What is the significance of MPEP § 2277 in relation to Board decisions?
MPEP § 2277 serves as a crucial reference point for understanding how Board decisions are handled in both patent applications and ex parte reexamination proceedings. The section states: “MPEP § 1213 through § 1213.03 relate to decisions of the Board for both applications and ex parte reexamination proceedings.” This reference is significant because it directs…
Read MoreHow do pre-AIA notions of obviousness apply under the AIA?
Generally, pre-AIA notions of obviousness continue to apply under the AIA, with some exceptions. The MPEP states: “Generally speaking, and with the exceptions noted herein, pre-AIA notions of obviousness continue to apply under the AIA.“ This means that many of the established principles and case law regarding obviousness determinations remain relevant under the AIA. However,…
Read MoreHow should patent examiners approach double inclusion in claims?
Patent examiners should approach double inclusion in claims with careful consideration of the specific context and claim language. The MPEP 2173.05(o) provides guidance for examiners: “The facts in each case must be evaluated to determine whether or not the multiple inclusion of one or more elements in a claim gives rise to indefiniteness in that…
Read MoreHow does the MPEP address utility disclosure in anticipatory references?
The MPEP 2122 explicitly addresses utility disclosure in anticipatory references, stating: “UTILITY NEED NOT BE DISCLOSED IN REFERENCE” This heading is followed by an explanation that a reference can be anticipatory without disclosing utility. The MPEP further clarifies: “[N]o utility need be disclosed for a reference to be anticipatory of a claim to an old…
Read MoreHow does the MPEP’s guidance on abstract ideas relate to the Alice Corp. v. CLS Bank decision?
The MPEP’s guidance on abstract ideas is closely related to the Supreme Court’s decision in Alice Corp. v. CLS Bank. The MPEP directly references this case: “[W]hile ‘all inventions at some level embody, use, reflect, rest upon, or apply laws of nature, natural phenomenon, or abstract ideas’, not all claims recite an abstract idea.” See…
Read MoreWhere can I find guidance on processing a reexamination of a reexamination?
Guidance for processing a reexamination of a reexamination can be found in the Manual of Patent Examining Procedure (MPEP). Specifically, MPEP § 2695 states: “See MPEP § 2295 for guidance for the processing and examination of a reexamination request filed on a patent for which a reexamination certificate has already issued, or a reexamination certificate…
Read MoreHow does MPEP distinguish between “particular” and “general” treatments?
The MPEP 2106.04(d)(2) provides guidance on distinguishing between “particular” and “general” treatments: “[T]reatments that are ‘particular,’ i.e., specifically identified so that they do not encompass all applications of the judicial exception, are considered to integrate a judicial exception into a practical application.” In contrast, general treatments are those that are not specific or targeted. The…
Read MoreHow does the MPEP guide examiners in analyzing claims for prior art searches?
The Manual of Patent Examining Procedure (MPEP) 904.01 provides guidance for examiners on analyzing claims for prior art searches. It states: “The examiner should carefully analyze the claim and the supporting disclosure to determine the limitations on the invention being claimed.” This analysis involves: Identifying the inventive concept Determining the scope of the claims Considering…
Read MoreHow does MPEP 318 guide patent examiners on handling assignment documents?
MPEP 318 provides clear guidance to patent examiners on how to handle assignment documents. The section states: “Assignment documents submitted for recording should not be placed directly in application or patent files, but should be forwarded to Assignment Division for recording.” This instruction serves to: Remind examiners not to include assignment documents in the main…
Read MoreWhere can I find information about power of attorney for older patent applications?
For patent applications filed before September 16, 2012, specific guidance on power of attorney can be found in the Manual of Patent Examining Procedure (MPEP). According to MPEP 601.02: “See MPEP § 402.02(b) for detailed information and relevant forms pertaining to appointment of a power of attorney in applications filed before September 16, 2012.” To…
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