Comments on: A Few Useful Sections Of The Manual Of Patent Examining Procedure http://patentablydefined.com/2009/05/29/a-few-useful-sections-of-the-manual-of-patent-examining-procedure/ A practical patent prosecution blog published by Michael Kondoudis Wed, 25 Jan 2012 17:32:27 +0000 hourly 1 http://wordpress.org/?v=3.3.1 By: Frank http://patentablydefined.com/2009/05/29/a-few-useful-sections-of-the-manual-of-patent-examining-procedure/comment-page-1/#comment-4836 Frank Sat, 17 Oct 2009 14:45:14 +0000 http://patentablydefined.com/?p=75#comment-4836 I agree that Examiner makes a good point with respect to changes in case law. With respect to proper examining PROCEDURE, however, I agree with Mike that the MPEP is definitive. I agree that Examiner makes a good point with respect to changes in case law. With respect to proper examining PROCEDURE, however, I agree with Mike that the MPEP is definitive.

]]> By: mike http://patentablydefined.com/2009/05/29/a-few-useful-sections-of-the-manual-of-patent-examining-procedure/comment-page-1/#comment-4824 mike Thu, 20 Aug 2009 19:56:00 +0000 http://patentablydefined.com/?p=75#comment-4824 Examiner, You raise a good point, which is the exception that proves the rule. Examiner,

You raise a good point, which is the exception that proves the rule.

]]> By: An examiner http://patentablydefined.com/2009/05/29/a-few-useful-sections-of-the-manual-of-patent-examining-procedure/comment-page-1/#comment-4823 An examiner Thu, 20 Aug 2009 01:28:07 +0000 http://patentablydefined.com/?p=75#comment-4823 Sorry to tell you but as an examiner I don't believe the instructions in the MPEP are beyond dispute. If I believe the case law to be in conflict with the MPEP I always go with the case law. Right now that's particularly applicable to Bilski and 101 since no interm guidelines are out yet, but there are other areas where I reject based on case that and the rejection will contradict parts of the MPEP. Sorry to tell you but as an examiner I don’t believe the instructions in the MPEP are beyond dispute. If I believe the case law to be in conflict with the MPEP I always go with the case law. Right now that’s particularly applicable to Bilski and 101 since no interm guidelines are out yet, but there are other areas where I reject based on case that and the rejection will contradict parts of the MPEP.

]]> By: mike http://patentablydefined.com/2009/05/29/a-few-useful-sections-of-the-manual-of-patent-examining-procedure/comment-page-1/#comment-4789 mike Fri, 05 Jun 2009 12:12:09 +0000 http://patentablydefined.com/?p=75#comment-4789 I respectfully disagree with Mr. Ivey's characterization of the MPEP. It is an official procedure manual of which official notice is properly taken by courts. That alone contradicts the "one editor's understanding" characterization. I respectfully disagree with Mr. Ivey’s characterization of the MPEP. It is an official procedure manual of which official notice is properly taken by courts. That alone contradicts the “one editor’s understanding” characterization.

]]> By: 216400 http://patentablydefined.com/2009/05/29/a-few-useful-sections-of-the-manual-of-patent-examining-procedure/comment-page-1/#comment-4788 216400 Fri, 05 Jun 2009 06:15:48 +0000 http://patentablydefined.com/?p=75#comment-4788 ... above quote from http://www.intelproplaw.com/ip_forum/index.php/topic,11541.msg54669.html#msg54669 by JimIvey … above quote from

http://www.intelproplaw.com/ip_forum/index.php/topic,11541.msg54669.html#msg54669

by JimIvey

]]> By: 216400 http://patentablydefined.com/2009/05/29/a-few-useful-sections-of-the-manual-of-patent-examining-procedure/comment-page-1/#comment-4787 216400 Fri, 05 Jun 2009 06:14:32 +0000 http://patentablydefined.com/?p=75#comment-4787 "Note that the MPEP is not authoritative. It's one editor's summary of the law and rules as the editor understands them." “Note that the MPEP is not authoritative. It’s one editor’s summary of the law and rules as the editor understands them.”

]]> By: mike http://patentablydefined.com/2009/05/29/a-few-useful-sections-of-the-manual-of-patent-examining-procedure/comment-page-1/#comment-4786 mike Thu, 04 Jun 2009 13:36:14 +0000 http://patentablydefined.com/?p=75#comment-4786 The express, literal instructions are beyond dispute. Whether Examiners are being instructed to ignore those instructions (via "office policy" or "TC policy" or "Au policy") is another question altogether and one probably appropriate for the appeals process since the Board is obligated to apply the Rules, Statutes and precedent. The express, literal instructions are beyond dispute. Whether Examiners are being instructed to ignore those instructions (via “office policy” or “TC policy” or “Au policy”) is another question altogether and one probably appropriate for the appeals process since the Board is obligated to apply the Rules, Statutes and precedent.

]]> By: e6k http://patentablydefined.com/2009/05/29/a-few-useful-sections-of-the-manual-of-patent-examining-procedure/comment-page-1/#comment-4785 e6k Thu, 04 Jun 2009 00:50:24 +0000 http://patentablydefined.com/?p=75#comment-4785 "so its instructions to Examiners are beyond dispute." Except when "office policy", "TC policy", or "AU policy" is different than what is explicit in the MPEP. “so its instructions to Examiners are beyond dispute.”

Except when “office policy”, “TC policy”, or “AU policy” is different than what is explicit in the MPEP.

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