How are claims considered in a Reexamination of a Reexamination?
In a Reexamination of a Reexamination, the claims are considered based on the modifications made by the previous reexamination certificate. MPEP 2295 states: “The reexamination request is to be considered based on the claims in the patent as modified by the previously issued reexamination certificate, and not based on the original claims of the patent.”…
Read MoreWhat claims are considered when deciding on an inter partes reexamination request?
The claims considered when deciding on an inter partes reexamination request are those in effect at the time of the determination. According to MPEP 2643, “The claims of the patent in effect at the time of the determination will be the basis for deciding whether ‘a substantial new question of patentability’ or ‘a reasonable likelihood…
Read MoreWhat claims are considered when deciding a request for ex parte reexamination under 35 U.S.C. 302?
When deciding a request for ex parte reexamination under 35 U.S.C. 302, the claims considered are those in effect at the time of the determination. As stated in the MPEP: The claims of the patent in effect at the time of the determination will be the basis for deciding whether “a substantial new question of…
Read MoreCan a party claim the same invention after losing an interference?
If a party loses an interference proceeding and subsequently attempts to claim the same invention as the count in the lost interference, their claims will be rejected. The MPEP 2308.03(c) provides clear guidance on this matter: “If a party that lost the earlier interference is again claiming the same invention as the count, the interfering…
Read MoreCan a chemical compound be claimed by its characteristics instead of its structure?
Yes, chemical compounds can be claimed by their characteristics when the structure is unknown. The MPEP 2173.05(t) provides this option: “A compound of unknown structure may be claimed by a combination of physical and chemical characteristics.” This approach is supported by legal precedent, such as Ex parte Brian. When structural information is unavailable or incomplete,…
Read MoreWhat is claim sorting in patent interference proceedings?
Claim sorting in patent interference proceedings refers to the process of organizing and consolidating claims from multiple related applications to streamline the examination process and manage potential interferences. The Manual of Patent Examining Procedure (MPEP) Section 2304.01(d) states: “If an applicant has several related applications with interfering claims intermixed with claims that do not interfere,…
Read MoreWhat is claim scope disavowal?
Claim scope disavowal, also known as disclaimer of claim scope, occurs when an applicant clearly disavows the full scope of a claim term in the specification. The MPEP explains, “Disavowal, or disclaimer of claim scope, is only considered when it is clear and unmistakable.” (MPEP 2111.01) Disavowal can be made explicitly or by implication. For…
Read MoreCan a claim preamble provide antecedent basis for claim limitations?
Yes, a claim preamble can provide antecedent basis for claim limitations, but this depends on the specific circumstances and the nature of the invention. The MPEP 2173.05(e) states: “The determination of whether a preamble limits a claim is made on a case-by-case basis in light of the facts in each case; there is no litmus…
Read MoreHow are claim amendments handled in inter partes reexamination?
How are claim amendments handled in inter partes reexamination? In inter partes reexamination, claim amendments are subject to specific rules and procedures. The MPEP states: “Amendments in reexamination proceedings are made by filing a paper in compliance with 37 CFR 1.530(d)-(k).” (MPEP 2666) This means that: Amendments must be made by filing a separate paper…
Read MoreHow are chemical formulas treated in patent claims?
Chemical formulas in patent claims are generally treated as definite and non-speculative, unless there is evidence to the contrary. The MPEP 2173.05(t) states: “Claims to chemical compounds and compositions containing chemical compounds often use formulas that depict the chemical structure of the compound. These structures should not be considered indefinite nor speculative in the absence…
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