How can an inventor overcome an obviousness rejection based on art recognized equivalence?
An inventor facing an obviousness rejection based on art recognized equivalence can employ several strategies to overcome the rejection. Here are some approaches based on the principles outlined in MPEP 2144.06: Challenge the Equivalency: Argue that the prior art does not actually recognize the equivalency between the components. Remember, the MPEP states: “In order to…
Read MoreHow are issues outside the scope of reexamination handled in inter partes proceedings?
In inter partes reexamination proceedings, issues that fall outside the scope of reexamination are noted but not considered. According to MPEP 2671.01: “If questions not within the scope of reexamination proceedings (for example, questions of patentability based on public use or on sale, conduct issues, abandonment under 35 U.S.C. 102) have been newly raised by…
Read MoreCan a protest include information about ongoing litigation related to the patent application?
Yes, a protest can include information about ongoing litigation related to the patent application. MPEP 1901.02 explicitly mentions this: “Information which can be relied on in a protest… includes information about other related litigation and governmental proceedings.” This means that if there are any ongoing court cases, administrative proceedings, or other governmental actions that are…
Read MoreHow does the concept of ‘one skilled in the art’ relate to implicit disclosure?
The concept of ‘one skilled in the art’ is crucial in determining what constitutes an implicit disclosure. According to MPEP 2144.01, when considering a reference, it’s proper to take into account “not only specific teachings of the reference but also the inferences which one skilled in the art would reasonably be expected to draw therefrom.”…
Read MoreWhat is the “one independent and distinct design” requirement in international design applications?
The “one independent and distinct design” requirement in international design applications refers to the rule that only one independent and distinct design may be claimed in a nonprovisional international design application. This requirement is based on U.S. law and is enforced by the USPTO. As stated in MPEP 2920.05(b): “Only one independent and distinct design…
Read MoreWhat is an “omnibus claim” and how is it addressed in patent examination?
An “omnibus claim” is a type of claim that fails to point out what is included or excluded by the claim language. The MPEP provides a specific form paragraph (7.35) to address omnibus claims in patent examination. According to the MPEP, an example of an omnibus claim is: “A device substantially as shown and described.”…
Read MoreWhat is the difference between official notice and personal knowledge in patent examination?
What is the difference between official notice and personal knowledge in patent examination? In patent examination, there’s an important distinction between official notice and personal knowledge. According to MPEP 2144.03: “Official notice without documentary evidence to support an examiner’s conclusion is permissible only in some circumstances.” This contrasts with personal knowledge, which is not explicitly…
Read MoreCan examiners take official notice for legal conclusions in patent examination?
Can examiners take official notice for legal conclusions in patent examination? No, examiners cannot take official notice for legal conclusions in patent examination. The MPEP 2144.03 clearly states: “It would not be appropriate for the examiner to take official notice of facts without citing a prior art reference where the facts asserted to be well…
Read MoreHow does an examiner’s use of official notice affect the burden of proof in patent examination?
How does an examiner’s use of official notice affect the burden of proof in patent examination? An examiner’s use of official notice can significantly impact the burden of proof in patent examination. Here’s how it affects the process: Initial burden on examiner: The examiner must provide a rationale for using official notice, explaining why the…
Read MoreWhat is the process for preparing an Office action in inter partes reexamination?
The process for preparing an Office action in inter partes reexamination involves several steps and considerations. According to MPEP 2671.01, the process includes: Notification of the examiner upon receipt of a patent owner response (and third party requester comments, if applicable). Preparation for and setting up of a panel review conference (as per MPEP §…
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