Can a patent owner amend their patent during reexamination?
Yes, a patent owner can amend their patent during reexamination. According to MPEP 2269: “The patent owner may respond to such Office action with or without amendment and the patent under reexamination will be reconsidered, and so on repeatedly unless the examiner has indicated that the action is final.” However, it’s important to note that…
Read MoreWhat is the difference between operability and enablement in patent law?
What is the difference between operability and enablement in patent law? In patent law, operability and enablement are related but distinct concepts. According to MPEP 2121: Operability refers to whether an invention actually works as described. A reference is considered operable if the disclosed invention functions as claimed. Enablement, on the other hand, relates to…
Read MoreWhat is the “on sale” bar in patent law?
The “on sale” bar in patent law refers to a provision that can prevent an inventor from obtaining a patent if their invention was on sale before the critical date. According to MPEP 2133.03(b): “A sale is a contract between parties to give and to pass rights of property for consideration which the buyer pays…
Read MoreHow does the on-sale bar apply to claimed processes?
The application of the on-sale bar to claimed processes differs from its application to products or devices. The MPEP explains: A claimed process, which is a series of acts or steps, is not sold in the same sense as is a claimed product, device, or apparatus, which is a tangible item. (MPEP 2133.03(c)) However, the…
Read MoreWhat is the legal standard for obviousness of overlapping ranges?
According to MPEP 2144.05, “In the case where the claimed ranges ‘overlap or lie inside ranges disclosed by the prior art’ a prima facie case of obviousness exists.” This principle is based on several court decisions, including In re Wertheim and In re Woodruff. The MPEP further states: “[A] prior art reference that discloses a…
Read MoreWhat is the “obvious to try” rationale in patent law?
The “obvious to try” rationale is a valid basis for an obviousness rejection in patent law, as clarified by the Supreme Court in KSR International Co. v. Teleflex Inc. According to MPEP 2144.05: “The Supreme Court has clarified that an ‘obvious to try’ line of reasoning may properly support an obviousness rejection. … [W]hen there…
Read MoreHow does AIA 35 U.S.C. 102(a)(1) treat non-claimed subject matter in a patent?
Under AIA 35 U.S.C. 102(a)(1), even subject matter described but not claimed in a patent can be considered prior art. The MPEP states: “Although an invention may be described in a patent and not claimed therein, the grant date would also be the applicable prior art date for purposes of relying on the subject matter…
Read MoreDoes a judgment of no interference-in-fact result in either party losing the interference?
No, a judgment of no interference-in-fact does not result in either party losing the interference. The MPEP 2308.03(b) clearly states: “Neither party has lost the interference for the purpose of estoppel consistent with 37 CFR 41.127(a)(1), even if one of the parties suggested the interference.” This means that neither party is considered to have lost…
Read MoreCan new matter be added to claims during ex parte reexamination?
Can new matter be added to claims during ex parte reexamination? No, new matter cannot be added to claims during ex parte reexamination: The MPEP 2258 clearly states: “No amendment may introduce new matter into the disclosure of the patent.” This prohibition is based on 35 U.S.C. 305, which specifies that no proposed amended or…
Read MoreWhat are negative limitations in patent claims?
Negative limitations in patent claims are statements that describe what the invention is not, rather than what it is. According to MPEP 2173.05(i), “The current view of the courts is that there is nothing inherently ambiguous or uncertain about a negative limitation. So long as the boundaries of the patent protection sought are set forth…
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