Campaign: 2100 Patentability

Broadest reasonable interpretation of "adapted to"

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 »

Submitted by (@dorange)

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Campaign: 700 Examination of Applications

706.07(h) references 37 CFR 1.304, omits 1214.07

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 »

Submitted by (@chrisw)

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Campaign: 2100 Patentability

2181 Typo

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'.

Submitted by (@dorange)

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Campaign: MISCELLANEOUS - Appendices and Other

Indicia case law

A decision was rendered in 1954 pertaining to indicia. In re Montgomery states: Patentable novelty cannot be principally predicated on mere printed matter and arrangements thereof, but must reside basically in physical structure. In re Montgomery, 102 USPQ 248 (CCPA 1954). Although this decision is old, it is pertinent in today's world, whether in displays where an application is trying to patent the word "caution" over ...more »

Submitted by (@kristina.junge)

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Campaign: 2100 Patentability

Grammatical Error in 2111.05(III.)

The first sentence in the second paragraph of MPEP § 2111.05(III.) reads: "However, where the claim as a whole is directed conveying a message or meaning to a human reader independent of the intended computer system, and/or the computer-readable medium merely serves as a support for information or data, no functional relationship exists." The phrase "is directed conveying" is missing the word "to," as in, "the claim ...more »

Submitted by (@justin.blaufeld)

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Campaign: 2100 Patentability

What happened to 2116?

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 »

Submitted by (@chrisw)

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Campaign: MISCELLANEOUS - Appendices and Other

Add a consolidated subject-matter eligibility guidance appendix

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 »

Submitted by (@chrisw)

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Campaign: 1700 Miscellaneous

§103 - problem-and-solution

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”.

Submitted by (@brianhjcronin)

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Campaign: 1200 Appeal

1206, I: clarify 1.116 vs. 41.33

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 »

Submitted by (@chrisw)

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Campaign: 2100 Patentability

MPEP 2161.01 I paragraph 6 sentences need clarification

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 »

Submitted by (@james.nigh)

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Campaign: MISCELLANEOUS - Appendices and Other

Add "MPEP TOC" bookmarks to the PDF Subject Matter Index

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!

Submitted by (@chrisw)

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Campaign: MISCELLANEOUS - Appendices and Other

Add PPH to the Subject Matter Index

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!

Submitted by (@chrisw)

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