What evidence is required when claiming discovery of a problem’s source?
When claiming to have discovered the source of a problem as a basis for patentability, applicants must provide substantiating evidence. The MPEP 2141.02 states: “Applicants who allege the inventor discovered the source of a problem must provide evidence substantiating the allegation, either by way of affidavits or declarations, or by way of a clear and…
Read MoreWhat evidence can applicants provide to establish nonobvious differences in product-by-process claims?
When facing a rejection of a product-by-process claim, applicants can provide various types of evidence to establish nonobvious differences between their claimed product and the prior art. According to MPEP 2113, this may include: Structural differences: Evidence showing unique structural features resulting from the claimed process. Chemical composition: Data demonstrating different chemical makeup or properties.…
Read MoreCan applicants present evidence to show no reasonable expectation of success?
Yes, applicants can present evidence to show that there was no reasonable expectation of success, which may support a conclusion of nonobviousness. The MPEP 2143.02 states: “Evidence showing there was no reasonable expectation of success may support a conclusion of nonobviousness.” Applicants can provide various types of evidence, such as: Experimental data showing unexpected failures…
Read MoreWhat evidence is required to support a finding that claim elements are well-understood, routine, and conventional?
To support a finding that additional claim elements are well-understood, routine, and conventional, examiners must provide one of the following: A citation to an express statement in the specification or during prosecution A citation to one or more court decisions discussed in MPEP 2106.05(d) A citation to a publication demonstrating the well-understood, routine, conventional nature…
Read MoreWhat evidence is required to prove derivation under pre-AIA 35 U.S.C. 102(f)?
Proving derivation under pre-AIA 35 U.S.C. 102(f) requires specific evidence. The MPEP outlines the key requirements: Complete Conception: There must be evidence of complete conception by another person. The MPEP states: Derivation requires complete conception by another and communication of that conception by any means to the party charged with derivation prior to any date…
Read MoreWhat documentation is required when requesting restoration of the right of priority for a PCT application?
When requesting restoration of the right of priority for a PCT application, specific documentation must be provided. According to MPEP 1828.01, the following items are required: A statement of reasons for the failure to file the international application within the priority period Any evidence in support of the statement of reasons The required fee The…
Read MoreHow should examiners handle after-final amendments or evidence in relation to an Examiner’s Answer?
When handling after-final amendments or evidence in relation to an Examiner’s Answer, examiners should: Ensure each after-final amendment or evidence is indicated as entered or not-entered Issue an advisory action for each after-final amendment or evidence Not comment on affidavits, declarations, or exhibits that were refused entry The MPEP states: “Before preparing the answer, the…
Read MoreHow are affidavits or other evidence treated when filed after a notice of appeal?
The treatment of affidavits or other evidence filed after a notice of appeal depends on the timing of the submission: If filed after the notice of appeal but before the appeal brief, they may be admitted if: The examiner determines that they overcome all rejections under appeal, and A showing of good and sufficient reasons…
Read MoreCan affidavits or other evidence be submitted after filing an appeal brief?
Yes, affidavits or other evidence can be submitted after filing an appeal brief, but their entry is not guaranteed. According to MPEP 1206: “Affidavits or other evidence filed after the date the appeal brief is filed will not be entered as a matter of right.” The treatment of such evidence is governed by 37 CFR…
Read MoreWhat is the significance of ‘month to month’ evidence in proving diligence for patent applications?
The significance of ‘month to month’ evidence in proving diligence for patent applications lies in demonstrating continuous effort towards reduction to practice. According to MPEP 715.07(a): ‘Where the evidence of facts establishing diligence is made out on a day-to-day basis, such a record of facts demonstrating reasonably continuous diligence is sufficient to overcome a reference.’…
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