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USPTO proposes new BPAI rules to cope with upcoming increase in appeals

In a Federal Register notice yesterday, the USPTO promulgated revised rules for practice before the Board of Patent Appeals and Interferences. The USPTO will accept comments on the proposed rules until September 28, 2007 via email, fax, or postal mail. Many of the proposed rules appear designed to advance the USPTO's current trend toward finding […]

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Revised TTAB rules coming soon

The TTABlog reports that the revised TTAB rules initially proposed in a notice of proposed rulemaking on January 17, 2006 are likely to be published in the Federal Register in the next week. The summary of the rules as initially proposed is as follows: The United States Patent and Trademark Office (Office) proposes to amend […]

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Continuation and claims rules to publish “later this summer,” will take effect 60 days later

In a press release today, the USPTO announced that the much-rumored new rules regarding continuation applications and claim limits recently approved by the OMB will publish in the Federal Register "later this summer," and will take effect 60 days after publication. The USPTO notes that the abstracts published with the OMB reflect the abstracts from […]

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Federal Circuit affirms requirement to amend listing of goods to exclude goods in another class

In the first of two Federal Circuit rulings today, the court affirmed that the USPTO was within its authority when it refused to allow an applicant to rely on the international classification to clarify ambiguities in the listing of goods for a trademark. In affirming the TTAB, the court emphasized the deference due to the […]

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Ex parte Catan: Obviousness at the USPTO in electrical engineering

In its third opinion of the day designated precedential, the Board of Patent Appeals and Interferences once again affirmed an examiner's obviousness rejections. Specifically, the Board found that Appellant's apparatus incorporating bioauthentication and a consumer electronics device was an obvious solution to a known problem, as all elements of the claims other than the bioauthentication […]

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Board of Patent Appeals and Interferences releases three precedential obviousness decisions

Today the USPTO Board of Patent Appeals and Interferences designated as precedential three opinions in ex parte appeals from examiner rejections applying the post-KSR obviousness standard. The three cases are each from a different technology center. The cases are: Ex parte Kubin (Tech center 1600—Biotechnology and Organic Chemistry) Ex parte Smith (Tech center 3700—Mechanical Engineering, […]

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Ex parte Kubin: Obviousness at the USPTO in biotechnology

As mentioned previously, the BPAI designated an opinion as precedential today addressing the issues of obviousness, enablement, and the written description requirement in the context of biotechnology inventions. These issues were addressed in the context of patenting a gene involved in regulating the immune system. Addressing the obviousness issue, the board determined that the previous […]

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Ex parte Smith: Obviousness at the USPTO in mechanical engineering

In another post-KSR opinion designated precedential today, the Board of Patent Appeals and Interferences affirmed an Examiner's final rejection of an application under 35 U.S.C. §§ 102 and 103. The claims "were combinations which only unite old elements with no change in their respective functions and which yield predictable results," and were thus found to […]

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Office of Management and Budget approves USPTO’s new continuation rules

The Office of Management and Budget has approved the two new rules promulgated by the USPTO relating to continuation applications and examination of claims. Apparently the meetings with various groups did not convince the OMB that the rules were inconsistent with the USPTO's regulatory authority. The rules are rumored to be different than those originally […]

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Federal Circuit approves MPEP guidelines for written description rejections

The Federal Circuit addressed the standard applied by the USPTO for establishing a prima facie case of failure to meet the written description requirement in Hyatt v. Dudas today. The court found that compliance with MPEP § 2163.04(I)(B), by pointing out the nonexistence of support in the specification and identifying the claim limitation(s) at issue, […]

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