2100 Patentability

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(@justin.blaufeld)

2100 Patentability

Grammatical Error in 2111.05(III.)

The first sentence in the second paragraph of MPEP § 2111.05(III.) reads:
"However, where the claim as a whole is directed conveying a message or meaning to a human reader independent of the intended computer system, and/or the computer-readable medium merely serves as a support for information or data, no functional relationship exists."

The phrase "is directed conveying" is missing the word "to," as in, "the claim... more »

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(@chrisw)

2100 Patentability

2106.03, I: clarify Nuijten paragraph "tangible" explanation

Please see MPEP 2106.03, I. (Jan. 2018), at 18, right column. The second non-bulleted paragraph (“paragraph A”) begins: “Even when a product has a physical or tangible form, it may not fall within a statutory category” (at 2100-19). Since paragraph A solely relates to Nuijten,* I suggest revising paragraph A to expressly relate to signals, and to clarify the meaning of “tangible.” For example, I propose revising paragraph... more »

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(@jasonliao)

2100 Patentability

". to ." for 2106

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).

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(@justin.blaufeld)

2100 Patentability

2111.03 fixing the grammar/semantics of the word "unrecited"

MPEP § 2111.03 explains how different transitional phrases in a claim affect claim scope with respect to what "unrecited" additional components or steps, if any, are excluded from the scope of the claim. I proposed replacing all instances of the word "unrecited" with the word "non-recited."

This word, "unrecited," does not accurately describe the concept. When the "un-" prefix is paired with a verb, it typically causes... more »

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(@mspark)

2100 Patentability

2141.01(a) Analogous and Nonanalogous Art: KSR is NOT applicable

2141.01(a)(I) need to be completely re-written! This section correctly cites In re Bigio, 381 F.3d 1320, 1325, 72 USPQ2d1209, 1212 (Fed. Cir. 2004). However, everything following that citation that references KSR is nonsense! The 'problem' described in KSR was in relation for reasoning associated with combining the teachings of references. It had absolutely NOTHING to do with deciding whether a reference is analogous... more »

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(@kramerog)

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 »

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(@chrisw)

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 »

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(@mike001)

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 »

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(@mike001)

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 »

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(@justin.blaufeld)

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 »

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(@mspark)

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 »

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(@james.nigh)

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 »

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(@jasonliao)

2100 Patentability

Remove part of quotation from Chicago Rawhide

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 »

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