Do I need to renumber figures after cancelling non-elected designs in an international design application?
No, you do not need to renumber figures after cancelling non-elected designs in an international design application. In fact, it is recommended that you maintain the original numbering to ensure consistency with the published International Registration. As stated in MPEP 2920.05(b): “Renumbering of the figures following cancellation of non-elected embodiments is not required.“ The MPEP…
Read MoreWhat is the “field of endeavor test” for determining analogous art?
The “field of endeavor test” is one of the criteria used to determine if a reference qualifies as analogous art. According to MPEP 2141.01(a): “Under the field of endeavor test, if the reference is from the same field of endeavor as the claimed invention, irrespective of the problem addressed, then the reference is analogous art.”…
Read MoreWhat is the significance of “factual findings” in patent obviousness determinations?
Factual findings play a crucial role in patent obviousness determinations. The MPEP 2142 emphasizes their importance: “The key to supporting any rejection under 35 U.S.C. 103 is the clear articulation of the reason(s) why the claimed invention would have been obvious. … [This] can often be supported by finding explicit or implicit teachings within the…
Read MoreWhat types of facts can be supported by official notice in patent examination?
What types of facts can be supported by official notice in patent examination? Official notice in patent examination is generally limited to certain types of facts. According to MPEP 2144.03, the following types of facts can typically be supported by official notice: Basic knowledge within the art: Facts that are common knowledge in the art…
Read MoreWhat factors support a conclusion that a prior art element is an equivalent?
According to MPEP 2183, there are three main factors that support a conclusion that a prior art element is an equivalent: Identical function and results: “The prior art element performs the identical function specified in the claim in substantially the same way, and produces substantially the same results as the corresponding element disclosed in the…
Read MoreWhat factors do courts consider in determining if an invention was offered for sale primarily for experimentation?
Courts consider several factors to determine if a claimed invention was offered for sale primarily for experimentation. According to MPEP 2133.03(e)(4), these factors include: “(1) the necessity for public testing, (2) the amount of control over the experiment retained by the inventor, (3) the nature of the invention, (4) the length of the test period,…
Read MoreWhat factors do examiners consider when evaluating insignificant extra-solution activity?
According to MPEP 2106.05(g), examiners consider several factors when determining whether an additional element is insignificant extra-solution activity: Whether the extra-solution limitation is well known: This overlaps with the well-understood, routine, conventional consideration and should not be considered in the Step 2A Prong Two analysis. Whether the limitation is significant: Examiners assess if it imposes…
Read MoreWhat factors are considered when deciding equivalence in means-plus-function claims?
When determining equivalence in means-plus-function claims, examiners consider several factors. According to MPEP 2184, the primary considerations are: Identical function: “Unless an element performs the identical function specified in the claim, it cannot be an equivalent for the purposes of 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph.” Indicia of equivalence: While there’s…
Read MoreWhat is the difference between explicit and implicit disclosure in patent law?
In patent law, there’s an important distinction between explicit and implicit disclosure: Explicit disclosure refers to information directly stated or clearly expressed in a reference. It’s the straightforward, unambiguous content of the prior art. Implicit disclosure refers to information that, while not explicitly stated, can be reasonably inferred from the reference by a person skilled…
Read MoreHow should an examiner explain an enablement rejection?
When making an enablement rejection, the examiner should provide a clear explanation focusing on the factors, reasons, and evidence that lead to the conclusion of non-enablement. The MPEP 2164.04 states: “The explanation of the rejection should focus on those factors, reasons, and evidence that lead the examiner to conclude e.g., that the specification fails to…
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