What is the “overlooked aspects” exception in patent reissue recapture?

What is the “overlooked aspects” exception in patent reissue recapture? The “overlooked aspects” exception is a rare circumstance where recapture may be allowed in a reissue application. This exception applies when the reissue claims are drawn to a separate invention or separate aspect/embodiment that was not covered by a claim at any point during prosecution…

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What are the options available to an appellant after the Board designates a new ground of rejection?

When the Board designates a new ground of rejection under 37 CFR 41.50(b), the appellant has three options for each claim so rejected: Reopen prosecution before the examiner by submitting an appropriate amendment and/or new evidence (37 CFR 41.50(b)(1)) Request rehearing before the Board (37 CFR 41.50(b)(2)) File a request for continued examination (RCE) The…

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What is the difference between a non-responsive amendment and a non-compliant amendment?

It’s important to distinguish between a non-responsive amendment and a non-compliant amendment in patent prosecution: Non-responsive amendment: This occurs when the amendment fails to address the substance of the previous Office action, such as by canceling all elected claims and presenting only non-elected claims. It is a matter of substance. Non-compliant amendment: This refers to…

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Can a patent examiner issue a new restriction requirement after an applicant has already complied with a previous one?

Yes, a patent examiner can issue a new restriction requirement even after an applicant has complied with a previous one. This is supported by MPEP 811.02, which states: “Since 37 CFR 1.142(a) provides that restriction is proper at any stage of prosecution up to final action, a second requirement may be made when it becomes…

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How does MPEP 811.03 affect patent examination strategy?

MPEP 811.03 significantly impacts patent examination strategy by allowing for the possibility of a restriction requirement to be reintroduced. The section states: “Where a requirement to restrict is made and thereafter withdrawn as improper, if restriction becomes proper at a later stage in the prosecution, restriction may again be required.” This provision means that: Applicants…

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How does the “materially narrowed” test apply in patent reissue recapture analysis?

How does the “materially narrowed” test apply in patent reissue recapture analysis? The “materially narrowed” test is a crucial part of the third step in the recapture analysis for patent reissue applications. It determines whether the reissue claims have avoided recapture by including a materially narrowing limitation relative to the original claims. According to MPEP…

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