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 »
Section 1207.04 of the MPEP states that Examiners can reopen prosecution after the Applicant has filed an Appeal Brief. I do not see any basis in the patent statutes or rules for this section of the MPEP. Nor is there any justifiably reason to allow this. Examiners are allowed to place new rejections in the Examiner's Answer, which the Applicant can then choose to respond to by reopening prosecution or proceeding... more »
700 Examination of Applications
In the case the examiner must withdraw finality of an improper Final rejection, I understand that the Office takes the position that, despite the fact the First Non-Final Rejection was proper, the "second or any subsequent" action may not be made Final if not necessitated by amendments or IDS with its fees/period clauses. However, it absolutely does not make any sense why the examiner should reopen prosecution when amendments... more »
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 »
700 Examination of Applications
Most Alice rejections I have received recently cite caselaw by name, but do not tell you how to find the decisions themselves. It occurred to me today that this may effectively prevent a pro se applicant from responding to such a rejection. I propose amending 706.03(a), form paragraph 7.05.015, to refer to the USPTO's web site for information not found in the Action. For example: (>>insertions<< marked) --- the claimed... more »
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 »
700 Examination of Applications
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 »
200 Types, Cross-Noting, and Status of Application
the phrase "the same invention claimed" in the first sentence of 201.07 should be replaced with
--an invention disclosed--
Continuation applications are sometimes but not always for the same invention. By statue they are only required to be based on the same disclosure.
MISCELLANEOUS - Appendices and Other
PPH (708.02(c), Nov. 2015) isn't mentioned by name in the Subject Matter Index. Would you please add it, and relevant other terms? For example, "highway" also isn't in the index. Thanks!
400 Representative of Applicant or Owner
Wow - first idea in this chapter!
Anyway, 402.10 (Nov. 2015) (p. 400-19, right column), first paragraph, says "Papers revoking ... will not be accepted ... when signed by less than all". I believe that should read "by fewer than all." Similarly, the title should "fewer" instead of "less." Thanks!
MISCELLANEOUS - Appendices and Other
Alternatively, amend appendix II to include the text of all of the cited court cases.
700 Examination of Applications
Subject: MPEP 707.07(f), form paragraph 7.38 (p. 700-160, Nov. 2015) The current language says "Applicant’s arguments ... are moot because [they] do not apply to any of the references being used in the current rejection." However, I regularly see this paragraph in second 103 rejections when some references have been carried forward. Would you please update the language to match how it is used, or add a separate form... more »
In MPEP 2111.05, either citations to related-to-process based decisions should be provided, or the subheadings should be altered to remove parenthetical reference to processes. 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 »
This is a followup to https://uspto-mpep.ideascale.com/a/dtd/Correction-of-Inventorship/549565-9426 by @zmthomas. I admit that I don't have nearly as much design-patent experience as some of my colleagues. Please let me know if I am missing something! I have searched sections 700, 800, and 1500 (Jan. 2018). The only places I can find an explanation of how to respond to a restriction requirement in a design application... more »
2700 Patent Terms and Extensions
when an inventor submits a new idea to be patented without help from a patent attorney it should be automatically placed into the correct category. Either Utility Patent, if it is truly a utility patent, or Design patent, if that is truly what it is. This would save a lot of time and money on everyone's part. For instance, I submitted my provisional application for an idea on my own and because i thought that i had to... more »