How can an applicant challenge an examiner’s use of official notice?
How can an applicant challenge an examiner’s use of official notice? An applicant can challenge an examiner’s use of official notice by following these steps: Traverse the official notice: The applicant should specifically traverse the use of official notice in their response to the Office action. Request evidence: As stated in MPEP 2144.03(C): “To adequately…
Read MoreWhat is the role of the Central Reexamination Unit (CRU) in a Reexamination of a Reexamination?
The Central Reexamination Unit (CRU) plays a crucial role in processing a Reexamination of a Reexamination. According to MPEP 2295, “When the file for the new reexamination proceeding (reexamination of a reexamination) is first received by the Central Reexamination Unit (CRU), the CRU technical support staff will print out a copy of the issued reexamination…
Read MoreWhat is the role of the Central Reexamination Unit (CRU) in ex parte reexamination proceedings?
The Central Reexamination Unit (CRU) plays a crucial role in ex parte reexamination proceedings. According to MPEP 2254: “The Central Reexamination Unit (CRU) is responsible for the examination and related prosecution in all ex parte reexamination proceedings.“ This means that the CRU handles the examination process, including reviewing prior art, assessing patentability, and conducting the…
Read MoreWhat is the role of the Central Reexamination Unit (CRU) in processing BPAI decisions?
What is the role of the Central Reexamination Unit (CRU) in processing BPAI decisions? The Central Reexamination Unit (CRU) plays a crucial role in processing decisions from the Board of Patent Appeals and Interferences (BPAI) in reexamination proceedings: Receives the BPAI decision forwarded after scanning into the Image File Wrapper (IFW). Processes the decision for…
Read MoreCan canceled figures from a foreign patent application be used as prior art?
Yes, canceled figures from a foreign patent application can be used as prior art under certain circumstances. The MPEP provides an important case example: “Figures that had been canceled from a Canadian patent application before issuance of the patent were available as prior art under pre-AIA 35 U.S.C. 102(b) as of the date the application…
Read MoreCan a patent owner appeal an Action Closing Prosecution (ACP)?
No, a patent owner cannot appeal an Action Closing Prosecution (ACP) in an inter partes reexamination. The MPEP 2671.02 clearly states: “Although an Action Closing Prosecution (ACP) has many attributes similar to a ‘final rejection’ made in an ex parte reexamination proceeding or in a non-provisional application, it is not a final action, and, as…
Read MoreWhat is the burden of proof in product-by-process claim rejections?
In product-by-process claim rejections, the burden of proof is initially on the patent examiner, but it’s lower than for conventional product claims. According to MPEP 2113: “The Patent Office bears a lesser burden of proof in making out a case of prima facie obviousness for product-by-process claims because of their peculiar nature” than when a…
Read MoreWhat is the burden of establishing disqualification under pre-AIA 35 U.S.C. 103(c)?
The burden of establishing that subject matter is disqualified as prior art under pre-AIA 35 U.S.C. 103(c) lies with the applicant. The MPEP states: “The burden of establishing that subject matter is disqualified as prior art is placed on applicant once the examiner has established a prima facie case of obviousness based on the subject…
Read MoreHow does the “burden of proof” work in establishing prima facie obviousness?
In establishing prima facie obviousness, the burden of proof initially lies with the patent examiner. The MPEP 2142 states: “The examiner bears the initial burden of factually supporting any prima facie conclusion of obviousness.” This means that: The examiner must provide a factual basis for the rejection. The reasoning must be clearly articulated. The burden…
Read MoreHow does the burden of proof shift in equivalence determinations?
The burden of proof in equivalence determinations shifts between the examiner and the applicant. The process typically follows these steps: The examiner establishes a prima facie case of equivalence. The burden then shifts to the applicant to show non-equivalence. If the applicant successfully demonstrates non-equivalence, the examiner must consider obviousness. As stated in MPEP 2183:…
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