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 »
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'.
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 »
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 »