MPEP Q & A 286: What are the factual inquiries of obviousness enunciated by the Court?

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

4 min listen

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

3 min listen

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

3 min listen

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

3 min listen

MPEP Q & A 27: Difference Between AIA 35 USC 102(c) and the CREATE Act: Question: What are the major differences between AIA 35 U.S.C. 102(c) and the CREATE Act? Answer: The major differences between AIA 35 U.S.C. 102(c) and the CREATE Act are that: the AIA provision is keyed to the effective filing date of the claimed inv... by Patent Bar MPEP Q & A Podcast

3 min listen

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

3 min listen

MPEP Q & A 253: What must a claim in dependent form contain?: Question: What must a claim in dependent form contain? Answer: A claim in dependent form shall contain: (i) a reference to a claim previously set forth, and (ii) then specify a further limitation of the subject matter claimed. by Patent Bar MPEP Q & A Podcast

3 min listen

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

3 min listen

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

3 min listen

MPEP Q & A 135: When May the Prior Art Date of a Reference Under Pre-AIA 35 U.S.C. 102(e) be the International Filing Date?: Question: When may the prior art date of a reference under pre-AIA 35 U.S.C. 102(e) be the international filing date? Answer: The prior art date of a reference under pre-AIA 35 U.S.C. 102(e) may be the international filing date if the international fil... by Patent Bar MPEP Q & A Podcast

4 min listen

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

3 min listen

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

3 min listen

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

3 min listen

MPEP Q & A 196: Submission of Petition to Withdraw Application from Issue Under 37 CFR 1.313(c): Question: How can petitions to withdraw an application from issue under 37 CFR 1.313(c) be sent to the USPTO? Answer: Petitions to withdraw an application from issue under 37 CFR 1.313(c) may be: (A) mailed to “Mail Stop Petition, by Patent Bar MPEP Q & A Podcast

3 min listen

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

4 min listen

MPEP Q & A 234: How can patent applications be sent to the USPTO?: Question: How can patent applications be sent to the U.S. Patent and Trademark Office? Answer: All applications (provisional and nonprovisional) may be sent to the U.S. Patent and Trademark Office by mail using the United States Postal Service, by Patent Bar MPEP Q & A Podcast

3 min listen

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

3 min listen

MPEP Q & A 191: Final Rule in the Changes to the Claim Construction Standard: Question: What does the final rule in the “Changes to the Claim Construction Standard for Interpreting Claims in Trial Proceedings Before the Patent Trial and Appeal Board” state? Answer: In this final rule, by Patent Bar MPEP Q & A Podcast

4 min listen

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

3 min listen

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

4 min listen

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

3 min listen

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

5 min listen

MPEP Q & A 25: Conditions for First Application to be Granted a Notice of Allowance: Question: Under what conditions will a first application usually be granted a Notice of Allowance and become a patent in spite of a second application with potentially interfering claims? Answer: A first application will usually be granted a Notice of ... by Patent Bar MPEP Q & A Podcast

4 min listen

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

3 min listen

MPEP Q & A 228: Who is listed on the assignee section of a patent?: Question: Who will be listed in the assignee section of a patent? Answer: The real party in interest will be listed in the assignee section of the patent. This does not change the applicant designated in the application or for any patent that is grante... by Patent Bar MPEP Q & A Podcast

3 min listen

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

4 min listen

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

3 min listen

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

3 min listen

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

3 min listen

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

3 min listen

Discover this podcast and so much more

MPEP Q & A 286: What are the factual inquiries of obviousness enunciated by the Court?

MPEP Q & A 286: What are the factual inquiries of obviousness enunciated by the Court?

Description

Titles in the series (100)

More Episodes from Patent Bar MPEP Q & A Podcast

Related podcast episodes