What should examiners do if an applicant argues that an additional element is not well-understood, routine, conventional activity?
When an applicant argues that an additional element is not well-understood, routine, conventional activity, examiners should take the following steps: Reevaluate whether it is readily apparent that the additional element is well-understood, routine, conventional activity in the relevant field. If it is not readily apparent, provide additional evidence to support the examiner’s position, as outlined…
Read MoreCan an examiner require consolidation of interfering claims?
Yes, an examiner can require consolidation of interfering claims. The MPEP 2304.01(d) states: “The examiner may require consolidation of such claims into a single application that provides support for the patentably indistinct claims. See 35 U.S.C. 132(a).” This consolidation is typically done to streamline the examination process and address potential interferences more efficiently. However, it’s…
Read MoreCan an examiner reject claims based on a non-enabling prior art reference?
Yes, an examiner can reject claims based on a prior art reference without first determining if the reference is enabling. This practice was affirmed in the case of In re Antor Media Corp., as cited in MPEP 2121: “[D]uring patent prosecution, an examiner is entitled to reject claims as anticipated by a prior art publication…
Read MoreCan an examiner reject claims authorized by the PTAB during an interference?
Yes, an examiner can reject claims that were authorized by the Patent Trial and Appeal Board (PTAB) during an interference, even after they have been entered into the application. The MPEP 2308.02 clearly states: “The decision authorizing entry of the added or amended claim does not prevent the examiner from rejecting the claim during further…
Read MoreCan examiners object to reproductions in published international registrations?
Generally, examiners should not object to reproductions that were published as part of an international registration on formal grounds. The MPEP 2920.04(b) states: “Reproductions published as part of the international registration have been reviewed by the International Bureau for compliance with the formal requirements of Hague Agreement Rule 9 and Part Four of the Administrative…
Read MoreHow does an examiner handle withdrawals of rejections in an Action Closing Prosecution (ACP)?
When an examiner withdraws a rejection in an Action Closing Prosecution (ACP) during inter partes reexamination, they must handle it carefully. According to MPEP 2671.02: For rejections initiated by the examiner: “Where the examiner withdraws a ground of rejection originally initiated by the examiner, such withdrawal should be clearly stated in the ACP as a…
Read MoreWhat principles should guide an examiner in requiring a claim for interference?
According to MPEP 2304.04(b), examiners should follow several principles when considering whether to require an applicant to add a claim for interference: An interference should generally not be suggested if examination of the application is not otherwise completed. The required claim must not encompass prior art or otherwise be barred. The application must provide adequate…
Read MoreWhat guidelines does the examiner follow regarding the patent owner’s statement in reexamination?
During reexamination proceedings, the examiner must consider the patent owner’s statement. MPEP 2253 provides specific guidance on this matter: “With respect to consideration of the patent owner’s statement, the examiner will be guided by 37 CFR 1.530(c).“ This means that the examiner will follow the rules outlined in 37 CFR 1.530(c) when evaluating the patent…
Read MoreHow does an examiner determine if an element is well-understood, routine, conventional activity?
According to MPEP 2106.05(d), an examiner should determine that an element is well-understood, routine, conventional activity only when they can readily conclude, based on their expertise in the art, that the element is widely prevalent or in common use in the relevant industry. The MPEP states: “As such, an examiner should determine that an element…
Read MoreHow does an examiner determine if a pre-AIA 35 U.S.C. 102(d) rejection is appropriate?
An examiner determines if a pre-AIA 35 U.S.C. 102(d) rejection is appropriate by discovering a foreign patent or inventor’s certificate that meets the statutory requirements. The MPEP states: “If such a foreign patent or inventor’s certificate is discovered by the examiner, the rejection is made under pre-AIA 35 U.S.C. 102(d) on the ground of statutory…
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