Showing 6 ideas for label trending idea

700 Examination of Applications

706.07(a) Could Possibly Reference 1207.03(a) trending idea

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

How to Rebut a 102/103 rejection based on Inherency trending idea

MPEP § 2112 which address the Inherency Doctrine, makes clear that once a prima facie case of obviousness is established, the burden shifts to applicants to show that the claimed property is not inherent. However, this section of the MPEP (and the MPEP as a whole) fails to articulate how applicants can satisfy this burden. Because of this lack of guidance, Examiners commonly mistakenly apply the unexpected results standard... more »

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3 votes
4 up votes
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600 Parts, Form, and Content of Application

MPEP 608.02(a) - when are drawings and content thereof required trending idea

The MPEP should more clearly spell out when drawings are actually necessary. In process inventions, it seems that drawings should not be required, but the text of MPEP 608.02 seems to be an open invitation to examiners to make unnecessary requirements. Moreover, what exactly does "admits of illustration by a drawing" mean? Is it not possible to articulate the statute in more clear language into the rule? 35 USC 113... more »

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2 votes
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1200 Appeal

Basis for 1207.04? trending idea

Section 1207.04 of the MPEP states that Examiners can reopen prosecution after the Applicant has filed an Appeal Brief. I do not see any basis in the patent statutes or rules for this section of the MPEP. Nor is there any justifiably reason to allow this. Examiners are allowed to place new rejections in the Examiner's Answer, which the Applicant can then choose to respond to by reopening prosecution or proceeding... more »

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2100 Patentability

Grammatical error in 2111.05 trending idea

The second sentence of 2111.05 reads "Since a claim must be read as a whole, USPTO personnel may not disregard claim limitations comprised of printed matter."

 

The word "comprised" is synonymous with "included" or "contained." It does not make sense to refer to claim limitations "comprised of" printed matter, because it does not make sense to refer to claim limitations being "included of" printed matter or "contained... more »

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2400 Biotechnology

2422-2426: Sequence Listing Rules trending idea

Is there a reason why the USPTO doesn't allow transfer of CRFs from a parent case without a paper copy? My understanding of how the Office is interpreting the transfer rules is that you can only request transfer of the CRF if you also file a paper copy or PDF copy of the sequence listing. They will not allow transfer if you have an incorporation-by-reference in lieu of the paper copy of PDF.

It would make a lot more... more »

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