What are Form Paragraphs 7.48.aia and 7.48.fti in patent rejections?
Form Paragraphs 7.48.aia and 7.48.fti are standardized text used by patent examiners to reject claims based on an applicant’s failure to present claims for interference. These paragraphs are described in MPEP 2304.04(c). The main difference between the two is: 7.48.aia is used for applications filed on or after March 16, 2013, under the America Invents…
Read MoreWhat are form paragraphs in patent rejections under 35 U.S.C. 112(b)?
Form paragraphs are standardized text blocks used by patent examiners to communicate rejections in patent applications. For rejections under 35 U.S.C. 112(b) or pre-AIA 35 U.S.C. 112, second paragraph, specific form paragraphs are used to address various issues of indefiniteness in claims. According to the MPEP, Form paragraphs 7.30.02, 7.34 through 7.34.05, 7.34.07 through 7.34.10,…
Read MoreDoes an interference judgment prevent an examiner from making new rejections?
No, an interference judgment does not prevent an examiner from making new rejections. The MPEP clearly states: An interference judgment simply resolves any question of priority between the two parties to the interference. The judgment does not prevent the examiner from making a rejection in further examination in the same application or a different application.…
Read MoreWhat is the enablement requirement for biotechnology patents with respect to biological deposits?
The enablement requirement for biotechnology patents with respect to biological deposits is based on 35 U.S.C. 112(a). According to MPEP 2411.01: “Rejection for lack of an enabling disclosure without access to a specific biological material. This ground of rejection should be accompanied by evidence of scientific reasoning to support the conclusion that a person skilled…
Read MoreCan double patenting rejections be made in ex parte reexamination?
Can double patenting rejections be made in ex parte reexamination? Yes, double patenting rejections can be made in ex parte reexamination, but with specific conditions: Double patenting rejections are permitted if they are based on patents or printed publications. These rejections must raise a substantial new question of patentability. The MPEP 2258 states: “Double patenting…
Read MoreWhat is the difference between 35 U.S.C. 102(a)(1) and 102(a)(2) rejections?
What is the difference between 35 U.S.C. 102(a)(1) and 102(a)(2) rejections? The main differences between 35 U.S.C. 102(a)(1) and 102(a)(2) rejections are: 102(a)(1) applies to prior art that was publicly available before the effective filing date of the claimed invention. This includes patents, printed publications, public use, on sale, or otherwise available to the public.…
Read MoreWhat are the grounds for rejection based on deposit issues in biotechnology patent applications?
The Manual of Patent Examining Procedure (MPEP) outlines several grounds for rejection based on deposit issues in biotechnology patent applications. These include: Lack of enablement under 35 U.S.C. 112(a) Lack of written description under 35 U.S.C. 112(a) Lack of best mode under 35 U.S.C. 112(a) Indefiniteness under 35 U.S.C. 112(b) Failure to claim what the…
Read MoreHow does the best mode requirement relate to biological deposits in patent applications?
The best mode requirement, as it relates 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 a best mode will be rare in the ex parte examination process because it requires (1) a finding by the examiner that, at the time the application…
Read MoreHow does the USPTO handle provisional double patenting rejections?
The USPTO handles provisional double patenting rejections as follows: Examiners make a complete examination of claims in each application filed by the same applicant or assignee. If patentably indistinct claims are found, appropriate rejections are entered in each application. Claims may be rejected on the grounds of provisional double patenting based on the claims of…
Read MoreCan new rejections be made in a reissue application that weren’t made in the original patent?
Yes, new rejections can be made in a reissue application, even if they weren’t made during the prosecution of the original patent. The MPEP 1445 clearly states: “It does not matter whether the claims are identical to those of the patent or changed from those in the patent. It also does not matter that a…
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