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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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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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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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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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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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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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1500 Design Patents

1504.05: Add section for how to respond to a restriction

This is a followup to https://uspto-mpep.ideascale.com/a/dtd/Correction-of-Inventorship/549565-9426 by @zmthomas. I admit that I don't have nearly as much design-patent experience as some of my colleagues. Please let me know if I am missing something! I have searched sections 700, 800, and 1500 (Jan. 2018). The only places I can find an explanation of how to respond to a restriction requirement in a design application ...more »

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600 Parts, Form, and Content of Application

Correction of Inventorship

37 CFR 1.48(c) (text below) requires an additional fee to paid "unless the request is accompanied by a statement that the request to correct or change the inventorship is due solely to the cancelation of claims in the application." How is this rule being interpreted if only one claim is cancelled? How is this rule being interpreted in a design application when the change of inventorship is due to an election/restriction ...more »

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600 Parts, Form, and Content of Application

601.05(a), II: Don't need strikeout when first adding Applicant

601.05(a), II (Jan. 2018) at 600-50--51 says that: A corrected ADS accompanying a request to change the applicant ... must show the changes in applicant information relative to the applicant information on the most recent filing receipt, even if ... an applicant was not previously identified in an ADS ... However, I don't believe that matches the Office's current practice. Specifically, if no Applicant has been specified, ...more »

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600 Parts, Form, and Content of Application

Typo in 601.05(a), II (Jan. 2018 at 600-51)

In 601.05(a), II (Jan. 2018 printing at 600-51, left column), I believe the last sentence should be amended to correct a typo as follows:

 

... must show ... the new information with underlining, as if the incorrect information [[was]] _had been_ submitted in an ADS filed with the application.

 

(all opinions my own)

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600 Parts, Form, and Content of Application

Promote 602.01(a) and 602.01(b) out from under "Inventorship"

602.01(a) and 602.01(b) (Jan. 2018) are nested under 602.01 Inventorship. However, 01(a) and 01(b) deal with the oath/declaration generally, not just with inventorship issues. I suggest promoting them one level, or moving them out from under 602.01. Perhaps 602.01(a) could become 602.10 and 602.01(b) become 602.11. Alternatively, perhaps a new 601.10 "General requirements and procedures" could be added, with 602.01(a) ...more »

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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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