Why is the Old Combination rejection no longer valid in patent examination?
The Old Combination rejection is no longer valid due to changes in patent law and subsequent court interpretations. The MPEP 2173.05(j) states: “A majority opinion of the Board of Appeals held that Congress removed the underlying rationale of Lincoln Engineering in the 1952 Patent Act, and thereby effectively legislated that decision out of existence. Ex…
Read MoreWhat is the “Old Combination” principle in patent law?
The “Old Combination” principle was a former doctrine in patent law that suggested an inventor who improved only one element of an old combination should not be able to patent the entire combination. However, this principle is no longer valid in modern patent law. As stated in MPEP 2173.05(j): “A CLAIM SHOULD NOT BE REJECTED…
Read MoreWhat was the Lincoln Engineering case and its impact on patent law?
The Lincoln Engineering case (Lincoln Engineering Co. v. Stewart-Warner Corp., 303 U.S. 545, 37 USPQ 1 (1938)) was a significant ruling that established the Old Combination principle. According to MPEP 2173.05(j): “The principle was that an inventor who made an improvement or contribution to but one element of a generally old combination, should not be…
Read MoreHow should patent examiners evaluate claims that might have previously been rejected under the Old Combination principle?
Patent examiners should evaluate claims based on their compliance with current statutory requirements, particularly 35 U.S.C. 112(b), rather than using the Old Combination principle. The MPEP 2173.05(j) states: “Claims should be considered proper so long as they comply with the provisions of 35 U.S.C. 112(b) or pre-AIA 35 U.S.C. 112, second paragraph.” This means examiners…
Read MoreWhat is the current basis for evaluating patent claims that might have previously fallen under the Old Combination principle?
The current basis for evaluating patent claims that might have previously fallen under the Old Combination principle is their compliance with statutory requirements, particularly 35 U.S.C. 112(b). The MPEP 2173.05(j) states: “Claims should be considered proper so long as they comply with the provisions of 35 U.S.C. 112(b) or pre-AIA 35 U.S.C. 112, second paragraph.”…
Read MoreWhat case law supports the invalidation of the Old Combination rejection?
Several key cases support the invalidation of the Old Combination rejection: In re Bernhart: This case emphasized that statutory language is the proper basis for claim evaluation. The MPEP 2173.05(j) notes: “The court pointed out in In re Bernhart, 417 F.2d 1395, 163 USPQ 611 (CCPA 1969) that the statutory language (particularly point out and…
Read MoreHow did the 1952 Patent Act affect the Old Combination principle?
The 1952 Patent Act had a significant impact on the Old Combination principle, effectively invalidating it. According to MPEP 2173.05(j): “A majority opinion of the Board of Appeals held that Congress removed the underlying rationale of Lincoln Engineering in the 1952 Patent Act, and thereby effectively legislated that decision out of existence. Ex parte Barber,…
Read More