(@conrad) kudos icon +

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 »

Voting

3 votes
6 up votes
3 down votes
(@dorange) kudos icon +

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 »

Voting

3 votes
3 up votes
0 down votes
(@ryanpoolrp) kudos icon +

2100 Patentability

How to Rebut a 102/103 rejection based on Inherency

MPEP § 2112 which address the Inherency Doctrine, makes clear that once a prima facie case of obviousness is established, the burden shifts to applicants to show that the claimed property is not inherent. However, this section of the MPEP (and the MPEP as a whole) fails to articulate how applicants can satisfy this burden. Because of this lack of guidance, Examiners commonly mistakenly apply the unexpected results standard... more »

Voting

3 votes
4 up votes
1 down votes
(@kramerog) kudos icon +

2100 Patentability

Title to 2112.V is misleading trending idea

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 »

Voting

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

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 »

Voting

2 votes
2 up votes
0 down votes
(@mike001) kudos icon +

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 »

Voting

2 votes
3 up votes
1 down votes
(@mike001) kudos icon +

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 »

Voting

2 votes
2 up votes
0 down votes
(@justin.blaufeld) kudos icon +

2100 Patentability

§ 2181 should be broken up into subsections

MPEP 2181 is very long and difficult to cite. At the very least, each roman numeral section should be converted into a constituent decimal section. For example:

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 »

Voting

2 votes
2 up votes
0 down votes
(@mspark) kudos icon +

2100 Patentability

2141.01(a) Analogous and Nonanalogous Art

Why is the following quote from KSR included in this section about analogous art?:
“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 »

Voting

2 votes
4 up votes
2 down votes
(@james.nigh) kudos icon +

2100 Patentability

MPEP 2106.05

I believe this section could be improved if there were more subheading designations within the section. For example under section A (Relevant Considerations for Evaluating Whether Additional Elements Amount to An Inventive Concept) there are two separate lists (Limitations that the courts have found to qualify as "significantly more" and Limitations that the courts have found not be enough to qualify as "significantly... more »

Voting

2 votes
2 up votes
0 down votes
(@jasonliao) kudos icon +

2100 Patentability

". to ." for 2106 trending idea

Eighteen portions of the newly-edited 2106 place periods outside of quotes. This is still not generally accepted in American grammar, and is inconsistent with the section as a whole (eighty-four instances of periods within the quoted text).

 

There are also twenty-five great number of commas outside of quotes (as opposed to thirty-two within).

Voting

2 votes
2 up votes
0 down votes
(@jasonliao) kudos icon +

2100 Patentability

Remove part of quotation from Chicago Rawhide trending idea

MPEP 2144.04(VI)(C) cites Chicago Rawhide, 223 USPQ 351 (Bd. Pat App. & Inter. 1984) for both "[t]he mere fact that a worker in the art could rearrange the parts of the reference device to meet the terms of the claims on appeal is not by itself sufficient to support a finding of obviousness" and "[t]he prior art must provide a motivation or reason for the worker in the art, without the benefit of the appellant's specification,... more »

Voting

2 votes
2 up votes
0 down votes
(@justin.blaufeld) kudos icon +

2100 Patentability

Add back the precedential holding of Ex Parte Nehls to 2111.05 trending idea

The June 2020 revision of the MPEP deleted the following sentence: "USPTO personnel need not give patentable weight to printed matter."

You need to add it back for two reasons.

First, the MPEP is supposed to reflect Office policy, and it is established Office policy that USPTO personnel need not give patentable weight to printed matter. Specifically, this policy is established by the precedential holding of Ex parte... more »

Voting

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

2100 Patentability

2111.02 Effect of Preamble Needs Additional Explanations

It appears, in my experience, that there is confusion regarding this section of the MPEP and it would be very helpful to examiners if the MPEP would provide a more extensive discussion of preambles, intended uses and when statements in preambles actually limit the claimed Invention. Quite respectfully, the statement in the MPEP, upon citing In re Schriber, indicates 'If a prior art structure is capable of performing... more »

Voting

1 vote
2 up votes
1 down votes