MPEP Q & A 170: Must a Claim be Identified to a Correct Category of Subject Matter?

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Question:

Must a claim be identified to a correct category of subject matter?

Answer:

It is not necessary to identify a single category into which a claim falls, so long as it is clear that the claim falls into at least one category. It is also not necessary to identify a “correct” category into which the claim falls, because although in many instances it is clear within which category a claimed invention falls, a claim may satisfy the requirements of more than one category.

Chapter Details:

The answer to this question can be found in chapter 2100 of the MPEP. This chapter covers patentability.

The answer is from the 9th Edition, Revision 08.2017. Depending on future changes to the MPEP, the question and answer may or may not be applicable in later Editions or revisions.

Section Summary:

This question and answer comes from section 2106.03 of the MPEP.  The following is a brief summary of section 2106.03.

2106.03 Eligibility Step 1: The Four Categories of Statutory Subject Matter 

The four categories of statutory subject matter are; processes, machines, manufactures, and compositions of matter. This section covers each of the categories along with details on how to determine whether a claim fits in a statutory category.

MPEP Q & A 169: Non-Limiting Claims Not Directed to Any of the Statutory Categories.

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Question:

Provide an example of a non-limiting claim that is not directed to any of the statutory categories.

Answer:

Examples of a non-limiting claim that is not directed to any of the statutory categories include;

  • Products that do not have a physical or tangible form, such as information (often referred to as “data per se”) or a computer program per se (often referred to as “software per se”) when claimed as a product without any structural recitations;
  • Transitory forms of signal transmission (often referred to as “signals per se”), such as a propagating electrical or electromagnetic signal or carrier wave; and
  • Subject matter that the statute expressly prohibits from being patented, such as humans per se, which are excluded under The Leahy-Smith America Invents Act (AIA).

Chapter Details:

The answer to this question can be found in chapter 2100 of the MPEP. This chapter covers patentability.

The answer is from the 9th Edition, Revision 08.2017. Depending on future changes to the MPEP, the question and answer may or may not be applicable in later Editions or revisions.

Section Summary:

This question and answer comes from section 2106.03 of the MPEP.  The following is a brief summary of section 2106.03.

2106.03 Eligibility Step 1: The Four Categories of Statutory Subject Matter 

The four categories of statutory subject matter are; processes, machines, manufactures, and compositions of matter. This section covers each of the categories along with details on how to determine whether a claim fits in a statutory category.

MPEP Q & A 168: Competent Representation to a Client

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Question:

A practitioner shall provide competent representation to a client. What does competent representation to a client entail?

Answer:

Competent representation requires the legal, scientific, and technical knowledge, skill, thoroughness and preparation reasonably necessary for the representation.

Chapter Details:

The answer to this question can be found in the following supplement: Changes to Representation of Others Before the USPTO Final Rules. This is a special supplement that at the time of this recording is currently being tested on the Patent Bar exam. Depending on future changes to the supplement and the MPEP, the question and answer may not be applicable.

Section Summary:

This question and answer comes from the following supplement: Changes to Representation of Others Before the USPTO Final Rules. It specifically comes from 11.101 which covers Competence.

MPEP Q & A 167: When Must Applicants Timely File a Notice of Foreign Filing to Avoid Abandonment of a U.S. Application?

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Question:

Name one circumstance where applicants must timely file a notice of foreign filing to avoid abandonment of a U.S. application.

Answer:

Applicants must timely file a notice of foreign filing to avoid abandonment of a U.S. application if:

  • applicant filed a nonpublication request in the U.S. application filed under 35 U.S.C. 111(a);
  • applicant subsequently filed a foreign or international application directed to the invention disclosed in the U.S. application in a foreign country, or under a multilateral international agreement, that requires publication of applications 18 months after filing (foreign filing or counterpart application); and
  • applicant did not rescind the nonpublication request before filing the foreign or international application.

Chapter Details:

The answer to this question can be found in chapter 1100 of the MPEP. This chapter covers statutory invention registration (SIR); pre-grant publication (PGPub) and preissuance submissions.

The answer is from the 9th Edition, Revision 08.2017. Depending on future changes to the MPEP, the question and answer may or may not be applicable in later Editions or revisions.

Section Summary:

This question and answer comes from section 1124 of the MPEP.  The following is a brief summary of section 1124.

1124 Notice of Foreign Filing

This section covers the filing of a notice of foreign filing. The notice of foreign filing must be filed not later than 45 days after the filing date of the counterpart application or the application will become abandoned.

MPEP Q & A 166: Further Written Opinion Established by the International Preliminary Examining Authority

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Question:

Name one item any further written opinion established by the International Preliminary Examining Authority should set forth.

Answer:

Any further written opinion established by the International Preliminary Examining Authority should set forth, as applicable:

  • (A) Any defects in the international application concerning subject matter which is not required to be examined or which is unclear or inadequately supported;
  • (B) Any negative findings with respect to any of the claims because of a lack of novelty, inventive step (non-obviousness) or industrial applicability;
  • (C) Any defects in the form or contents of the international application;
  • (D) Any finding by the examiner that an amendment goes beyond the disclosure in the international application as originally filed;
  • (E) Any observation which the examiner wishes to make on the clarity of the claims, the description, the drawings or to the question whether the claims are fully supported by the description;
  • (F) Any decision by the examiner not to carry out the international preliminary examination on a claim for which no international search report was issued; or
  • (G) If the examiner considers that no acceptable nucleotide and/or amino acid sequence listing is available in a form that would allow a meaningful international preliminary examination to be carried out.

Chapter Details:

The answer to this question can be found in chapter 1800 of the MPEP. This chapter covers the patent cooperation treaty.

The answer is from the 9th Edition, Revision 08.2017. Depending on future changes to the MPEP, the question and answer may or may not be applicable in later Editions or revisions.

Section Summary:

This question and answer comes from section 1860 of the MPEP.  The following is a brief summary of section 1860.

1860 International Preliminary Examination Procedure

This section covers the procedure for international preliminary examination.  It also covers when a further written opinion should be prepared by the examiner. This includes times when applicant files a response which includes a persuasive argument that the written opinion issued by the International Searching Authority was improper because of a negative opinion with respect to a lack of novelty, inventive step (non-obviousness) or industrial applicability; and which results in the examiner considering any of the claims to lack novelty, inventive step (non-obviousness) or industrial applicability based on new art not necessitated by any amendment.

MPEP Q & A 165: When Patent Owner Fails to File Timely Response to Any Office Action Prior to an Action Closing Prosecution (ACP)

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Question:

List one consequence for when the patent owner fails to file a timely response to any Office action prior to an Action Closing Prosecution (ACP).

Answer:

If the patent owner fails to file a timely response to any Office action prior to an Action Closing Prosecution (ACP), it will result in the following consequences:

  • Where there were no claims found patentable in the Office action, the examiner will issue a Notice of Intent to Issue Inter Partes Reexamination Certificate (NIRC) terminating prosecution and indicating the status of the claims as canceled.
  • Where at least one claim is found patentable, all future prosecution will be limited to the claim(s) found patentable at the time of the failure to respond and to claims which do not expand the scope of the claim(s) found patentable at that time.
  • The patent owner will not be permitted to add claims broader in the scope than the patentable claims which remain in the proceeding at the time of the patent owner’s failure to timely respond.
  • The examiner will proceed to issue an ACP indicating that:
    • Any claims under rejection or objection are withdrawn from consideration and will be canceled upon publication of the certificate; and
    • Prosecution will be limited to the claim(s) found patentable at the time of the failure to respond and to claims which do not expand the scope of the claim(s) found patentable at that time.

Chapter Details:

The answer to this question can be found in chapter 2600 of the MPEP. This chapter covers optional inter partes reexamination.

The answer is from the 9th Edition, Revision 08.2017. Depending on future changes to the MPEP, the question and answer may or may not be applicable in later Editions or revisions.

Section Summary:

This question and answer comes from section 2666.10 of the MPEP.  The following is a brief summary of section 2666.10.

2666.10 Patent Owner Does Not Respond to Office Action  

This section covers instances when the patent owner does not respond to an Office action. The consequences are outlined for when a patent owner fails to file a timely response to any Office action prior to an Action Closing Prosecution (ACP) and where the patent owner fails to make a timely appeal after the issuance of a Right of Appeal Notice, or where a timely patent owner’s appeal is subsequently dismissed.

MPEP Q & A 164: Computer-Implemented Methods and the Tax Strategy Provision

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Question:

Would a computer-implemented method that is deemed novel and non-obvious be effected by the tax strategy provision even if used for a tax purpose?

Answer:

A computer-implemented method that is deemed novel and non-obvious would not be affected by this provision even if used for a tax purpose. For example, a novel and non-obvious computer-implemented method for manipulating data would not be affected by this provision even if the method organized data for a future tax filing.

Chapter Details:

The answer to this question can be found in chapter 2100 of the MPEP. This chapter covers patentability.

The answer is from the 9th Edition, Revision 08.2017. Depending on future changes to the MPEP, the question and answer may or may not be applicable in later Editions or revisions.

Section Summary:

This question and answer comes from section 2124.01  of the MPEP.  The following is a brief summary of section 2124.01.

2124.01 Tax Strategies Deemed Within the Prior Art

This section covers tax strategies deemed within the prior art. The America Invents Act (AIA) provides that for purposes of evaluating an invention for novelty and nonobviousness under 35 U.S.C. 102 and 103, any strategy for reducing, avoiding, or deferring tax liability (hereinafter “tax strategy”), whether known or unknown at the time of the invention or application for patent, shall be deemed insufficient to differentiate a claimed invention from the prior art. As a result, applicants will no longer be able to rely on the novelty or non-obviousness of a tax strategy embodied in their claims to distinguish them from the prior art.

This section also includes examples that are directed to computer-implemented methods. Essentially, a computer-implemented method that is deemed novel and non-obvious would not be affected by this provision even if used for a tax purpose.

MPEP Q & A 163: What are the Most Common Basis for Filing a Reissue Application?

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Question:

What are the most common basis for filing a reissue application?

Answer:

The most common bases for filing a reissue application are:

  • the claims are too narrow or too broad;
  • the disclosure contains inaccuracies;
  • applicant failed to or incorrectly claimed foreign priority; and
  • applicant failed to make reference to or incorrectly made reference to prior copending applications.

Chapter Details:

The answer to this question can be found in chapter 1400 of the MPEP. This chapter covers correction of patents.

The answer is from the 9th Edition, Revision 08.2017. Depending on future changes to the MPEP, the question and answer may or may not be applicable in later Editions or revisions.

Section Summary:

This question and answer comes from section 1402 of the MPEP.  The following is a brief summary of section 1402.

1402 Grounds for Filing

This section covers the grounds for filing a reissue application. Essentially, they are filed to correct an error in the patent, where, as a result of the error, the patent is deemed wholly or partly inoperative or invalid. The following types of errors are briefly mentioned and explained in this section; errors based on the scope of claims, inventorship errors, errors related to priority of a foreign application, errors in the benefit claim to a domestic application, and errors in drawings.

MPEP Q & A 162: When is a 35 U.S.C. 102 Rejection with Multiple References Proper?

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Question:

When is a 35 U.S.C. 102 rejection with multiple references proper?

Answer:

A 35 U.S.C. 102 rejection over multiple references has been held to be proper when the extra references are cited to:

  • Prove the primary reference contains an “enabled disclosure;”
  • Explain the meaning of a term used in the primary reference; or
  • Show that a characteristic not disclosed in the reference is inherent.

Chapter Details:

The answer to this question can be found in chapter 2100 of the MPEP. This chapter covers patentability.

The answer is from the 9th Edition, Revision 08.2017. Depending on future changes to the MPEP, the question and answer may or may not be applicable in later Editions or revisions.

Section Summary:

This question and answer comes from section 2131.01  of the MPEP.  The following is a brief summary of section 2131.01.

2131.01 Multiple Reference 35 U.S.C. 102 Rejections

Normally, only one reference should be used in making a rejection under 35 U.S.C. 102.

However, a 35 U.S.C. 102 rejection over multiple references has been held to be proper when the extra references are cited to:

  • Prove the primary reference contains an “enabled disclosure;”
  • Explain the meaning of a term used in the primary reference; or
  • Show that a characteristic not disclosed in the reference is inherent. This section provides details on these instances.

MPEP Q & A 161: Living Subject Matter and Patent Protection

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Question:

Is it true that living subject matter with markedly different characteristics from any found in nature, such as the claimed bacterium produced by genetic engineering, are excluded from patent protection by 35 U.S.C. 101?

Answer:

No, it is not true. For example, the Federal Circuit has indicated that “discoveries that possess ‘markedly different characteristics from any found in nature,’ … are eligible for patent protection.”

Chapter Details:

The answer to this question can be found in chapter 2100 of the MPEP. This chapter covers patentability.

The answer is from the 9th Edition, Revision 08.2017. Depending on future changes to the MPEP, the question and answer may or may not be applicable in later Editions or revisions.

Section Summary:

This question and answer comes from section 2105  of the MPEP.  The following is a brief summary of section 2105.

2105 Patent Eligible Subject Matter — Living Subject Matter

This section covers living subject matter, providing examples of what can be and cannot be patentable. For example, new minerals discovered in the earth are not patentable, but microorganisms produced by genetic engineering can be patented. In addition, it gives specifics on how no patent may issue on a claim directed to or encompassing a human organism, which was added in the America Invents Act (AIA).