How is information deemed material to patentability in reexamination proceedings?

In reexamination proceedings, information is considered material to patentability when it is not cumulative to information already of record and meets certain criteria. According to MPEP 2280, which cites 37 CFR 1.555(b): “Information is material to patentability in a reexamination proceeding when it is not cumulative to information of record or being made of record…

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How does the USPTO define “material to patentability” in the context of information disclosure?

How does the USPTO define “material to patentability” in the context of information disclosure? The USPTO defines “material to patentability” in the context of information disclosure through 37 CFR 1.56(b). The MPEP states: “Information is material to patentability when it is not cumulative to information already of record or being made of record in the…

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What is the significance of the phrase “material to patentability” in relation to copending applications?

What is the significance of the phrase “material to patentability” in relation to copending applications? The phrase “material to patentability” is crucial when considering information from copending applications. According to MPEP 2001.06(b): “The information from the copending application may be material to patentability of the application in question.” This means that any information from a…

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How does the examiner’s explanation support a prima facie case of equivalence?

The examiner’s explanation is fundamental in supporting a prima facie case of equivalence. MPEP 2183 emphasizes this: “The examiner must provide an explanation to support an equivalence rejection. […] The explanation should be sufficient to establish a prima facie case of obviousness.” The examiner’s explanation supports the prima facie case by: Clearly identifying the claim…

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How does the doctrine of equivalents relate to making a prima facie case of equivalence?

How does the doctrine of equivalents relate to making a prima facie case of equivalence? The doctrine of equivalents and making a prima facie case of equivalence are related concepts in patent law, but they apply in different contexts. The MPEP clarifies this relationship: “The determination of equivalence for purposes of the nonstatutory (obviousness-type) double…

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What is the burden of proof for inherency in patent rejections?

The burden of proof for inherency in patent rejections initially lies with the examiner. The MPEP states: “In relying upon the theory of inherency, the examiner must provide a basis in fact and/or technical reasoning to reasonably support the determination that the allegedly inherent characteristic necessarily flows from the teachings of the applied prior art.”…

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