Can a patent claim involving an abstract idea still be patentable?
Yes, a patent claim involving an abstract idea can still be patentable if it meets certain criteria. According to MPEP 2106.04(a)(2), the presence of an abstract idea in a claim does not automatically render it ineligible for patenting. The MPEP states: “Claims that include abstract ideas are not automatically ineligible for patenting. Instead, such claims…
Read MoreWhat is the Patent Owner’s Statement in ex parte reexamination?
The Patent Owner’s Statement is a response filed by the patent owner in an ex parte reexamination proceeding. According to MPEP 2249, “If reexamination is ordered under 35 U.S.C. 304, the decision will set a period of not less than two months within which period the patent owner may file a statement and any narrowing…
Read MoreWhat is the “particular transformation” consideration in patent eligibility?
The “particular transformation” consideration is an important factor in determining patent eligibility under MPEP 2106.05(c). It evaluates whether a claim “effects a transformation or reduction of a particular article to a different state or thing.” As stated in the MPEP: “[T]ransformation and reduction of an article ‘to a different state or thing’ is the clue…
Read MoreHow does non-functional printed matter affect the patentability of product claims?
Non-functional printed matter does not distinguish a claimed product from an otherwise identical prior art product. This principle is explained in MPEP 2112.01(III): “Where the only difference between a prior art product and a claimed product is printed matter that is not functionally related to the product, the content of the printed matter will not…
Read MoreWhat happens if a substantial new question of patentability is not found in an inter partes reexamination request?
If a substantial new question of patentability is not found in an inter partes reexamination request, the request will be denied. The MPEP 2640 states: “If no substantial new question of patentability is found, the Director will refuse the request and no inter partes reexamination will be ordered.” In this case, the patent owner and…
Read MoreWhat is the significance of MPEP 2116?
MPEP 2116 is titled “Novel, Nonobvious Starting Material or End Product.” This section likely discusses the patentability of processes that involve novel or nonobvious starting materials or end products. However, without additional context from the full content of the section, it’s difficult to provide more specific information about its significance. For a comprehensive understanding of…
Read MoreHow does the material or article worked upon affect apparatus claims?
The material or article worked upon generally does not limit apparatus claims. As stated in MPEP 2115: “Inclusion of the material or article worked upon by a structure being claimed does not impart patentability to the claims.” This principle is based on legal precedents such as In re Otto and In re Young. The MPEP…
Read MoreHow is information material to patentability defined in ex parte reexamination under 35 U.S.C. 257?
In ex parte reexamination proceedings resulting from supplemental examination under 35 U.S.C. 257, the definition of information material to patentability is specific. According to MPEP 2823: “information material to patentability will be defined by 37 CFR 1.56(b) for an ex parte reexamination proceeding resulting from a supplemental examination proceeding“ This means that the standard definition…
Read MoreHow does an interference judgment affect a patent claim?
An interference judgment has a significant impact on a patent claim. According to MPEP 2308.01, “Judgment against a claim in an interference, including any judgment on priority or patentability, finally disposes of the claim.” This means that once a judgment is rendered against a claim in an interference proceeding, that claim is effectively terminated and…
Read MoreHow does the USPTO treat ‘instruction limitations’ in method claims?
The USPTO extends the rationale from printed matter cases to method claims that include ‘instruction limitations’. According to MPEP 2112.01(III): “The court has extended the rationale in the printed matter cases, in which, for example, written instructions are added to a known product, to method claims in which ‘an instruction limitation’ (i.e., a limitation ‘informing’…
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