How are inconsistencies in reproductions handled in international design applications?
Inconsistencies in reproductions are addressed based on their severity. According to MPEP 2920.04(b): 1. Minor inconsistencies: “When inconsistencies are found among the views, the examiner should object to the reproductions and request that the views be made consistent.” 2. Major inconsistencies: “When the inconsistencies are of such magnitude that the overall appearance of the design…
Read MoreHow should conflicting teachings in prior art references be handled?
When the teachings of two or more prior art references conflict, the examiner must weigh the suggestive power of each reference. According to MPEP 2143.01, “Where the teachings of two or more prior art references conflict, the examiner must weigh the power of each reference to suggest solutions to one of ordinary skill in the…
Read MoreHow does the examiner handle amendments submitted after final rejection in reexamination?
When handling amendments submitted after final rejection in reexamination, the examiner follows specific guidelines: The first proposed amendment after final action in a reexamination proceeding will be given sufficient consideration to determine whether it places all the claims in condition where they are patentable and/or whether the issues on appeal are reduced or simplified. If…
Read MoreHow does an examiner handle allowable claims in an interference?
When an examiner encounters allowable claims in an interference, they follow a specific procedure. According to MPEP 2303: “If the claims in an application are otherwise in condition for allowance, but for the interference, the examiner should draft an Office action indicating all the reasons why the claims are allowable and stating that interference is…
Read MoreHow should an examiner handle affidavits or declarations in an examiner’s answer?
When handling affidavits or declarations in an examiner’s answer for an inter partes reexamination proceeding, the examiner should follow the guidance provided in MPEP 2677. The key points are: The examiner should report their conclusions on any affidavits, declarations, or exhibits that were admitted to the record. Affidavits or declarations swearing behind a patent should…
Read MoreWhat are the Graham factors in patent obviousness analysis?
What are the Graham factors in patent obviousness analysis? The Graham factors, established by the Supreme Court in Graham v. John Deere Co., are four key considerations used in determining obviousness under 35 U.S.C. 103. These factors are: The scope and content of the prior art The differences between the prior art and the claimed…
Read MoreWhen should a patent examiner use the full eligibility analysis instead of the streamlined approach?
A patent examiner should use the full eligibility analysis (Alice/Mayo test) instead of the streamlined approach when there is doubt about whether the applicant is seeking coverage for a judicial exception. According to MPEP 2106.06: “However, if there is doubt as to whether the applicant is effectively seeking coverage for a judicial exception itself, the…
Read MoreHow common are best mode rejections in patent examination?
Best mode rejections are extremely rare in patent examination, particularly in ex parte prosecution. The MPEP 2165.03 explicitly states: “It is extremely rare that a best mode rejection properly would be made in ex parte prosecution. The information that is necessary to form the basis for a rejection based on the failure to set forth…
Read MoreWhat happens if fraud is discovered during a reissue application?
What happens if fraud is discovered during a reissue application? If fraud is discovered during the examination of a reissue application, the examiner must take specific actions. According to MPEP 2012: “Where the examiner discovers or is made aware of fraud during the examination of a reissue application, the examiner should consult with the Technology…
Read MoreWhat forms are used to list prior art in patent reexamination proceedings?
In patent reexamination proceedings, specific forms are used to list prior art. MPEP 2657 mentions the following forms: Form PTO-892 Form PTO/SB/08A Form PTO/SB/08B Form PTO/SB/42 Forms with equivalent formats to the above The MPEP states: “The examiner must list on a form PTO-892, if not already listed on a form PTO/SB/08A or 08B, or…
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