How does the written description requirement apply to biological deposits in patent applications?
The written description requirement, as applied to biological deposits in patent applications, is based on 35 U.S.C. 112(a). According to MPEP 2411.01: “A rejection for lack of written description typically arises in the context that the application as filed does not contain a description to support an amendment to the specification or claims, although it…
Read MoreHow does the USPTO handle rejections based on lack of utility and enablement?
The USPTO handles rejections based on lack of utility (35 U.S.C. 101) and lack of enablement (35 U.S.C. 112(a)) separately to avoid confusion. The MPEP states: “To avoid confusion during examination, any rejection under 35 U.S.C. 112(a) or pre-AIA 35 U.S.C. 112, first paragraph, based on grounds other than ‘lack of utility’ should be imposed…
Read MoreHow is the statutory basis for pre-AIA 35 U.S.C. 103(a) rejections stated?
The statutory basis for pre-AIA 35 U.S.C. 103(a) rejections is stated using form paragraph 7.20.fti. This paragraph provides the full text of pre-AIA 35 U.S.C. 103(a) as follows: (a) A patent may not be obtained though the invention is not identically disclosed or described as set forth in section 102, if the differences between the…
Read MoreWhat are secondary considerations in patent law?
Secondary considerations, also known as objective indicia of non-obviousness, are factors considered in patent law when evaluating the non-obviousness of an invention. These factors can include unexpected results, commercial success, long-felt but unsolved needs, and failure of others. However, it’s important to note that secondary considerations are not applicable to all types of patent rejections.…
Read MoreCan secondary considerations overcome a 35 U.S.C. 102 rejection?
No, secondary considerations cannot overcome a rejection based on 35 U.S.C. 102 (anticipation). This is clearly stated in MPEP 2131.04: “Evidence of secondary considerations, such as unexpected results or commercial success, is irrelevant to 35 U.S.C. 102 rejections and thus cannot overcome a rejection so based.” The MPEP cites the case of In re Wiggins…
Read MoreHow are rejections under both pre-AIA 35 U.S.C. 102 and 103 formulated?
In certain situations, an examiner may need to make a rejection under both pre-AIA 35 U.S.C. 102 and 103. Form paragraph 7.27.fti is provided for this purpose: Claim(s) [1] is/are rejected under pre-AIA 35 U.S.C. 102 ([2]) as anticipated by or, in the alternative, under pre-AIA 35 U.S.C. 103(a) as obvious over [3]. However, the…
Read MoreCan inoperative prior art be used in patent rejections?
Yes, inoperative prior art can be used in patent rejections. The MPEP 2121.01 clearly states: “Even if a reference discloses an inoperative device, it is prior art for all that it teaches.” This principle has several important implications: An inoperative device can still provide valuable teachings about its components or methods. The overall inoperability of…
Read MoreHow can indefiniteness rejections arise from biological deposit issues in patent applications?
Indefiniteness rejections related to biological deposit issues in patent applications can arise under 35 U.S.C. 112(b). According to MPEP 2411.01: “A rejection for indefiniteness, as applied to a deposit issue, requires the examiner to provide reasons why the terms in the claims and/or scope of the invention are unclear because of an incomplete or inaccurate…
Read MoreHow are rejections under pre-AIA 35 U.S.C. 103(a) formulated?
Rejections under pre-AIA 35 U.S.C. 103(a) are formulated using form paragraph 7.21.fti. This paragraph provides the basic structure for stating the rejection: Claim [1] is/are rejected under pre-AIA 35 U.S.C. 103(a) as being unpatentable over [2]. The examiner fills in the claim numbers being rejected in bracket [1] and the prior art reference(s) being relied…
Read MoreWhat are form paragraphs in patent examination?
Form paragraphs are standardized text blocks used by patent examiners when drafting office actions. They help ensure consistency and efficiency in patent examination. For rejections under pre-AIA 35 U.S.C. 103, the MPEP provides specific form paragraphs to be used, such as: 7.20.fti – Statement of Statutory Basis for pre-AIA 35 U.S.C. 103(a) rejections 7.21.fti –…
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