Can discovering the source of a problem contribute to patentability?
Yes, discovering the source of a problem can contribute to patentability, even if the solution seems obvious once the problem is identified. The MPEP 2141.02 states: “[A] patentable invention may lie in the discovery of the source of a problem even though the remedy may be obvious once the source of the problem is identified.…
Read MoreWhat are the specific criteria for determining a substantial new question of patentability in supplemental examination?
The criteria for determining a substantial new question of patentability (SNQ) in supplemental examination are outlined in MPEP 2816.02. The key factors include: Whether the information presented in the request raises a new, non-cumulative technological teaching that was not present in the patent examination If the information suggests a reasonable likelihood that the examiner would…
Read MoreWhat role does the Board of Patent Appeals and Interferences play in interference proceedings?
The Board of Patent Appeals and Interferences plays a crucial role in interference proceedings by determining priority of inventions and questions of patentability. According to 35 U.S.C. 135 (pre-AIA): “The Board of Patent Appeals and Interferences shall determine questions of priority of the inventions and may determine questions of patentability.” This means that the Board…
Read MoreHow does automating a manual activity affect patentability?
Automating a manual activity is generally not sufficient to distinguish an invention over prior art. According to MPEP 2144.04, “broadly providing an automatic or mechanical means to replace a manual activity which accomplished the same result is not sufficient to distinguish over the prior art.” This principle is illustrated in the case of In re…
Read MoreAre living organisms patentable?
Yes, living organisms can be patentable subject matter. The Supreme Court’s decision in Diamond v. Chakrabarty made it clear that the question of whether an invention embraces living matter is irrelevant to the issue of patent eligibility. The Court held that “living subject matter with markedly different characteristics from any found in nature, such as…
Read MoreWhat determines if an application is subject to AIA 35 U.S.C. 102 and 103?
An application is subject to AIA 35 U.S.C. 102 and 103 if it: Contains or contained at any time a claim to a claimed invention with an effective filing date on or after March 16, 2013, or Claims or ever claimed the benefit of an earlier filing date under 35 U.S.C. 120, 121, or 365…
Read MoreHow do aesthetic design changes affect patentability?
Aesthetic design changes generally have limited impact on patentability, especially when they serve no mechanical function. According to MPEP 2144.04, “matters relating to ornamentation only which have no mechanical function cannot be relied upon to patentably distinguish the claimed invention from the prior art.” This principle is illustrated in the case of In re Seid,…
Read MoreHow do “adapted to” clauses affect the patentability of an invention?
“Adapted to” clauses can affect the patentability of an invention by potentially limiting or defining the scope of the claims. According to MPEP 2111.04: “Claim scope is not limited by claim language that suggests or makes optional but does not require steps to be performed, or by claim language that does not limit a claim…
Read MoreHow does 35 U.S.C. 101 relate to the other sections of patent law?
35 U.S.C. 101 serves as a foundational requirement for patentability, working in conjunction with other sections of patent law. According to MPEP 2104: “35 U.S.C. 101 has been interpreted as imposing four requirements. First, whoever invents or discovers an eligible invention may obtain only ONE patent therefor. Second, the inventor(s) must be the applicant in…
Read MoreWhat is a protest in patent examination?
A protest in patent examination is a mechanism that allows third parties to submit prior art or other information relevant to the patentability of a pending patent application. The process is outlined in MPEP Chapter 1900, which states: “The protest procedure permits members of the public to submit information to the Office for consideration in…
Read More