2100 Patentability

MPEP 2161.01 I paragraph 6 sentences need clarification

One of the sentences in this paragraph is very unclear and is leading to confusion as to what the standard for the written description and in particular possession actually is. Quoting from MPEP 2161.01 I paragraph 6 the sentence in question is the first sentence from the following two sentences: Specifically, if one skilled in the art would know how to program the disclosed computer to perform the necessary steps described ...more »

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MISCELLANEOUS - Appendices and Other

Add "MPEP TOC" bookmarks to the PDF Subject Matter Index

In the PDF files, Subject Matter Index, Nov. 2015 (mpep-9090-subject-matter-index.pdf), the Bookmarks do not include the expandable "MPEP TOC" to provide direct access to other MPEP sections. Would you please add them? Thanks!

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600 Parts, Form, and Content of Application

MPEP 608.02(a) - when are drawings and content thereof required

The MPEP should more clearly spell out when drawings are actually necessary. In process inventions, it seems that drawings should not be required, but the text of MPEP 608.02 seems to be an open invitation to examiners to make unnecessary requirements. Moreover, what exactly does "admits of illustration by a drawing" mean? Is it not possible to articulate the statute in more clear language into the rule? 35 USC 113 ...more »

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2100 Patentability

Amend MPEP § 2164.04

I believe that MPEP § 2164.04 is internally inconsistent, not an accurate statement of the law, and confusing. Examiners routinely cite MPEP § 2164.04 for the proposition that they do not have to provide any actual reasoning when rejecting a claim under § 112(a) as lacking enablement. This is not an accurate statement of the law; therefore, I suggest deleting this section. Alternatively, this section could be amended ...more »

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700 Examination of Applications

Clarity Needed on Second Non-Final According to 706.07(a)

In the case the examiner must withdraw finality of an improper Final rejection, I understand that the Office takes the position that, despite the fact the First Non-Final Rejection was proper, the "second or any subsequent" action may not be made Final if not necessitated by amendments or IDS with its fees/period clauses. However, it absolutely does not make any sense why the examiner should reopen prosecution when amendments ...more »

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2100 Patentability

Remove MPEP § 2172.01

MPEP § 2172.01 is routinely misapplied by examiners. Examiners appear to apply it in situations where the examiner thinks that what the applicant is claiming is too broad, but: (i) the factual circumstances of the two main cited cases, In re Mayhew and In re Venezia, were quite narrow and never considered by the examiners; and (ii) most rejections under § 2172.01 directly contravene § 2173.04 (breadth is not indefiniteness). ...more »

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