How does the predictability of the technology affect obviousness analysis for species claims?
The predictability of the technology is an important factor in obviousness analysis for species claims. As stated in MPEP 2144.08: “Consider the predictability of the technology. If the technology is unpredictable, it is less likely that structurally similar species will render a claimed species obvious because it may not be reasonable to infer that they…
Read MoreHow do pre-AIA notions of obviousness apply under the AIA?
Generally, pre-AIA notions of obviousness continue to apply under the AIA, with some exceptions. The MPEP states: “Generally speaking, and with the exceptions noted herein, pre-AIA notions of obviousness continue to apply under the AIA.“ This means that many of the established principles and case law regarding obviousness determinations remain relevant under the AIA. However,…
Read MoreHow does pre-AIA 35 U.S.C. 103(c) apply to reissue applications?
The application of pre-AIA 35 U.S.C. 103(c) to reissue applications involves specific considerations, particularly regarding the doctrine of recapture. The MPEP states: “For reissue applications, the doctrine of recapture may prevent the presentation of claims in the reissue applications that were amended or cancelled from the application which matured into the patent for which reissue…
Read MoreWhat is the significance of pre-AIA 35 U.S.C. 103(c) in patent examination?
Pre-AIA 35 U.S.C. 103(c) is significant in patent examination as it provides a way to disqualify certain prior art references in obviousness rejections. The MPEP states: “Examiners are reminded that a reference used in an anticipatory rejection under pre-AIA 35 U.S.C. 102(e), (f), or (g) is not disqualified as prior art if the reference is…
Read MoreHow does pre-AIA 35 U.S.C. 103(c) affect double patenting rejections?
Pre-AIA 35 U.S.C. 103(c) does not affect double patenting rejections. The MPEP clearly states: “In addition, double patenting rejections, based on subject matter now disqualified as prior art in amended pre-AIA 35 U.S.C. 103(c), should still be made as appropriate. See 37 CFR 1.78(c) and MPEP § 804.” This means that even if certain subject…
Read MoreHow does MPEP 1901.02 address information about potential interferences in protests?
MPEP 1901.02 specifically mentions that information about potential interferences can be included in a protest. The section states: “Information which can be relied on in a protest… includes information about other applications or patents which might result in double patenting or a Patent Office interference proceeding.” This means that if a protestor is aware of…
Read MoreWhat happens to an application after an interference proceeding ends?
After an interference proceeding ends, jurisdiction over the application returns to the patent examiner. The examiner’s actions depend on whether there are recommendations in the interference judgment: If there are recommendations, the examiner must reopen prosecution to consider them. If there are no recommendations, the examiner should update the search and may choose to reopen…
Read MoreWhen should an examiner reject claims after an interference judgment?
An examiner should reject claims after an interference judgment if allowing them would conflict with the judgment’s outcome. The MPEP provides clear guidance on this: If a party loses on an issue in the interference, the examiner should reject any claim for which allowance would be inconsistent with the interference judgment. This means that the…
Read MoreWhat happens to an application after termination of an interference?
After the termination of an interference, the application undergoes specific procedures. According to MPEP 2303: “When an interference is terminated, the application returns to ex parte prosecution. The application is returned to the examiner who may need to take further action in the application.” This means that: The application resumes normal ex parte prosecution The…
Read MoreHow does the USPTO handle post-filing date evidence in enablement determinations?
The USPTO generally discourages the use of post-filing date evidence in enablement determinations. According to MPEP 2164.05(a): “In general, the examiner should not use post-filing date references to demonstrate that a patent is not enabled.” However, there are exceptions: A later-dated reference may provide evidence of what one skilled in the art would have known…
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