When is form paragraph 7.05.017 used in patent examination?

Form paragraph 7.05.017 is used in patent examination when dealing with a “tentative abstract idea” – an abstract idea that does not fall within the groupings of abstract ideas discussed in MPEP § 2106.04(a)(2). This form paragraph must be used in conjunction with form paragraph 7.05.016 and requires approval from the Technology Center Director. The…

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How is form paragraph 7.05.01 used in patent rejections?

Form paragraph 7.05.01 is used for rejections under 35 U.S.C. 101 when the claimed invention does not fall within one of the four statutory categories of patent-eligible subject matter. This form paragraph should be preceded by form paragraph 7.05. The MPEP provides the following guidance for using this form paragraph: “the claimed invention is directed…

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How should patent examiners explain rejections based on insignificant extra-solution activity?

When rejecting a claim based on insignificant extra-solution activity, patent examiners should provide a clear explanation. The MPEP 2106.05(g) advises: “For claim limitations that add insignificant extra-solution activity to the judicial exception (e.g., mere data gathering in conjunction with a law of nature or abstract idea), examiners should explain in an eligibility rejection why they…

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What is the examiner’s burden in rejecting a patent application for lack of utility?

When an examiner concludes that a patent application claims an invention that is nonuseful, inoperative, or contradicts known scientific principles, they have the initial burden of providing evidence to support this conclusion. The MPEP states: “When the examiner concludes that an application claims an invention that is nonuseful, inoperative, or contradicts known scientific principles, the…

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How does an examiner determine if a pre-AIA 35 U.S.C. 102(d) rejection is appropriate?

An examiner determines if a pre-AIA 35 U.S.C. 102(d) rejection is appropriate by discovering a foreign patent or inventor’s certificate that meets the statutory requirements. The MPEP states: “If such a foreign patent or inventor’s certificate is discovered by the examiner, the rejection is made under pre-AIA 35 U.S.C. 102(d) on the ground of statutory…

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