What are the form paragraphs used for lack of subject matter eligibility rejections?
The MPEP provides specific form paragraphs for rejections based on lack of subject matter eligibility: Form paragraphs 7.04.01, 7.05, and 7.05.01 are used for rejections at Step 1 of the eligibility analysis (failure to claim an invention within the statutory categories). Form paragraphs 7.04.01, 7.05, and 7.05.016 are used for rejections at Step 2B of…
Read MoreAre there any remaining FAQs for MPEP 2416 – Form Paragraphs?
No, all relevant information from MPEP 2416 – Form Paragraphs has been covered in the previous FAQs. The section is relatively short and focused, primarily containing form paragraphs related to biological deposits. All key aspects, including the purpose of the form paragraphs, their content, and their usage, have been addressed in the previous questions and…
Read MoreHow are rejections under pre-AIA 35 U.S.C. 103(a) formulated?
Rejections under pre-AIA 35 U.S.C. 103(a) are formulated using form paragraph 7.21.fti. This paragraph provides the basic structure for stating the rejection: Claim [1] is/are rejected under pre-AIA 35 U.S.C. 103(a) as being unpatentable over [2]. The examiner fills in the claim numbers being rejected in bracket [1] and the prior art reference(s) being relied…
Read MoreWhat are the form paragraphs used for subject matter eligibility rejections?
The key form paragraphs used for subject matter eligibility rejections are: 7.04.01 – Statement of Statutory Basis, 35 U.S.C. 101 7.05 – Rejection, 35 U.S.C. 101, -Heading Only- 7.05.01 – Rejection, 35 U.S.C. 101, Nonstatutory (Not One of the Four Statutory Categories) 7.05.016 – Rejection, 35 U.S.C. 101, Nonstatutory (Directed to a Judicial Exception without…
Read MoreWhat are form paragraphs in patent examination?
Form paragraphs are standardized text blocks used by patent examiners when drafting office actions. They help ensure consistency and efficiency in patent examination. For rejections under pre-AIA 35 U.S.C. 103, the MPEP provides specific form paragraphs to be used, such as: 7.20.fti – Statement of Statutory Basis for pre-AIA 35 U.S.C. 103(a) rejections 7.21.fti –…
Read MoreWhat are Form Paragraphs 7.48.aia and 7.48.fti in patent rejections?
Form Paragraphs 7.48.aia and 7.48.fti are standardized text used by patent examiners to reject claims based on an applicant’s failure to present claims for interference. These paragraphs are described in MPEP 2304.04(c). The main difference between the two is: 7.48.aia is used for applications filed on or after March 16, 2013, under the America Invents…
Read MoreWhat are the form paragraphs used by examiners for 35 U.S.C. 112(f) related issues?
Patent examiners use specific form paragraphs to address issues related to 35 U.S.C. 112(f) in their office actions. According to MPEP § 2187, the key form paragraphs include: 7.30.03.h: Header for Claim Interpretation 7.30.03: Statement of Statutory Basis, 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph 7.30.05: Broadest Reasonable Interpretation under 35 U.S.C.…
Read MoreWhat are form paragraphs in patent rejections under 35 U.S.C. 112(b)?
Form paragraphs are standardized text blocks used by patent examiners to communicate rejections in patent applications. For rejections under 35 U.S.C. 112(b) or pre-AIA 35 U.S.C. 112, second paragraph, specific form paragraphs are used to address various issues of indefiniteness in claims. According to the MPEP, Form paragraphs 7.30.02, 7.34 through 7.34.05, 7.34.07 through 7.34.10,…
Read MoreWhat is Form Paragraph 23.04 and when is it used in patent examination?
Form Paragraph 23.04 is a standardized text used by patent examiners to require an applicant to add a claim to provoke an interference. According to MPEP 2304.04(b), this form paragraph is used when the examiner determines that a claim from another application or patent needs to be added to the current application for the purpose…
Read MoreWhat form paragraphs should examiners use for restriction requirements?
According to MPEP 818.01(b), examiners should use specific form paragraphs when issuing restriction requirements: For general restriction requirements: Form paragraph 8.21 For election of species: Form paragraph 8.01 or 8.02 The MPEP states: “All requirements for restriction, other than those containing only an election of species, should include form paragraph 8.21. For election of species,…
Read More