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 »
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 »
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 »
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 »
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 »
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 »
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 »
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 »
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).
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 »
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 »
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 »
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 »
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 »
2165, I., p. 2100-279 (Nov. 2015), right column, cites Union Carbide v. Borg-Warner. The citation given is 550 F.2d 555. However, as far as I can tell, that is 550 F.2d *355* (three, not five). Would you please fix? Thank you!