What is the “fundamental factual inquiry” in written description issues?
According to MPEP 2163.02, the fundamental factual inquiry in written description issues is: “whether the specification conveys with reasonable clarity to those skilled in the art that, as of the filing date sought, inventor was in possession of the invention as now claimed.“ This inquiry is based on the Federal Circuit case Vas-Cath, Inc. v.…
Read MoreWhere can I find information about the former inter partes reexamination practice?
If you’re looking for information about the former inter partes reexamination practice, you can refer to the 9th Edition of the Manual of Patent Examining Procedure (MPEP). As stated in MPEP 2631, “Guidance on the former practice is available in the 9th Edition of the MPEP.“ It’s important to note that this information is now…
Read MoreCan alternative elements disclosed in the specification be excluded in the claims?
Yes, alternative elements disclosed in the specification can be excluded in the claims through negative limitations. The MPEP 2173.05(i) states: “If alternative elements are positively recited in the specification, they may be explicitly excluded in the claims.” This principle is based on the reasoning that if the specification describes the whole, it necessarily describes the…
Read MoreHow has the view on negative limitations in patent claims evolved over time?
The view on negative limitations in patent claims has evolved significantly over time, becoming more accepting. The MPEP 2173.05(i) provides insight into this evolution: “The current view of the courts is that there is nothing inherently ambiguous or uncertain about a negative limitation. […] Some older cases were critical of negative limitations because they tended…
Read MoreHow does estoppel on the merits work in patent interference cases?
Estoppel on the merits in patent interference cases prevents a losing party from seeking claims that are anticipated or obvious based on the subject matter of the lost count. According to MPEP 2308.03: “A losing party is barred on the merits from seeking a claim that would have been anticipated or rendered obvious by the…
Read MoreHow do courts view negative limitations in patent claims?
Courts generally view negative limitations in patent claims as acceptable, provided they meet certain criteria. The MPEP 2173.05(i) states: “The current view of the courts is that there is nothing inherently ambiguous or uncertain about a negative limitation.” This represents a shift from older views where courts were sometimes critical of negative limitations. The MPEP…
Read MoreCan a losing party in a patent interference pursue claims in a continuing application?
A losing party in a patent interference may pursue claims in a continuing application, but with significant limitations due to estoppel. According to MPEP 2308.03, the following restrictions apply: Claims that would have been anticipated or rendered obvious by the subject matter of the lost count are barred due to estoppel on the merits. Claims…
Read MoreWhat happens if a negative limitation lacks support in the original disclosure?
If a negative limitation lacks support in the original disclosure, it can lead to rejection of the claim. According to MPEP 2173.05(i): “Any claim containing a negative limitation which does not have basis in the original disclosure should be rejected under 35 U.S.C. 112(a) or pre-AIA 35 U.S.C. 112, first paragraph, as failing to comply…
Read MoreHow are Board decisions treated in ex parte reexamination proceedings?
Board decisions in ex parte reexamination proceedings are treated similarly to those in regular patent applications. MPEP § 2277 specifies that: “MPEP § 1213 through § 1213.03 relate to decisions of the Board for both applications and ex parte reexamination proceedings.” This means that the procedures and guidelines outlined in these MPEP sections apply equally…
Read MoreWhat is the basis for including negative limitations in patent claims?
The basis for including negative limitations in patent claims must be found in the original disclosure of the patent application. According to MPEP 2173.05(i): “Any negative limitation or exclusionary proviso must have basis in the original disclosure. If alternative elements are positively recited in the specification, they may be explicitly excluded in the claims.” This…
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