What is the “subject matter” requirement for the AIA 35 U.S.C. 102(b)(2)(B) exception?
The “subject matter” requirement is crucial for applying the AIA 35 U.S.C. 102(b)(2)(B) exception. The MPEP clarifies: “The subject matter in the prior disclosure being relied upon under AIA 35 U.S.C. 102(a) must be the same ‘subject matter’ as the subject matter previously publicly disclosed by the inventor for the exceptions in AIA 35 U.S.C.…
Read MoreWhat is the difference between structural and functional limitations in apparatus claims?
In apparatus claims, features can be recited either structurally or functionally. As stated in MPEP 2114: “Features of an apparatus may be recited either structurally or functionally. In re Schreiber, 128 F.3d 1473, 1478, 44 USPQ2d 1429, 1432 (Fed. Cir. 1997).” Structural limitations describe the physical components of the apparatus, while functional limitations describe what…
Read MoreWhat role do structural similarities play in determining obviousness of species claims?
Structural similarities between the prior art genus or species and the claimed species play a significant role in obviousness determinations. As stated in MPEP 2144.08: “If such a prior art species or subgenus is structurally similar to that claimed, its disclosure may provide a reason for one of ordinary skill in the art to choose…
Read MoreHow does the concept of structural obviousness apply to complex mixtures like zeolites?
The application of structural obviousness to complex mixtures like zeolites can be challenging and requires careful consideration. MPEP 2144.02 provides an important example: “The Court held that different crystal forms of zeolites would not have been structurally obvious one from the other because there was no chemical theory supporting such a conclusion. The known chemical…
Read MoreWhat is the difference between structural elements and material worked upon in patent claims?
In patent claims, particularly apparatus claims, it’s crucial to distinguish between structural elements and material worked upon. MPEP 2115 provides guidance on this distinction: Claim analysis is highly fact-dependent. A claim is only limited by positively recited elements. Structural elements are the physical components that make up the claimed apparatus. These are the positively recited…
Read MoreWhat is the strongest rationale for combining references in an obviousness rejection?
The MPEP provides guidance on the strongest rationale for combining references in an obviousness rejection. It states, “The strongest rationale for combining references is a recognition, expressly or impliedly in the prior art or drawn from a convincing line of reasoning based on established scientific principles or legal precedent, that some advantage or expected beneficial…
Read MoreWhat are the differences between “streamlined” and “non-streamlined” ex parte reexamination requests?
The main differences between “streamlined” and “non-streamlined” ex parte reexamination requests are: Filing Fee: Streamlined requests: Lower fee under 37 CFR 1.20(c)(1) Non-streamlined requests: Higher fee under 37 CFR 1.20(c)(2) Page Limit: Streamlined requests: 40 or fewer pages Non-streamlined requests: More than 40 pages Formatting Requirements: Streamlined requests: Must meet specific formatting requirements (e.g., line…
Read MoreHow does streamlined eligibility analysis differ from full eligibility analysis?
Streamlined eligibility analysis is a simplified approach for assessing patent eligibility when a claim’s eligibility is self-evident. The main differences between streamlined and full eligibility analysis are: Complexity: Streamlined analysis is simpler and faster than the full analysis. Applicability: Streamlined analysis is used for claims that clearly do not tie up judicial exceptions, while full…
Read MoreWhat is the ‘streamlined’ request option for ex parte reexamination?
The ‘streamlined’ request option for ex parte reexamination, introduced on January 16, 2018, allows for a reduced filing fee under certain conditions. According to the MPEP: “Requests for ex parte reexamination under 35 U.S.C. 302 filed on or after January 16, 2018 may be filed with a reduced filing fee set forth in 37 CFR…
Read MoreWhat are the requirements for a “streamlined” ex parte reexamination request?
A “streamlined” ex parte reexamination request under 37 CFR 1.20(c)(1) must meet the following requirements: Have forty (40) or fewer pages Use double-spaced or one-and-a-half spaced lines Use a non-script type font such as Arial, Times New Roman, or Courier Use a font size no smaller than 12 point Have margins that conform to the…
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