How does the USPTO determine if a disclosure is an inventor-originated disclosure?
The USPTO determines if a disclosure is an inventor-originated disclosure through a case-by-case analysis. According to the MPEP: “What evidence is necessary to show that the disclosure is an inventor-originated disclosure requires case-by-case treatment, depending upon whether it is apparent from the disclosure itself or the patent application specification that the disclosure is an inventor-originated…
Read MoreHow does the USPTO determine if subject matter is interfering?
The USPTO determines if subject matter is interfering by examining the claims of different applications or patents. According to MPEP 2301.03: An interference exists if the subject matter of a claim of one party would, if prior art, have anticipated or rendered obvious the subject matter of a claim of the opposing party and vice…
Read MoreHow does the USPTO determine if a claim limitation is insignificant extra-solution activity?
The United States Patent and Trademark Office (USPTO) uses specific criteria to determine if a claim limitation constitutes insignificant extra-solution activity. According to MPEP 2106.05(g), examiners consider the following factors: Whether the extra-solution limitation is well known Whether the limitation is significant (i.e., it imposes meaningful limits on the claim such that it is not…
Read MoreHow does the USPTO determine if a Markush grouping is improper?
How does the USPTO determine if a Markush grouping is improper? The USPTO determines if a Markush grouping is improper based on two main criteria, as outlined in MPEP 2117: Lack of a single structural similarity: The members of the Markush group do not share a common structure or feature. Lack of a common use:…
Read MoreHow does the USPTO determine if a prior art reference is enabling for a claimed compound?
The USPTO determines if a prior art reference is enabling for a claimed compound by considering several factors: The level of specificity in the prior art’s disclosure of the compound The presence of working examples or detailed synthetic procedures The predictability of the art The knowledge of a person of ordinary skill in the art…
Read MoreHow does the USPTO determine if a claim is broader than the enabling disclosure?
The USPTO determines if a claim is broader than the enabling disclosure by considering two main factors: How broad the claim is with respect to the disclosure Whether one skilled in the art could make and use the entire scope of the claimed invention without undue experimentation According to the MPEP, The propriety of a…
Read MoreHow does the USPTO determine if a claim is too broad?
The United States Patent and Trademark Office (USPTO) uses several criteria to determine if a claim is too broad. According to MPEP 2173.04, the assessment depends on the specific issues with the claim: Inventor’s Regard: If the claim is broader than what the inventor regards as the invention, it may be rejected under 35 U.S.C.…
Read MoreHow does the USPTO determine if a biological material is known and readily available?
The USPTO determines if a biological material is known and readily available based on several factors: Public availability of the material Ability to reproduce the material from the written description Accessibility without undue experimentation MPEP 2404 states: “The USPTO will accept commercial availability as evidence that a biological material is known and readily available only…
Read MoreHow does the USPTO explain the basis for each determination in supplemental examination?
The USPTO explains the basis for each determination in supplemental examination by providing a clear rationale for the findings. According to MPEP 2816.03: “The determination should explain the basis for the determination of each issue with respect to each item of information. For example, the determination should explain why each item of information does or…
Read MoreHow does the USPTO determine if an art is predictable or unpredictable?
The USPTO determines whether an art is predictable or unpredictable based on the ability of a skilled artisan to anticipate the effects of changes within the subject matter. According to MPEP 2164.03: “If one skilled in the art can readily anticipate the effect of a change within the subject matter to which the claimed invention…
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