What is the role of “interchangeability” in determining equivalence?
Interchangeability plays a crucial role in determining equivalence in patent examination. It is one of the factors that support a conclusion that a prior art element is an equivalent to a claimed limitation. Specifically: MPEP 2183 states: “A person of ordinary skill in the art would have recognized the interchangeability of the element shown in…
Read MoreHow are Office actions mailed in inter partes reexamination proceedings?
In inter partes reexamination proceedings, Office actions are mailed after completion, processing, and approval by the Central Reexamination Unit (CRU) Supervisory Patent Reexamination Specialist (SPRS) or Technology Center (TC) Quality Assurance Specialist (QAS). The MPEP states: After an Office action is completed and processed and has been approved by the Central Reexamination Unit (CRU) Supervisory…
Read MoreWhat is the difference between correcting inventorship in inter partes and ex parte reexamination?
There is no difference in the process of correcting inventorship between inter partes and ex parte reexamination proceedings. According to MPEP § 2666.03: “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 is effected.” This means that regardless of…
Read MoreWhat is the significance of the “intended purpose” of prior art in obviousness determinations?
The proposed modification of prior art must not render it unsatisfactory for its intended purpose when determining obviousness. According to MPEP 2143.01, “If a proposed modification would render the prior art invention being modified unsatisfactory for its intended purpose, then there is no suggestion or motivation to make the proposed modification.” This principle, established in…
Read MoreCan inoperative prior art be used in patent rejections?
Yes, inoperative prior art can be used in patent rejections. The MPEP 2121.01 clearly states: “Even if a reference discloses an inoperative device, it is prior art for all that it teaches.” This principle has several important implications: An inoperative device can still provide valuable teachings about its components or methods. The overall inoperability of…
Read MoreCan inoperative prior art be used in 35 U.S.C. 103 rejections?
Yes, inoperative prior art can be used in 35 U.S.C. 103 rejections for obviousness. The MPEP Section 2121.01 clearly states: “Even if a reference discloses an inoperative device, it is prior art for all that it teaches.” This principle is supported by case law, as the MPEP further explains: “Therefore, ‘a non-enabling reference may qualify…
Read MoreWhat is the initial processing procedure for ex parte reexamination requests?
The initial processing of ex parte reexamination requests filed under 35 U.S.C. 302 involves specific clerical procedures. According to MPEP 2226: “The opening of all mail marked “Mail Stop Ex Parte Reexam,” and all initial clerical processing of requests for reexamination, will be performed in the Office of Patent Application Processing (OPAP).” This means that…
Read MoreWho bears the initial burden of proof in biological material deposit cases?
In biological material deposit cases, the initial burden of proof lies with the United States Patent and Trademark Office (USPTO). According to MPEP 2411: “The burden is initially on the Office to establish that access to a biological material is necessary for the satisfaction of the statutory requirements for patentability under 35 U.S.C. 112.” This…
Read MoreHow are inherent properties considered in patent examination?
Inherent properties disclosed in the specification are considered part of the “as a whole” inquiry in patent examination. The MPEP 2141.02 clarifies: “In delineating the invention as a whole, we look not only to the subject matter which is literally recited in the claim in question… but also to those properties of the subject matter…
Read MoreWhat type of information can an examiner require under 37 CFR 1.105?
Under 37 CFR 1.105, an examiner can require information that is reasonably necessary to examine or treat a matter in an application. This includes: Information relevant to examination either procedurally or substantively Information beyond what is defined as material to patentability under 37 CFR 1.56 Information that may not be directly useful to support a…
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