How do examiners determine what invention is sought to be patented?
Examiners determine what invention is sought to be patented through a comprehensive review of the patent application. The MPEP outlines the following steps: Review the complete specification, including: The detailed description of the invention Any specific embodiments disclosed The claims Any specific, substantial, and credible utilities asserted for the invention Identify and understand the utility…
Read MoreHow does an examiner determine the scope of an interference search?
An examiner determines the scope of an interference search by considering all subject matter encompassed by the claims, regardless of application or patent dates. The MPEP 2304.01(a) states: “The search should be directed to all subject matter encompassed by the claims, whether or not the claims are limited by an application or patent date.” This…
Read MoreHow do examiners determine if claim language is indefinite?
How do examiners determine if claim language is indefinite? Examiners assess claim language for indefiniteness based on the guidance provided in MPEP 2173.01. The key principle is stated as follows: “A claim is indefinite when it contains words or phrases whose meaning is unclear.“ To determine if claim language is indefinite, examiners consider: Whether the…
Read MoreHow is compliance with the best mode requirement determined?
Determining compliance with the best mode requirement involves a two-prong inquiry, as outlined in MPEP 2165: Subjective Inquiry: Determine if the inventor possessed a best mode for practicing the invention at the time of filing. This focuses on the inventor’s state of mind. Objective Inquiry: If a best mode existed, determine if the written description…
Read MoreHow is the adequacy of written description determined in patent applications?
The adequacy of written description in patent applications is determined on a case-by-case basis and is a question of fact. The MPEP 2163.04 states: “The inquiry into whether the description requirement is met must be determined on a case-by-case basis and is a question of fact. In re Wertheim, 541 F.2d 257, 262, 191 USPQ…
Read MoreHow does the ‘design choice’ rationale apply in obviousness rejections?
How does the ‘design choice’ rationale apply in obviousness rejections? The ‘design choice’ rationale is one of the exemplary rationales used to support a conclusion of obviousness in patent examination. According to MPEP 2143, this rationale can be applied when: “The claimed structure and the prior art structure are identical or substantially identical, or are…
Read MoreHow does a derivation proceeding affect the examination of patent applications?
A derivation proceeding can significantly affect the examination of patent applications in several ways. As outlined in MPEP 2315, after a derivation proceeding is decided: Jurisdiction returns to the examiner. The examiner must consider any recommendations for further action. Prosecution may need to be reopened to consider recommendations or enter recommended rejections. The examiner must…
Read MoreWhat happens after a derivation proceeding is decided?
After a derivation proceeding is decided, jurisdiction over the application returns to the examiner. The examiner must consider any recommendations for further action and may need to reopen prosecution. As stated in MPEP 2315: “If there is a recommendation for further action in the application, the examiner must reopen prosecution to consider the recommendation. The…
Read MoreCan a prior art reference that criticizes an invention still be used against it?
Yes, a prior art reference that criticizes an invention can still be used against it. MPEP 2123 addresses this issue: “A known or obvious composition does not become patentable simply because it has been described as somewhat inferior to some other product for the same use.” This principle is illustrated by the case of In…
Read MoreWhat is the criteria for making a determination in a supplemental examination request?
The criteria for making a determination on a supplemental examination request is whether any of the items of information submitted raise a substantial new question of patentability (SNQ) affecting at least one claim of the patent. This is stated in 35 U.S.C. 257(a). The MPEP states: The SNQ standard in supplemental examination proceedings is identical…
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