MPEP Q & A 146: When Can a Combination as Claimed Show that Inventions are Distinct?

MPEP Q & A 138: When May a Process and Apparatus for its Practice be Shown to be Distinct Inventions?: Question: When may a process and apparatus for its practice be shown to be distinct inventions? Answer: Process and apparatus for its practice can be shown to be distinct inventions, if either or both of the following can be shown: (A) that the process... 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 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 38: Common Types of Linking Claims: Question: What are the most common types of linking claims? Answer: The most common types of linking claims which, if allowable, act to prevent restriction between inventions that can otherwise be shown to be divisible, 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 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 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 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 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 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 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 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 119: When is a Reference Analogous Art to the Claimed Invention?: Question: When is a reference analogous art to the claimed invention? Answer: A reference is analogous art to the claimed invention if: The reference is from the same field of endeavor as the claimed invention (even if it addresses a different problem)... 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 264: How do examiners evaluate integration into a practical application?: Question: How do examiners evaluate integration into a practical application? Answer: Examiners evaluate integration into a practical application by: (1) identifying whether there are any additional elements recited in the claim beyond the judicial exc... 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 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 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 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 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 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 221: What are the Three Types of Patent Documents Available as Prior Art …?: Question: AIA 35 U.S.C. 102(a)(2) sets forth three types of patent documents that are available as prior art as of the date they were effectively filed with respect to the subject matter relied upon in the document if they name another inventor. 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 267: What are the four purposes 35 U.S.C. 101 has been interpreted as imposing?: Question: What are the four purposes 35 U.S.C. 101 has been interpreted as imposing? Answer: 35 U.S.C. 101 has been interpreted as imposing four purposes. First, 35 U.S.C. 101 limits an inventor to ONE patent for a claimed invention. 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 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 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 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 222: What are the Three Conditions That Must be Satisfied …?: Question: AIA 35 U.S.C. 102(c) provides three conditions that must be satisfied in order for subject matter disclosed which might otherwise qualify as prior art, and a claimed invention, to be treated as having been owned by the same person or subject ... 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 146: When Can a Combination as Claimed Show that Inventions are Distinct?

MPEP Q & A 146: When Can a Combination as Claimed Show that Inventions are Distinct?

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