How does combining equivalents affect patent obviousness?
Combining equivalents can affect patent obviousness by making a new composition or method prima facie obvious. According to MPEP 2144.06: “It is prima facie obvious to combine two compositions each of which is taught by the prior art to be useful for the same purpose, in order to form a third composition to be used…
Read MoreHow are claims considered in a Reexamination of a Reexamination?
In a Reexamination of a Reexamination, the claims are considered based on the modifications made by the previous reexamination certificate. MPEP 2295 states: “The reexamination request is to be considered based on the claims in the patent as modified by the previously issued reexamination certificate, and not based on the original claims of the patent.”…
Read MoreWhat is claim sorting in patent interference proceedings?
Claim sorting in patent interference proceedings refers to the process of organizing and consolidating claims from multiple related applications to streamline the examination process and manage potential interferences. The Manual of Patent Examining Procedure (MPEP) Section 2304.01(d) states: “If an applicant has several related applications with interfering claims intermixed with claims that do not interfere,…
Read MoreHow does claim sorting affect patent term adjustment?
Claim sorting can have a significant impact on patent term adjustment (PTA). The MPEP 2304.01(d) indicates: “An applicant may be entitled to a day-for-day patent term adjustment for any time spent in an interference.” By sorting claims and potentially avoiding or streamlining interference proceedings, applicants may minimize delays in patent examination. This can affect the…
Read MoreHow is a claim rejected as anticipated?
To reject a claim as anticipated, the prior art reference must disclose every element of the claimed invention. The MPEP 2131 states: To reject a claim as anticipated by a reference, the disclosure must teach every element required by the claim under its broadest reasonable interpretation. Furthermore, the Federal Circuit has clarified: A claim is…
Read MoreHow does claim interpretation differ between patent examination and court proceedings?
Claim interpretation differs significantly between patent examination and court proceedings. During patent examination, the USPTO applies the broadest reasonable interpretation (BRI) standard, while courts use a different approach for infringement and validity cases. According to MPEP 2111: “Patented claims are not given the broadest reasonable interpretation during court proceedings involving infringement and validity, and can…
Read MoreWhat is the relationship between claim construction and enablement analysis?
Before conducting an enablement analysis, it is crucial for the examiner to construe the claims. The MPEP 2164.04 emphasizes this point: “Before any analysis of enablement can occur, it is necessary for the examiner to construe the claims.“ For terms that are not well-known in the art or could have multiple meanings, the examiner must:…
Read MoreHow should an examiner handle claim charts in a reexamination Office action?
When handling claim charts in a reexamination Office action, examiners should follow these guidelines from MPEP 2262: “Where the request for reexamination includes material such as a claim chart to explain a proposed rejection in order to establish the existence of a substantial new question of patentability, the examiner may bodily incorporate the claim chart…
Read MoreHow are checklists completed in a Reexamination of a Reexamination?
In a Reexamination of a Reexamination, both the examiner and the CRU support staff complete checklists to ensure proper processing. MPEP 2295 states: “The examiner will complete a checklist, Form PTO-1516, and the CRU support staff will complete the reexamination clerk checklist Form PTO-1517.” When completing these checklists, it’s important to remember that “the ‘patent’…
Read MoreHow can an applicant challenge a prior art reference for lack of enablement?
An applicant can challenge a prior art reference for lack of enablement in two main ways, depending on the nature of the reference: For references that appear enabling on their face: The applicant must submit rebuttal evidence of non-enablement. This is typically done through declarations or affidavits demonstrating that a person of ordinary skill in…
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