Comments on: Q) 102 and 103 Rejections http://mypatentbar.com/2008/08/01/387/ Patent Bar Review and Study Guide Fri, 03 Sep 2010 02:34:16 +0000 http://wordpress.org/?v=2.9.2 hourly 1 By: passthepatentbar http://mypatentbar.com/2008/08/01/387/#comment-1268 passthepatentbar Fri, 22 May 2009 20:42:15 +0000 http://patentbar.wordpress.com/?p=387#comment-1268 FROM MPEP 706.02 Prior art rejections should ordinarily be confined strictly to the best available art. Exceptions may prop­erly be made, for example, where: (A) the propriety of a 35 U.S.C. 102 or 103 rejec­tion depends on a particular interpretation of a claim; (B) a claim is met only in terms by a reference which does not disclose the inventive concept involved; or (C) the most pertinent reference seems likely to be antedated by a 37 CFR 1.131 affidavit or declara­tion. Such rejections should be backed up by the best other art rejections available. Merely cumulative rejections, i.e., those which would clearly fall if the primary rejection were not sustained, should be avoided. See also MPEP § 707.05. FROM MPEP 706.02

Prior art rejections should ordinarily be confined strictly to the best available art. Exceptions may prop­erly be made, for example, where:
(A) the propriety of a 35 U.S.C. 102 or 103 rejec­tion depends on a particular interpretation of a claim;
(B) a claim is met only in terms by a reference which does not disclose the inventive concept involved; or
(C) the most pertinent reference seems likely to be antedated by a 37 CFR 1.131 affidavit or declara­tion.

Such rejections should be backed up by the best other art rejections available. Merely cumulative rejections, i.e., those which would clearly fall if the primary rejection were not sustained, should be avoided.

See also MPEP § 707.05.

]]> By: patentbar http://mypatentbar.com/2008/08/01/387/#comment-1267 patentbar Wed, 03 Sep 2008 19:51:04 +0000 http://patentbar.wordpress.com/?p=387#comment-1267 Know that an Examiner can make both 102/103 rejections. When shouldn’t he make both? ANSWER - when cumulative (see 700) Know that an Examiner can make both 102/103 rejections. When shouldn’t he make both? ANSWER – when cumulative (see 700)

]]> By: patentbar http://mypatentbar.com/2008/08/01/387/#comment-1266 patentbar Fri, 01 Aug 2008 21:36:27 +0000 http://patentbar.wordpress.com/?p=387#comment-1266 ANSWER: When cumulative (see 700). Does anyone have the section or can anyone clarify? This answer is from the forum. ANSWER: When cumulative (see 700). Does anyone have the section or can anyone clarify? This answer is from the forum.

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