First Action Finals in Continuations
A few weeks ago, we were asked about the June 2020 changes to MPEP 706.07(b). That section relates to the situations in which the first… Read More »First Action Finals in Continuations
Generalizing Species
Our friend, Nüni, pointed out we did not follow-up from our blog post regarding Obviousness of Species. Specifically, we explained that USPTO Examiners (particularly, mechanical… Read More »Generalizing Species
Brief Case Analysis
Let’s consider an invention in which a car has been enhanced to include a camera on the rear of the car. The camera is angled… Read More »Brief Case Analysis
Preparing an Interview Agenda
Recently, we were asked how we prefer to prepare an interview agenda with an Examiner at the USPTO. One of the defining characteristics of contemporary… Read More »Preparing an Interview Agenda
Localizing Foreign Applications
We often discuss localizing a foreign (i.e., non-US origin) application for examination at the USPTO. What does that include? Typically, we begin by removing any… Read More »Localizing Foreign Applications
Multiple Dependent Claims
US patent practice concerning multiple dependent claims is partially addressed by 35 USC §112(e). That subsection of the statute currently reads, in part, “A claim… Read More »Multiple Dependent Claims
Ex parte Appeal Fee Structure
In 2013, the USPTO changed the fee structure for ex parte appeals. This change continues to impact whether an Applicant proceeds with an appeal or… Read More »Ex parte Appeal Fee Structure
Identifying the “Point of Novelty”
We were asked whether we ever identify the “point of novelty” in the claims during prosecution of a utility patent application. At the outset, the… Read More »Identifying the “Point of Novelty”
Responses to 105s
Under 37 CFR 1.105, an Examiner at the US Patent and Trademark Office may require the Applicant submit “such information as may be reasonably necessary… Read More »Responses to 105s
Nodal, Session 7, M-or-T Discussion
Nodal, Session 7, considers a prosecution in which the Applicant apparently relied on claim recitations of a motor, a thermometer, and a control unit in… Read More »Nodal, Session 7, M-or-T Discussion