How does an examiner establish a prima facie case of obviousness?
How does an examiner establish a prima facie case of obviousness? An examiner establishes a prima facie case of obviousness by demonstrating that the claimed invention would have been obvious to a person of ordinary skill in the art. The MPEP provides guidance on this process: To establish a prima facie case of obviousness, three…
Read MoreHow are applications reviewed for possible abandonment?
Applications are typically reviewed for possible abandonment after the maximum permissible period for extension of time under 37 CFR 1.136(a) plus one month has expired. The appropriate examiner carefully scrutinizes the applications to verify their abandoned status. According to MPEP 711.04(a): “Applications are not ordinarily reviewed for possible abandonment until the maximum permissible period for…
Read MoreHow does a 37 CFR 1.130(b) declaration establish the date of prior public disclosure?
How does a 37 CFR 1.130(b) declaration establish the date of prior public disclosure? A 37 CFR 1.130(b) declaration establishes the date of prior public disclosure by providing evidence of the public availability of the disclosed subject matter before the relevant date of the potential prior art. According to MPEP 717.01(b): ‘The evidence necessary to…
Read MoreWhat is a ‘holding based on insufficiency of reply’ in patent examination?
A ‘holding based on insufficiency of reply’ occurs when a patent examiner determines that an applicant’s response to an office action is incomplete or inadequate. This holding can lead to the application being considered abandoned. However, as stated in MPEP 711.03(a): Applicant may deny that the reply was incomplete. While the primary examiner has no…
Read MoreWhat should be highlighted when using interference testimony to antedate a reference?
When using interference testimony to antedate a reference, it’s crucial to identify and emphasize the specific portions of the testimony that establish priority over the reference. As stated in MPEP 715.07(b): The part of the testimony to form the basis of priority over the reference should be pointed out. This means that the applicant or…
Read MoreHow should an examiner handle information about areas of search submitted by an applicant?
When an applicant submits information about areas of search, the examiner must consider this information and clearly indicate which areas were used and which were not used in performing the search. The MPEP provides specific guidance: “Information constituting identification of areas of search must be considered and the examiner must indicate which areas were used…
Read MoreWhat happens if required information under 37 CFR 1.105 is not known or readily available?
What happens if required information under 37 CFR 1.105 is not known or readily available? If the information required under 37 CFR 1.105 is not known to any individual designated in 37 CFR 1.56(c) and is not readily available to the applicant, a petition can be filed. The MPEP 704.14(c) states: If information required to…
Read MoreHow should examiners handle rejections based on prior art?
How should examiners handle rejections based on prior art? Examiners must carefully consider prior art when making rejections. According to MPEP 706: ‘The goal of examination is to clearly articulate any rejection early in the prosecution process so that the applicant has the opportunity to provide evidence of patentability and otherwise reply completely at the…
Read MoreHow should an examiner handle persuasive arguments from an applicant?
When an examiner finds an applicant’s arguments persuasive, they should take appropriate action. According to MPEP 707.07(f): If applicant’s arguments are persuasive and upon reconsideration of the rejection, the examiner determines that the previous rejection should be withdrawn, the examiner must provide in the next Office communication the reasons why the previous rejection is withdrawn…
Read MoreHow should examiners handle perpetual motion applications?
According to MPEP 707.07(g), patent applications directed to perpetual motion require special handling. The MPEP states: “Where disclosure is directed to perpetual motion… the best prior art readily available should be cited and its pertinence pointed out without specifically applying it to the claims.” This means that for perpetual motion applications, examiners should: Cite the…
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