What is the procedure for identifying a ‘tentative abstract idea’?
The MPEP describes a procedure for identifying a ‘tentative abstract idea’ in rare circumstances where an examiner believes a claim limitation should be treated as an abstract idea, but it doesn’t fall within the established groupings. The process is as follows: The examiner evaluates the claim under the subject matter eligibility framework. If the claim…
Read MoreCan supplemental responses be filed in ex parte reexamination proceedings?
Supplemental responses in ex parte reexamination proceedings are addressed in 37 CFR 1.111(a)(2). While they are not entered as a matter of right, the Office may enter a supplemental response if it is clearly limited to specific circumstances: Cancellation of claims Adoption of examiner suggestions Placing the proceeding in condition for Notice of Intent to…
Read MoreHow are Markush claims examined for patentability?
Markush claims are examined for patentability like other claims, but with some specific considerations: The examiner first determines if the Markush grouping is proper. If improper, a rejection based on an improper Markush grouping is made. The claim is then examined for all other conditions of patentability (e.g., 35 U.S.C. 101, 102, 103, 112, and…
Read MoreWhat forms are used in inter partes reexamination proceedings for mailing Office actions?
In inter partes reexamination proceedings, specific forms are used for mailing Office actions. The MPEP describes: Inter partes reexamination forms are structured so that the identifying information for the reexamination file and the correspondence address for the patent owner, which is the official correspondence address of record in the file of the patent requested to…
Read MoreWhat steps should an examiner take if potential interfering subject matter is identified?
When an examiner identifies potential interfering subject matter during an interference search, they must follow a specific procedure. According to MPEP 2304.01(a): “If the search results identify any potential interfering subject matter, the examiner will review the application(s) with the potential interfering subject to determine whether interfering subject matter exists. If interfering subject matter does…
Read MoreWhat is the relationship between MPEP 901.06(b) and MPEP 901.06(a)?
MPEP 901.06(b) directly references MPEP 901.06(a) for information on borrowed publications. The section states: “See MPEP § 901.06(a) , STIC Services – Interlibrary Loans.” This indicates that MPEP 901.06(a) contains more detailed information about STIC Services and interlibrary loans, which are the primary means of accessing borrowed publications. Essentially, 901.06(b) serves as a pointer to…
Read MoreWhat is the procedure for suspending action in a reissue application with concurrent litigation?
When suspending action in a reissue application with concurrent litigation, examiners are instructed to follow a specific procedure. The MPEP states: “The examiner should consult with the Technology Center Training Quality Assurance Specialist (TQAS) or Supervisory Patent Reexamination Specialist (SPRS) before suspending action in the reissue application.” Additionally, examiners are provided with a form paragraph…
Read MoreWhat is an international-type search, and how does it relate to U.S. national applications?
An international-type search is a search conducted on a national patent application that is similar in scope to an international search conducted for PCT applications. In the context of U.S. national applications, the United States Patent and Trademark Office (USPTO) automatically performs an international-type search on all U.S. national applications filed on and after June…
Read MoreWhat is the international preliminary examination procedure?
The international preliminary examination is conducted according to PCT Article 34 and PCT Rule 66. The MPEP states: The examiner takes into consideration any comments or amendments made by the applicant when establishing the international preliminary examination report. This process involves studying the application’s description, drawings, claims, prior art cited in the international search report,…
Read MoreWhat evidence does a patent examiner need to reject a design for simulation?
When rejecting a design patent application based on simulation, patent examiners are encouraged to provide evidence to support their decision. The MPEP 1504.01(d) states: “when a claim is rejected on this basis, examiners should provide evidence, if possible, of the appearance of the object, person or naturally occurring form in question so that a comparison…
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