What happens if a claim lacks written description support?
If a claim lacks written description support, it can lead to significant consequences in the patent examination process. The MPEP 2163.01 states: “If the examiner concludes that the claimed subject matter is not supported [described] in an application as filed, this would result in a rejection of the claim on the ground of a lack…
Read MoreWhat are the consequences of not completing an ex parte reexamination request within the specified time?
If an incomplete ex parte reexamination request is not completed within the specified time, the consequences can be severe: The request may be treated as a non-filing. The filing fee may be refunded. The requester may lose their filing date. MPEP 2227 states: “If the request is not completed within that time, the request will…
Read MoreWhat are the concluding paragraphs in an inter partes reexamination Office action?
The concluding paragraphs in an inter partes reexamination Office action serve important purposes related to the “special dispatch” requirement and future prosecution. According to MPEP 2671.01, these paragraphs should include: A caution to the patent owner about making a complete response, as the next action is expected to be an Action Closing Prosecution (ACP). A…
Read MoreHow does the MPEP distinguish between compounds and mixtures in terms of obviousness?
The Manual of Patent Examining Procedure (MPEP) makes an important distinction between compounds and mixtures when considering obviousness. MPEP 2144.02 states: “The known chemical relationship between structurally similar compounds (homologs, analogs, isomers) did not support a finding of prima facie obviousness of claimed zeolite over the prior art because a zeolite is not a compound…
Read MoreWhat are the principles of compact prosecution in relation to enablement rejections?
The principles of compact prosecution are important in the context of enablement rejections. According to MPEP 2164.04: “In accordance with the principles of compact prosecution, if an enablement rejection is appropriate, the first Office action on the merits should present the best case with all the relevant reasons, issues, and evidence so that all such…
Read MoreWhat is the purpose of compact prosecution in patent examination?
Compact prosecution is a principle in patent examination that aims to ensure a prompt yet complete examination of patent applications. According to the MPEP, Under the principles of compact prosecution, each claim should be reviewed for compliance with every statutory requirement for patentability in the initial review of the application, even if one or more…
Read MoreHow does common ownership affect patent examination under pre-AIA 35 U.S.C. 103(c)?
Common ownership plays a crucial role in patent examination under pre-AIA 35 U.S.C. 103(c). The MPEP provides guidance on this: “Applications and patents will be considered to be owned by, or subject to an obligation of assignment to, the same person, at the time the invention was made, if the applicant(s) or patent owner(s) make(s)…
Read MoreHow does commercial success factor into patent examinations?
Commercial success is one of the secondary considerations that can be used to support non-obviousness in patent examinations. However, its applicability is limited to certain types of rejections. According to MPEP 2131.04: “Evidence of secondary considerations, such as unexpected results or commercial success, is irrelevant to 35 U.S.C. 102 rejections and thus cannot overcome a…
Read MoreWhat is the difference between combining and substituting equivalents in patent law?
In patent law, there is a distinction between combining equivalents and substituting equivalents, as outlined in MPEP 2144.06. The key differences are: Combining Equivalents: This involves using two or more components together, each known for the same purpose, to create a new composition or method for that same purpose. The In re Kerkhoven case exemplifies…
Read MoreIs the ability to combine references sufficient to establish obviousness?
The mere fact that references can be combined or modified is not sufficient to establish obviousness. As stated in MPEP 2143.01, “The mere fact that references can be combined or modified does not render the resultant combination obvious unless the results would have been predictable to one of ordinary skill in the art.” This principle…
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