Examiners often reference the decision of In re Schreiber, 1218 F.3d 1473 (Fed. Cir. 1997) for the proposition that “claims directed to an apparatus must be distinguished from the prior art in terms of structure rather than function” because it is described this way in MPEP §2114(I). However, it appears that the Schreiber court itself never made such a statement. Rather, the court found that because the claimed invention ...more »
Why is the following quote from KSR included in this section about analogous art?: “Under the correct analysis, any need or problem known in the field of endeavor at the time of the invention and addressed by the patent [or application at issue] can provide a reason for combining the elements in the manner claimed. ” KSR Int'l Co. v. Teleflex Inc., 550 U.S. 398, 420, 82 USPQ2d 1385, 1397 (2007). The 'problem' being ...more »
It appears, in my experience, that there is confusion regarding this section of the MPEP and it would be very helpful to examiners if the MPEP would provide a more extensive discussion of preambles, intended uses and when statements in preambles actually limit the claimed Invention. Quite respectfully, the statement in the MPEP, upon citing In re Schriber, indicates 'If a prior art structure is capable of performing ...more »
p. 2100-164, first sentence: I believe "If proposed modification" should read "If a proposed modification."
p. 2100-165, around line 16: I believe "if the prior art device was turned upside down" should be "if the prior art device were turned upside down". See Gordon, cited, at 902.
MPEP § 2112 which address the Inherency Doctrine, makes clear that once a prima facie case of obviousness is established, the burden shifts to applicants to show that the claimed property is not inherent. However, this section of the MPEP (and the MPEP as a whole) fails to articulate how applicants can satisfy this burden. Because of this lack of guidance, Examiners commonly mistakenly apply the unexpected results standard ...more »
MPEP 2145, IV (Nov. 2015), at 2100-194, quotes In re Keller without explanation. The Office should expand the discussion to explain to Examiners and Applicants the scope of applicability of Keller. Keller says "[o]ne cannot show nonobviousness by attacking references individually where the rejections are based on combinations of references." 642 F.2d 413, 426. I have seen this quote interpreted to mean that any argument ...more »
MPEP 2163.03(V) states "An original claim may lack written description support when ... (2) a broad genus claim is presented but the disclosure only describes a narrow species with no evidence that the genus is contemplated. See Ariad Pharms., Inc. v. Eli Lilly & Co., 598 F.3d 1336, 1349-50 (Fed. Cir. 2010) (en banc)." Here, the use of the singular in "a narrow species" could suggest that this rejection is only allowed ...more »
In MPEP 2111.05, either citations to related-to-process based decisions should be provided, or the subheadings should be altered to remove parenthetical reference to processes. The two subheadings in question are: I. DETERMINING WHETHER A FUNCTIONAL RELATIONSHIP EXISTS BETWEEN PRINTED MATTER AND ASSOCIATED PRODUCT (OR PROCESS) II. FUNCTIONAL RELATIONSHIP BETWEEN PRINTED MATTER AND ASSOCIATED PRODUCT (OR PROCESS) ...more »
MPEP 2116 formerly* read: The materials on which a process is carried out must be accorded weight in determining the patentability of a process. Ex parte Leonard, 187 USPQ 122 (Bd. App. 1974). I just today noticed that 2116 has gone. Why? The change summary** that removed it says "Section removed and reserved" but does not give an explanation. If it was removed for purely logistical reasons, would you please bring ...more »
I believe this section could be improved if there were more subheading designations within the section. For example under section A (Relevant Considerations for Evaluating Whether Additional Elements Amount to An Inventive Concept) there are two separate lists (Limitations that the courts have found to qualify as "significantly more" and Limitations that the courts have found not be enough to qualify as "significantly ...more »
MPEP 2181 is very long and difficult to cite. At the very least, each roman numeral section should be converted into a constituent decimal section. For example: 2181 Identifying and Interpreting a 35 U.S.C. 112(f) or Pre-AIA 35 U.S.C. 112, Sixth Paragraph Limitation 2181.01 DETERMINING WHETHER A CLAIM LIMITATION INVOKES 35 U.S.C. 112(f) or PRE-AIA 35 U.S.C. 112, SIXTH PARAGRAPH 2181.02 DESCRIPTION NECESSARY TO SUPPORT ...more »
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 »
The title is "ONCE A REFERENCE TEACHING PRODUCT APPEARING TO BE SUBSTANTIALLY IDENTICAL IS MADE THE BASIS OF A REJECTION, AND THE EXAMINER PRESENTS EVIDENCE OR REASONING TENDING TO SHOW INHERENCY, THE BURDEN SHIFTS TO THE APPLICANT TO SHOW AN UNOBVIOUS DIFFERENCE." This title is misleading because the rejection can also be overcome by rebutting the Examiner's evidence or logic for inherency. See Ex parte Levy, 17 USPQ2d ...more »
Eighteen portions of the newly-edited 2106 place periods outside of quotes. This is still not generally accepted in American grammar, and is inconsistent with the section as a whole (eighty-four instances of periods within the quoted text).
There are also twenty-five great number of commas outside of quotes (as opposed to thirty-two within).
Two paragraphs above 2181(II)(C) is the phrase "the claim should be rejected under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, second paragraph." I believe that the 'f' in 112(f) should be a 'b'.