When is a 37 CFR 1.131 affidavit not an acceptable method to overcome a pre-AIA 35 U.S.C. 102(e) rejection?

A 37 CFR 1.131 affidavit is not an acceptable method to overcome a pre-AIA 35 U.S.C. 102(e) rejection in certain circumstances. According to the MPEP: “When the claims of the reference U.S. patent or U.S. patent application publication and the application are directed to the same invention or are obvious variants, an affidavit or declaration…

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What is the scope of an ex parte reexamination under 35 U.S.C. 304?

An ex parte reexamination under 35 U.S.C. 304 provides a complete reexamination of the patent claims based on prior art patents and printed publications. The MPEP states: “A reexamination proceeding ordered under 35 U.S.C. 304 provides a complete reexamination of the patent claims on the basis of prior art patents and printed publications.” Additionally, double…

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How does MPEP 1901.02 address information about potential interferences in protests?

MPEP 1901.02 specifically mentions that information about potential interferences can be included in a protest. The section states: “Information which can be relied on in a protest… includes information about other applications or patents which might result in double patenting or a Patent Office interference proceeding.” This means that if a protestor is aware of…

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How are pending U.S. patent applications treated in terms of confidentiality and prior art?

Pending U.S. patent applications are generally kept confidential, but there are important exceptions and considerations: Most pending applications are preserved in confidence as per 37 CFR 1.14(a). Exceptions include published applications, reissue applications, and applications where public inspection has been granted. Applications with common assignees or inventors may be used for certain rejections, even if…

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What issues can be considered in ex parte reexamination ordered under 35 U.S.C. 304?

Ex parte reexamination ordered under 35 U.S.C. 304 is limited to considerations of prior art patents and printed publications. The MPEP states: “Rejections will not be based on matters other than patents or printed publications, such as public use or sale, inventorship, 35 U.S.C. 101, conduct issues, etc.” However, certain ancillary matters may be considered,…

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How should an applicant handle potentially conflicting claims in copending applications?

How should an applicant handle potentially conflicting claims in copending applications? When dealing with potentially conflicting claims in copending applications, applicants must be proactive and transparent. MPEP 2001.06(b) provides guidance: “If the copending application is not commonly owned and the applicant is aware of the copending application, the applicant should disclose the existence of the…

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