How is the statutory basis for pre-AIA 35 U.S.C. 103(a) rejections stated?
The statutory basis for pre-AIA 35 U.S.C. 103(a) rejections is stated using form paragraph 7.20.fti. This paragraph provides the full text of pre-AIA 35 U.S.C. 103(a) as follows: (a) A patent may not be obtained though the invention is not identically disclosed or described as set forth in section 102, if the differences between the…
Read MoreWhat is the statutory basis for ex parte reexamination of patents?
The statutory basis for ex parte reexamination of patents was established on July 1, 1981, through sections 301-307 of title 35, United States Code, added by Public Law 96-517. The MPEP states: “Statutory basis for citation of prior art patents or printed publications in patent files and ex parte reexamination of patents became available on…
Read MoreWhat is form paragraph 7.04.01 used for in patent examination?
Form paragraph 7.04.01 is used to state the statutory basis for patent eligibility under 35 U.S.C. 101. It must be included at the beginning of all first actions on the merits and final rejections that involve 35 U.S.C. 101. The MPEP provides the following text for this form paragraph: “35 U.S.C. 101 reads as follows:…
Read MoreWhat is the statutory basis for restriction practice in patent applications?
The statutory basis for restriction practice in patent applications is found in 35 U.S.C. 121. This statute states: “If two or more independent and distinct inventions are claimed in one application, the Director may require the application to be restricted to one of the inventions.” This provision gives the USPTO the authority to require applicants…
Read MoreHow does changing the statutory basis affect grounds of rejection?
Changing the statutory basis of a rejection from one section of the statute to another typically constitutes a new ground of rejection in patent appeals. According to MPEP 1207.03(a): “Factual situations that have been found to constitute a new ground of rejection include… Changing the statutory basis of rejection from one section of the statute…
Read MoreWhen does changing the statutory basis of rejection not constitute a new ground?
Changing the statutory basis of rejection does not always constitute a new ground of rejection. According to MPEP 1207.03(a), there are situations where such changes are not considered new grounds: 1. Changing from 35 U.S.C. 103 to 35 U.S.C. 102, but relying on the same teachings: “If the examiner’s answer changes the statutory basis of…
Read More