What is the key principle in supporting a rejection under 35 U.S.C. 103?
The key principle in supporting a rejection under 35 U.S.C. 103 is to avoid treating any line of reasoning as a per se rule. The MPEP states, “When considering obviousness, Office personnel are cautioned against treating any line of reasoning as a per se rule.” This means that examiners must provide a flexible approach to…
Read MoreWhat is the key consideration when analyzing obviousness of species claims?
The key consideration is whether the claimed species or subgenus would have been obvious to one of ordinary skill in the pertinent art at the relevant time. As stated in MPEP 2144.08: “The patentability of a claim to a specific compound, species, or subgenus embraced by a prior art genus should be analyzed no differently…
Read MoreWhat constitutes interfering subject matter in patent law?
Interfering subject matter in patent law occurs when the subject matter of one party’s claim would, if considered prior art, anticipate or render obvious the subject matter of another party’s claim, and vice versa. This is defined in 37 CFR 41.203(a), which states: “An interference exists if the subject matter of a claim of one…
Read MoreWhat is the significance of the “intended purpose” of prior art in obviousness determinations?
The proposed modification of prior art must not render it unsatisfactory for its intended purpose when determining obviousness. According to MPEP 2143.01, “If a proposed modification would render the prior art invention being modified unsatisfactory for its intended purpose, then there is no suggestion or motivation to make the proposed modification.” This principle, established in…
Read MoreHow are inherent properties considered in patent examination?
Inherent properties disclosed in the specification are considered part of the “as a whole” inquiry in patent examination. The MPEP 2141.02 clarifies: “In delineating the invention as a whole, we look not only to the subject matter which is literally recited in the claim in question… but also to those properties of the subject matter…
Read MoreWhat is the relationship between inherency and obviousness in patent law?
What is the relationship between inherency and obviousness in patent law? The relationship between inherency and obviousness in patent law is complex and often intertwined. While inherency deals with properties or functions that are necessarily present but not explicitly stated, obviousness relates to whether the claimed invention would have been obvious to a person of…
Read MoreWhat is inherency in patent law?
Inherency in patent law refers to characteristics or properties that are necessarily present in a prior art reference, even if they were not explicitly recognized or disclosed. As stated in the MPEP, “[T]he discovery of a previously unappreciated property of a prior art composition, or of a scientific explanation for the prior art’s functioning, does…
Read MoreWhat is the relationship between inherency and obviousness in patent rejections?
What is the relationship between inherency and obviousness in patent rejections? The relationship between inherency and obviousness in patent rejections is complex and often misunderstood. According to MPEP 2112: “The fact that a certain result or characteristic may occur or be present in the prior art is not sufficient to establish the inherency of that…
Read MoreCan inherency be used in both anticipation and obviousness rejections?
Yes, inherency can be used in both anticipation (35 U.S.C. 102) and obviousness (35 U.S.C. 103) rejections. The MPEP explicitly states: “The express, implicit, and inherent disclosures of a prior art reference may be relied upon in the rejection of claims under 35 U.S.C. 102 or 103.” (MPEP 2112) Furthermore, the MPEP notes that concurrent…
Read MoreWhat is the significance of In re Leshin in MPEP 2144.07?
What is the significance of In re Leshin in MPEP 2144.07? The case In re Leshin, 277 F.2d 197, 125 USPQ 416 (CCPA 1960) is cited in MPEP 2144.07 as an important precedent. The section states: “Mere selection of known plastics to make a container-dispenser of a type made of plastics prior to the invention,…
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