What 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 However, this principle is no longer valid in modern patent law.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 information is included in the Official Gazette notice for an inter partes reexamination certificate?
The Official Gazette notice for an inter partes reexamination certificate includes: Bibliographic information Status of each claim after the conclusion of the reexamination proceeding A representative claim Indication of any changes to the specification or drawing As stated in MPEP 2691: “The Official Gazette notice will include bibliographic information, and an indication of the status…
Read MoreWhat information is included in the Official Gazette notice for an ex parte reexamination certificate?
The Official Gazette notice for an ex parte reexamination certificate includes several key pieces of information: Bibliographic information Status of each claim after the conclusion of the reexamination proceeding A representative claim Indication of any changes to the specification or drawing Clear indication of the type of certificate As stated in MPEP 2291: “The Official…
Read MoreWhat is the objective requirement for claims under 35 U.S.C. 112(b)?
The objective requirement for claims under 35 U.S.C. 112(b) focuses on the clarity and definiteness of the claim language. According to MPEP 2171: “The second requirement is an objective one because it is not dependent on the views of the inventor or any particular individual, but is evaluated in the context of whether the claim…
Read MoreHow are amended or new claims numbered in an inter partes reexamination certificate?
The numbering of amended or new claims in an inter partes reexamination certificate follows specific rules as outlined in MPEP 2688: Amended or new claims are numbered consecutively starting with the number next higher than the number of the last claim in the original patent. The numbering starts with the lowest amended claim number. If…
Read MoreWhen should a notice of abandonment be issued after a derivation proceeding?
A notice of abandonment should be issued after a derivation proceeding when no claims remain allowable to the applicant. This situation is addressed in MPEP 2315, which states: “If no claim remains allowable to the applicant, a notice of abandonment should be issued.” This typically occurs when all claims have been finally disposed of in…
Read MoreWhat are “nonce” words in the context of 35 U.S.C. 112(f)?
“Nonce” words in the context of 35 U.S.C. 112(f) are generic terms that typically do not connote sufficiently definite structure to avoid invoking means-plus-function treatment. The MPEP 2181 provides examples of such words: “Examples of generic terms (nonce words) include “mechanism for,” “module for,” “device for,” “unit for,” “component for,” “element for,” “member for,” “apparatus…
Read MoreWhat is the relationship between a judgment of no interference-in-fact and patent priority?
A judgment of no interference-in-fact is directly related to patent priority issues. As stated in MPEP 2308.03(b): “A judgment of no interference-in-fact means that no interference is needed to resolve priority between the parties.” This judgment indicates that there is no conflict in priority between the parties’ claims that requires resolution through an interference proceeding.…
Read MoreWhat does a judgment of “no interference-in-fact” mean in patent law?
A judgment of “no interference-in-fact” in patent law means that no interference proceeding is necessary to resolve priority between the parties. As stated in MPEP 2308.03(b): “A judgment of no interference-in-fact means that no interference is needed to resolve priority between the parties.” This judgment indicates that the claims of the parties do not overlap…
Read MoreCan a new limitation in a patent claim create an enablement problem?
Adding a new limitation to a patent claim does not necessarily create an enablement problem. The MPEP provides guidance on this issue: “Even if a new limitation is not described in the original disclosure, the addition of a new limitation in and of itself may not create an enablement problem provided that one skilled in…
Read More