2100 Patentability

Title to 2112.V is misleading

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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2100 Patentability

Expand 2145, IV. to explain "Keller," not just quote it.

MPEP 2145, IV (Nov. 2015), at 2100-194, quotes In re Keller without explanation. The Office should expand the discussion to explain to Examiners and Applicants the scope of applicability of Keller.

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 »

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2100 Patentability

Remove MPEP § 2172.01

MPEP § 2172.01 is routinely misapplied by examiners. Examiners appear to apply it in situations where the examiner thinks that what the applicant is claiming is too broad, but:
(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 »

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2100 Patentability

Amend MPEP § 2164.04

I believe that MPEP § 2164.04 is internally inconsistent, not an accurate statement of the law, and confusing. Examiners routinely cite MPEP § 2164.04 for the proposition that they do not have to provide any actual reasoning when rejecting a claim under § 112(a) as lacking enablement. This is not an accurate statement of the law; therefore, I suggest deleting this section. Alternatively, this section could be amended... more »

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2100 Patentability

§ 2181 should be broken up into subsections

MPEP 2181 is very long and difficult to cite. At the very least, each roman numeral section should be converted into a constituent decimal section. For example:

2181 Identifying and Interpreting a 35 U.S.C. 112(f) or Pre-AIA 35 U.S.C. 112, Sixth Paragraph Limitation
2181.01 DETERMINING WHETHER A CLAIM LIMITATION INVOKES 35 U.S.C. 112(f) or PRE-AIA 35 U.S.C. 112, SIXTH PARAGRAPH
2181.02 DESCRIPTION NECESSARY TO SUPPORT... more »

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2100 Patentability

2141.01(a) Analogous and Nonanalogous Art

Why is the following quote from KSR included in this section about analogous art?:
“Under the correct analysis, any need or problem known in the field of endeavor at the time of the invention and addressed by the patent [or application at issue] can provide a reason for combining the elements in the manner claimed. ” KSR Int'l Co. v. Teleflex Inc., 550 U.S. 398, 420, 82 USPQ2d 1385, 1397 (2007).

The 'problem' being... more »

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2100 Patentability

MPEP 2106.05

I believe this section could be improved if there were more subheading designations within the section. For example under section A (Relevant Considerations for Evaluating Whether Additional Elements Amount to An Inventive Concept) there are two separate lists (Limitations that the courts have found to qualify as "significantly more" and Limitations that the courts have found not be enough to qualify as "significantly... more »

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2100 Patentability

Remove part of quotation from Chicago Rawhide

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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2100 Patentability

Add back the precedential holding of Ex Parte Nehls to 2111.05

The June 2020 revision of the MPEP deleted the following sentence: "USPTO personnel need not give patentable weight to printed matter."

You need to add it back for two reasons.

First, the MPEP is supposed to reflect Office policy, and it is established Office policy that USPTO personnel need not give patentable weight to printed matter. Specifically, this policy is established by the precedential holding of Ex parte... more »

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MISCELLANEOUS - Appendices and Other

Revision number should reflect latest update

R-07.2015 has a 10/2015 publication and an 11/2015 publication. The two publications differ in substance, not merely in form. For ease and clarity of citation, I suggest the revision number match the publication date in the future. Alternatively, I suggest the MPEP be referred to primarily by a publication date (e.g., "E9 P-11.2015") rather than a revision number.

I understand that presently the "R" number is the... more »

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MISCELLANEOUS - Appendices and Other

Add a consolidated subject-matter eligibility guidance appendix

The eligibility pages at https://www.uspto.gov/patent/laws-and-regulations/examination-policy/subject-matter-eligibility and https://www.uspto.gov/patent/laws-and-regulations/examination-policy/subject-matter-eligibility-examination-guidance-date are very helpful. However, as the number of documents grows, the tedium of citing them weighs more and more heavily.

Would the editors please consider including a regularly-updated... more »

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200 Types, Cross-Noting, and Status of Application

Correct reference in MPEP 201.07

At the end of the first paragraph of MPEP § 201.07, it says "For more information on claiming the benefit of a prior nonprovisional application, see MPEP § 201.11." There is no MPEP § 201.11 This reference likely should be to MPEP § 211.01(b), which discusses claiming the benefit of a nonprovisional application.

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