(@patricia.leith)

800 Restriction in Applications Filed Under 35 U.S.C. 111; Double Patenting

806.05(d) Subcombinations Usable Together

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 »

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(@rellinger)

700 Examination of Applications

Error and/or ambiguity in 704.13: Time Periods for reply

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 »

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(@rellinger)

700 Examination of Applications

Typo in 706.02(f)(1): date of changeover from FTI to FITF

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 »

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(@rellinger)

700 Examination of Applications

Strange errors in 708.02(c)

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 »

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(@rellinger)

700 Examination of Applications

714.01(e) should be placed under its own sub-section

As it stands, 71401(e) describes in detail practice and procedure relating to 'Amendments before first Office action' (per the subsection title).

However, section 714.01 (and the other subsections thereof, 714.01(a)-(d)) refer primarily to requirements for signature of amendments. It seems to me that the content of 714.01(e) should be moved to it's own section of chapter 700, or made a subsection of a more applicable... more »

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(@motioautomation)

MISCELLANEOUS - Appendices and Other

Email notice for updating on Private PAIR

The patent list page on Private PAIR can not show most updated date of document from USPTO for a particulary application, and misslead user think there is not new document or notice from USPTO. Even worse I just received same notice letter which has gone thru over two month to reach me and overdue. To improve the system, it is ideally to set the system automatically send an email to remind the account holder to check... more »

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(@norrisboothe)

200 Types, Cross-Noting, and Status of Application

Correct reference in MPEP 201.07

At the end of the first paragraph of MPEP § 201.07, it says "For more information on claiming the benefit of a prior nonprovisional application, see MPEP § 201.11." There is no MPEP § 201.11 This reference likely should be to MPEP § 211.01(b), which discusses claiming the benefit of a nonprovisional application.

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(@warrenwolfeld)

1200 Appeal

MPEP 1204.04 should better define Record On Appeal

MPEP 1204.04 points out that other than dictionary definitions, the Record of evidence upon which an appeal brief can rely includes only "the items listed in the content listing of the Image File Wrapper of the official file of the application ..., excluding amendments, Evidence, and other documents that were not entered."

This definition is unclear because the IFW does not state which documents have been "entered".... more »

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(@mercymedicalmi)

700 Examination of Applications

Clarity Needed on Second Non-Final According to 706.07(a)

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 »

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(@james.nigh)

2100 Patentability

MPEP 2161.01 I paragraph 6 sentences need clarification

One of the sentences in this paragraph is very unclear and is leading to confusion as to what the standard for the written description and in particular possession actually is. Quoting from MPEP 2161.01 I paragraph 6 the sentence in question is the first sentence from the following two sentences:
Specifically, if one skilled in the art would know how to program the disclosed computer to perform the necessary steps described... more »

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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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