As regular readers of this blog know, I advocate using the USPTO’s Manual of Patent Examining Procedure (MPEP) as primary authority during prosecution. This is by no means a per se rule, however. There are times when I find judicial authority more effective. One situation where judicial decisions have been particularly helpful has been when…
Category: §§102 and 103 Rejections
The Analogous Art Requirement and How to Traverse Obviousness Rejections Based on Non-Analogous Art
INTRODUCTION The provisions of 35 U.S.C. § 103 limit patent protection to claimed subject matter that would have been nonobvious to a “person of ordinary skill” in the claimed field of endeavor at the time of filing. This person of ordinary skill is a hypothetical construct – an ordinarily skilled artisan who is presumed to…
How To Respond To § 103 Obviousness Rejections Using The “All Elements Test” In View Of Recent Revisions To Section 2143.03 Of The Manual Of Patent Examining Procedure – Part II
In an earlier post, I discussed reasons why it is preferable to rely on the MPEP for authority during prosecution. An exception to this guideline is when the MPEP is either incorrect or incomplete, which I suggest is the case with newly revised Section 2143.03. So what is an Applicant to do when the MPEP…
Recent Decisions Of The Board Of Patent Appeals And Interferences Confirm The Need For An Adequate Rational To Modify/Combine
A colleague passed along the results of a brief survey of some recent Board of Patent Appeals and Interferences (BPAI) decisions in which the BPAI cited KSR and reversed claim rejections. Two aspects of the survey results stood out. Of the 43 reversals identified by the search, 24 were based on a failure of the…
The Benefits Of Efficient Responses And Approaches For Efficiently Responding To Rejections Under 35 U.S.C. §103
There is an old saying that “sometimes, less is more.” This advice has particular applicability to patent prosecution where, with each word written, an Applicant risks generating argument estoppel. Additionally, each written word presents with it an inherent risk of introducing error. Further, extended arguments are generally more expensive since they require additional time to…