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 »
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 »
At multiple instances throughout MPEP 2141 thru 2145, the case "In re Lintner" is misspelled as "In re Linter".
Keller says "[o]ne cannot show nonobviousness by attacking references individually where the rejections are based on combinations of references." 642 F.2d 413, 426. I have seen this quote interpreted to mean that any argument... more »
(i) the factual circumstances of the two main cited cases, In re Mayhew and In re Venezia, were quite narrow and never considered by the examiners; and
(ii) most rejections under § 2172.01 directly contravene § 2173.04 (breadth is not indefiniteness).... more »
Specifically, if one skilled in the art would know how to program the disclosed computer to perform the necessary steps described... more »
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.
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 »
"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 »
Two paragraphs above 2181(II)(C) is the phrase "the claim should be rejected under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, second paragraph." I believe that the 'f' in 112(f) should be a 'b'.