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 »
(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 »
Specifically, if one skilled in the art would know how to program the disclosed computer to perform the necessary steps described... more »
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.
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 »
"However, where the claim as a whole is directed conveying a message or meaning to a human reader independent of the intended computer system, and/or the computer-readable medium merely serves as a support for information or data, no functional relationship exists."
The phrase "is directed conveying" is missing the word "to," as in, "the claim... more »
Two paragraphs above 2181(II)(C) is the phrase "the claim should be rejected under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, second paragraph." I believe that the 'f' in 112(f) should be a 'b'.
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 »
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 »
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.
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!
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 »
“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 »