When can a first Office action be made final in a continuing application?
A first Office action can be made final in a continuing application when: The new application is a continuing application of, or a substitute for, an earlier application, and All claims of the new application are either identical to or patentably indistinct from the claims in the earlier application, and The claims would have been…
Read MoreHow should examiners handle early allowance of claims in patent applications?
Patent examiners are encouraged to allow claims early in the examination process when appropriate. The MPEP 707.07(j) provides guidance on this matter: Where the examiner is satisfied that the prior art has been fully developed and some of the claims are clearly allowable, the allowance of such claims should not be delayed. This approach helps…
Read MoreWhat happens when claims are copied from a patent in an application with an unanswered rejection?
When claims are copied from a patent into an application that already has an unanswered rejection, two different periods for reply come into effect: The regular statutory period for the unanswered rejection of record A limited period set for replying to the rejection of the copied patent claims As stated in the MPEP, Where, in…
Read MoreWhat are the consequences of copying claims from a patent without USPTO suggestion?
Copying claims from a patent without suggestion from the USPTO does not constitute a valid reply to the last Office action and may lead to abandonment of the application. According to MPEP 711.02(b): Copying claims from a patent when not suggested by the U.S. Patent and Trademark Office does not constitute a reply to the…
Read MoreHow does the scope of commercial success relate to patent claims?
The scope of commercial success must be commensurate with the scope of the patent claims to be considered as evidence of non-obviousness. MPEP 716.03(a) states: The commercial success must be due to claimed features, and not due to unclaimed features. Joy Technologies Inc. v. Manbeck, 751 F. Supp. 225, 229, 17 USPQ2d 1257, 1260 (D.D.C.…
Read MoreWhat is the requirement for commercial success evidence in patent applications?
Commercial success evidence must be commensurate in scope with the claims of the patent application. This means that the evidence of commercial success should be directly related to the claimed features of the invention, not unclaimed features. As stated in MPEP 716.03(a): “Objective evidence of nonobviousness including commercial success must be commensurate in scope with…
Read MoreWhat are the requirements when the claimed invention is not coextensive with the commercial product?
When the claimed invention is not coextensive with the commercial product or process, the applicant must demonstrate a legally sufficient relationship between the claimed feature and the commercial success. This ensures that the commercial success is attributable to the specific aspects of the invention that are claimed. According to MPEP 716.03(a): “Where the commercially successful…
Read MoreWhat is the significance of ‘commensurate in scope’ for unexpected results?
‘Commensurate in scope’ means that the evidence of unexpected results must apply to the full range of the claimed invention. The MPEP states: Whether the unexpected results are the result of unexpectedly improved results or a property not taught by the prior art, the ‘objective evidence of nonobviousness must be commensurate in scope with the…
Read MoreHow does the ‘commensurate in scope’ requirement affect unexpected results claims in patents?
How does the ‘commensurate in scope’ requirement affect unexpected results claims in patents? The ‘commensurate in scope’ requirement is a critical factor in evaluating unexpected results claims in patent applications. According to MPEP 716.02(d): “Whether the unexpected results are the result of unexpectedly improved results or a property not taught by the prior art, the…
Read MoreWhat is a ‘claimed invention’ in patent law?
The term ‘claimed invention’ is defined in 35 U.S.C. 100(j) as follows: The term “claimed invention” means the subject matter defined by a claim in a patent or an application for a patent. This definition emphasizes that the ‘claimed invention’ refers specifically to the subject matter that is described and defined in the claims of…
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