(@dorange)

800 Restriction in Applications Filed Under 35 U.S.C. 111; Double Patenting

Impermissible shift - which claims are used for comparison?

MPEP 818.02(a) says that in making a determination of whether election by original presentation has occurred, the present claimed should be compared to the "original claims." But this section directs the examiner to 821.03, which in turn cites 37 CFR 1.145, both of which say "previously claimed" instead of "original claims." A distinction can arise because application may have more than one set of amendments (i.e.,... 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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(@dorange)

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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(@chrisw)

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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(@chrisw)

MISCELLANEOUS - Appendices and Other

Clarify which section the roman-numeral headers apply to

The headers at the top of each page of the MPEP PDF give the section number. As far as I can tell, it's the last section number on that page. For example, p. 2100-141 (Nov. 2015) ends with half a sentence of 2142, so the header reads "2142." However, the vast majority of text on that page is 2141.03. Would it be possible to clarify which text is part of which section in some way? At present, I regularly wind up reading... more »

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(@chrisw)

MISCELLANEOUS - Appendices and Other

Introduction: clarify what "the rules" do

Introduction (Nov. 2015), p. 1, right column, bottom, reads, in part: "The primary function of the rules is to advise the public of the rules which ... must be followed before the USPTO". Would you please rewrite the beginning part of that sentence for clarity? It seems to me a bit redundant. Suggestion: "The rules govern conduct of examiners, applicants, and patent practitioners before the Office. The rules are available... more »

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(@patricia.leith)

700 Examination of Applications

706.07(a) Could Possibly Reference 1207.03(a)

706.07(a) discusses the fact that an action cannot be made final if a new ground of rejection is not necessitated by amendment and/or Applicant's IDS. However, it provides no information pertaining to what actually constitutes a new ground of rejection. The MPEP Appeal section; however, 1207.03(a), provides substantive guidance on what constitutes a 'new rejection' in an Examiner's Answer which appears also to be applicable... more »

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(@warrenwolfeld)

1200 Appeal

MPEP 1204.04 should better define Record On Appeal

MPEP 1204.04 points out that other than dictionary definitions, the Record of evidence upon which an appeal brief can rely includes only "the items listed in the content listing of the Image File Wrapper of the official file of the application ..., excluding amendments, Evidence, and other documents that were not entered." This definition is unclear because the IFW does not state which documents have been "entered".... more »

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(@rellinger)

700 Examination of Applications

Error and/or ambiguity in 704.13: Time Periods for reply

The second paragraph of this section states that "Applicant may extend the time period of reply up to six months in accordance with 37 CFR 1.136(a)." As this is a paragraph describing the mailing of a requirement for information that is NOT part of an action on the merits, it is unclear to me whether the maximum statutory period for reply of six months is applicable. Regardless, as drafted it seems ambiguous to me;... more »

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(@patricia.leith)

800 Restriction in Applications Filed Under 35 U.S.C. 111; Double Patenting

MPEP 803.04 Nucleotide Sequences

This part of the MPEP does not appear to take into consideration the OG notice published March 27, 2007 which redacts the 'ten sequence rule.' Will the MPEP be amended to include the information in the OG notice? Further, the MPEP does not explicitly discuss amino acid sequence restriction in Chapter 800. It would be very helpful if the MPEP discussed restriction and how it applies specifically to amino acid sequences.... more »

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(@cwright)

1200 Appeal

Basis for 1207.04?

Section 1207.04 of the MPEP states that Examiners can reopen prosecution after the Applicant has filed an Appeal Brief. I do not see any basis in the patent statutes or rules for this section of the MPEP. Nor is there any justifiably reason to allow this. Examiners are allowed to place new rejections in the Examiner's Answer, which the Applicant can then choose to respond to by reopening prosecution or proceeding... more »

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(@abelinskiy)

600 Parts, Form, and Content of Application

pre-AIA 37 C.F.R. 1.41 title in MPEP § 602.01(I)

MPEP § 602.01(I) cites pre-AIA 37 C.F.R. 1.41 "Applicant for patent" instead of post-AIA 37 C.F.R. 1.41 "Inventorship."

This observation is similar to one noted before for 602.01(c)(1) for 37 C.F.R. 1.48 [https://uspto-mpep.ideascale.com/a/dtd/Fix-Error-in-602-01-c-1/464461-9426]

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(@chrisw)

100 Secrecy, Access, National Security, and Foreign Filing

Clarify "expedited" FFL petition in 140, I.

MPEP 140, I. (Jan. 2018), at 100-35--36, is titled "Expedited Foreign Filing License." It references 37 CFR 5.12(b), which relates to a "petition for license." Would the Office please clarify what "Expedited" means here? For most petitions, the Applicant can submit a separate petition under 1.182 to request expedited consideration of the substantive petition. However, as far as I know, there is only one type of petition... more »

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