When can an examiner make a rejection based on prosecution laches?

An examiner should exercise caution when considering a rejection based on prosecution laches. According to MPEP 2190: “An examiner should obtain approval from the TC Director before making a rejection on the grounds of prosecution history laches.” This requirement ensures that such rejections are made only in egregious cases of unreasonable and unexplained delay in…

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How does the USPTO handle inherency rejections for compositions or products?

How does the USPTO handle inherency rejections for compositions or products? The USPTO has specific guidelines for handling inherency rejections for compositions or products. According to MPEP 2112: “The inherent teaching of a prior art reference, a question of fact, arises both in the context of anticipation and obviousness.” For compositions or products, the MPEP…

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How does the Tarczy-Hornoch case relate to the “Mere Function of Machine” rule?

The Tarczy-Hornoch case is a significant legal precedent that established the “Mere Function of Machine” rule in patent law. According to MPEP 2173.05(v): “In re Tarczy-Hornoch, 397 F.2d 856, 158 USPQ 141 (CCPA 1968). The court in Tarczy-Hornoch held that a process claim, otherwise patentable, should not be rejected merely because the application of which…

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What is statutory double patenting?

Statutory double patenting is a rejection based on the requirement in 35 U.S.C. 101 that an inventor may obtain only one patent for the same invention. The MPEP explains: “35 U.S.C. 101 requires that whoever invents or discovers an eligible invention may obtain only ONE patent therefor. Thus, it prevents two patents issuing on the…

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What is the scope of prior art available under pre-AIA 35 U.S.C. 102(e)?

Under pre-AIA 35 U.S.C. 102(e), the entire disclosure of certain U.S. patents, patent application publications, or international application publications can be used as prior art against patent claims. As stated in the MPEP: “Under pre-AIA 35 U.S.C. 102(e), the entire disclosure of a U.S. patent, a U.S. patent application publication, or an international application publication…

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What is the role of scientific theory in patent rejections?

Scientific theory can play a significant role in patent rejections under 35 U.S.C. 103. As stated in MPEP 2144.02: “The rationale to support a rejection under 35 U.S.C. 103 may rely on logic and sound scientific principle.” This means that patent examiners can use established scientific theories and principles as part of their reasoning to…

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