How should an examiner address new arguments or evidence in an examiner’s answer?
In an inter partes reexamination proceeding, examiners are not permitted to introduce new grounds of rejection or new findings of patentability in an examiner’s answer. According to MPEP 2677, the examiner’s answer must include an explicit statement that: “It does not contain any new ground of rejection, and it does not contain any new finding…
Read MoreHow do “adapted to” clauses affect the patentability of an invention?
“Adapted to” clauses can affect the patentability of an invention by potentially limiting or defining the scope of the claims. According to MPEP 2111.04: “Claim scope is not limited by claim language that suggests or makes optional but does not require steps to be performed, or by claim language that does not limit a claim…
Read MoreWhat is an Action Closing Prosecution (ACP) in inter partes reexamination?
An Action Closing Prosecution (ACP) is a type of Office action in inter partes reexamination that signifies the examiner’s intention to close prosecution. According to MPEP 2671.01, an ACP is typically issued when: The examiner has considered the issues a second or subsequent time The examiner has determined the patentability of all claims However, the…
Read MoreHow does the examiner determine whether to issue an ACP or a final rejection in ex parte reexamination?
The examiner’s decision to issue an Action Closing Prosecution (ACP) or a final rejection in ex parte reexamination depends on specific criteria outlined in the MPEP. According to MPEP 2260: “If the patent owner’s response overcomes all rejections and objections, a Notice of Intent to Issue Ex Parte Reexamination Certificate (NIRC) should be issued. If…
Read MoreWhat constitutes an acceptable written assurance for a future biological material deposit?
An acceptable written assurance for a future biological material deposit must clearly state that the deposit will be made within the required time and under conditions that satisfy the USPTO rules. The MPEP 2411.02 provides guidance on this: “The written assurance will be accepted by the Office if it clearly states that an acceptable deposit…
Read MoreWhat are “A delays” in patent term adjustment?
“A delays” are a specific type of delay attributed to the USPTO in the patent examination process. According to MPEP 2731, A delays include: Failure to provide certain notifications within 14 months of filing Failure to respond to a reply within 4 months Failure to act on an application within 4 months after a decision…
Read MoreHow does 37 CFR 1.809 relate to biological material deposits in patent applications?
37 CFR 1.809 is a crucial regulation that outlines the examination procedures for biological material deposits in patent applications. As mentioned in MPEP 2411: “37 CFR 1.809 sets forth procedures that will be used by the examiner to address a deposit issue.” This regulation establishes the framework for how patent examiners should handle issues related…
Read MoreCan a 35 U.S.C. 102 rejection be made if the reference doesn’t teach how to practice the invention?
Yes, a 35 U.S.C. 102 rejection can be made even if the primary reference doesn’t explicitly teach how to practice the invention. The MPEP Section 2121.01 explains: “It is possible to make a 35 U.S.C. 102 rejection even if the reference does not itself teach one of ordinary skill how to practice the invention, i.e.,…
Read MoreWhen should an examiner make a rejection under 35 U.S.C. 112(b) for exemplary claim language?
An examiner should consider making a rejection under 35 U.S.C. 112(b) when exemplary claim language creates uncertainty about the claim’s scope. The MPEP 2173.05(d) states: “In those instances where it is not clear whether the claimed narrower range is a limitation, a rejection under 35 U.S.C. 112(b) or pre-AIA 35 U.S.C. 112, second paragraph should…
Read MoreWhat is the significance of the 35 U.S.C. 102(a)(2) date for U.S. patents claiming priority?
The 35 U.S.C. 102(a)(2) date is crucial for determining the prior art effect of U.S. patents claiming priority. This date can affect whether a patent or application can be used as prior art against another application. The MPEP provides guidance on this topic: “See MPEP § 2136.02 and MPEP § 2136.03 for the 35 U.S.C.…
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