Is a chemical compound claim indefinite if a complete structure is not presented?
No, a chemical compound claim is not automatically considered indefinite if a complete structure is not presented. The MPEP 2173.05(t) clarifies this point: “A claim to a chemical compound is not indefinite merely because a structure is not presented or because a partial structure is presented.” This guidance is based on court decisions, such as…
Read MoreHow are checklists completed in a Reexamination of a Reexamination?
In a Reexamination of a Reexamination, both the examiner and the CRU support staff complete checklists to ensure proper processing. MPEP 2295 states: “The examiner will complete a checklist, Form PTO-1516, and the CRU support staff will complete the reexamination clerk checklist Form PTO-1517.” When completing these checklists, it’s important to remember that “the ‘patent’…
Read MoreHow are cancelled claims indicated in an inter partes reexamination certificate?
How are cancelled claims indicated in an inter partes reexamination certificate? In an inter partes reexamination certificate, cancelled claims are clearly indicated to show the changes made to the patent. According to MPEP 2688: “Claims which were canceled by the reexamination proceeding are omitted from the inter partes reexamination certificate. Such claims are listed at…
Read MoreWhat is the “broadest reasonable interpretation” in patent examination?
The “broadest reasonable interpretation” (BRI) is a standard used during patent examination to interpret the language of patent claims. According to MPEP 2173.05(a): “During patent examination, the pending claims must be given the broadest reasonable interpretation consistent with the specification.” This means that: Examiners interpret claim language as broadly as reasonable while still being consistent…
Read MoreWhat is the broadest reasonable interpretation (BRI) in patent claims?
The broadest reasonable interpretation (BRI) is a fundamental principle in patent examination. According to MPEP 2173.01, “During examination, a claim must be given its broadest reasonable interpretation consistent with the specification as it would be interpreted by one of ordinary skill in the art.” The MPEP further explains: “Because the applicant has the opportunity to…
Read MoreWhat is the “broadest reasonable construction” in patent claims?
The “broadest reasonable construction” is a principle used in patent examination when interpreting patent claims. According to the MPEP Section 2001.05, this principle is applied when establishing a prima facie case of unpatentability: “A prima facie case of unpatentability is established when the information compels a conclusion that a claim is unpatentable under the preponderance…
Read MoreCan patent claims be broadened during inter partes reexamination?
No, patent claims cannot be broadened during inter partes reexamination. The MPEP 2609 explicitly states: The scope of the patent claims cannot be enlarged by amendment; This limitation is a crucial aspect of the reexamination process. It ensures that the reexamination focuses on reviewing the validity of existing claims rather than expanding patent rights. Patent…
Read MoreWhat is the difference between breadth and indefiniteness in patent claims?
Breadth and indefiniteness are distinct concepts in patent claims. As stated in MPEP 2173.04, “Breadth of a claim is not to be equated with indefiniteness.” The section further explains: “A broad claim is not indefinite merely because it encompasses a wide scope of subject matter provided the scope is clearly defined. But a claim is…
Read MoreHow are Board decisions treated in ex parte reexamination proceedings?
Board decisions in ex parte reexamination proceedings are treated similarly to those in regular patent applications. MPEP § 2277 specifies that: “MPEP § 1213 through § 1213.03 relate to decisions of the Board for both applications and ex parte reexamination proceedings.” This means that the procedures and guidelines outlined in these MPEP sections apply equally…
Read MoreWhat happens after a Board decision in an ex parte reexamination?
After a Board decision in an ex parte reexamination, the examiner follows procedures similar to those outlined in MPEP § 1214 through § 1214.07, with some exceptions specific to reexamination proceedings. The examiner’s actions depend on whether claims are allowed or rejected. As stated in the MPEP: Claims indicated as allowable but objected to prior…
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