How can greater than expected results demonstrate nonobviousness?
Greater than expected results can be powerful evidence of nonobviousness in patent applications. According to MPEP 716.02(a): A greater than expected result is an evidentiary factor pertinent to the legal conclusion of obviousness … of the claims at issue. This can be demonstrated in several ways: Showing an additive result when a diminished result would…
Read MoreWhat is the significance of ‘greater than expected results’ in patent examination?
What is the significance of ‘greater than expected results’ in patent examination? ‘Greater than expected results’ can be a powerful argument for patentability during patent examination. The MPEP 716.02(a)(I) states: “Greater than expected results are evidence of nonobviousness.” This means that if an invention produces results that are significantly better than what would be expected…
Read MoreWhat is the practice for genus-species cases where predictability is in question?
In cases where predictability is in question, the practice for genus-species cases is more stringent. As stated in MPEP 715.03: “In cases where predictability is in question, on the other hand, a showing of prior completion of one or a few species within the disclosed genus is generally not sufficient to overcome the reference or…
Read MoreHow does the size of a genus affect the requirements for overcoming a rejection?
The size of a genus can significantly affect the requirements for overcoming a rejection. For smaller genera, showing possession of fewer species may be sufficient, while larger genera may require more extensive evidence. As explained in MPEP 715.03: “In the case of a small genus such as the halogens, which consists of four species, a…
Read MoreWhat is the test for determining if an inventor possessed a generic invention?
The test for determining if an inventor possessed a generic invention focuses on whether the completed species provide an adequate basis for inferring generic applicability. According to MPEP 715.03: “The test is whether the species completed by the inventor prior to the reference date or the date of the activity provided an adequate basis for…
Read MoreWhat is the general rule for entering amendments under 37 CFR 1.312?
The general rule is that an amendment cannot be entered in part and refused in part. However, there are exceptions to this rule. As stated in the MPEP, “when, under 37 CFR 1.312, an amendment, for example, is proposed containing a plurality of claims or amendments to claims, some of which may be entered and…
Read MoreHow should a requirement for information be formatted?
According to the MPEP, a requirement for information should be formatted as follows: It should clearly indicate that it’s a requirement under 37 CFR 1.105 It should state the basis for the requirement It should specify what information is being required It should indicate the particular art area involved and the specific claimed subject matter…
Read MoreWhat is the recommended format for numbering paragraphs in patent office actions?
While MPEP 707.07(k) recommends numbering paragraphs in patent office actions, it does not specify a particular format. The MPEP states: It is good practice to number the paragraphs of the Office action consecutively. Based on this guidance, the recommended approach is to use consecutive numbers for each paragraph. Common formats include: Simple numerical order: 1,…
Read MoreWhat is an example of a formal objection in patent examination?
The MPEP provides a clear example of a formal objection in patent examination: An example of a matter of form as to which objection is made is dependency of a claim on a rejected claim, if the dependent claim is otherwise allowable. This example illustrates that objections typically relate to the form or structure of…
Read MoreWhat is the purpose of Form PTOL-90 in patent examination?
What is the purpose of Form PTOL-90 in patent examination? Form PTOL-90, also known as the ‘Communications Attachment Form,’ serves as a cover sheet for all communications to the applicant in a patent examination process. According to the MPEP 707, ‘Form PTOL-90 is to be used as a cover sheet for all communications to the…
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