What happens if a substantial new question of patentability is raised during reexamination?
If a substantial new question of patentability is raised during reexamination, the USPTO is required to address it. The MPEP 2821 cites 35 U.S.C. 304, which states: “If… the Director finds that a substantial new question of patentability affecting any claim of a patent is raised, the determination will include an order for reexamination of…
Read MoreHow does the concept of structural obviousness apply to complex mixtures like zeolites?
The application of structural obviousness to complex mixtures like zeolites can be challenging and requires careful consideration. MPEP 2144.02 provides an important example: “The Court held that different crystal forms of zeolites would not have been structurally obvious one from the other because there was no chemical theory supporting such a conclusion. The known chemical…
Read MoreWhat are the statutory provisions prohibiting the introduction of new matter?
There are two primary statutory provisions that prohibit the introduction of new matter in patent applications: 35 U.S.C. 132: This provision states that “no amendment shall introduce new matter into the disclosure of the invention.” 35 U.S.C. 251: This provision applies specifically to reissue applications and states that “no new matter shall be introduced into…
Read MoreHow does the certification regarding statutory estoppel affect ex parte reexamination requests?
The certification regarding statutory estoppel is a requirement for third-party requesters filing ex parte reexamination requests. As stated in the MPEP: “37 CFR 1.510(b)(6) requires that the request contain a certification by the third party requester that the statutory estoppel provisions of inter partes review and post grant review do not bar the third party…
Read MoreWhat is the statutory basis for interference proceedings in patent law?
The statutory basis for interference proceedings in patent law is primarily found in 35 U.S.C. 135 (pre-AIA). This statute outlines the process for declaring and conducting interferences. According to the MPEP: “Whenever an application is made for a patent which, in the opinion of the Director, would interfere with any pending application, or with any…
Read MoreWhat is the statutory basis for ex parte reexamination of patents?
The statutory basis for ex parte reexamination of patents was established on July 1, 1981, through sections 301-307 of title 35, United States Code, added by Public Law 96-517. The MPEP states: “Statutory basis for citation of prior art patents or printed publications in patent files and ex parte reexamination of patents became available on…
Read MoreWhat is the standard for determining compliance with the written description requirement?
The standard for determining compliance with the written description requirement is an objective one. As stated in MPEP 2163.02, the essential question is: “does the description clearly allow persons of ordinary skill in the art to recognize that he or she invented what is claimed.” This standard comes from the Federal Circuit case In re…
Read MoreWhat is the importance of special dispatch in ex parte reexamination proceedings?
Special dispatch is a crucial aspect of ex parte reexamination proceedings, as mandated by law. The MPEP states: Pursuant to 35 U.S.C. 305, all ex parte reexamination proceedings must be conducted with special dispatch within the Office. This applies to the transfer of reexamination proceedings. This requirement ensures that reexamination proceedings, including any transfers, are…
Read MoreCan social media posts be considered prior art?
Yes, social media posts can be considered prior art, provided they meet the public accessibility requirements. The MPEP specifically addresses this: “Social media websites on the Internet, such as YouTube®, Twitter®, Facebook®, and public forum posts, can be a source of prior art, provided the public accessibility requirements, as laid out in subsection I are…
Read MoreWhat is the relationship between single means claims and “undue experimentation”?
Single means claims are often rejected due to their relationship with “undue experimentation.” The MPEP 2164.08(a) explains: “The specification provides no guidance to determine the nature of the means and how they would be combined to perform the function recited in the claim. […] Therefore, the disclosure is not commensurate with the scope of a…
Read More