What are the requirements for a written description rejection by a patent examiner?
When rejecting a claim for lack of written description, a patent examiner must fulfill specific requirements. According to MPEP 2163.04, the examiner must: Identify the claim limitation(s) at issue Establish a prima facie case by providing reasons why a person skilled in the art would not have recognized that the inventor was in possession of…
Read MoreHow does the “way” prong of the function-way-result test apply in a prima facie case of equivalence?
The “way” prong of the function-way-result test is a critical component in establishing a prima facie case of equivalence. MPEP 2183 provides guidance on this aspect: “The examiner must explain how the prior art element performs the claimed function in substantially the same way as the claimed invention.” To satisfy the “way” prong, the examiner…
Read MoreWhat is the difference between a “substantial new question of patentability” and a “prima facie case of unpatentability”?
The concepts of a “substantial new question of patentability” (SNQ) and a “prima facie case of unpatentability” are distinct in patent law, particularly in the context of reexamination proceedings. According to MPEP 2242: It is not necessary that a ‘prima facie’ case of unpatentability exist as to the claim in order for ‘a substantial new…
Read MoreWhat is the significance of the ‘result’ in the function-way-result test for equivalence?
The ‘result’ component of the function-way-result test is crucial in establishing equivalence between a claimed invention and a prior art element. According to MPEP 2183: “The examiner must explain… how [the prior art element] achieves substantially the same result as the claimed invention.” The significance of the ‘result’ prong lies in: Demonstrating that the outcome…
Read MoreWhat are the key requirements for establishing a prima facie case of obviousness?
The key requirements for establishing a prima facie case of obviousness are: Resolving the Graham factual inquiries Articulating a clear rationale for why the claimed invention would have been obvious Providing a reasoned explanation that avoids conclusory generalizations As stated in the MPEP: “The key to supporting any rejection under 35 U.S.C. 103 is the…
Read MoreWhat is the burden of proof in rebutting a prima facie case of obviousness?
According to MPEP 2145, if a prima facie case of obviousness is established, the burden shifts to the applicant to come forward with arguments and/or evidence to rebut the prima facie case. As stated in the MPEP: “If a prima facie case of obviousness is established, the burden shifts to the applicant to come forward…
Read MoreWhat is the role of “reasonable interpretation” in making a prima facie case of equivalence?
What is the role of “reasonable interpretation” in making a prima facie case of equivalence? In making a prima facie case of equivalence, the examiner must use “reasonable interpretation” of the claim language. The MPEP states: “The examiner must apply to the questioned claim element reasonable interpretation of the claim language, including consideration of the…
Read MoreWhat is the “rationale to support a conclusion of obviousness” in patent examination?
The “rationale to support a conclusion of obviousness” in patent examination refers to the reasoning an examiner must provide when rejecting a claim as obvious. According to MPEP 2142: “[T]he examiner bears the initial burden of factually supporting any prima facie conclusion of obviousness. If the examiner does not produce a prima facie case, the…
Read MoreWhat is a prima facie case of equivalence in patent examination?
A prima facie case of equivalence is established when an examiner finds that a prior art element: (A) performs the function specified in the claim, (B) is not excluded by any explicit definition provided in the specification for an equivalent, and (C) is an equivalent of the means- (or step-) plus-function limitation. The examiner should…
Read MoreWhat is a prima facie case for lack of utility and how is it established?
A prima facie case for lack of utility is an initial showing by the USPTO that the claimed invention lacks utility. To establish this, the USPTO must: Make a prima facie showing that the claimed invention lacks utility Provide a sufficient evidentiary basis for factual assumptions relied upon in establishing the prima facie showing The…
Read More