2100 Patentability

Add back the precedential holding of Ex Parte Nehls to 2111.05 trending idea

The June 2020 revision of the MPEP deleted the following sentence: "USPTO personnel need not give patentable weight to printed matter."

You need to add it back for two reasons.

First, the MPEP is supposed to reflect Office policy, and it is established Office policy that USPTO personnel need not give patentable weight to printed matter. Specifically, this policy is established by the precedential holding of Ex parte Nehls, 88 USPQ2d 1883, 1887-90 (BPAI 2008) (precedential); see also Ex parte Curry, 84 USPQ2d 1272 (BPAI 2005) (informative) (CAFC Appeal No. 2006-1003), aff'd, Rule 36 (June 12, 2006)); Ex parte Mathias, 84 USPQ2d 1276 (BPAI 2005) (informative), aff'd, 191 Fed. Appx. 959 (Fed. Cir. 2006); 1300 Off. Gaz. Pat. Office 142, 151-152 (November 22, 2005)

Second, by deleting this sentence, MPEP ยง 2111.05 no longer makes any sense. Why have an entire section of the MPEP devoted to the test for whether a claim limitation is printed matter if you're never going to say what happens to a claim element directed to printed matter?

Tags

Voting

2 votes
2 up votes
0 down votes
Idea No. 274