MPEP Q & A 97: Nonstatutory Double Patenting Rejection Made Under Obviousness Analysis

MPEP Q & A 65: Underlying Factual Inquiries of Obviousness: Question: List one of the underlying factual inquiries of obviousness. Answer: The factual inquiries enunciated by the Court are as follows: Determining the scope and content of the prior art; and Ascertaining the differences between the claimed invent... by Patent Bar MPEP Q & A Podcast

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MPEP Q & A 286: What are the factual inquiries of obviousness enunciated by the Court?: Question: What are the factual inquiries of obviousness enunciated by the Court? Answer: Obviousness is a question of law based on underlying factual inquiries. The factual inquiries enunciated by the Court are as follows: (A) Determining the scope and... by Patent Bar MPEP Q & A Podcast

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MPEP Q & A 101: Petition for a Derivation Proceeding: Question: What must a petition for a derivation proceeding provide? Answer: In a petition for a derivation proceeding, the petitioner must: (i) identify which application or patent is disputed; and (ii) provide at least one affidavit addressing communi... by Patent Bar MPEP Q & A Podcast

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MPEP Q & A 146: When Can a Combination as Claimed Show that Inventions are Distinct?: Question: When can a combination as claimed show that inventions are distinct? Answer: Inventions are distinct if it can be shown that a combination as claimed: (A) does not require the particulars of the subcombination as claimed for patentability (to... by Patent Bar MPEP Q & A Podcast

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MPEP Q & A 129: How Applicants Can Rebut a Prima Facie Case of Obviousness Based on Overlapping Ranges?: Question: How can applicants rebut a prima facie case of obviousness based on overlapping ranges? Answer: Applicants can rebut a prima facie case of obviousness based on overlapping ranges by showing the criticality of the claimed range. In addition, by Patent Bar MPEP Q & A Podcast

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MPEP Q & A 70: Three Separate and Distinct Requirements of the Specification: Question: What are the three separate and distinct requirements required of the specification by 35 U.S.C. 112(a) and pre-AIA 35 U.S.C. 112, first paragraph? Answer: 35 U.S.C. 112(a) and pre-AIA 35 U.S.C. 112, by Patent Bar MPEP Q & A Podcast

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MPEP Q & A 225: What are the reasons why the prior art element should not be considered an equivalent to the invention disclosed in the specification.: Question: What are the reasons why the prior art element should not be considered an equivalent to the invention disclosed in the specification? Answer: Reasons, why the prior art element should not be considered an equivalent to the invention disclose... by Patent Bar MPEP Q & A Podcast

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MPEP Q & A 3: Significant Differences Between Nonprovisional and Provisional Applications: Question: List two significant differences between nonprovisional applications and provisional applications. Answer: The following list includes significant differences between nonprovisional applications and provisional applications: No claim is requi... by Patent Bar MPEP Q & A Podcast

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MPEP Q & A 12: Two Separate and Distinct Requirements for 35 U.S.C. 112(b): Question: What are the two separate and distinct requirements of 35 U.S.C. 112(b) or Pre-AIA 35 U.S.C. 112, second paragraph? Answer: 35 U.S.C. 112(b) or Pre-AIA 35 U.S.C. 112, second paragraph contains two separate and distinct requirements: The first... by Patent Bar MPEP Q & A Podcast

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MPEP Q & A 11: Items Required in an Appeal Brief: Question: List two items which are required in an appeal brief. Answer: The specific items required in an appeal brief are: (i) Real party in interest. (ii) Related appeals, interferences, and trials. (iii) Summary of claimed subject matter. by Patent Bar MPEP Q & A Podcast

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MPEP Q & A 206: Requirements for an Applicant to Rescind Nonpublication Requests: Question: What are the requirements for an applicant to rescind a nonpublication request? Answer: The applicant may rescind a nonpublication request at any time. A request to rescind a nonpublication request must: Identify the application to which it i... by Patent Bar MPEP Q & A Podcast

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MPEP Q & A 192: Overcome Provisional Obviousness Rejection: Question: How can a provisional obviousness rejection be overcome? Answer: A provisional obviousness rejection can be overcome by: Arguing patentability over the earlier filed application; Combining the subject matter of the copending applications into... by Patent Bar MPEP Q & A Podcast

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MPEP Q & A 20: Details of Substantial New Question of Patentability: Question: What should a substantial new question of patentability not be based upon? Answer: A substantial new question cannot be based upon: prior art expressly relied upon by the examiner during the prosecution prior art which was actually discussed ... by Patent Bar MPEP Q & A Podcast

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MPEP Q & A 226: When is a rejection on the ground of lack of utility appropriate?: Question: When is a rejection on the ground of lack of utility appropriate? Answer: A rejection on the ground of lack of utility is appropriate when: it is not apparent why the invention is “useful” because applicant has failed to identify any specific... by Patent Bar MPEP Q & A Podcast

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MPEP Q & A 72: Filing of a Certificate of Correction: Question: When should a Certificate of Correction be filed instead of a reissue? Answer: While reissue is a vehicle for correcting inventorship in a patent, correction of inventorship should be effected by filing a request for a Certificate of Correcti... by Patent Bar MPEP Q & A Podcast

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MPEP Q & A 233: List application filing dates for determining whether patent is subject to maintenance fees: Question: What are the application filing dates for purposes of determining whether a patent is subject to payment of maintenance fees? Answer: Application filing dates for purposes of determining whether a patent is subject to payment of maintenance f... by Patent Bar MPEP Q & A Podcast

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MPEP Q & A 66: Relevance of Long-Felt Need and the Failure of Others: Question: What three things does the relevance of long-felt need and the failure of others to the issue of obviousness depend on? Answer: The relevance of long-felt need and the failure of others to the issue of obviousness depends on several factors: ... by Patent Bar MPEP Q & A Podcast

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MPEP Q & A 251: Benefits of filing a nonprovisional application claiming the benefit of the filing date of the provisional application under 35 U.S.C. 119(e): Question: What are the benefits of filing a nonprovisional application claiming the benefit of the filing date of the provisional application under 35 U.S.C. 119(e) rather than requesting conversion? Answer: Claiming the benefit of the provisional appl... by Patent Bar MPEP Q & A Podcast

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MPEP Q & A 112: What Does 35 U.S.C. 102(a)(2) Provide?: Question: What does 35 U.S.C. 102(a)(2) provide? Answer: AIA 35 U.S.C. 102(a)(2) provides that a person is not entitled to a patent if the claimed invention was described in a patent issued under 35 U.S.C. 151, by Patent Bar MPEP Q & A Podcast

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

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MPEP Q & A 102: Earlier Concluded Examination or Review of Patent: Question: What is an earlier concluded examination or review of the patent? Answer: An earlier concluded examination or review of the patent is: (A) the original examination of the application which matured into the patent; (B) the examination of the p... by Patent Bar MPEP Q & A Podcast

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MPEP Q & A 239: Can a patent owner avoid double patenting by disclaiming the earlier patent?: Question: Can a patent owner avoid double patenting by disclaiming the earlier patent? Answer: “[A] patent owner cannot avoid double patenting by disclaiming the earlier patent.” Chapter Details: The answer to this question can be found in chapter 800 ... by Patent Bar MPEP Q & A Podcast

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MPEP Q & A 149: Four Categories of Invention Recited in 35 U.S.C. 101: Question: What are the 4 categories of invention recited in 35 U.S.C. 101? Answer: The four categories of invention recited in 35 U.S.C. 101 are: process, machine, manufacture, or composition of matter. Chapter Details: The answer to this question can ... by Patent Bar MPEP Q & A Podcast

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MPEP Q & A 224: What are the “Appropriate circumstances” to vacate the order granting reexamination?: Question: What are the “Appropriate circumstances” to vacate the order granting reexamination? Answer: “Appropriate circumstances” exist to vacate the order granting reexamination where, for example: (A) the reexamination order is facially not based on... by Patent Bar MPEP Q & A Podcast

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MPEP Q & A 132: What are the Three Separate and Distinct Requirements of the First Paragraph of 35 U.S.C. 112?: Question: What are the three separate and distinct requirements of the first paragraph of 35 U.S.C. 112? Answer: 35 U.S.C. 112(a) and pre-AIA 35 U.S.C. 112, first paragraph require that the specification include the following three separate and distinc... by Patent Bar MPEP Q & A Podcast

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MPEP Q & A 123: What Situation May a Certificate of Correction be Used In Order to Correct an Issued Patent as Long as the Filing Was Made Without Deceptive Intent?: Question: A Certificate of correction may be used in order to correct an issued patent as long as the filing was made without deceptive intent in what situations? Answer: A Certificate of correction may be used in order to correct an issued patent as l... by Patent Bar MPEP Q & A Podcast

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MPEP Q & A 150: Triggering of On-Sale Bar of Pre-AIA 35 U.S.C. 102(b): Question: When is the on-sale bar of pre-AIA 35 U.S.C. 102(b) triggered? Answer: The on-sale bar of pre-AIA 35 U.S.C. 102(b) is triggered if the invention is both: The subject of a commercial offer for sale not primarily for experimental purposes and R... by Patent Bar MPEP Q & A Podcast

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MPEP Q & A 242: When will an international application not need a foreign filing license?: Question: List two reasons why an international application filed with, or forwarded to, the International Bureau would not need a foreign filing license. Answer: An international application filed with, or forwarded to, by Patent Bar MPEP Q & A Podcast

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MPEP Q & A 75: Duty of Disclosure in Reexamination Proceedings: Question: Who does the duty of disclosure in reexamination proceedings apply to? Answer: The duty of disclosure in reexamination proceedings applies to the patent owner; to each attorney or agent who represents the patent owner, by Patent Bar MPEP Q & A Podcast

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MPEP Q & A 294: What are the two aspects every requirement to restrict has?: Question: What are the two aspects every requirement to restrict has? Answer: Every requirement to restrict has two aspects: the reasons (as distinguished from the mere statement of conclusion) why each invention as claimedis either independent or dist... by Patent Bar MPEP Q & A Podcast

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MPEP Q & A 97: Nonstatutory Double Patenting Rejection Made Under Obviousness Analysis

MPEP Q & A 97: Nonstatutory Double Patenting Rejection Made Under Obviousness Analysis

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