(@jasonliao) kudos icon +

2100 Patentability

2111.05: emphasize substrate relationship requirement for weight

The current text of MPEP 2111.05, if read quickly, seems to suggest that a "function" of "descriptive material" itself carries patentable weight. But this interpretation is not correct: A sheet of instructions as part of the kit claim in In re Ngai (cited in this section) was found to *not* have patentable weight. The "functional" nature of the particular instructions did not save the claims from anticipation over a... more »

Voting

-1 votes
0 up votes
1 down votes
(@patricia.leith) kudos icon +

2100 Patentability

2111.04 Whereby/Wherein clauses (inter alia)

As a suggestion, in relation to Minton v. Nat’l Ass’n of Securities Dealers, Inc, this section could be expanded, if deemed applicable, to include other words with a similar meaning to 'wherein' and 'whereby' which may also be interpreted as merely indicating the intended outcome of a positively-recited method step; e.g., 'thereby,' thereto,' 'therein.' It would also be very helpful, especially for new examiners, to... more »

Voting

0 votes
0 up votes
0 down votes
(@patricia.leith) kudos icon +

2100 Patentability

2164.01(c) In re Vaeck citation

The MPEP here states:

When a compound or composition claim is limited by a particular use, enablement of that claim should be evaluated based on that limitation.
See In re Vaeck, 947 F.2d 488, 495, 20 USPQ2d 1438, 1444 (Fed. Cir. 1991) (claiming a chimeric gene capable of being expressed in any
cyanobacterium and thus defining the claimed gene by its use).

Quite respectfully, is it 'defining the claimed gene by... more »

Voting

0 votes
0 up votes
0 down votes
(@erikakretzmer) kudos icon +

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.

Voting

0 votes
0 up votes
0 down votes
(@patricia.leith) kudos icon +

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 »

Voting

0 votes
0 up votes
0 down votes
(@patricia.leith) kudos icon +

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 »

Voting

0 votes
0 up votes
0 down votes
(@chrisw) kudos icon +

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 §1.116 ... .

Furthermore, 1204,... more »

Voting

0 votes
0 up votes
0 down votes
(@brianhjcronin) kudos icon +

1700 Miscellaneous

§103 - problem-and-solution

Should §103 of the MPEP be completed with a lead-in section recommending examiners and applicants to frame their analysis on obviousness using the “problem-and-solution approach”?

See the article in ipWatchdog “Could or should the USPTO adopt the EPO problem-and-solution approach for assessing obviousness”.

Voting

0 votes
0 up votes
0 down votes
(@chrisw) kudos icon +

2100 Patentability

What happened to 2116?

MPEP 2116 formerly* read:

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.
App. 1974).

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 »

Voting

0 votes
0 up votes
0 down votes
(@chrisw) kudos icon +

700 Examination of Applications

706.07(h) references 37 CFR 1.304, omits 1214.07

In 706.07(h), XI.A. (p. 700-135, Nov. 2015):
- The text references 37 CFR 1.304 (left column, bottom). However, the AIA removed and reserved that section (https://www.uspto.gov/web/offices/pac/mpep/mpep-9020-appx-r.html#d0e326176). Would you please correct the reference?

- The text does not reference MPEP 1214.07, although 1214.07 does reference 706.07(h), XI. See p. 1200-60 (Nov. 2015). Would you please add the... more »

Voting

0 votes
0 up votes
0 down votes