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An anticlimactic finish – MPEP 2143.01(I) November 20, 2009

Posted by Brian Schar in Patent prosecution, USPTO.

This is the last installment of my occasional series about MPEP 2143.01, which will focus on 2143.01(I).  That section is entitled “Prior Art Suggestion of the Desirability of the Claimed Invention.”  Essentially, 2143.01(I) just states that the “teaching, suggestion, or motivation” test is one way to establish obviousness, and that the motivation to combine need not be expressly set forth in writing.  Unlike the other sections of MPEP 2143.01, which inform the applicant of ways to show nonobviousness, 2143.01(I) informs the examining corps about a methodology to show obviousness.  And that’s about it.

Next up, a discussion about the safe harbor that isn’t, when an applicant attempts to amend an independent claim to include the limitations of claims depending therefrom, concurrent with the filing of an appeal brief.


1. shiny - December 16, 2009

did you ever notice that the MPEP rhymes with creepy????

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