What rejections should be considered for unsupported means-plus-function limitations?
When a means- (or step-) plus-function limitation in a claim is not supported by corresponding structure, material, or acts in the specification, the examiner should consider the following rejections under 35 U.S.C. 112: Enablement (35 U.S.C. 112(a)): If the skilled artisan would not know how to make and use the invention without a description of…
Read MoreWhat types of information are considered material in reexamination proceedings?
What types of information are considered material in reexamination proceedings? In reexamination proceedings, certain types of information are considered material to patentability. According to MPEP 2280, material information includes: Prior art patents or printed publications that are material to patentability under 37 CFR 1.56(b) Information on enablement, written description, and utility that is material to…
Read MoreWhat are the main requirements under 35 U.S.C. 112(a)?
The main requirements under 35 U.S.C. 112(a) are: Written Description: The specification must contain a written description of the invention. Enablement: The specification must enable any person skilled in the art to make and use the invention. Best Mode: The specification must set forth the best mode contemplated by the inventor for carrying out the…
Read MoreHow does the level of skill in the art affect the written description requirement?
The level of skill in the art plays a significant role in determining whether the written description requirement is met. The MPEP states: “The description needed to satisfy the requirements of 35 U.S.C. 112 ‘varies with the nature and scope of the invention at issue, and with the scientific and technologic knowledge already in existence.’”…
Read MoreWhat issues can arise from improperly presented prophetic examples?
Improperly presented prophetic examples in patent applications can lead to serious issues, including questions about the adequacy and accuracy of the disclosure, and potential inequitable conduct charges. The MPEP 2164.02 warns: “When prophetic examples are described in a manner that is ambiguous or that implies that the results are actual, the adequacy and accuracy of…
Read MoreWhat are the potential issues with functional limitations in patent claims?
While functional limitations are allowed in patent claims, they can potentially raise issues of indefiniteness. The MPEP notes that “the use of functional language in a claim may fail ‘to provide a clear-cut indication of the scope of the subject matter embraced by the claim’ and thus be indefinite.” Some potential issues include: Claims that…
Read MoreDoes the written description need to be literal to satisfy the requirement?
No, the written description does not need to be literal to satisfy the requirement. As stated in MPEP 2163.02: “The subject matter of the claim need not be described literally (i.e., using the same terms or in haec verba) in order for the disclosure to satisfy the description requirement.“ However, it’s important to note that…
Read MoreWhat is the difference between inherent and explicit disclosure in patents?
The main difference between inherent and explicit disclosure in patents lies in how the information is presented in the patent application. MPEP 2163.07(a) explains: “By disclosing in a patent application a device that inherently performs a function or has a property, operates according to a theory or has an advantage, a patent application necessarily discloses…
Read MoreHow does the doctrine of inherent disclosure affect written description requirements?
The doctrine of inherent disclosure can significantly impact the written description requirements for patent applications. As stated in MPEP 2163.07(a): “Under the doctrine of inherent disclosure, when a specification describes an invention that has certain undisclosed yet inherent properties, that specification serves as adequate written description to support a subsequent patent application that explicitly recites…
Read MoreCan the written description requirement be satisfied by inherent disclosure?
Yes, the written description requirement can potentially be satisfied by inherent disclosure, but this approach has limitations and requires careful consideration. The MPEP 2163.01 provides guidance on this matter: “To establish inherency, the extrinsic evidence ‘must make clear that the missing descriptive matter is necessarily present in the thing described in the reference, and that…
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