600 Parts, Form, and Content of Application

601.05(a), II: Don't need strikeout when first adding Applicant

601.05(a), II (Jan. 2018) at 600-50--51 says that: A corrected ADS accompanying a request to change the applicant ... must show the changes in applicant information relative to the applicant information on the most recent filing receipt, even if ... an applicant was not previously identified in an ADS ... However, I don't believe that matches the Office's current practice. Specifically, if no Applicant has been specified, ...more »

Submitted by (@chrisw)

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600 Parts, Form, and Content of Application

Typo in 601.05(a), II (Jan. 2018 at 600-51)

In 601.05(a), II (Jan. 2018 printing at 600-51, left column), I believe the last sentence should be amended to correct a typo as follows:

 

... must show ... the new information with underlining, as if the incorrect information [[was]] _had been_ submitted in an ADS filed with the application.

 

(all opinions my own)

Submitted by (@chrisw)

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600 Parts, Form, and Content of Application

Promote 602.01(a) and 602.01(b) out from under "Inventorship"

602.01(a) and 602.01(b) (Jan. 2018) are nested under 602.01 Inventorship. However, 01(a) and 01(b) deal with the oath/declaration generally, not just with inventorship issues. I suggest promoting them one level, or moving them out from under 602.01. Perhaps 602.01(a) could become 602.10 and 602.01(b) become 602.11. Alternatively, perhaps a new 601.10 "General requirements and procedures" could be added, with 602.01(a) ...more »

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2100 Patentability

2106.04 (1/2018): Enfish "character as a whole" missing

MPEP 2106.04 (Jan. 2018) (at 2100-21, right column) quotes the original 2014 Guidance (79 FR 74618, 74622) that “A claim is directed to a judicial exception when ... an abstract idea is recited (i.e., set forth or described) in the claim.” However, the Federal Circuit’s Enfish decision specifically found that the “‘directed to’ inquiry ... cannot simply ask whether the claims *involve* a patent-ineligible concept.” ...more »

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MISCELLANEOUS - Appendices and Other

Index link to sec. 503 is broken (Jan. 2018) (bug?)

Jan. 2018, using Acrobat v11.0.23. In the index, on p. 35, left column, lines 4 and 6, the links to section 503 do not take me there when I click them. I checked them by going to Tools | Interactive Objects | Select Object, right-clicking each one in turn, and choosing Properties | Actions. The Action shows as "Go to a page in another document," which is correct. However, the File shows as "C:\(the path to the PDFs)\.pdf" ...more »

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2100 Patentability

". to ." for 2106

Eighteen portions of the newly-edited 2106 place periods outside of quotes. This is still not generally accepted in American grammar, and is inconsistent with the section as a whole (eighty-four instances of periods within the quoted text).

 

There are also twenty-five great number of commas outside of quotes (as opposed to thirty-two within).

Submitted by (@jasonliao)

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2100 Patentability

Another outline level in 2106.05(I)(A)

Add a "1," before "Limitations that the courts have found to qualify as "significantly more" when recited in a claim with a judicial exception include: " Add a "2." before "Limitations that the courts have found not to be enough to qualify as "significantly more" when recited in a claim with a judicial exception include:" If discussing Alice step B, in order to cite the MPEP for any particular class of limitation, ...more »

Submitted by (@jasonliao)

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2100 Patentability

MPEP 2106.05

I believe this section could be improved if there were more subheading designations within the section. For example under section A (Relevant Considerations for Evaluating Whether Additional Elements Amount to An Inventive Concept) there are two separate lists (Limitations that the courts have found to qualify as "significantly more" and Limitations that the courts have found not be enough to qualify as "significantly ...more »

Submitted by (@james.nigh)

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MISCELLANEOUS - Appendices and Other

App. L: A few typos in 35 USC 119 and 120 (Jan. 2018)

1. App. L (Jan. 2018) at L-29, left column, in 35 USC 119(a): comma placement:

 

"...section 41(a)(7)

, pursuant to which..."

 

should read

"...section 41(a)(7),

pursuant to which..."

 

2. Id. at L-30, right column, 35 USC 120: spacing:

 

"...or as provided by section 363 or 385which"

 

should read

 

"...or as provided by section 363 or 385 which"

 

(with space after "385")

 

Thanks!

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2100 Patentability

2106.03, I: clarify Nuijten paragraph "tangible" explanation

Please see MPEP 2106.03, I. (Jan. 2018), at 18, right column. The second non-bulleted paragraph (“paragraph A”) begins: “Even when a product has a physical or tangible form, it may not fall within a statutory category” (at 2100-19). Since paragraph A solely relates to Nuijten,* I suggest revising paragraph A to expressly relate to signals, and to clarify the meaning of “tangible.” For example, I propose revising paragraph ...more »

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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)

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