Discuss the Manual of Patent Examination Procedures (MPEP)

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 »

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 »

The MPEP should more clearly spell out when drawings are actually necessary. In process inventions, it seems that drawings should not be required, but the text of MPEP 608.02 seems to be an open invitation to examiners to make unnecessary requirements. Moreover, what exactly does "admits of illustration by a drawing" mean? Is it not possible to articulate the statute in more clear language into the rule? 35 USC 113 ...more »

The eligibility pages at https://www.uspto.gov/patent/laws-and-regulations/examination-policy/subject-matter-eligibility and https://www.uspto.gov/patent/laws-and-regulations/examination-policy/subject-matter-eligibility-examination-guidance-date are very helpful. However, as the number of documents grows, the tedium of citing them weighs more and more heavily. Would the editors please consider including a regularly-updated ...more »

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 »

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 »

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 »

Could the sentence saying that serious burden on the examiner be corrected back to what it said in the previous version (there is clearly said it's inapplicable). Now the language where this is first discussed appeared to be missing something

Immediately following the Title of section 602.01(c)(1) in the Editor Note, it seems that "applications" must be changed to --requests--.

Section 809.02(a) seems to have been left behind in the current version. If this was deliberate, an entry should be included in the Blue Pages.

The downloadable PDF version of Chapter 1200 includes a typo in section 1202:

decisions mailed prior to September 16, 2102 should continue to be cited as decisions of the BPAI or its predecessor organizations

Presumably, 2102 should read 2012.

This section indicates: "Two or more claimed subcombinations, disclosed as usable together in a single combination, and which can be shown to be separately usable, are usually restrictable when the subcombinations do not overlap in scope and are not obvious variants. To support a restriction requirement where applicant separately claims plural subcombinations usable together in a single combination and claims a combination ...more »

The second paragraph of this section states that "Applicant may extend the time period of reply up to six months in accordance with 37 CFR 1.136(a)." As this is a paragraph describing the mailing of a requirement for information that is NOT part of an action on the merits, it is unclear to me whether the maximum statutory period for reply of six months is applicable. Regardless, as drafted it seems ambiguous to me; ...more »

The second paragraph of MPEP 706.02(f)(1), section II (the bottom of the right column on page 700-37) reads "all references to 35 USC 102 in the examples and flowcharts below are to the version of 35 USC 102 in effect on March 15, 2012 (the pre-AIA version)." While this is technically true, I believe that "March 15, 2012" was intended to read "March 15, 2013," one day before the first-inventor-to-file provisions of the ...more »

The first (of two) paragraphs of section 708.02(c) (bottom of left column, page 700-175) contains several errors. I will just copy the erroneous text, but it includes capitalization errors, run-on sentences, and a mis-spelled word. Further, this section refers to an 'OSF' and 'OFF' without any local reference to what, specifically, those initialisms refer to. examination will not entitle the applicant to a refund of ...more »