The U.S. Patent Office publishes many of its examination guidelines and Examiner training materials on its official website. In my opinion, one of the more useful of these Examiner training materials is an examination guide for rejections under 35 U.S.C. §112 which can be found here. The stated purpose of this training document is to teach new Examiners the principles involved in making rejections under 35 U.S.C. §112. In teaching these principles, this training document articulates specific examination approaches that Examiners are supposed to employ to ensure compliance with 35 U.S.C. §112. For example, on the subject of enablement, this document articulates an “essential test,” “pertinent considerations,” and the burden of proof, as well as providing examples of enablement and identifying applicable sections of the Manual of Patent Examining Procedure.
As a summary of the law regarding 35 U.S.C. §112 from a patent prosecution perspective, this Examiner training document can be particularly useful when responding to §112 rejections since it articulates the actual standards and considerations that an Examiner should be applying during the examination of an application.
© 2007, Michael E. Kondoudis
The Law Office of Michael E. Kondoudis
DC Patent Attorney