(@jasonliao)

2100 Patentability

2111.05: emphasize substrate relationship requirement for weight

The current text of MPEP 2111.05, if read quickly, seems to suggest that a "function" of "descriptive material" itself carries patentable weight. But this interpretation is not correct: A sheet of instructions as part of the kit claim in In re Ngai (cited in this section) was found to *not* have patentable weight. The "functional" nature of the particular instructions did not save the claims from anticipation over a... more »

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(@patricia.leith)

2100 Patentability

2111.02 Effect of Preamble Needs Additional Explanations

It appears, in my experience, that there is confusion regarding this section of the MPEP and it would be very helpful to examiners if the MPEP would provide a more extensive discussion of preambles, intended uses and when statements in preambles actually limit the claimed Invention. Quite respectfully, the statement in the MPEP, upon citing In re Schriber, indicates 'If a prior art structure is capable of performing... more »

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(@patricia.leith)

2100 Patentability

2111.04 Whereby/Wherein clauses (inter alia)

As a suggestion, in relation to Minton v. Nat’l Ass’n of Securities Dealers, Inc, this section could be expanded, if deemed applicable, to include other words with a similar meaning to 'wherein' and 'whereby' which may also be interpreted as merely indicating the intended outcome of a positively-recited method step; e.g., 'thereby,' thereto,' 'therein.' It would also be very helpful, especially for new examiners, to... more »

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(@patricia.leith)

2100 Patentability

2164.01(c) In re Vaeck citation

The MPEP here states: 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 »

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(@patricia.leith)

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

803.02 Markush Claims

803.03 indicates, in-part: "On the other hand, should the examiner determine that the elected species is allowable, the examination of the Markush-type claim will be extended. If prior art is then found that anticipates or renders obvious the Markush-type claim with respect to a nonelected species, the Markush-type claim shall be rejected and claims to the nonelected species held withdrawn from further consideration.... more »

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(@patricia.leith)

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

MPEP 803.04 Nucleotide Sequences

This part of the MPEP does not appear to take into consideration the OG notice published March 27, 2007 which redacts the 'ten sequence rule.' Will the MPEP be amended to include the information in the OG notice? Further, the MPEP does not explicitly discuss amino acid sequence restriction in Chapter 800. It would be very helpful if the MPEP discussed restriction and how it applies specifically to amino acid sequences.... more »

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(@chrisw)

1200 Appeal

1206, I: clarify 1.116 vs. 41.33

1206, I (11/2015) says: > The entry of an amendment (which may not include a new affidavit,declaration, exhibit or other evidence) submitted in an application on appeal is governed by 37 CFR 41.33, not 37 CFR 1.116. However, 37 CFR 41.33(a) states that: > Amendments filed after the date of filing an appeal ... and prior to the date a brief is filed ... may be admitted as provided in §1.116 ... . Furthermore, 1204,... more »

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(@brianhjcronin)

1700 Miscellaneous

§103 - problem-and-solution

Should §103 of the MPEP be completed with a lead-in section recommending examiners and applicants to frame their analysis on obviousness using the “problem-and-solution approach”?

See the article in ipWatchdog “Could or should the USPTO adopt the EPO problem-and-solution approach for assessing obviousness”.

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(@chrisw)

2100 Patentability

What happened to 2116?

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 »

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