2165, I., p. 2100-279 (Nov. 2015), right column, cites Union Carbide v. Borg-Warner. The citation given is 550 F.2d 555. However, as far as I can tell, that is 550 F.2d *355* (three, not five). Would you please fix? Thank you!
Introduction (Nov. 2015), p. 1, right column, bottom, reads, in part: "The primary function of the rules is to advise the public of the rules which ... must be followed before the USPTO". Would you please rewrite the beginning part of that sentence for clarity? It seems to me a bit redundant. Suggestion: "The rules govern conduct of examiners, applicants, and patent practitioners before the Office. The rules are available ...more »
Fact pattern: A corporation is applying for a patent. A first inventor has signed the Assignment papers assigning that inventor's rights to the corporation. A second inventor is on vacation and cannot sign the Assignment before filing, but is under an obligation to assign to the corporation. MPEP 605.01, and the language in the ADS (PTO/AIA/14 (11-15)), are unclear about whether to list one or two Applicants in this ...more »
Can theatrical films or movies like "Back to the Future" be cited as art in an IDS? I am familiar with citing Youtube videos. Would it be necessary to paper file the IDS and include a DVD of the movie?
In the Introduction to the MPEP (or whatever prefatory section is preferred), add a short section on which terms are requirements and which describe best practice. Those without legal training sometimes interpret the term "should" similarly to the term "must." This seems to lead to confusion and complaints from those MPEP readers that the MPEP is "confusing" or "self-contradictory." Although some readers of the MPEP ...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.
Similar to Justin's idea* - 2145 would also be much easier to navigate if split. I suggest moving the text under Roman numeral XI just before the current Roman numeral I to form new 2145. I suggest changing Roman numerals I-X to 2145.01-2145.10 respectively. Apologies if this is a duplicate - I can't find it mentioned through the Ideascale search or a targeted Google search. * https://uspto-mpep.ideascale.com/a/dtd/%C2%A7-2181-should-be-broken-up-into-subsections/540832-9426 ...more »
Alternatively, amend appendix II to include the text of all of the cited court cases.
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 »
Wow - first idea in this chapter!
Anyway, 402.10 (Nov. 2015) (p. 400-19, right column), first paragraph, says "Papers revoking ... will not be accepted ... when signed by less than all". I believe that should read "by fewer than all." Similarly, the title should "fewer" instead of "less." Thanks!
As explained by MPEP 2111.04, the phrase "adapted to" is sometimes interpreted as the narrower "configured to" and other times as the broader "capable of." The MPEP directs "[t]he determination of whether each of these clauses is a limitation in a claim depends on the specific facts of the case," and cites In re Giannelli to show that the court determined the scope of "adapted to" by analyzing the written description. ...more »
In 706.07(h), XI.A. (p. 700-135, Nov. 2015): - The text references 37 CFR 1.304 (left column, bottom). However, the AIA removed and reserved that section (https://www.uspto.gov/web/offices/pac/mpep/mpep-9020-appx-r.html#d0e326176). Would you please correct the reference? - The text does not reference MPEP 1214.07, although 1214.07 does reference 706.07(h), XI. See p. 1200-60 (Nov. 2015). Would you please add the ...more »