What is the primary goal of patent examination?
The primary goal of patent examination is to thoroughly review and analyze the patent application in light of prior art and clearly articulate any rejections early in the prosecution process. As stated in the MPEP: “The goal of examination is to clearly articulate any rejection early in the prosecution process so that the applicant has…
Read MoreHow should patent examiners treat different types of references in their citations?
According to MPEP 707.05(c), patent examiners should not differentiate between references used for rejection and those considered pertinent but not used as a basis for rejection. The manual states: No distinction is to be made between references on which a claim is rejected and those formerly referred to as “pertinent.” This guidance ensures that all…
Read MoreWhat steps are involved in the patent examination process after the search is completed?
The patent examination process after the search involves several key steps, as outlined in MPEP 707.01: The assistant examiner explains the invention to the primary examiner. They discuss the most pertinent references found during the search. The primary examiner indicates the action to be taken, which may include: Requiring restriction or election of species Considering…
Read MoreCan a portion of an intervening disclosure be excepted as prior art?
Yes, only a portion of an intervening disclosure can be excepted as prior art. The MPEP states: “Only the portion of the third party’s intervening disclosure that was previously in an inventor-originated disclosure (i.e., the same subject matter) is excepted as prior art under 35 U.S.C. 102(a).” This means that any part of the third…
Read MoreHow does the USPTO handle partial disqualification of prior art through a 37 CFR 1.130(b) declaration?
The USPTO allows for partial disqualification of prior art through a 37 CFR 1.130(b) declaration. If the declaration shows that only a portion of the intervening disclosure was previously publicly disclosed by the inventor, the remaining portion may still be available as prior art. The MPEP states: Any remaining portion of an intervening grace period…
Read MoreHow can an inventor overcome a rejection based on a reference with a different inventive entity?
An inventor can overcome a rejection based on a reference with a different inventive entity in several ways: By filing an affidavit or declaration under 37 CFR 1.131(a) showing prior invention By filing an affidavit or declaration under 37 CFR 1.132 The MPEP states: An unequivocal declaration under 37 CFR 1.132 by S that he/she…
Read MoreWhat is the purpose of MPEP 715.01(c)?
MPEP 715.01(c) provides guidance on how to overcome a rejection under pre-AIA 35 U.S.C. 102 when the reference cited is a publication of the inventor’s own invention. The section explains: Unless it is a statutory bar, a rejection under pre-AIA 35 U.S.C. 102 prior art based on a publication may be overcome by a showing…
Read MoreWhat is the Notice of References Cited (PTO-892) form?
The Notice of References Cited (PTO-892) is a separate form attached to the applicant’s copy of the Office action. It lists the references cited by the examiner during the examination of the patent application. According to MPEP 707: The list of references cited appears on a separate form, Notice of References Cited, PTO-892 (copy in…
Read MoreWhat is a new ground of rejection in patent examination?
A new ground of rejection in patent examination refers to a rejection that introduces new prior art or a new statutory basis for rejecting a claim. However, the specific definition can be complex. The MPEP provides guidance on what constitutes a new ground of rejection in MPEP § 1207.03(a). It’s important to note that not…
Read MoreWhat MPEP sections cover rejections under AIA 35 U.S.C. 102?
For patent applications subject to the America Invents Act (AIA), information on rejections under AIA 35 U.S.C. 102 can be found in MPEP §§ 2151 – 2156. These sections provide detailed guidance on how to apply the AIA version of 35 U.S.C. 102 in patent examination. The AIA version of 35 U.S.C. 102 applies to…
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