What constitutes a “patent” for rejection purposes under 35 U.S.C. 102(a) or pre-AIA 35 U.S.C. 102(a) and (b)?
The designation of a document as a “patent” by a foreign country does not automatically qualify it as a patent for rejection purposes under U.S. patent law. As stated in MPEP 2126: “It is the substance of the rights conferred and the way information within the ‘patent’ is controlled that is determinative.” This means that…
Read MoreCan patent examiners reject applications based on duty of disclosure violations?
No, patent examiners do not reject applications based on duty of disclosure violations. According to MPEP 2010: “Accordingly, the examiner does not investigate and reject original or reissue applications under 37 CFR 1.56.” This means that even if an examiner suspects a violation of the duty of disclosure, they are not authorized to reject the…
Read MoreHow can an applicant overcome a rejection under pre-AIA 35 U.S.C. 102(e)?
An applicant can overcome a rejection under pre-AIA 35 U.S.C. 102(e) through several methods: Persuasively arguing that the claims are patentably distinguishable from the prior art Amending the claims to patentably distinguish over the prior art Filing an affidavit or declaration under 37 CFR 1.132 showing that the reference invention is not by “another” Filing…
Read MoreHow can I overcome a pre-AIA 35 U.S.C. 102(b) rejection based on a printed publication or patent?
There are several ways to overcome a pre-AIA 35 U.S.C. 102(b) rejection based on a printed publication or patent: Persuasively argue that the claims are patentably distinguishable from the prior art Amend the claims to patentably distinguish over the prior art Submit and perfect a benefit claim under 35 U.S.C. 120 Submit and perfect a…
Read MoreHow can an applicant overcome a pre-AIA 35 U.S.C. 102(b) rejection based on a printed publication?
To overcome a pre-AIA 35 U.S.C. 102(b) rejection based on a printed publication, an applicant can take the following steps: Prove earlier invention date: Show that the invention was conceived and reduced to practice before the critical date (one year prior to the U.S. filing date). Challenge publication date: Provide evidence that the reference was…
Read MoreHow can an applicant overcome a rejection based on an improper Markush grouping?
How can an applicant overcome a rejection based on an improper Markush grouping? An applicant can overcome a rejection based on an improper Markush grouping in several ways, as outlined in MPEP 2117: Demonstrate a single structural similarity: Show that all members of the Markush group share a common structure or feature that is essential…
Read MoreWhat are the main ways to overcome a 35 U.S.C. 102(a)(1) or 102(a)(2) rejection?
There are several ways to overcome a 35 U.S.C. 102(a)(1) or 102(a)(2) rejection, as outlined in MPEP 2152.06: Submitting a benefit claim under 35 U.S.C. 120 or 119(e) Submitting a claim to priority under 35 U.S.C. 119(a)-(d) Filing an affidavit or declaration under 37 CFR 1.130 Establishing common ownership or evidence of a Joint Research…
Read MoreWhat is the significance of the one-year bar in relation to CIP applications?
The one-year bar is particularly significant for Continuation-In-Part (CIP) applications, especially for claims that are only supported by the CIP disclosure. According to MPEP 2133.01: “Any prior art disclosing the invention or an obvious variant thereof having a critical reference date more than 1 year prior to the filing date of the child will bar…
Read MoreWhat are the form paragraphs used for lack of subject matter eligibility rejections?
The MPEP provides specific form paragraphs for rejections based on lack of subject matter eligibility: Form paragraphs 7.04.01, 7.05, and 7.05.01 are used for rejections at Step 1 of the eligibility analysis (failure to claim an invention within the statutory categories). Form paragraphs 7.04.01, 7.05, and 7.05.016 are used for rejections at Step 2B of…
Read MoreWhat is the “Mere Function of Machine” rule in patent law?
The “Mere Function of Machine” rule refers to a principle in patent law that protects process or method claims from being rejected solely based on their relationship to a disclosed machine or apparatus. According to MPEP 2173.05(v): “Process or method claims are not subject to rejection by U.S. Patent and Trademark Office examiners under 35…
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