Is an examiner’s decision adverse to a protestor final?
Yes, an examiner’s decision adverse to a protestor is final. MPEP ยง 1906 explicitly states that “a decision by the examiner adverse to a protestor is final.” This means that once an examiner has made a decision that goes against the protestor’s arguments, there are no further avenues for the protestor to challenge that decision…
Read MoreWhat is the burden on the examiner regarding the written description requirement?
The examiner has the initial burden of presenting evidence why a person skilled in the art would not recognize in an applicant’s disclosure a description of the invention defined by the claims. This is known as establishing a prima facie case. According to MPEP 2163.04, “The examiner has the initial burden of presenting by a…
Read MoreWhat is the examiner’s burden of proof for means-plus-function limitations?
According to MPEP 2182, when applying prior art to a means-plus-function limitation, the examiner has specific burdens of proof: The examiner must show that the prior art element performs the identical function specified in the claim. If the prior art only teaches identity of function, the examiner carries the initial burden of proof for showing…
Read MoreDoes an examiner need TC Director approval to withdraw a tentative abstract idea rejection?
No, an examiner does not need TC Director approval to withdraw a tentative abstract idea rejection. The MPEP clarifies: For applications in which an abstract idea has been identified using the tentative abstract idea procedure, an interview with the TC Director that provided approval is not necessary because the examiner retains the authority to withdraw…
Read MoreWhat actions can an examiner take if the specification doesn’t provide support for claim terms?
If the specification doesn’t provide adequate support or antecedent basis for claim terms, an examiner can take several actions. According to MPEP 2173.03: “If the specification does not provide the needed support or antecedent basis for the claim terms, the specification should be objected to under 37 CFR 1.75(d)(1).” The examiner’s actions may include: Objecting…
Read MoreCan an examiner continue to examine a patent application involved in a derivation proceeding?
No, once a patent application becomes involved in a derivation proceeding, the examiner cannot continue regular examination. According to MPEP 2313: “The examiner may not act on an involved patent or application except as the Board may authorize.” This means that all examination activities are suspended unless the Patent Trial and Appeal Board (PTAB) specifically…
Read MoreWhat actions can an examiner take if claims don’t meet the requirements of 35 U.S.C. 112(b)?
If an examiner determines that claims do not meet the requirements of 35 U.S.C. 112(b), they can take specific actions as outlined in MPEP 2171: “If the claims do not particularly point out and distinctly claim that which the inventor or a joint inventor regards as his or her invention, the appropriate action by the…
Read MoreWhat should an examiner do when they find allowable subject matter in a derivation proceeding?
When an examiner finds allowable subject matter in an application involved in a derivation proceeding, they should follow specific guidelines as outlined in MPEP 2311: “When the examiner has determined that either the petitioner’s or the respondent’s application (where applicable) has allowable subject matter with respect to any claim, the examiner should refrain from taking…
Read MoreWhat guidelines apply to the examination of patent applications containing nucleotide sequences?
The examination of patent applications containing nucleotide sequences is subject to specific guidelines. According to MPEP 2434: “All pending applications are subject to Examination of Patent Applications Containing Nucleotide Sequences, 1316 OG 123 (March 27, 2007).” This guideline provides specific instructions for examiners when dealing with applications that include nucleotide sequences. It’s important to note…
Read MoreWhat is the Ex parte Whitelaw doctrine in patent examination?
The Ex parte Whitelaw doctrine is a specific ground for rejecting patent claims that are substantially duplicative. As explained in MPEP 2173.05(n): “Also, it is possible to reject one claim over an allowed claim if they differ only by subject matter old in the art. This ground of rejection is set forth in Ex parte…
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