What is the significance of the In re Kerkhoven case in patent law?
The In re Kerkhoven case is significant in patent law as it established a key principle regarding the combination of known elements. As cited in MPEP 2144.06, the case states: “It is prima facie obvious to combine two compositions each of which is taught by the prior art to be useful for the same purpose,…
Read MoreHow does the USPTO handle arguments about improper hindsight in obviousness rejections?
Applicants often argue that an examiner’s obviousness rejection is based on improper hindsight reasoning. MPEP 2145 addresses this issue: “Applicants may argue that the examiner’s conclusion of obviousness is based on improper hindsight reasoning. However, ‘[a]ny judgment on obviousness is in a sense necessarily a reconstruction based on hindsight reasoning, but so long as it…
Read MoreHow does implicit disclosure affect the novelty and obviousness of an invention?
Implicit disclosure plays a crucial role in determining the novelty and obviousness of an invention. When examining prior art, patent examiners consider both explicit teachings and implicit disclosures. As per MPEP 2144.01, “it is proper to take into account not only specific teachings of the reference but also the inferences which one skilled in the…
Read MoreHow does an examiner determine if a reference is analogous art?
According to MPEP 2141.01(a), an examiner must determine whether a reference is analogous art when analyzing the obviousness of the subject matter under examination. The MPEP provides guidance on this process: Same Field of Endeavor Test: The examiner should consider “explanations of the invention’s subject matter in the patent application, including the embodiments, function, and…
Read MoreHow do genus and species claims interact in interference proceedings?
In interference proceedings, the interaction between genus and species claims can be complex. The MPEP 2301.03 provides several examples to illustrate this interaction: When one party claims a genus and another claims a species within that genus, the species claim would typically anticipate the genus claim, but the genus claim would not anticipate the species…
Read MoreHow are rejections under pre-AIA 35 U.S.C. 103(a) formulated?
Rejections under pre-AIA 35 U.S.C. 103(a) are formulated using form paragraph 7.21.fti. This paragraph provides the basic structure for stating the rejection: Claim [1] is/are rejected under pre-AIA 35 U.S.C. 103(a) as being unpatentable over [2]. The examiner fills in the claim numbers being rejected in bracket [1] and the prior art reference(s) being relied…
Read MoreWhat evidence is required when claiming discovery of a problem’s source?
When claiming to have discovered the source of a problem as a basis for patentability, applicants must provide substantiating evidence. The MPEP 2141.02 states: “Applicants who allege the inventor discovered the source of a problem must provide evidence substantiating the allegation, either by way of affidavits or declarations, or by way of a clear and…
Read MoreWhat is the relationship between equivalence and obviousness in patent examination?
In patent examination, there is an important relationship between equivalence and obviousness: If an applicant successfully shows that a prior art element is not equivalent to the claimed limitation, the examiner must still consider obviousness. Non-equivalence does not automatically mean non-obviousness. The examiner must perform a 35 U.S.C. 103 analysis to determine if the claimed…
Read MoreWhen is the elimination of an element or step considered obvious?
The elimination of an element or step can be considered obvious under certain circumstances. According to MPEP 2144.04, “Omission of an element and its function is obvious if the function of the element is not desired.” This principle is illustrated in several cases: Ex parte Wu: Omission of a component in an anticorrosion composition was…
Read MoreCan discovering the source of a problem contribute to patentability?
Yes, discovering the source of a problem can contribute to patentability, even if the solution seems obvious once the problem is identified. The MPEP 2141.02 states: “[A] patentable invention may lie in the discovery of the source of a problem even though the remedy may be obvious once the source of the problem is identified.…
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