What is the USPTO’s stance on rejecting patent claims for “aggregation”?
According to the Manual of Patent Examining Procedure (MPEP) 2173.05(k), patent claims should not be rejected on the grounds of “aggregation.” The MPEP states: “A claim should not be rejected on the ground of ‘aggregation.’” This guidance is based on legal precedents, including In re Gustafson and In re Collier, which established that rejections for…
Read MoreCan a reexamination be ordered for claims not specifically requested in the reexamination request?
Generally, the USPTO’s determination in both the order for reexamination and the examination stage will be limited to the claims for which reexamination was specifically requested. However, the Office has the discretion to reexamine any claim for which reexamination has not been requested. The MPEP states: “The decision to reexamine any claim for which reexamination…
Read MoreWhat happens if reexamination proceedings are not merged?
When reexamination proceedings are not merged, they are typically conducted separately to maintain the “special dispatch” requirement. As explained in MPEP 2686.01: “If the Office does not merge, the first reexamination proceeding can be concluded, and any question of patentability raised by the second reexamination request can be resolved in the second proceeding, with no…
Read MoreHow does the USPTO handle terms of degree in patent claims?
The USPTO handles terms of degree in patent claims by evaluating whether the specification provides some standard for measuring that degree. According to MPEP 2173.02: “Terms of degree are not necessarily indefinite… If the specification does provide some standard for measuring that degree, a rejection is not warranted… For example, in Ex parte Oetiker, 23…
Read MoreHow does the USPTO handle claims that potentially cover inoperative embodiments?
The USPTO’s approach to claims that potentially cover inoperative embodiments is nuanced. The presence of some inoperative embodiments within the scope of a claim does not necessarily render the claim non-enabled. According to the MPEP: “The presence of inoperative embodiments within the scope of a claim does not necessarily render a claim nonenabled. The standard…
Read MoreCan the USPTO examine claims not requested for reexamination under 35 U.S.C. 302?
Yes, the USPTO can examine claims not specifically requested for reexamination under 35 U.S.C. 302, but this is at the discretion of the Office. According to MPEP 2243: The decision to reexamine any claim for which reexamination has not been requested under 35 U.S.C. 302 lies within the sole discretion of the Office, to be…
Read MoreHow does the USPTO handle ex parte reexamination when all claims are held invalid by a court?
When a court issues a final decision holding all claims invalid or unenforceable in a patent undergoing ex parte reexamination, the USPTO has specific procedures to follow. According to MPEP 2286: “If all of the claims being examined in the reexamination proceeding are finally held invalid or unenforceable, the reexamination will be vacated by the…
Read MoreHow does the USPTO evaluate the nature of a transformation in patent claims?
The USPTO evaluates the nature of a transformation in patent claims by considering several factors. According to MPEP 2106.05(c), examiners should consider the following: The particularity or generality of the transformation: More specific transformations are more likely to be meaningful. The degree to which the recited article is particular: A transformation applied to a specific…
Read MoreHow does the USPTO determine what invention is sought to be patented?
How does the USPTO determine what invention is sought to be patented? According to MPEP 2103, the USPTO determines what invention is sought to be patented by carefully analyzing the disclosure and claims of the patent application. The MPEP states: “The claimed invention is defined by the words of the claims interpreted in light of…
Read MoreWhat is the scope of the USPTO’s determination in a supplemental examination?
The MPEP 2815 outlines the scope of the USPTO’s determination in a supplemental examination: “The determination will generally be limited to a review of the item(s) of information identified in the request as applied to the identified claim(s) of the patent. The determination will be based on the claims in effect at the time of…
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