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 »

Submitted by (@patricia.leith)

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MISCELLANEOUS - Appendices and Other

Implement Friendly URLs on mpep.uspto.gov

The URLs for the http://mpep.uspto.gov site are not currently friendly and it can be difficult to determine what a link might lead you to. The link for MPEP 1200 is currently: http://mpep.uspto.gov/RDMS/detail/manual/MPEP/current/d0e18.xml#/manual/MPEP/DC1_FPindexR-07.2015/d0e122292.xml It would be helpful if it were something more like this: http://mpep.uspto.gov/e9r072015/MPEP/1200 The link for 35 USC 101 is currently: ...more »

Submitted by (@nkopp0)

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600 Parts, Form, and Content of Application

Fix Error in 602.01(c)(1)

MPEP Sec. 602.01(c)(1) cites the wrong version of CFR 1.48. Specifically, it cites the pre-aia version and not the latest version.

Submitted by (@mac000)

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MISCELLANEOUS - Appendices and Other

Indicia case law

A decision was rendered in 1954 pertaining to indicia. In re Montgomery states: Patentable novelty cannot be principally predicated on mere printed matter and arrangements thereof, but must reside basically in physical structure. In re Montgomery, 102 USPQ 248 (CCPA 1954). Although this decision is old, it is pertinent in today's world, whether in displays where an application is trying to patent the word "caution" over ...more »

Submitted by (@kristina.junge)

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600 Parts, Form, and Content of Application

Filing non-provisional application automatically corrects errors

The previous rules provided an alternative method for correcting errors in provisional applications. Specifically, in § 201.03 section VI the 8th edition (Rev. 9 2012) the MPEP instructed that filing a non-provisional application with inventor overlap would correct any errors as to inventorship in a provisional application. This language, however, is absent in the present edition even though it is based on the same law ...more »

Submitted by (@nubine7)

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600 Parts, Form, and Content of Application

no claim needed to establish a filing date now

As far as I understand, right now no claim is required to establish a filing date. But search around "at least one claim" on chapter 600, you still get a few such old descriptions.

Submitted by (@craig.tsui)

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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 »

Submitted by (@kramerog)

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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 »

Submitted by (@conrad)

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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 »

Submitted by (@cwright)

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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 »

Submitted by (@chrisw)

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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 »

Submitted by (@mike001)

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2100 Patentability

Amend MPEP § 2164.04

I believe that MPEP § 2164.04 is internally inconsistent, not an accurate statement of the law, and confusing. Examiners routinely cite MPEP § 2164.04 for the proposition that they do not have to provide any actual reasoning when rejecting a claim under § 112(a) as lacking enablement. This is not an accurate statement of the law; therefore, I suggest deleting this section. Alternatively, this section could be amended ...more »

Submitted by (@mike001)

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