How can applicants respond to obviousness rejections based on scientific theory?
How can applicants respond to obviousness rejections based on scientific theory? When faced with obviousness rejections based on scientific theory, applicants have several strategies to respond effectively. The MPEP 2144.02 provides guidance on how examiners use scientific principles, but applicants can counter these arguments in several ways: Challenge the applicability of the theory: Demonstrate that…
Read MoreWhat should I do if I receive a Notice of Non-Acceptance of Patent Maintenance Fee?
If you receive a Notice of Non-Acceptance of Patent Maintenance Fee (PTO-2142) from the USPTO, it’s crucial to take prompt action. According to MPEP 2531: “Reply to the notice is required prior to expiration of the grace period provided by 37 CFR 1.362(e) in order to avoid the expiration of the patent.” Here are the…
Read MoreHow can an appellant respond to new grounds of rejection in an Examiner’s Answer?
When an Examiner’s Answer contains new grounds of rejection, the appellant has two options to respond within two months from the date of the Examiner’s Answer. According to MPEP § 2275, these options are: Reopen prosecution: The appellant can request that prosecution be reopened before the primary examiner by filing a reply under 37 CFR…
Read MoreWhat should I do if there’s a discrepancy in the maintenance fee status information provided by the USPTO?
If you encounter a discrepancy in the maintenance fee status information provided by the USPTO, take the following steps: Double-check your records: Ensure that your own payment records are accurate and up-to-date. Contact the USPTO Office of Finance: Call 571-272-6500 to speak with a representative who can verify the information in their system. Provide evidence:…
Read MoreHow can an applicant resolve ambiguities in functional limitations?
The MPEP provides several ways an applicant can resolve ambiguities in functional limitations during prosecution: Use a quantitative metric instead of a qualitative functional feature. For example, include a numeric limitation for a physical property. Demonstrate that the specification provides a formula for calculating a property, along with examples that meet and do not meet…
Read MoreHow are residues represented in sequence enumerations according to WIPO Standard ST.26?
WIPO Standard ST.26 specifies two ways to represent residues in sequence enumerations: Individual representation: Each residue is represented by a name, abbreviation, symbol, or structure. For example, “HHHHHHQ” or “HisHisHisHisHisHisGln”. Shorthand formula: Multiple residues are represented by a condensed notation. For example, “His6Gln”. As stated in MPEP 2412.02(a): “WIPO Standard ST.26 specifies that ‘enumeration of…
Read MoreDoes res judicata apply in patent reexamination proceedings?
Res judicata, or claim preclusion, generally does not apply in patent reexamination proceedings. The MPEP § 2259 states: “A rejection on the grounds of res judicata will not be appropriate in reexamination.” This is because one of the essential elements of res judicata is the involvement of the same parties, and the USPTO is not…
Read MoreIs res judicata applicable in patent reexamination proceedings?
No, res judicata (claim preclusion) is generally not applicable in patent reexamination proceedings. MPEP § 2659 states: “The doctrine of res judicata based on a court holding in an infringement proceeding is not applicable in reexamination proceedings, because the Office was not a party to the litigation.” This means that even if a court has…
Read MoreHow does res judicata apply in patent law?
Res judicata in patent law prevents patent owners or applicants from seeking claims that are not patentably distinct from claims previously refused or canceled during administrative trials or federal court proceedings. According to MPEP 2190: “A patent owner or applicant may be precluded from seeking a claim that is not patentably distinct from a claim…
Read MoreWhat are the requirements for a depository to be recognized as suitable by the USPTO?
For a depository to be recognized as suitable by the USPTO, it must meet several requirements as outlined in 37 CFR 1.803(a). These include: Having a continuous existence Existing independently of the depositor’s control Possessing sufficient staff and facilities for examination and storage Providing safety measures to minimize the risk of losing biological material Being…
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