What should be considered during an appeal conference?
During an appeal conference, examiners should consider several aspects of the case. According to MPEP 1207.01: “During the appeal conference, consideration should be given to the possibility of dropping cumulative art rejections and eliminating technical rejections of doubtful value.” The main points to consider include: The merits of the issues on appeal Possibility of dropping…
Read MoreWhat is the process for addressing rejections in design patent applications?
The process for addressing rejections in design patent applications involves a dialogue between the examiner and the applicant. According to MPEP 1504: “If the examiner determines that the claim of the design patent application does not satisfy the statutory requirements, the examiner will set forth in detail, and may additionally summarize, the basis for all…
Read MoreWhat is the difference between rejections under 35 U.S.C. 102 and 35 U.S.C. 103?
What is the difference between rejections under 35 U.S.C. 102 and 35 U.S.C. 103? Rejections under 35 U.S.C. 102 and 35 U.S.C. 103 serve different purposes in patent examination: 35 U.S.C. 102 (Anticipation): This rejection is used when a single prior art reference discloses every element of the claimed invention. As stated in the MPEP…
Read MoreCan formal objections and rejections be combined in a single appeal to the PTAB?
No, formal objections and rejections should not be combined in a single appeal to the Patent Trial and Appeal Board (PTAB). The MPEP is clear on this point: These formal matters should not be combined in appeals to the Board. This guideline is based on the different nature and review processes for objections and rejections:…
Read MoreWhat are the different types of rejections in patent examination?
What are the different types of rejections in patent examination? According to MPEP 706, there are several types of rejections that may be imposed during patent examination: Provisional rejections: These are rejections that may be overcome by amendment or submission of evidence. Final rejections: These are made on the second or subsequent examination or consideration…
Read MoreWhat is the role of terminal disclaimers in overcoming rejections under MPEP 715.05?
MPEP 715.05 discusses the use of terminal disclaimers in conjunction with affidavits or declarations to overcome certain rejections. Specifically: “Where the reference and the application or patent under reexamination are commonly owned, and the inventions defined by the claims in the application or patent under reexamination and by the claims in the reference are not…
Read MoreWhat is the difference between species and embodiments in patent rejections?
In patent rejections, species typically refer to members of a claimed genus, while embodiments are different versions or implementations of a single claimed invention. This distinction is important when overcoming rejections. As stated in MPEP 715.03: “References or activities which disclose one or more embodiments of a single claimed invention, as opposed to species of…
Read MoreWhat is the purpose of making rejections in patent examination?
What is the purpose of making rejections in patent examination? The purpose of making rejections in patent examination is to ensure that only valid and novel inventions receive patent protection. According to MPEP 706: ‘After a thorough study of the application, the examiner reaches a conclusion as to whether the claims are patentable. If the…
Read MoreWhat is the purpose of affidavits or declarations under 37 CFR 1.132?
Affidavits or declarations under 37 CFR 1.132 serve to provide evidence to traverse rejections or objections in patent applications. The MPEP 716 states: ‘The purpose of filing affidavits or declarations under 37 CFR 1.132 is to traverse the rejections or objections of record.’ These affidavits or declarations can be used to present various types of…
Read MoreHow does MPEP 715.05 address rejections under pre-AIA 35 U.S.C. 135(b)?
MPEP 715.05 provides guidance on rejections under pre-AIA 35 U.S.C. 135(b) for applications subject to pre-AIA 35 U.S.C. 102. The section states: “If the reference is a U.S. patent which claims the same invention as the application and its issue date is more than 1 year prior to the presentation of claims to that invention…
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