What is the role of terminal disclaimers in overcoming rejections under MPEP 715.05?
MPEP 715.05 discusses the use of terminal disclaimers in conjunction with affidavits or declarations to overcome certain rejections. Specifically: “Where the reference and the application or patent under reexamination are commonly owned, and the inventions defined by the claims in the application or patent under reexamination and by the claims in the reference are not…
Read MoreHow does MPEP 715.05 address rejections under pre-AIA 35 U.S.C. 135(b)?
MPEP 715.05 provides guidance on rejections under pre-AIA 35 U.S.C. 135(b) for applications subject to pre-AIA 35 U.S.C. 102. The section states: “If the reference is a U.S. patent which claims the same invention as the application and its issue date is more than 1 year prior to the presentation of claims to that invention…
Read MoreHow does MPEP 715.05 apply to applications subject to the AIA?
MPEP 715.05 has limited applicability to applications subject to the America Invents Act (AIA). The section specifically states: “[Editor Note: This MPEP section is not applicable to applications subject to the first inventor to file provisions of the AIA unless being relied upon to overcome a rejection under pre-AIA 35 U.S.C. 102(g).” For applications subject…
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