How can a provisional rejection under pre-AIA 35 U.S.C. 102(e) be overcome?
A provisional rejection under pre-AIA 35 U.S.C. 102(e) can be overcome in several ways. The MPEP states: A provisional rejection under pre-AIA 35 U.S.C. 102(e) can be overcome in the same manner that a pre-AIA 35 U.S.C. 102(e) rejection can be overcome. See MPEP § 2136.05. Additionally, The provisional rejection can also be overcome by…
Read MoreHow can a provisional rejection under 35 U.S.C. 102(a)(2) be overcome?
A provisional rejection under 35 U.S.C. 102(a)(2) can be overcome in several ways. According to MPEP 2154.01(d): “A provisional rejection based on 35 U.S.C. 102(a)(2) prior art can be overcome in the same manner that a 35 U.S.C. 102(a)(2) rejection can be overcome. See MPEP § 2152.06. The provisional rejection can also be overcome by…
Read MoreHow can an applicant overcome a rejection of a product-by-process claim?
An applicant has several options to overcome a rejection of a product-by-process claim. According to MPEP 2113: “[T]he lack of physical description in a product-by-process claim makes determination of the patentability of the claim more difficult, since in spite of the fact that the claim may recite only process limitations, it is the patentability of…
Read MoreHow can an applicant overcome a rejection based on anticipation of ranges?
When facing a rejection based on anticipation of ranges, an applicant can take several approaches to overcome the rejection: Demonstrate criticality: Show that the claimed range has unexpected results or critical properties not found in the prior art range. Argue lack of enablement: If the prior art doesn’t enable one skilled in the art to…
Read MoreHow can a provisional rejection under 35 U.S.C. 103(a) based on provisional prior art under pre-AIA 35 U.S.C. 102(e) be overcome?
There are several ways to overcome a provisional rejection under 35 U.S.C. 103(a) based on provisional prior art under pre-AIA 35 U.S.C. 102(e). The MPEP outlines the following methods: Arguing patentability over the earlier filed application Combining the subject matter of the copending applications into a single application Filing an affidavit or declaration under 37…
Read MoreHow can an applicant overcome a pre-AIA 35 U.S.C. 102(b) rejection?
According to MPEP 2133.02(a), an applicant can overcome a pre-AIA 35 U.S.C. 102(b) rejection in several ways: Persuasively arguing that the claims are patentably distinguishable from the prior art Amending the claims to patentably distinguish over the prior art Submitting and perfecting a benefit claim under 35 U.S.C. 120 within the time period set in…
Read MoreHow can an applicant overcome a pre-AIA 35 U.S.C. 102(b) rejection based on a printed publication?
To overcome a pre-AIA 35 U.S.C. 102(b) rejection based on a printed publication, an applicant can take the following steps: Prove earlier invention date: Show that the invention was conceived and reduced to practice before the critical date (one year prior to the U.S. filing date). Challenge publication date: Provide evidence that the reference was…
Read MoreHow can an applicant overcome a rejection based on an improper Markush grouping?
How can an applicant overcome a rejection based on an improper Markush grouping? An applicant can overcome a rejection based on an improper Markush grouping in several ways, as outlined in MPEP 2117: Demonstrate a single structural similarity: Show that all members of the Markush group share a common structure or feature that is essential…
Read MoreCan a terminal disclaimer be used to overcome a double patenting rejection?
Yes, a terminal disclaimer can be used to overcome a nonstatutory double patenting rejection. By filing a terminal disclaimer, the applicant agrees to limit the term of the later patent to expire at the same time as the earlier patent, thus eliminating the extension of patent rights that would otherwise occur. The MPEP states: 37…
Read MoreHow can an applicant overcome a rejection based on lack of ornamentality?
An applicant can overcome a rejection based on lack of ornamentality under 35 U.S.C. 171 by providing evidence that demonstrates the ornamental nature of the design. The MPEP outlines several ways to overcome such a rejection: Submit an affidavit or declaration under 37 CFR 1.132 explaining which features of the claimed design were created to…
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