MPEP Q & A 119: When is a Reference Analogous Art to the Claimed Invention?

MPEP Q & A 170: Must a Claim be Identified to a Correct Category of Subject Matter?: 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. by Patent Bar MPEP Q & A Podcast

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MPEP Q & A 257: Can an inventor apply for a patent jointly even when they did not physically work together or at the same time?: Question: Can an inventor apply for a patent jointly even when they did not physically work together or at the same time? Answer: The inventive entity for a particular application is based on some contribution to at least one of the claims made by each... 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 14: Request for Simultaneous Issue: Question: What must a request for simultaneous issue contain? Answer: The request must contain the following information about each allowed application for which simultaneous issue is requested; application number, filing date, name(s) of inventor(s), by Patent Bar MPEP Q & A Podcast

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MPEP Q & A 19: Items a Protestor Must Give the PTO: Question: What must a protestor give the PTO? Answer: A protestor must give the PTO: a listing of the patents, publications or other information relied upon a copy of each item listed a translation of non-English papers a concise explanation of the rel... 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 154: What Does the Broadest Reasonable Interpretation (BRI) Do?: Question: What does the broadest reasonable interpretation (BRI) do? Answer: The BRI sets the boundaries of the coverage sought by the claim and will influence whether the claim seeks to cover subject matter that is beyond the four statutory categories... by Patent Bar MPEP Q & A Podcast

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MPEP Q & A 211: When May an Abandoned Application be Used as Prior Art?: Question: When may an abandoned application be used as prior art? Answer: An abandoned patent application may become evidence of prior art only when it has been appropriately disclosed, as, for example, when the abandoned patent [application] is refere... by Patent Bar MPEP Q & A Podcast

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MPEP Q & A 64: Strongest Rationale for Combining References: Question: What is the strongest rationale for combining references? Answer: The strongest rationale for combining references is a recognition, expressly or impliedly in the prior art or drawn from a convincing line of reasoning based on established sci... 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 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 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 218: What is the issue of correlation about as related to matters of invitro/in vivo?: Question: What is the issue of correlation as related to matters of invitro/in vivo? Answer: 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. 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 161: Living Subject Matter and Patent Protection: 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, by Patent Bar MPEP Q & A Podcast

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MPEP Q & A 32: Circumstance Where Joint Ownership Exists: Question: Name one circumstance where joint ownership exists. Answer: Joint ownership occurs when any of the following cases exist: Multiple partial assignees of the patent property; Multiple inventors who have not assigned their right, 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 162: When is a 35 U.S.C. 102 Rejection with Multiple References Proper?: 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 ... 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 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 69: Submission of a Protest: Question: When may a protest be submitted? Answer: A protest must be submitted prior to the mailing of a Notice of Allowance and the application must be pending when the examiner receives the information. Chapter Details: The answer to this question ca... by Patent Bar MPEP Q & A Podcast

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MPEP Q & A 60: Contents of a Request for Republication: Question: What must a request for republication include? Answer: A request for republication must include: a copy of the application in compliance with the Office Electronic Filing System (EFS) requirements, by Patent Bar MPEP Q & A Podcast

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MPEP Q & A 80: Assignments Potentially Utilized as the Oath or Declaration: Question: Is it possible for an assignment in applications filed on or after September 16, 2012 to be utilized as the oath or declaration? Answer: Yes, for applications filed on or after September 16, 2012, by Patent Bar MPEP Q & A Podcast

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MPEP Q & A 58: Electronic Publications as Printed Publications: Question: Is an electronic publication considered to be a “printed publication” within the meaning of 35 U.S.C. 102(a)(1) and pre-AIA 35 U.S.C. 102(a) and (b) provided the publication was accessible to persons concerned with the art to which the docume... by Patent Bar MPEP Q & A Podcast

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MPEP Q & A 48: Type of Issues Triggering Rejections: Question: Name one type of issue that may trigger a rejection. Answer: Rejections are usually made due to issues with one of the following: unpatentable subject matter or lack of utility (35 U.S.C. 101) issues with novelty (35 U.S.C. by Patent Bar MPEP Q & A Podcast

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MPEP Q & A 97: Nonstatutory Double Patenting Rejection Made Under Obviousness Analysis: Question: What must any nonstatutory double patenting rejection made under the obviousness analysis make clear? Answer: Any nonstatutory double patenting rejection made under the obviousness analysis should make clear: (A) The differences between the i... 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 245: How is the effective filing date of a claimed invention determined?: Question: How is the effective filing date of a claimed invention determined? Answer: The effective filing date of a claimed invention is determined on a claim-by-claim basis. Chapter Details: The answer to this question can be found in chapter 2100 of... 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 118: Item an Appellant Must File If He or She Wishes to Reinstate an Appeal After Prosecution is Reopened: Question: What must an appellant file if he or she wishes to reinstate an appeal after prosecution is reopened? Answer: If an appellant wishes to reinstate an appeal after prosecution is reopened, appellant must file a new notice of appeal and a comple... by Patent Bar MPEP Q & A Podcast

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MPEP Q & A 119: When is a Reference Analogous Art to the Claimed Invention?

MPEP Q & A 119: When is a Reference Analogous Art to the Claimed Invention?

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