Can inherency be used in both anticipation and obviousness rejections?
Yes, inherency can be used in both anticipation (35 U.S.C. 102) and obviousness (35 U.S.C. 103) rejections. The MPEP explicitly states: “The express, implicit, and inherent disclosures of a prior art reference may be relied upon in the rejection of claims under 35 U.S.C. 102 or 103.” (MPEP 2112) Furthermore, the MPEP notes that concurrent…
Read MoreWhen 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…
Read MoreWhat is the purpose of form paragraph 7.05.016 in patent examination?
Form paragraph 7.05.016 is used for rejections under 35 U.S.C. 101 when the claimed invention is directed to a judicial exception without significantly more (i.e., without an inventive concept). This form paragraph should be preceded by form paragraph 7.05. The MPEP provides the following structure for this form paragraph: “the claimed invention is directed to…
Read MoreHow 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…
Read MoreHow 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…
Read MoreWhat 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…
Read MoreWhat is the role of an examiner in reviewing a suggestion of interference?
An examiner’s role in reviewing a suggestion of interference is primarily focused on specific circumstances, particularly when dealing with rejections under pre-AIA 35 U.S.C. 102(a) or 102(e). The MPEP states: “If an application claim is subject to a rejection under pre-AIA 35 U.S.C. 102(a) or 102(e) and the applicant files a suggestion under 37 CFR…
Read MoreHow 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…
Read MoreHow does derivation affect patent applications under pre-AIA 35 U.S.C. 102(f)?
Derivation under pre-AIA 35 U.S.C. 102(f) refers to situations where an inventor or at least one joint inventor derived an invention from another person. If derivation can be shown, it may result in a rejection of the patent application. The MPEP states: Where it can be shown that an inventor or at least one joint…
Read MoreWhat happens if a deposit is not made according to the requirements?
If a deposit is not made according to the requirements, the examiner should reject the affected claims under pre-AIA 35 U.S.C. 112, first paragraph, as not enabled. According to MPEP 2411.01: “Where a deposit is required to satisfy 35 U.S.C. 112, a rejection under pre-AIA 35 U.S.C. 112, first paragraph, for lack of enablement should…
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