How are product-by-process claims evaluated for patentability?
According to MPEP 2113, the evaluation of product-by-process claims focuses on the final product, not the process of making it. The MPEP states: “If the product in the product-by-process claim is the same as or obvious from a product of the prior art, the claim is unpatentable even though the prior product was made by…
Read MoreHow is a reexamination of a reexamination processed?
A reexamination of a reexamination is processed according to specific guidelines, regardless of the type of reexamination involved. According to MPEP § 2695: “A reexamination of a reexamination is processed in accordance with the guidelines set forth in MPEP § 2295 regardless of whether the reexamination certificate was issued for an ex parte reexamination or…
Read MoreWhat is the process for denying a reexamination request?
The process for denying a reexamination request involves several steps: The examiner prepares a decision explaining why no SNQ/RLP has been established for each cited patent or publication. The examiner sets up a panel review conference to discuss the decision. If the conference confirms the denial, the examiner completes and signs the decision, with conferees…
Read MoreCan a process claim be rejected if it describes the function of a disclosed machine?
No, a process claim cannot be rejected solely because it describes the function of a disclosed machine. The MPEP 2173.05(v) clearly states: “Process or method claims are not subject to rejection by U.S. Patent and Trademark Office examiners under 35 U.S.C. 112(b) or pre-AIA 35 U.S.C. 112, second paragraph, solely on the ground that they…
Read MoreWhat role does the problem solved by the invention play in determining analogous art?
The problem solved by the invention plays a crucial role in determining analogous art, particularly in applying the “reasonably pertinent” test. According to MPEP 2141.01(a): “In determining whether a reference is reasonably pertinent, an examiner should consider the problem faced by the inventor, as reflected – either explicitly or implicitly – in the specification.” The…
Read MoreHow does a priority showing differ from a priority statement in interference proceedings?
A priority showing under 37 CFR 41.202(d)(1) is distinct from a priority statement under 37 CFR 41.204(a) in interference proceedings. The MPEP clarifies: “A priority showing under 37 CFR 41.202(d)(1), which is presented during examination, is not the same as a priority statement under 37 CFR 41.204(a), which is filed during an interference. A priority…
Read MoreDoes a prior art reference need to disclose utility to anticipate a claim?
No, a prior art reference does not need to disclose utility to anticipate a claim. The Manual of Patent Examining Procedure (MPEP) Section 2122 states: “In order to constitute anticipatory prior art, a reference must identically disclose the claimed compound, but no utility need be disclosed by the reference.” This means that if a prior…
Read MoreWhat is the relationship between prior art teachings and reasonable expectation of success?
The relationship between prior art teachings and reasonable expectation of success is crucial in patent examination. According to MPEP 2143.02, the teachings of the prior art and their specificity play a significant role in determining whether there is a reasonable expectation of success in combining or modifying references. The MPEP provides guidance on this relationship:…
Read MoreWhat sources of prior art are considered during patent reexamination?
During patent reexamination, examiners consider prior art from various sources. MPEP 2657 outlines these sources: Prior art of record in the patent file due to submissions under 37 CFR 1.501 received before the reexamination order Prior art of record from earlier examination proceedings Prior art discovered by the examiner during a prior art search Prior…
Read MoreWhat sources of prior art must an examiner consider during ex parte reexamination?
During ex parte reexamination, an examiner must consider several sources of prior art, including: Patents and printed publications cited in the reexamination request Prior art cited by other reexamination requesters Prior art cited in the patent owner’s statement or requester’s reply Prior art cited by the patent owner under duty of disclosure Prior art discovered…
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