What are the key components of an Office action cover sheet in inter partes reexamination?
In inter partes reexamination, the Office action cover sheet plays a crucial role in organizing and presenting information. According to MPEP 2671.01, the key components of an Office action cover sheet are: Use of Form PTOL-2064 as the cover sheet Date of the communication(s) to which the Office action is responsive Response period given to…
Read MoreWhat is the test for obviousness under pre-AIA 35 U.S.C. 103(a)?
The test for obviousness under pre-AIA 35 U.S.C. 103(a) is outlined in form paragraph 7.23.fti. This paragraph summarizes the factual inquiries established by the Supreme Court in Graham v. John Deere Co.: The factual inquiries for establishing a background for determining obviousness under pre-AIA 35 U.S.C. 103(a) are summarized as follows: Determining the scope and…
Read MoreWhat is the test for obviousness in patent law?
The test for obviousness is based on what the combined teachings of prior art references would have suggested to a person of ordinary skill in the art. According to MPEP 2143.01, “Obviousness can be established by combining or modifying the teachings of the prior art to produce the claimed invention where there is some teaching,…
Read MoreWhat are the rationales supporting obviousness conclusions after KSR?
Following KSR, the MPEP outlines several rationales that may support a conclusion of obviousness: Combining prior art elements according to known methods to yield predictable results Simple substitution of one known element for another to obtain predictable results Use of known technique to improve similar devices (methods, or products) in the same way Applying a…
Read MoreWhat is the framework for determining obviousness under 35 U.S.C. 103?
The framework for determining obviousness under 35 U.S.C. 103 is based on the Graham v. John Deere Co. case. The Supreme Court in KSR reaffirmed this framework, which includes the following factual inquiries: The scope and content of the prior art The differences between the claimed invention and the prior art The level of ordinary…
Read MoreWhat are the key elements of the ‘obvious to try’ rationale in patent obviousness?
What are the key elements of the ‘obvious to try’ rationale in patent obviousness? The ‘obvious to try’ rationale is one of the exemplary rationales used to support a conclusion of obviousness in patent examination. According to MPEP 2143, the key elements of this rationale are: A finding that there had been a finite number…
Read MoreWhat is the objective inquiry in best mode assessment?
The objective inquiry is the second component of the best mode analysis, as outlined in MPEP 2165.03. This inquiry is only conducted if the subjective inquiry indicates that the inventor knew of a better mode at the time of filing. The objective inquiry involves: “Compare what was known in (A) with what was disclosed –…
Read MoreWhat is a Notice of Defective Paper in Inter Partes Reexamination?
A Notice of Defective Paper is issued when a submission in an inter partes reexamination is considered defective or informal. This notice is typically provided using form PTOL-2069, which outlines the specific defects present in the submission. According to the MPEP 2666.50, “Where a submission made is defective (informal), form PTOL-2069 is used to provide…
Read MoreWhat is a Notice of Intent to Issue Ex Parte Reexamination Certificate (NIRC)?
A Notice of Intent to Issue Ex Parte Reexamination Certificate (NIRC) is a document prepared by the examiner upon conclusion of an ex parte reexamination proceeding. The NIRC informs the patent owner and any third party requester that the reexamination prosecution has been terminated. According to MPEP 2287, “Upon conclusion of the ex parte reexamination…
Read MoreCan nonpreferred embodiments in a patent be used as prior art?
Yes, nonpreferred embodiments in a patent can be used as prior art. According to MPEP 2123: “A reference may be relied upon for all that it would have reasonably suggested to one having ordinary skill in the art, including nonpreferred embodiments.” This means that even if a patent describes certain embodiments as less desirable, they…
Read More