When can an examiner make a rejection based on prosecution laches?
An examiner should exercise caution when considering a rejection based on prosecution laches. According to MPEP 2190: “An examiner should obtain approval from the TC Director before making a rejection on the grounds of prosecution history laches.” This requirement ensures that such rejections are made only in egregious cases of unreasonable and unexplained delay in…
Read MoreWhat special procedures are required for rejecting a claim based on a tentative abstract idea?
Rejecting a claim based on a tentative abstract idea requires special procedures and approval. The MPEP states: A rejection of a claim reciting a tentative abstract idea must be approved by the TC director (which approval will be indicated in the file record of the application) and must provide a justification for why such claim…
Read MoreHow should examiners handle ‘tentative abstract ideas’ in subject matter eligibility rejections?
For ‘tentative abstract ideas’ that do not fall within the enumerated groupings, examiners should: Use form paragraph 7.05.017 in addition to other required paragraphs Provide justification for treating the limitation as an abstract idea Obtain approval from the Technology Center Director Include the TC Director’s signature in the rejection MPEP 2106.07(a)(1) states: “If the judicial…
Read MoreWhen is form paragraph 7.05.017 used in patent examination?
Form paragraph 7.05.017 is used in patent examination when dealing with a “tentative abstract idea” – an abstract idea that does not fall within the groupings of abstract ideas discussed in MPEP § 2106.04(a)(2). This form paragraph must be used in conjunction with form paragraph 7.05.016 and requires approval from the Technology Center Director. The…
Read MoreDoes an examiner need TC Director approval to withdraw a tentative abstract idea rejection?
No, an examiner does not need TC Director approval to withdraw a tentative abstract idea rejection. The MPEP clarifies: For applications in which an abstract idea has been identified using the tentative abstract idea procedure, an interview with the TC Director that provided approval is not necessary because the examiner retains the authority to withdraw…
Read MoreCan an examiner reopen prosecution after a Board decision in a patent application?
Yes, an examiner can reopen prosecution after a Board decision in certain circumstances. According to MPEP 1214: “The examiner may reopen prosecution to enter a new ground of rejection after a Board decision only with the written approval of the Technology Center (TC) Director or Deputy TC Director.” This means that reopening prosecution is not…
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