Two paragraphs above 2181(II)(C) is the phrase "the claim should be rejected under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, second paragraph." I believe that the 'f' in 112(f) should be a 'b'.
p. 2100-164, first sentence: I believe "If proposed modification" should read "If a proposed modification."
p. 2100-165, around line 16: I believe "if the prior art device was turned upside down" should be "if the prior art device were turned upside down". See Gordon, cited, at 902.
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).
This word, "unrecited," does not accurately describe the concept. When the "un-" prefix is paired with a verb, it typically causes... more »
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 »
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.
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 »
Apologies if this is a duplicate - I can't find it mentioned through the Ideascale search or a targeted Google search.
* https://uspto-mpep.ideascale.com/a/dtd/%C2%A7-2181-should-be-broken-up-into-subsections/540832-9426... more »
2165, I., p. 2100-279 (Nov. 2015), right column, cites Union Carbide v. Borg-Warner. The citation given is 550 F.2d 555. However, as far as I can tell, that is 550 F.2d *355* (three, not five). Would you please fix? Thank you!
The two subheadings in question are:
I. DETERMINING WHETHER A FUNCTIONAL RELATIONSHIP EXISTS BETWEEN PRINTED MATTER AND ASSOCIATED PRODUCT (OR PROCESS)
II. FUNCTIONAL RELATIONSHIP BETWEEN PRINTED MATTER AND ASSOCIATED PRODUCT (OR PROCESS)... more »
Add a "2." before "Limitations that the courts have found not to be enough to qualify as "significantly more" when recited in a claim with a judicial exception include:"
If discussing Alice step B, in order to cite the MPEP for any particular class of limitation,... more »