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1700 Miscellaneous

§103 - problem-and-solution

Should §103 of the MPEP be completed with a lead-in section recommending examiners and applicants to frame their analysis on obviousness using the “problem-and-solution approach”?

See the article in ipWatchdog “Could or should the USPTO adopt the EPO problem-and-solution approach for assessing obviousness”.

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1800 Patent Cooperation Treaty

1893.03(e), I: Clarify language and procedure

In 1893.03(e), I.:

The text notes that "If the international application is published in English, the Office will use the description, claims, abstract and drawings as published in the pamphlet for the U.S. national stage application under 35 U.S.C. 371." This statement is perfectly clear. However, I think it would benefit from some expansion.

1. I proposed expressly adding the logical consequence: "Therefore, any... more »

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1800 Patent Cooperation Treaty

1893: Expressly reference amendments outside Chapter II

I think 1893 (Nov. 2015) and its subsections could improve clarity on the national-stage status of amendments other than those made during Chapter II. Currently:

- 1893.01(d) mentions that a translation in the national stage should incorporate any Rule 26 corrections or Rule 91 rectifications.

- 1893.03(e), I. references the WIPO pamphlet of the application, but does not specify the effect of any republications.... more »

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2100 Patentability

2111.05: emphasize substrate relationship requirement for weight

The current text of MPEP 2111.05, if read quickly, seems to suggest that a "function" of "descriptive material" itself carries patentable weight. But this interpretation is not correct: A sheet of instructions as part of the kit claim in In re Ngai (cited in this section) was found to *not* have patentable weight. The "functional" nature of the particular instructions did not save the claims from anticipation over a... more »

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2100 Patentability

2111.02 Effect of Preamble Needs Additional Explanations

It appears, in my experience, that there is confusion regarding this section of the MPEP and it would be very helpful to examiners if the MPEP would provide a more extensive discussion of preambles, intended uses and when statements in preambles actually limit the claimed Invention. Quite respectfully, the statement in the MPEP, upon citing In re Schriber, indicates 'If a prior art structure is capable of performing... more »

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2100 Patentability

2111.04 Whereby/Wherein clauses (inter alia)

As a suggestion, in relation to Minton v. Nat’l Ass’n of Securities Dealers, Inc, this section could be expanded, if deemed applicable, to include other words with a similar meaning to 'wherein' and 'whereby' which may also be interpreted as merely indicating the intended outcome of a positively-recited method step; e.g., 'thereby,' thereto,' 'therein.' It would also be very helpful, especially for new examiners, to... more »

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2100 Patentability

2164.01(c) In re Vaeck citation

The MPEP here states:

When a compound or composition claim is limited by a particular use, enablement of that claim should be evaluated based on that limitation.
See In re Vaeck, 947 F.2d 488, 495, 20 USPQ2d 1438, 1444 (Fed. Cir. 1991) (claiming a chimeric gene capable of being expressed in any
cyanobacterium and thus defining the claimed gene by its use).

Quite respectfully, is it 'defining the claimed gene by... more »

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2100 Patentability

Title to 2112.V is misleading

The title is "ONCE A REFERENCE TEACHING PRODUCT APPEARING TO BE SUBSTANTIALLY IDENTICAL IS MADE THE BASIS OF A REJECTION, AND THE EXAMINER PRESENTS EVIDENCE OR REASONING TENDING TO SHOW INHERENCY, THE BURDEN SHIFTS TO THE APPLICANT TO SHOW AN UNOBVIOUS DIFFERENCE."

This title is misleading because the rejection can also be overcome by rebutting the Examiner's evidence or logic for inherency. See Ex parte Levy, 17 USPQ2d... more »

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2100 Patentability

Inaccurate paraphrase of In re Schreiber - MPEP 2114(I)

Examiners often reference the decision of In re Schreiber, 1218 F.3d 1473 (Fed. Cir. 1997) for the proposition that “claims directed to an apparatus must be distinguished from the prior art in terms of structure rather than function” because it is described this way in MPEP §2114(I). However, it appears that the Schreiber court itself never made such a statement. Rather, the court found that because the claimed invention... more »

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2100 Patentability

Expand 2145, IV. to explain "Keller," not just quote it.

MPEP 2145, IV (Nov. 2015), at 2100-194, quotes In re Keller without explanation. The Office should expand the discussion to explain to Examiners and Applicants the scope of applicability of Keller.

Keller says "[o]ne cannot show nonobviousness by attacking references individually where the rejections are based on combinations of references." 642 F.2d 413, 426. I have seen this quote interpreted to mean that any argument... more »

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2100 Patentability

Remove MPEP § 2172.01

MPEP § 2172.01 is routinely misapplied by examiners. Examiners appear to apply it in situations where the examiner thinks that what the applicant is claiming is too broad, but:
(i) the factual circumstances of the two main cited cases, In re Mayhew and In re Venezia, were quite narrow and never considered by the examiners; and
(ii) most rejections under § 2172.01 directly contravene § 2173.04 (breadth is not indefiniteness).... more »

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2100 Patentability

MPEP 2161.01 I paragraph 6 sentences need clarification

One of the sentences in this paragraph is very unclear and is leading to confusion as to what the standard for the written description and in particular possession actually is. Quoting from MPEP 2161.01 I paragraph 6 the sentence in question is the first sentence from the following two sentences:
Specifically, if one skilled in the art would know how to program the disclosed computer to perform the necessary steps described... more »

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2100 Patentability

What happened to 2116?

MPEP 2116 formerly* read:

The materials on which a process is carried out must
be accorded weight in determining the patentability
of a process. Ex parte Leonard, 187 USPQ 122 (Bd.
App. 1974).

I just today noticed that 2116 has gone. Why? The change summary** that removed it says "Section removed and reserved" but does not give an explanation. If it was removed for purely logistical reasons, would you please bring... more »

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