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 »
The eligibility pages at https://www.uspto.gov/patent/laws-and-regulations/examination-policy/subject-matter-eligibility and https://www.uspto.gov/patent/laws-and-regulations/examination-policy/subject-matter-eligibility-examination-guidance-date are very helpful. However, as the number of documents grows, the tedium of citing them weighs more and more heavily. Would the editors please consider including a regularly-updated ...more »
Should §103 of the MPEP be completed with a lead-in section recommending examiners and applicants to frame their analysis on obviousness using the “problem-and-solution approach”?
See the article in ipWatchdog “Could or should the USPTO adopt the EPO problem-and-solution approach for assessing obviousness”.
1206, I (11/2015) says: > The entry of an amendment (which may not include a new affidavit,declaration, exhibit or other evidence) submitted in an application on appeal is governed by 37 CFR 41.33, not 37 CFR 1.116. However, 37 CFR 41.33(a) states that: > Amendments filed after the date of filing an appeal ... and prior to the date a brief is filed ... may be admitted as provided in §1.116 ... . Furthermore, 1204, ...more »
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 »
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!
PPH (708.02(c), Nov. 2015) isn't mentioned by name in the Subject Matter Index. Would you please add it, and relevant other terms? For example, "highway" also isn't in the index. Thanks!
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 »
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 »
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 »
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 »
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 »