2100 Patentability

2141.01(a) Analogous and Nonanalogous Art

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 »

Submitted by (@mspark)

Voting

-2 votes
0 up votes
2 down votes
Active

MISCELLANEOUS - Appendices and Other

Links in MPEP Paragraphs as Popups?

MPEP paragraphs often contain explanatory links to other short sections, laws, rules, etc. They would be easier to comprehend if the links were displayed as popups so the reader wouldn't have to jump back and forth in the manual. I've never seen popup footnotes or links in pdf myself, but I've seen references to such in a brief search, so I guess it's possible: https://accessible-digital-documents.com/blog/accessible-pdf-footnotes-endnotes/ ...more »

Submitted by (@patentagentman)

Voting

0 votes
0 up votes
0 down votes
Active

1300 Allowance and Issue

1306 could reference 35 USC 21(b) - weekend rule

MPEP 1306 (Issue Fee) opens with "The issue fee ... [is] due 3 months from the date of the Notice of Allowance." However, as far as I know, the weekend rule of 35 USC 21(b) still extends the time period if it would otherwise end on a weekend. Could 1306 be amended to reference this statute, for completeness? 35 USC 151 Issue of Patent.--- (a) ... The notice shall specify a sum ... which shall be paid within 3 months ...more »

Submitted by (@chrisw)

Voting

0 votes
0 up votes
0 down votes
Active

2100 Patentability

2111.05 "or process" lacks cited support

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 »

Submitted by (@jasonliao)

Voting

0 votes
0 up votes
0 down votes
Active

600 Parts, Form, and Content of Application

608.04(b) could reference 1893.03(e)

608.04(b) (Jan. 2018) says: > Applicants can avoid the need to file a preliminary amendment by incorporating any > desired amendments into the text of the specification, even where the application is > a continuation or divisional application of a prior-filed application. Applicants are > strongly encouraged to avoid submitting any preliminary amendments. However, this "strong[] encourage[ment]" does not apply to national-stage ...more »

Submitted by (@chrisw)

Voting

0 votes
0 up votes
0 down votes
Active

1100 Statutory Invention Registration (SIR); Pre-Grant Publication (PGPub) and Preissuance Submissions

Nonpub req can't be filed separately on the same date? (1122, I)

Opening a new chapter! Not a situation I have personally encountered, but I just ran across this in 1122, II (p. 1100-11) (Jan. 2018): > A nonpublication request must be filed upon the filing of the > application. This is a statutory requirement and cannot be waived. So far, so good. But then: > The nonpublication request must also be included with the application > papers. The nonpublication request cannot ...more »

Submitted by (@chrisw)

Voting

0 votes
0 up votes
0 down votes
Active

MISCELLANEOUS - Appendices and Other

Request: PDX index of the Jan. 2018 publication

Thanks very much for the 01-2018 publication! I am looking forward to enjoying the changes as I work with it. Would you be willing to provide a PDX index file to the downloadable PDF version, or point me to where it is? I can't find it on the MPEP page or in e9r-08-2017.zip. The 11-2015 publication included the "E9R-07.2015.pdx" index file, and I have made good use of that over the last two years. (The 11-2015 publication ...more »

Submitted by (@chrisw)

Voting

0 votes
0 up votes
0 down votes
Active

700 Examination of Applications

706.03(a): Point pro se applicants to Alice guidance

Most Alice rejections I have received recently cite caselaw by name, but do not tell you how to find the decisions themselves. It occurred to me today that this may effectively prevent a pro se applicant from responding to such a rejection. I propose amending 706.03(a), form paragraph 7.05.015, to refer to the USPTO's web site for information not found in the Action. For example: (>>insertions<< marked) --- the claimed ...more »

Submitted by (@chrisw)

Voting

1 vote
1 up votes
0 down votes
Active

1800 Patent Cooperation Treaty

1893: Expressly reference amendments outside Chapter II

I think 1893 (Nov. 2015) and its subsections could improve clarity on the national-stage status of amendments other than those made during Chapter II. Currently: - 1893.01(d) mentions that a translation in the national stage should incorporate any Rule 26 corrections or Rule 91 rectifications. - 1893.03(e), I. references the WIPO pamphlet of the application, but does not specify the effect of any republications. ...more »

Submitted by (@chrisw)

Voting

0 votes
0 up votes
0 down votes
Active

1800 Patent Cooperation Treaty

1893.03(e), I: Clarify language and procedure

In 1893.03(e), I.: The text notes that "If the international application is published in English, the Office will use the description, claims, abstract and drawings as published in the pamphlet for the U.S. national stage application under 35 U.S.C. 371." This statement is perfectly clear. However, I think it would benefit from some expansion. 1. I proposed expressly adding the logical consequence: "Therefore, any ...more »

Submitted by (@chrisw)

Voting

0 votes
0 up votes
0 down votes
Active

500 Receipt and Handling of Mail and Papers

Change 509.03's Roman numerals to subsections

509.03 is titled "Claiming small entity status." However, parts VI--X include information other than "how to claim," and part VII is how to *not* claim ("Removal of Status"). I request that parts I--X be changed to subsections 509.03(a)--509.03(j) so that they will appear in the PDF bookmarks, and so that the information in parts VI--X will be be easier to find. As always, thanks for considering this request!

Submitted by (@chrisw)

Voting

0 votes
0 up votes
0 down votes
Active

700 Examination of Applications

Clarify 7.38: "any of the references being used" is incorrect

Subject: MPEP 707.07(f), form paragraph 7.38 (p. 700-160, Nov. 2015) The current language says "Applicant’s arguments ... are moot because [they] do not apply to any of the references being used in the current rejection." However, I regularly see this paragraph in second 103 rejections when some references have been carried forward. Would you please update the language to match how it is used, or add a separate form ...more »

Submitted by (@chrisw)

Voting

1 vote
1 up votes
0 down votes
Active