What is the exception to the rule that a reference must be prior art?
The exception to the rule that a reference must be prior art allows for the use of later publications to show factual evidence in certain circumstances. As stated in MPEP 2124: “In certain circumstances, references cited to show a universal fact need not be available as prior art before applicant’s filing date.” These facts can…
Read MoreHow are product-by-process claims examined for patentability?
How are product-by-process claims examined for patentability? When examining product-by-process claims for patentability, patent examiners focus on the product itself rather than the process of making it. According to MPEP 2173.05(p): “The patentability of a product does not depend on its method of production. If the product in the product-by-process claim is the same as…
Read MoreCan an examiner rely solely on common knowledge for a rejection?
No, an examiner cannot rely solely on common knowledge as the principal evidence for a rejection without supporting evidence in the record. The MPEP 2144.03 is clear on this point: “It is never appropriate to rely solely on ‘common knowledge’ in the art without evidentiary support in the record, as the principal evidence upon which…
Read MoreHow should examiners interpret means-plus-function limitations?
According to MPEP 2182, examiners should interpret means-plus-function limitations in a manner consistent with the specification disclosure. The MPEP provides guidance on this interpretation: Consult the specification: “If the specification defines what is meant by the limitation for the purposes of the claimed invention, the examiner should interpret the limitation as having that meaning.” Exercise…
Read MoreHow does the examiner’s explanation support a prima facie case of equivalence?
The examiner’s explanation is fundamental in supporting a prima facie case of equivalence. MPEP 2183 emphasizes this: “The examiner must provide an explanation to support an equivalence rejection. […] The explanation should be sufficient to establish a prima facie case of obviousness.” The examiner’s explanation supports the prima facie case by: Clearly identifying the claim…
Read MoreHow can examiners determine if a claim limitation is more than “mere instructions to apply an exception”?
Examiners should carefully consider each claim on its own merits and evaluate all relevant considerations to determine if an element or combination of elements is more than mere instructions to apply an exception. The MPEP 2106.05(f) provides guidance on this evaluation: “[E]xaminers should carefully consider each claim on its own merits, as well as evaluate…
Read MoreWhat is the examiner’s burden under the enablement requirement?
The examiner has the initial burden to establish a reasonable basis to question the enablement provided for the claimed invention. As stated in MPEP 2164.04: “In order to make a rejection, the examiner has the initial burden to establish a reasonable basis to question the enablement provided for the claimed invention.” (In re Wright, 999…
Read MoreHow do examiners assess whether functional claim language is definite?
Examiners assess the definiteness of functional claim language by considering several factors, as outlined in MPEP 2173.05(g): Whether the specification provides a clear definition of the limitations If the claim language provides a clear-cut indication of the scope Whether one skilled in the art would know from the claim terms what structure or steps are…
Read MoreWhat happens if an examiner’s answer is not approved in a reexamination proceeding?
What happens if an examiner’s answer is not approved in a reexamination proceeding? If an examiner’s answer is not approved in a reexamination proceeding, the following steps occur: The examiner’s answer is returned to the Central Reexamination Unit (CRU) or Technology Center (TC) for correction. The original statement of the basis for the rejection is…
Read MoreWhat is an examiner’s answer in an inter partes reexamination proceeding?
An examiner’s answer is a written response prepared by the primary examiner in an inter partes reexamination proceeding. It addresses the arguments presented in the appellant’s and/or requester’s briefs. According to MPEP 2677, the examiner’s answer should include: An explanation of the invention claimed and references relied upon Grounds of rejection Reasons for patentability Responses…
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