What is the difference between structural and functional limitations in apparatus claims?
In apparatus claims, features can be recited either structurally or functionally. As stated in MPEP 2114: “Features of an apparatus may be recited either structurally or functionally. In re Schreiber, 128 F.3d 1473, 1478, 44 USPQ2d 1429, 1432 (Fed. Cir. 1997).” Structural limitations describe the physical components of the apparatus, while functional limitations describe what…
Read MoreCan the sale of a product inherently possessing claimed characteristics trigger the on-sale bar?
Yes, the sale of a product inherently possessing claimed characteristics can trigger the on-sale bar, even if the parties involved in the transaction are unaware of these characteristics. The MPEP clearly states: If a product that is offered for sale inherently possesses each of the limitations of the claims, then the invention is on sale,…
Read MoreWhen can multiple references be used in a 35 U.S.C. 102 rejection?
While normally only one reference should be used in a 35 U.S.C. 102 rejection, multiple references can be used in specific circumstances. According to MPEP 2131.01, multiple references are proper when the extra references are cited to: (A) Prove the primary reference contains an “enabled disclosure;” (B) Explain the meaning of a term used in…
Read MoreCan newly added inherent characteristics satisfy the written description requirement?
Can newly added inherent characteristics satisfy the written description requirement? Yes, newly added inherent characteristics can satisfy the written description requirement under certain conditions. According to MPEP 2163.07(a): “By disclosing in a patent application a device that inherently performs a function or has a property, operates according to a theory or has an advantage, a…
Read MoreCan inherent characteristics be used to distinguish over prior art?
Can inherent characteristics be used to distinguish over prior art? Inherent characteristics can potentially be used to distinguish over prior art, but this approach requires careful consideration and clear evidence. The MPEP 2163.07(a) provides guidance on inherent characteristics: “By disclosing in a patent application a device that inherently performs a function or has a property,…
Read MoreHow can inherent characteristics be shown in a 35 U.S.C. 102 rejection?
Inherent characteristics can be shown in a 35 U.S.C. 102 rejection by using additional references or evidence to demonstrate that a feature, while not explicitly disclosed in the primary reference, is necessarily present. MPEP 2131.01 provides guidance on this: “To serve as an anticipation when the reference is silent about the asserted inherent characteristic, such…
Read MoreHow can extrinsic evidence be used to support a 35 U.S.C. 102 rejection?
Extrinsic evidence can be used to support a 35 U.S.C. 102 rejection in several ways, as outlined in MPEP 2131.01: To prove that a primary reference contains an “enabled disclosure.” To explain the meaning of a term used in the primary reference. To show that a characteristic not disclosed in the reference is inherent. The…
Read MoreWhat constitutes inherent characteristics in patent applications?
What constitutes inherent characteristics in patent applications? Inherent characteristics in patent applications refer to properties or features that are necessarily present in the invention but may not be explicitly stated in the original disclosure. MPEP 608.04(a) provides guidance on this: ‘Inherent characteristics of materials and properties of processes are not considered to be new matter.’…
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