Can a protestor submit information about potential inequitable conduct in a protest?
Yes, a protestor can submit information about potential inequitable conduct in a protest. MPEP 1901.02 explicitly states: “Information which can be relied on in a protest… includes information indicating that fraud or inequitable conduct is or was involved in the prosecution of a patent or patent application.” This means that if a protestor has knowledge…
Read MoreHow can applicants indicate matter not forming part of the design in international design applications?
In international design applications, applicants have multiple options to indicate matter that is shown in a reproduction but for which protection is not sought. According to MPEP 2920.04(b): “In addition to the use of broken or dotted lines to indicate matter shown in a reproduction for which protection is not sought, Administrative Instruction 403 permits…
Read MoreHow does indexing affect the public accessibility of a document for patent purposes?
Indexing plays a crucial role in determining the public accessibility of a document for patent purposes. MPEP 2128.01 emphasizes the importance of indexing: “A document may be considered publicly accessible if it is indexed or cataloged and available in a library or other public collection.” Proper indexing makes a document discoverable by those interested in…
Read MoreWhat are the issues with using phrases like “for example,” “such as,” or “or the like” in patent claims?
The MPEP addresses the use of phrases like “for example,” “such as,” or “or the like” in patent claims through specific form paragraphs. These phrases can render claims indefinite under 35 U.S.C. 112(b) or pre-AIA 35 U.S.C. 112, second paragraph. 1. For the phrase “for example,” form paragraph 7.34.08 states: Regarding claim [1], the phrase…
Read MoreWhat are some examples of claim language that have been held to be indefinite due to exemplary phrasing?
The MPEP 2173.05(d) provides several examples of claim language that have been held to be indefinite due to exemplary phrasing: “R is halogen, for example, chlorine” “material such as rock wool or asbestos” (Ex parte Hall, 83 USPQ 38 (Bd. App. 1949)) “lighter hydrocarbons, such, for example, as the vapors or gas produced” (Ex parte…
Read MoreWhat happens if an ex parte reexamination request is incomplete?
If an ex parte reexamination request is incomplete, the following occurs: The Office will notify the requester of the defects in the request. The requester is given 30 days or one month (whichever is longer) to complete the request. If the request is not completed within the time limit, it may be treated as a…
Read MoreHow are inappropriate arguments handled in a patent reexamination?
When dealing with inappropriate arguments in a patent reexamination, examiners should follow the guidance provided in MPEP 2262: “If arguments are presented which are inappropriate in reexamination, they should be treated in accordance with 37 CFR 1.552(c).” To handle inappropriate arguments: Identify arguments that are outside the scope of reexamination Refer to 37 CFR 1.552(c)…
Read MoreWhat is the significance of In re Thorpe in product-by-process claim examination?
The case of In re Thorpe plays a crucial role in the examination of product-by-process claims. As stated in MPEP 2113: “[E]ven though product-by-process claims are limited by and defined by the process, determination of patentability is based on the product itself. The patentability of a product does not depend on its method of production.…
Read MoreWhat is the significance of the In re Grose case in patent examination?
The In re Grose case, cited in MPEP 2144.02, is significant in patent examination because it demonstrates the limitations of applying structural obviousness to complex mixtures. The MPEP states: “In re Grose, 592 F.2d 1161, 201 USPQ 57 (CCPA 1979) (Court held that different crystal forms of zeolites would not have been structurally obvious one…
Read MoreHow does the USPTO handle arguments about improper hindsight in obviousness rejections?
Applicants often argue that an examiner’s obviousness rejection is based on improper hindsight reasoning. MPEP 2145 addresses this issue: “Applicants may argue that the examiner’s conclusion of obviousness is based on improper hindsight reasoning. However, ‘[a]ny judgment on obviousness is in a sense necessarily a reconstruction based on hindsight reasoning, but so long as it…
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