Can a requester include arguments about non-prior art issues in the statement applying prior art?
No, a requester should not include arguments about non-prior art issues in the statement applying prior art for an inter partes reexamination request. The MPEP 2617 clearly states: “The statement applying the prior art is not intended as an opportunity for a requester to propose rejections based on 35 U.S.C. 101, 112, 102, and 103…
Read MoreHow can a serious examination burden be demonstrated in a restriction requirement?
A serious examination burden can be prima facie shown through appropriate explanation of non-prior art issues that are relevant to one invention but not to the other. According to MPEP 803: “Similarly, a serious examination burden, for example, may be prima facie shown by appropriate explanation of non-prior art issues under 35 U.S.C. 101, pre-AIA…
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