What is an appeal conference in inter partes reexamination?
An appeal conference in inter partes reexamination is a procedure conducted when an examiner believes an appeal should go forward and an examiner’s answer should be prepared. According to MPEP 2676, “If the examiner reaches the conclusion that the appeal should go forward and an examiner’s answer should be prepared, the examiner will arrange (via…
Read MoreWhat is required for a reference to be anticipatory prior art?
For a reference to be considered anticipatory prior art, it must meet specific criteria. According to MPEP 2122: “In order to constitute anticipatory prior art, a reference must identically disclose the claimed compound, but no utility need be disclosed by the reference.” This means that: The reference must identically disclose the claimed compound. The reference…
Read MoreHow does the MPEP address the anticipation of Markush claims?
How does the MPEP address the anticipation of Markush claims? The Manual of Patent Examining Procedure (MPEP) provides specific guidance on the anticipation of Markush claims in MPEP 2131.02. Markush claims are a unique type of claim that lists alternative members in a single claim. According to the MPEP: “A reference disclosure can anticipate a…
Read MoreHow does the “anticipation by inherency” principle apply in genus-species situations?
How does the “anticipation by inherency” principle apply in genus-species situations? The principle of “anticipation by inherency” can play a significant role in genus-species situations, particularly when dealing with prior art disclosures. According to MPEP 2131.02, a genus may be inherently disclosed by a species when the species necessarily possesses the characteristics of the genus.…
Read MoreDoes lack of antecedent basis always make a claim indefinite?
No, lack of antecedent basis does not always render a claim indefinite. According to MPEP 2173.05(e): “Obviously, however, the failure to provide explicit antecedent basis for terms does not always render a claim indefinite. If the scope of a claim would be reasonably ascertainable by those skilled in the art, then the claim is not…
Read MoreWhat is considered analogous art for obviousness rejections?
For a reference to be proper for use in an obviousness rejection under 35 U.S.C. 103, it must be analogous art to the claimed invention. A reference is considered analogous art if: The reference is from the same field of endeavor as the claimed invention (even if it addresses a different problem); or The reference…
Read MoreCan prior art from a different field be considered analogous art?
Yes, prior art from a different field can be considered analogous art if it meets certain criteria. According to MPEP 2141.01(a): “A reference is analogous art to the claimed invention if: (1) the reference is from the same field of endeavor as the claimed invention (even if it addresses a different problem); or (2) the…
Read MoreHow does analogous art differ in chemical, mechanical, and electrical arts?
The MPEP provides examples of how analogous art is determined in different technical fields: Chemical Arts: References concerned with absorbing biologically active materials on carriers may be analogous across different applications (e.g., food preservatives and dye penetrants). Mechanical Arts: A broader spectrum of prior art may be explored, and references from different areas may be…
Read MoreAre mere allegations of nonequivalence sufficient to overcome a prima facie case of equivalence?
No, mere allegations of nonequivalence are not sufficient to overcome a prima facie case of equivalence in means-plus-function claims. MPEP 2184 states: “Under no circumstance should an examiner accept as persuasive a bare statement or opinion that the element shown in the prior art is not an equivalent embraced by the claim limitation.” To successfully…
Read MoreHow should information from AIA trial proceedings be disclosed to patent examiners?
Information from AIA trial proceedings, such as inter partes reviews, post-grant reviews, and covered business method reviews, should be disclosed to patent examiners through an Information Disclosure Statement (IDS). The MPEP 2001.06(c) states: “In particular, material information that is raised in trial proceedings that is relevant to related applications undergoing examination should be submitted on…
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