibility that the claim, once issued, will be interpreted more broadly than is justified.”…
Read MoreHow does an applicant suggest an interference in patent proceedings?
Suggesting an interference in patent proceedings is a specific process outlined in 37 CFR 41.202. An applicant, including a reissue applicant, can suggest an interference with another application or patent. The suggestion must include several elements, but particularly relevant to the written description requirement is: “If a claim has been added or amended to provoke…
Read MoreHow can an applicant respond to a patent-eligible subject matter rejection?
According to MPEP 2106.07(b), an applicant can respond to a rejection based on failure to claim patent-eligible subject matter in three main ways: Amend the claim to add additional elements or modify existing elements Present persuasive arguments based on a good faith belief as to why the rejection is in error Submit evidence traversing the…
Read MoreHow can applicants respond to indefiniteness rejections?
Applicants have several options to respond to indefiniteness rejections. The MPEP outlines these approaches: “In response to an examiner’s rejection for indefiniteness, an applicant may resolve the ambiguity by amending the claim, or by providing a persuasive explanation on the record that a person of ordinary skill in the relevant art would not consider the…
Read MoreHow can an applicant resolve ambiguities in functional limitations?
The MPEP provides several ways an applicant can resolve ambiguities in functional limitations during prosecution: Use a quantitative metric instead of a qualitative functional feature. For example, include a numeric limitation for a physical property. Demonstrate that the specification provides a formula for calculating a property, along with examples that meet and do not meet…
Read MoreWhat are the requirements for amending claims in a reexamination proceeding?
Amending claims in a reexamination proceeding must follow specific guidelines as outlined in 37 CFR 1.530(d)(2): The amendment must include the entire text of each claim being changed. The entire text of any new claims being added must be provided. For changed claims, a parenthetical expression (e.g., “amended,” “twice amended”) should follow the claim number.…
Read MoreCan the PTAB recommend claim amendments to make a claim patentable in inter partes reexamination?
No, the Patent Trial and Appeal Board (PTAB) does not have the authority to recommend claim amendments to make a claim patentable in inter partes reexamination. MPEP 2681 explicitly states: Unlike the practice for applications and ex parte reexaminations, the rules do not provide for the Board in its decision to include a statement that…
Read MoreWho authorizes the entry of added or amended claims during an interference?
The Patent Trial and Appeal Board (PTAB) is responsible for authorizing the entry of added or amended claims during an interference. According to MPEP 2308.02: “The examiner may enter the added claim or amended claim into the application only if, and only to the extent, authorized by the Board, typically in the decision on the…
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