How detailed should the statement applying prior art be in an inter partes reexamination request?
The statement applying prior art in an inter partes reexamination request should be sufficiently detailed to explain how each item of prior art applies to every claim for which reexamination is requested. The MPEP 2617 states: “The particularity should be equivalent to that usually present in a prior art rejection statement in an Office action…
Read MoreWhat is relative terminology in patent claims?
Relative terminology in patent claims refers to language that uses terms of degree or comparative expressions. According to the Manual of Patent Examining Procedure (MPEP) 2173.05(b), “The use of relative terminology in claim language, including terms of degree, does not automatically render the claim indefinite under 35 U.S.C. 112(b) or pre-AIA 35 U.S.C. 112, second…
Read MoreWhat is a rejection based on disclaimer in patent law?
A rejection based on disclaimer in patent law occurs when an applicant is considered to have disclaimed the subject matter involved. This can happen in several scenarios, as outlined in MPEP 2304.04(c): Failure to make claims suggested for interference with another application Failure to copy a claim from a patent when suggested by the examiner…
Read MoreHow does MPEP 2172 address the concept of “regarded as invention” in patent claims?
How does MPEP 2172 address the concept of “regarded as invention” in patent claims? MPEP 2172 addresses the concept of “regarded as invention” in patent claims by emphasizing the importance of the claims reflecting what the inventor considers to be their invention. The section states: “The subject matter which the inventor or a joint inventor…
Read MoreWhen is it acceptable to reference figures or tables in patent claims?
Referencing figures or tables in patent claims is generally discouraged, as claims should be complete in themselves. However, the MPEP 2173.05(s) states that it is permitted “only in exceptional circumstances where there is no practical way to define the invention in words and where it is more concise to incorporate by reference than duplicating a…
Read MoreHow does MPEP address “reference to an object” in patent claims?
How does MPEP address “reference to an object” in patent claims? The MPEP 2173.05(b) addresses the use of “reference to an object” in patent claims as a form of relative terminology. This occurs when a claim term is defined by reference to an object that is variable. The MPEP states: “To determine whether a claim…
Read MoreHow do reference characters in patent claims affect their scope?
Reference characters in patent claims generally do not affect the scope of the claims. The MPEP 2173.05(s) states: “Reference characters corresponding to elements recited in the detailed description and the drawings may be used in conjunction with the recitation of the same element or group of elements in the claims. Generally, the presence or absence…
Read MoreWhat are the requirements for amending claims in a reexamination proceeding?
Amending claims in a reexamination proceeding must follow specific guidelines as outlined in 37 CFR 1.530(d)(2): The amendment must include the entire text of each claim being changed. The entire text of any new claims being added must be provided. For changed claims, a parenthetical expression (e.g., “amended,” “twice amended”) should follow the claim number.…
Read MoreWhat happens if a reexamination certificate is about to issue during a new reexamination request?
If a reexamination certificate for a prior reexamination is about to issue when a new reexamination request is filed, the proceedings are typically not merged. According to MPEP 2295: “If the certificate for the first reexamination proceeding will issue before the decision on the second request must be decided, the reexamination certificate is allowed to…
Read MoreWhat does “reasonable correlation” mean in the context of enablement?
What does “reasonable correlation” mean in the context of enablement? In the context of enablement, “reasonable correlation” refers to the relationship between the disclosed method for making and using the invention and the full scope of the patent claim. The MPEP 2164.01(b) states: “The specification need not contain an example if the invention is otherwise…
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