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2400 Biotechnology

2422-2426: Sequence Listing Rules

Is there a reason why the USPTO doesn't allow transfer of CRFs from a parent case without a paper copy? My understanding of how the Office is interpreting the transfer rules is that you can only request transfer of the CRF if you also file a paper copy or PDF copy of the sequence listing. They will not allow transfer if you have an incorporation-by-reference in lieu of the paper copy of PDF.

It would make a lot more... more »

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2100 Patentability

Incomplete citation to Symantec in 2106.04(a)(2)(II.)(A.)

MPEP 2106.04(a)(2)(II.)(A.) introduces the full citation for Intellectual Ventures I LLC v. Symantec Corp., which is then relied upon for the pincite for the rest of the MPEP.

However, the first full citation to this case is missing its identification of the Federal Circuit in the last part of the citation. It just provides the year of the decision, which is the form that is usually reserved for when it is otherwise... more »

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2100 Patentability

Add back the precedential holding of Ex Parte Nehls to 2111.05 trending idea

The June 2020 revision of the MPEP deleted the following sentence: "USPTO personnel need not give patentable weight to printed matter."

You need to add it back for two reasons.

First, the MPEP is supposed to reflect Office policy, and it is established Office policy that USPTO personnel need not give patentable weight to printed matter. Specifically, this policy is established by the precedential holding of Ex parte... more »

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2100 Patentability

Grammatical error in 2111.05 trending idea

The second sentence of 2111.05 reads "Since a claim must be read as a whole, USPTO personnel may not disregard claim limitations comprised of printed matter."

 

The word "comprised" is synonymous with "included" or "contained." It does not make sense to refer to claim limitations "comprised of" printed matter, because it does not make sense to refer to claim limitations being "included of" printed matter or "contained... more »

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2100 Patentability

Remove reference to Autogiro in MPEP 2163

MPEP 2163 is about the Written Description requirement. MPEP 2163(II)(A)(3)(a) cited Autogiro as support for the following quote:
"An applicant may show possession of an invention by disclosure of drawings or structural chemical formulas that are sufficiently detailed to show that applicant was in possession of the claimed invention as a whole... Autogiro Co. of Am. v. United States, 384 F.2d 391, 398, 155 USPQ 697,... more »

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1300 Allowance and Issue

Removing references to eDan trending idea

MPEP 1309.02 says applications with errors preventing issue "are placed on the examiner's 'expedited' tab in eDan and should be taken up for immediate action." We have not used eDan in several years, and I think it was even removed from our computers nearly four years ago. So "eDan" should be replaced either with "DAV" or "PE2E-DAV."

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2100 Patentability

2141.01(a) Analogous and Nonanalogous Art: KSR is NOT applicable

2141.01(a)(I) need to be completely re-written! This section correctly cites In re Bigio, 381 F.3d 1320, 1325, 72 USPQ2d1209, 1212 (Fed. Cir. 2004). However, everything following that citation that references KSR is nonsense! The 'problem' described in KSR was in relation for reasoning associated with combining the teachings of references. It had absolutely NOTHING to do with deciding whether a reference is analogous... more »

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2100 Patentability

Remove part of quotation from Chicago Rawhide

MPEP 2144.04(VI)(C) cites Chicago Rawhide, 223 USPQ 351 (Bd. Pat App. & Inter. 1984) for both "[t]he mere fact that a worker in the art could rearrange the parts of the reference device to meet the terms of the claims on appeal is not by itself sufficient to support a finding of obviousness" and "[t]he prior art must provide a motivation or reason for the worker in the art, without the benefit of the appellant's specification,... more »

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2700 Patent Terms and Extensions

Automatic Patent placement trending idea

when an inventor submits a new idea to be patented without help from a patent attorney it should be automatically placed into the correct category. Either Utility Patent, if it is truly a utility patent, or Design patent, if that is truly what it is. This would save a lot of time and money on everyone's part.
For instance, I submitted my provisional application for an idea on my own and because i thought that i had to... more »

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2100 Patentability

2111.03 fixing the grammar/semantics of the word "unrecited"

MPEP § 2111.03 explains how different transitional phrases in a claim affect claim scope with respect to what "unrecited" additional components or steps, if any, are excluded from the scope of the claim. I proposed replacing all instances of the word "unrecited" with the word "non-recited."

This word, "unrecited," does not accurately describe the concept. When the "un-" prefix is paired with a verb, it typically causes... more »

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2100 Patentability

Safety and Efficacy Considerations - evidence clarification

Medical products have been given some leeway by the USPTO, in terms of product safety. Their safety is regulated by another government division, the Food and Drug Administration (FDA). Medical product makers do not want to "publicize" inventions prior to patenting. If USPTO demanded FDA approval, that would allow other companies to copy the invention while it was being tested for the FDA. It makes more sense to patent... more »

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2100 Patentability

How to Rebut a 102/103 rejection based on Inherency

MPEP § 2112 which address the Inherency Doctrine, makes clear that once a prima facie case of obviousness is established, the burden shifts to applicants to show that the claimed property is not inherent. However, this section of the MPEP (and the MPEP as a whole) fails to articulate how applicants can satisfy this burden. Because of this lack of guidance, Examiners commonly mistakenly apply the unexpected results standard... more »

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600 Parts, Form, and Content of Application

Clarify position of copyright notice in spec (1.71/1.77/608.01)

MPEP 608.01(w) (Jan. 2018) and 27 CFR 1.71(d) suggest that a copyright-notice paragraph should "preferably [be] the first paragraph ... of the specification." However, this is often not the case. Would the Office please clarify at least the MPEP, and preferably also 1.71(d), to reflect current practice? For example, in recent US 10,219,356 (the first hit in a quick patft search), the "cross-reference to related applications"... more »

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600 Parts, Form, and Content of Application

"Infringement Test" in 608.01(n)

MPEP 608.01(n)(III) is labeled "infringement test," but the "infringement test" is actually described in the previous section, MPEP 608.01(n)(II), third paragraph, discussing whether or not claims could be met without infringing the parent claims. In contrast, MPEP 608.01(n)(III) references infringement in its first paragraph, but then only discusses the "further limitation" requirement.

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