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2100 Patentability

Title to 2112.V is misleading trending idea

The title is "ONCE A REFERENCE TEACHING PRODUCT APPEARING TO BE SUBSTANTIALLY IDENTICAL IS MADE THE BASIS OF A REJECTION, AND THE EXAMINER PRESENTS EVIDENCE OR REASONING TENDING TO SHOW INHERENCY, THE BURDEN SHIFTS TO THE APPLICANT TO SHOW AN UNOBVIOUS DIFFERENCE."

This title is misleading because the rejection can also be overcome by rebutting the Examiner's evidence or logic for inherency. See Ex parte Levy, 17 USPQ2d... more »

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(@jasonliao) kudos icon +

2100 Patentability

Remove part of quotation from Chicago Rawhide trending idea

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 »

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MISCELLANEOUS - Appendices and Other

Implement Friendly URLs on mpep.uspto.gov trending idea

The URLs for the http://mpep.uspto.gov site are not currently friendly and it can be difficult to determine what a link might lead you to.

The link for MPEP 1200 is currently: http://mpep.uspto.gov/RDMS/detail/manual/MPEP/current/d0e18.xml#/manual/MPEP/DC1_FPindexR-07.2015/d0e122292.xml

It would be helpful if it were something more like this: http://mpep.uspto.gov/e9r072015/MPEP/1200

The link for 35 USC 101 is currently:... more »

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1500 Design Patents

1504.05 typo

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

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600 Parts, Form, and Content of Application

Filing non-provisional application automatically corrects errors

The previous rules provided an alternative method for correcting errors in provisional applications. Specifically, in § 201.03 section VI the 8th edition (Rev. 9 2012) the MPEP instructed that filing a non-provisional application with inventor overlap would correct any errors as to inventorship in a provisional application. This language, however, is absent in the present edition even though it is based on the same law... more »

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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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700 Examination of Applications

706.07(a) Could Possibly Reference 1207.03(a)

706.07(a) discusses the fact that an action cannot be made final if a new ground of rejection is not necessitated by amendment and/or Applicant's IDS. However, it provides no information pertaining to what actually constitutes a new ground of rejection. The MPEP Appeal section; however, 1207.03(a), provides substantive guidance on what constitutes a 'new rejection' in an Examiner's Answer which appears also to be applicable... more »

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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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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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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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1200 Appeal

Typo: 1202

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.

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