MPEP Q & A 138: When May a Process and Apparatus for its Practice be Shown to be Distinct Inventions?

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 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 5: Situations in Which Drawings are Not Considered Necessary: Question: List a situation in which drawings are usually not considered necessary for the understanding of the invention. Answer: It has been USPTO practice to treat an application that contains at least one process or method claim as an application f... by Patent Bar MPEP Q & A Podcast

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MPEP Q & A 79: Factors When Determining Sufficient Evidence Concerning Enablement Requirement: Question: List two factors to be considered when determining whether there is sufficient evidence to support a determination that a disclosure does not satisfy the enablement requirement and whether any necessary experimentation is ‘undue’. 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 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 159: What are the Two Criteria for Subject Matter Eligibility?: Question: What are the two criteria for subject matter eligibility? Answer: First, the claimed invention must be in one of the four statutory categories. 35 U.S.C. 101 defines the four categories of invention that Congress deemed to be the appropriate ... 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 35: Example of What an Oath or Declaration Must Do: re Question: List one example of what an oath or declaration must do. Answer: An oath or declaration must: identify the inventor or joint inventor executing the oath or declaration by his or her legal name; identify the application to which it is dir... by Patent Bar MPEP Q & A Podcast

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MPEP Q & A 152: Information an Attorney of Record May Have to Submit in Reply to an Office Action, Reissue Application, or Reexamination Proceeding: Question: An attorney of record may have to submit information in reply to an Office action, a reissue application, or a reexamination proceeding. List 2 different types of information this may include. Answer: An attorney of record may have to submit ... 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 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 136: What a Reasons Document Should Include: Question: The reasons document explains why each item of information does or does not raise a substantial new question of patentability (or SNQ) in a supplemental examination. What should a reasons document include? by Patent Bar MPEP Q & A Podcast

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MPEP Q & A 130: What is a Covered Business Method Patent According to the AIA?: Question: What is a covered business method patent according to the AIA? Answer: The AIA specifies that a covered business method patent is a patent that claims a method or corresponding apparatus for performing data processing or other operations used... by Patent Bar MPEP Q & A Podcast

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MPEP Q & A 34: Item an Applicant May Submit as Objective Evidence That Common Ownership Existed: Question: Name one item that an applicant may submit, in addition to a statement regarding common ownership as objective evidence that common ownership existed? Answer: The applicant may submit the following evidence: (A) Reference to assignments recor... by Patent Bar MPEP Q & A Podcast

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MPEP Q & A 68: Ways in Which Possession May be Shown: Question: List one way possession may be shown. Answer: Possession may be shown in many ways. For example, possession may be shown by describing an actual reduction to practice of the claimed invention. Possession may also be shown by a clear depiction... by Patent Bar MPEP Q & A Podcast

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MPEP Q & A 200: When Drawings Are Not Considered Necessary Under 35 USC 113: Question: When is a drawing usually not considered necessary for the understanding of an invention under 35 USC 113 (first sentence)? Answer: It has been USPTO practice to treat an application that contains at least one process or method claim as an ap... by Patent Bar MPEP Q & A Podcast

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MPEP Q & A 265: What is the second part of the Alice/Mayo test often referred to as?: Question: What is the second part of the Alice/Mayo test often referred to as? Answer: The second part of the Alice/Mayo test is often referred to as a search for an inventive concept. An inventive concept “cannot be furnished by the unpatentable law o... by Patent Bar MPEP Q & A Podcast

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MPEP Q & A 18: Duty to Disclose: Question: Who has a duty to disclose? Answer: The following individuals have a duty to disclose: each inventor each registered practitioner each assignee every other person who is substantially involved in the preparation or prosecution of the applicat... by Patent Bar MPEP Q & A Podcast

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MPEP Q & A 31: Applicant Action After Invention is Found Obvious: Question: Once Office personnel have established the Graham factual findings and concluded that the claimed invention would have been obvious, what must the applicant do? Answer: Once Office personnel have established the Graham factual findings and co... by Patent Bar MPEP Q & A Podcast

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MPEP Q & A 87: Reasons Practitioner Should Act as an Advocate Before a Tribunal: Question: List one reason a practitioner should act as an advocate at a proceeding before a tribunal in which the practitioner is likely to be a necessary witness. Answer: A practitioner shall not act as advocate at a proceeding before a tribunal in wh... by Patent Bar MPEP Q & A Podcast

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MPEP Q & A 144: What Should a Subject Matter Eligibility Rejection Under Step 2 Do?: Question: What should a subject matter eligibility rejection under Step 2 do? Answer: A subject matter eligibility rejection under Step 2 should: Identify the judicial exception by referring to what is recited (i.e., 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 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 240: What is an example of a situation that does not define ‘substantial utilities’?: Question: What is an example of a situation that does not define “substantial utilities”: Answer: The following are examples of situations that do not define “substantial utilities”: (A) Basic research such as studying the properties of the claimed pro... by Patent Bar MPEP Q & A Podcast

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MPEP Q & A 148: The 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 182: Characteristics of Ex Parte Reexamination: Question: List one of the basic characteristics of ex parte reexamination. Answer: The basic characteristics of ex parte reexamination are as follows: Anyone can request reexamination at any time during the period of enforceability of the patent; In ex... 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 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 88: What the Patent Prosecution Highway Attempts to Accomplish: Question: What does the Patent Prosecution Highway or PPH attempt to accomplish? Answer: The Patent Prosecution Highway, or PPH enables an applicant who receives a positive ruling on patent claims from one participating office to request accelerated pr... by Patent Bar MPEP Q & A Podcast

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MPEP Q & A 138: When May a Process and Apparatus for its Practice be Shown to be Distinct Inventions?

MPEP Q & A 138: When May a Process and Apparatus for its Practice be Shown to be Distinct Inventions?

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