What are the rules for recording interviews in ex parte reexamination proceedings?
In ex parte reexamination proceedings, interviews must be recorded and made of record in the reexamination file. The MPEP states: “All interviews in ex parte reexamination proceedings must be made of record in the reexamination file. The examiner should therefore prepare, sign, and date a memorandum for the record after each interview, stating in detail…
Read MoreWhat is the process for handling rebuttal briefs in inter partes reexamination?
The process for handling rebuttal briefs in inter partes reexamination involves several steps: The Board of Patent Appeals and Interferences (BPAI) determines compliance with 37 CFR 1.943(c) and 37 CFR 41.71. The Central Reexamination Unit (CRU) retains jurisdiction over the proceeding until a docketing notice is entered. The Board reviews the rebuttal brief and forwards…
Read MoreHow can an applicant rebut the presumption of operability in prior art?
An applicant can rebut the presumption of operability in prior art by providing evidence that shows a process for making the compound was not known at the relevant time. The MPEP 2121.02 states: “A reference is presumed operable until applicant provides facts rebutting the presumption of operability.” To overcome this presumption, an applicant must present…
Read MoreWhat form is used to communicate the reasons for patentability in ex parte reexamination?
In ex parte reexamination proceedings, the USPTO uses a specific form to communicate the reasons for patentability or confirmation of patent claims. According to MPEP 2296, this form is: PTOL-476: Reasons for Patentability/Confirmation The PTOL-476 form is used by examiners to explain why certain claims in the patent under reexamination are deemed patentable or why…
Read MoreHow are reasons for patentability provided in ex parte reexamination?
In ex parte reexamination, examiners are required to provide reasons for patentability, unless all claims are canceled in the proceeding. These reasons are typically provided as an attachment to the Notice of Intent to Issue Ex Parte Reexamination Certificate (NIRC). According to MPEP 2287: “In the attachment to the NIRC, the examiner should indicate why…
Read MoreHow does the “reasonably pertinent” test apply to analogous art determination?
The “reasonably pertinent” test is another important criterion for determining analogous art, especially when a reference is not from the same field of endeavor as the claimed invention. According to MPEP 2141.01(a): “A reference is reasonably pertinent if, even though it may be in a different field from that of the inventor’s endeavor, it is…
Read MoreWhat role does “reasonable expectation of success” play in obviousness rejections?
What role does “reasonable expectation of success” play in obviousness rejections? The concept of “reasonable expectation of success” is a crucial element in determining obviousness in patent examination. According to MPEP 2143.02: “Obviousness does not require absolute predictability, however, at least some degree of predictability is required.” This means that when an examiner combines or…
Read MoreWhat is the role of “reasonable expectation of success” in obviousness determinations?
The “reasonable expectation of success” plays a crucial role in obviousness determinations under patent law. According to MPEP 2143.02, “Obviousness does not require absolute predictability, however, at least some degree of predictability is required.” This means that for an invention to be considered obvious, there must be a reasonable probability that the proposed modification or…
Read MoreWhat is the ‘reasonable expectation of success’ criterion in obviousness analysis?
What is the ‘reasonable expectation of success’ criterion in obviousness analysis? The ‘reasonable expectation of success’ is a crucial criterion in determining obviousness in patent examination. According to MPEP 2143, this concept is particularly important when considering whether a claimed invention would have been obvious to try. The MPEP states: “Obviousness can be established by…
Read MoreWhat is the “reasonable basis” standard for prior art operability in patent examinations?
The “reasonable basis” standard for prior art operability in patent examinations refers to the level of evidence required to establish a prima facie case of anticipation or obviousness. According to MPEP 2121: “When the reference relied on expressly anticipates or makes obvious all of the elements of the claimed invention, the reference is presumed to…
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