(@erikakretzmer)

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

810 Action on the Merits time for reply

The time for reply in written restriction practice is now 2 months. As per December 2012 patent law treaty, http://www.uspto.gov/patent/initiatives/patent-law-treaty

 

Thanks to LIE, Adam Queler and Kevin Bechtel for giving me this information.

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(@patricia.leith)

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

803.02 Markush Claims

803.03 indicates, in-part:

"On the other hand, should the examiner determine that the elected species is allowable, the examination of the Markush-type claim will be extended. If prior art is then found that anticipates or renders obvious the Markush-type claim with respect to a nonelected species, the Markush-type claim shall be rejected and claims to the nonelected species held withdrawn from further consideration.... 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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(@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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(@chrisw)

1100 Statutory Invention Registration (SIR); Pre-Grant Publication (PGPub) and Preissuance Submissions

Nonpub req can't be filed separately on the same date? (1122, I)

Opening a new chapter! Not a situation I have personally encountered, but I just ran across this in 1122, II (p. 1100-11) (Jan. 2018):

> A nonpublication request must be filed upon the filing of the
> application. This is a statutory requirement and cannot be waived.

So far, so good. But then:

> The nonpublication request must also be included with the application
> papers. The nonpublication request cannot... more »

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(@rellinger)

1200 Appeal

Typo: 1202

The downloadable PDF version of Chapter 1200 includes a typo in section 1202:

 

decisions mailed prior to September 16, 2102 should continue to be cited as decisions of the BPAI or its predecessor organizations

 

Presumably, 2102 should read 2012.

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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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(@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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(@chrisw)

1200 Appeal

1206, I: clarify 1.116 vs. 41.33

1206, I (11/2015) says:

> The entry of an amendment (which may not include a new affidavit,declaration, exhibit or other evidence) submitted in an application on appeal is governed by 37 CFR 41.33, not 37 CFR 1.116.

However, 37 CFR 41.33(a) states that:

> Amendments filed after the date of filing an appeal ... and prior to the date a brief is filed ... may be admitted as provided in ยง1.116 ... .

Furthermore, 1204,... more »

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(@chrisw)

1300 Allowance and Issue

1306 could reference 35 USC 21(b) - weekend rule

MPEP 1306 (Issue Fee) opens with "The issue fee ... [is] due 3 months from the date of the Notice of Allowance." However, as far as I know, the weekend rule of 35 USC 21(b) still extends the time period if it would otherwise end on a weekend. Could 1306 be amended to reference this statute, for completeness?

35 USC 151 Issue of Patent.--- (a) ... The notice shall specify a sum ... which shall be paid within 3 months... more »

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(@justin.blaufeld)

1300 Allowance and Issue

Removing references to eDan

MPEP 1309.02 says applications with errors preventing issue "are placed on the examiner's 'expedited' tab in eDan and should be taken up for immediate action." We have not used eDan in several years, and I think it was even removed from our computers nearly four years ago. So "eDan" should be replaced either with "DAV" or "PE2E-DAV."

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(@thomas.mcbride)

1500 Design Patents

1504.05 typo

Could the sentence saying that serious burden on the examiner be corrected back to what it said in the previous version (there is clearly said it's inapplicable). Now the language where this is first discussed appeared to be missing something

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(@steve0)

1500 Design Patents

non-analogous or nonanalogous?

There is one place in the MPEP that uses the term "non-analogous" -- MPEP 1504.03.

 

Every other place in the MPEP uses "nonanalogous."

 

In the interest of consistency...perhaps the usage in MPEP 1504.03 should be updated.

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