How does an examiner treat an entered protest during patent examination?
When a protest has been entered into the record of a patent application, the examiner must consider it during prosecution. According to MPEP 1901.06, the examiner must: Consider each prior art or other document submitted in conformance with 37 CFR 1.291(c) and any discussion of such documents in the protest. Consider any non-prior art issue(s)…
Read MoreHow can examiners search for foreign patents for pre-AIA 35 U.S.C. 102(d) rejections?
Examiners have several methods to search for foreign patents that could be used for pre-AIA 35 U.S.C. 102(d) rejections. The MPEP outlines the following approaches: Electronic database search: “The search for a granted patent can be accomplished on an electronic database either by the examiner or by the staff of the Scientific and Technical Information…
Read MoreWhat is the role of the examiner in evaluating product-by-process claims?
The examiner plays a crucial role in evaluating product-by-process claims. According to MPEP 2113: “The Patent Office bears a lesser burden of proof in making out a case of prima facie obviousness for product-by-process claims because of their peculiar nature” than when a product is claimed in the conventional fashion. The examiner’s responsibilities include: Considering…
Read MoreWhat is the examiner’s role in considering prior art citations in reexamination proceedings?
What is the examiner’s role in considering prior art citations in reexamination proceedings? In reexamination proceedings, the examiner plays a crucial role in evaluating prior art citations. According to MPEP 2253, “The examiner must consider each citation submitted in an ex parte reexamination request or by the patent owner under 37 CFR 1.501 or 37…
Read MoreWhat is the role of the examiner in making a prima facie case of equivalence?
The examiner plays a crucial role in making a prima facie case of equivalence. According to MPEP 2183: “The examiner must provide an explanation to support an equivalence rejection. When a claim limitation is not literally met by a prior art element, the examiner should explain how the prior art element nonetheless meets the claim…
Read MoreWhat is the role of the examiner in ex parte reexamination?
What is the role of the examiner in ex parte reexamination? The examiner plays a crucial role in ex parte reexamination, with responsibilities including: Conducting a thorough search of the prior art relevant to the patent under reexamination. Examining the patent claims in light of the cited prior art and any newly discovered references. Making…
Read MoreWhat is the examiner’s role after a Board decision with a new ground of rejection?
After a Board decision with a new ground of rejection, the examiner’s role is defined in MPEP 2682 under 37 CFR 41.77(d). The key points are: The Board will formally remand the proceeding back to the examiner. The examiner will consider the submissions under 37 CFR 41.77(b)(1) (patent owner’s request to reopen) and 37 CFR…
Read MoreHow should examiners respond to applicant’s arguments regarding well-understood, routine, conventional activity?
When responding to an applicant’s arguments regarding well-understood, routine, conventional activity, examiners should follow these guidelines: If the applicant challenges the examiner’s position that an additional element is well-understood, routine, conventional activity, the examiner should reevaluate whether it is readily apparent that the element is widely prevalent or in common use in the relevant industry.…
Read MoreWhat should an examiner do if an applicant adequately traverses an official notice?
If an applicant adequately traverses an examiner’s assertion of official notice, the examiner must take specific actions in the next Office action. According to MPEP 2144.03: “If applicant adequately traverses the examiner’s assertion of official notice, the examiner must provide documentary evidence in the next Office action if the rejection is to be maintained.” Additionally,…
Read MoreWhat should examiners do if an applicant challenges a well-known, routine, conventional activity assertion?
When an applicant challenges an examiner’s assertion that certain elements are well-known, routine, conventional activities, the examiner must carefully reevaluate their position. The MPEP 2106.07(b) provides specific guidance: “If applicant responds to an examiner’s assertion that something is well-known, routine, conventional activity with a specific argument or evidence that the additional elements in a claim…
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