2100 Patentability

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(@bricoyle)

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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(@ryanpoolrp)

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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(@dorange)

2100 Patentability

Clarification of number of species to support a broad genus

MPEP 2163.03(V) states "An original claim may lack written description support when ... (2) a broad genus claim is presented but the disclosure only describes a narrow species with no evidence that the genus is contemplated. See Ariad Pharms., Inc. v. Eli Lilly & Co., 598 F.3d 1336, 1349-50 (Fed. Cir. 2010) (en banc)." Here, the use of the singular in "a narrow species" could suggest that this rejection is only allowed ...more »

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(@chrisw)

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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(@jasonliao)

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).

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(@jasonliao)

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 »

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(@james.nigh)

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 »

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(@chrisw)

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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(@mspark)

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 »

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(@jasonliao)

2100 Patentability

2111.05 "or process" lacks cited support

In MPEP 2111.05, either citations to related-to-process based decisions should be provided, or the subheadings should be altered to remove parenthetical reference to processes. The two subheadings in question are: I. DETERMINING WHETHER A FUNCTIONAL RELATIONSHIP EXISTS BETWEEN PRINTED MATTER AND ASSOCIATED PRODUCT (OR PROCESS) II. FUNCTIONAL RELATIONSHIP BETWEEN PRINTED MATTER AND ASSOCIATED PRODUCT (OR PROCESS) ...more »

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(@chrisw)

2100 Patentability

Typos in 2143.01, V.

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.

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(@chrisw)

2100 Patentability

2145 should also be broken up into subsections

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 »

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(@justin.blaufeld)

2100 Patentability

§ 2181 should be broken up into subsections

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 »

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(@dorange)

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 »

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