How are process and apparatus inventions considered distinct for restriction purposes?
Process and apparatus inventions can be shown to be distinct for restriction purposes if either of the following can be demonstrated: The process as claimed can be practiced by another materially different apparatus or by hand, or The apparatus as claimed can be used to practice another materially different process. MPEP 806.05(e) states: Process and…
Read MoreHow should patent examiners prioritize search areas?
Patent examiners should prioritize search areas based on the likelihood of finding relevant prior art. The MPEP 904.02(a) provides guidance on this: “The areas to be searched should be prioritized so that the most likely areas of finding relevant prior art are searched first. Though areas to be searched should be prioritized, a thorough and…
Read MoreWhat is the significance of a prior foreign application in U.S. patent examination?
The significance of a prior foreign application in U.S. patent examination is primarily related to establishing priority dates and determining the scope of prior art. The Manual of Patent Examining Procedure (MPEP) § 1302.06 directs examiners and applicants to MPEP § 202 and MPEP § 214 for detailed information on this topic. These sections provide…
Read MoreCan prior art considered during the original patent examination be used again in a reissue application?
Yes, prior art that was considered during the original patent examination can be used again in a reissue application. The MPEP 1445 clearly states: “Likewise, the fact that during prosecution of the patent the examiner considered, may have considered, or should have considered information such as, for example, a specific prior art document, does not…
Read MoreWhat happens if the examiner finds prior art that reads on the elected species in a Markush claim?
What happens if the examiner finds prior art that reads on the elected species in a Markush claim? If the examiner finds prior art that reads on the elected species in a Markush claim, the following actions are taken: The Markush claim is rejected The examination is limited to the elected species Other species are…
Read MoreWhat is the definition of “prior art” in patent law?
The term “prior art” in patent law refers to all information that has been made available to the public before a given date that might be relevant to a patent’s claims of originality. This includes existing patents, published patent applications, and other publicly available documents or information. While the MPEP 901 doesn’t provide a direct…
Read MoreHow does the availability of prior art differ between original and reissue applications?
In most cases, the availability of prior art for reissue applications is the same as for original applications. However, the MPEP 1445 notes that there can be rare exceptions: “Even in rare cases where, because of an amendment to the claims, the prior art available under 35 U.S.C. 102 and 103 during examination of the…
Read MoreWhat is the difference between a “Printer Rush – No mailing” action and other Office Actions?
A “Printer Rush – No mailing” action is a specific type of action taken by patent examiners when addressing Printer Rush cases that don’t require communication with the applicant. According to MPEP 1309.02: “If correction does not require mailing of an Office Action, the examiner creates an action entitled ‘Printer Rush – No mailing’ and…
Read MoreWhat are the primary search tools available to patent examiners?
The primary search tools available to patent examiners include: The Cooperative Patent Classification (CPC) system The United States Patent Classification (USPC) system Various automated search tools and databases According to MPEP 902, “The primary classification and search tools used by the USPTO are the Cooperative Patent Classification (CPC) system, the United States Patent Classification (USPC)…
Read MoreWhat is the significance of the “primary reference” in design patent obviousness rejections?
The concept of a “primary reference” is crucial in design patent obviousness rejections. The MPEP explains: “In order to support a holding of obviousness, a primary reference must be more than a design concept; it must have an appearance substantially the same as the claimed design.“ Key aspects of the primary reference in design patent…
Read More