What is the key consideration when analyzing obviousness of species claims?
The key consideration is whether the claimed species or subgenus would have been obvious to one of ordinary skill in the pertinent art at the relevant time. As stated in MPEP 2144.08: “The patentability of a claim to a specific compound, species, or subgenus embraced by a prior art genus should be analyzed no differently…
Read MoreWhat are the key components of an examiner’s answer in inter partes reexamination?
According to MPEP 2677, an examiner’s answer in an inter partes reexamination proceeding must include several key components in a specific order. These components are: Real Party in Interest Related Appeals and Interferences Status of Claims Status of Amendments Summary of Claimed Subject Matter Grounds of Rejection to be Reviewed on Appeal Findings of Patentability…
Read MoreHow does a joint research agreement affect patent examination under pre-AIA 35 U.S.C. 103(c)?
A joint research agreement can have significant effects on patent examination under pre-AIA 35 U.S.C. 103(c). The MPEP provides an example: “Employee B’s invention claimed in his application was made after the joint research agreement was entered into, and it was made as a result of activities undertaken within the scope of the joint agreement.…
Read MoreHow is inventorship corrected in an inter partes reexamination proceeding?
Correction of inventorship in an inter partes reexamination proceeding follows the same process as in an ex parte reexamination proceeding. The Manual of Patent Examining Procedure (MPEP) § 2666.03 states: “Correction of inventorship in an inter partes reexamination proceeding is effected in the same manner that correction of inventorship in an ex parte reexamination proceeding…
Read MoreWhat should I consider regarding inventorship when responding to a restriction requirement in an international design application?
When responding to a restriction requirement in an international design application, it’s important to consider the potential need to correct inventorship. This is particularly relevant if you’re cancelling non-elected designs, as it may affect who qualifies as an inventor for the remaining design(s). According to MPEP 2920.05(b): “Applicants should consider the need to correct inventorship…
Read MoreWhat should inventors know about the USPTO’s approach to duty of disclosure issues?
Inventors should be aware of the following key points regarding the USPTO’s approach to duty of disclosure issues: The USPTO does not investigate or reject applications based on duty of disclosure violations during examination. Examiners will not comment on duty of disclosure issues brought to their attention, except to note that such issues are not…
Read MoreWhat is meant by considering the invention “as a whole”?
Considering the invention “as a whole” means evaluating the entire claimed invention, rather than focusing on individual elements or differences. The MPEP 2141.02 emphasizes this concept: “Distilling an invention down to the ‘gist’ or ‘thrust’ of an invention disregards the requirement of analyzing the subject matter ‘as a whole.’” This approach prevents oversimplification of the…
Read MoreWhat is the significance of “intervening references” in CIP application rejections?
“Intervening references” are particularly important in the examination of Continuation-In-Part (CIP) applications. The MPEP 2133.01 states: “[T]he examiner must consider if any reference that would qualify as prior art under pre-AIA 35 U.S.C. 102(e) as of the filing date of the CIP application would also qualify as prior art under pre-AIA 35 U.S.C. 102(b) as…
Read MoreHow are computer-implemented functional claim limitations interpreted in patent examination?
Computer-implemented functional claim limitations are interpreted broadly in patent examination. According to MPEP 2114: “Functional claim language that is not limited to a specific structure covers all devices that are capable of performing the recited function.” This means that if a prior art device can inherently perform the claimed function, it may be grounds for…
Read MoreWhat is the role of an Interference Practice Specialist (IPS) in patent examination?
An Interference Practice Specialist (IPS) plays a crucial role in guiding examiners through the complex process of interference proceedings. The MPEP 2301 emphasizes the importance of consulting with an IPS: “Given the infrequency, cost, and complexity of interferences and derivation proceedings, it is important for the examiner to consult immediately with an Interference Practice Specialist…
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