Campaign: 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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Campaign: 600 Parts, Form, and Content of Application

Expired EPS form

Preparing EPS submission, i notice most of the forms are expired, that is, beyond their 'use by' dates. Where are up-to-date forms located?

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Campaign: 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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Campaign: 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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Campaign: 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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Campaign: 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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Campaign: MISCELLANEOUS - Appendices and Other

File Name of Zip file should be changed

The zip file containing the March 2014 version of the 9th edition of the MPEP still uses the name of the previous version, ie. e9r-11-2013.zip.

 

It would be less confusing if the name was consistent with the current version.

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Campaign: 1500 Design Patents

non-analogous or nonanalogous?

There is one place in the MPEP that uses the term "non-analogous" -- MPEP 1504.03.

 

Every other place in the MPEP uses "nonanalogous."

 

In the interest of consistency...perhaps the usage in MPEP 1504.03 should be updated.

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MPEP 1504.10 typo - missing "s" in "shall"

Quotation from §172 says "...by section 119(e)hall not apply to designs."

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Campaign: 1400 Correction of Patents

MPEP 1451, 9th, Bullet 3 (Amendments per 1.173)

The item below refers to claim markings in a reissue application. MPEP 1451 includes a typo in the section reading "Indicia that a continuation reissue application is being filed are . . .".

In bullet 3, strike "1.175" and replace with 1.173:

 

3. Amendments in proper format per 37 CFR --1.173--

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

810 Action on the Merits time for reply

The time for reply in written restriction practice is now 2 months. As per December 2012 patent law treaty, http://www.uspto.gov/patent/initiatives/patent-law-treaty

 

Thanks to LIE, Adam Queler and Kevin Bechtel for giving me this information.

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Campaign: 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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