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Patent Bar MPEP Q & A Podcast
Lisa Parmley, USPTO Patent Practitioner #51006
300 episodes
1 week ago
Brought to you by PatentEducationSeries.com, based on their widely popular Patent Bar Review Course ... the PES Patent Bar Review.

This is the perfect podcast to study for the Patent Bar exam on the go. The Patent Bar MPEP Q & A Podcast covers one specific point from the MPEP per 3 to 5 minute episode. You'll get a question along with the detailed answer. In addition to the question and answer you'll get a detailed summary of the exact section where the answer is found. It's short, but packed full of valuable information. Perfect for exercising, driving, or waiting in line.

Please visit PatentEducationSeries.com for more free information to help you learn more about and pass the Patent Bar exam. We're here to help you succeed. We've helped scores of engineers, scientists, and attorneys get on the road to a new career as a Patent Practitioner since 2001. The contents of this podcast is not legal advice; for full disclaimer information visit: PatentEducationSeries.com.
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Education
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All content for Patent Bar MPEP Q & A Podcast is the property of Lisa Parmley, USPTO Patent Practitioner #51006 and is served directly from their servers with no modification, redirects, or rehosting. The podcast is not affiliated with or endorsed by Podjoint in any way.
Brought to you by PatentEducationSeries.com, based on their widely popular Patent Bar Review Course ... the PES Patent Bar Review.

This is the perfect podcast to study for the Patent Bar exam on the go. The Patent Bar MPEP Q & A Podcast covers one specific point from the MPEP per 3 to 5 minute episode. You'll get a question along with the detailed answer. In addition to the question and answer you'll get a detailed summary of the exact section where the answer is found. It's short, but packed full of valuable information. Perfect for exercising, driving, or waiting in line.

Please visit PatentEducationSeries.com for more free information to help you learn more about and pass the Patent Bar exam. We're here to help you succeed. We've helped scores of engineers, scientists, and attorneys get on the road to a new career as a Patent Practitioner since 2001. The contents of this podcast is not legal advice; for full disclaimer information visit: PatentEducationSeries.com.
Show more...
Education
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MPEP Q & A 321: What are the factual inquiries related to obviousness?
Patent Bar MPEP Q & A Podcast
3 minutes 41 seconds
8 months ago
MPEP Q & A 321: What are the factual inquiries related to obviousness?

Question:
What are the factual inquiries related to obviousness that the Court enunciates?
Answer:
Obviousness is a question of law based on underlying factual inquiries. The factual inquiries enunciated by the Court are as follows:

* (A) Determining the scope and content of the prior art;
* (B) Ascertaining the differences between the claimed invention and the prior art; and
* (C) Resolving the level of ordinary skill in the pertinent art.

Chapter Details:
The answer to this question can be found in chapter 2100 of the MPEP. This chapter covers Patentability.
The answer is from the 9th Edition, Revision 07.2022, Published February 2023. Depending on future changes to the MPEP, the question and answer may or may not be applicable in later Editions or revisions.
Section Summary:
This question and answer comes from section 2141 of the MPEP.  The following is a brief summary of section 2141.
2141 Examination Guidelines for Determining Obviousness Under 35 U.S.C. 103
This section covers examination guidelines for determining obviousness under 35 U.S.C. 103. The use of common sense does not require a “specific hint or suggestion in a particular reference,” only a reasoned explanation that avoids conclusory generalizations.
The KSR decision is discussed in detail. The Supreme Court in KSR reaffirmed the familiar framework for determining obviousness as set forth in Graham v. John Deere Co., but stated that the Federal Circuit had erred by applying the teaching-suggestion-motivation (TSM) test in an overly rigid and formalistic way. In KSR, the Supreme Court particularly emphasized “the need for caution in granting a patent based on the combination of elements found in the prior art,” and discussed circumstances in which a patent might be determined to be obvious.
The basic factual inquiries of Graham v. John Deere Co. are also discussed. The Graham factors, including secondary considerations when present, are the controlling inquiries in any obviousness analysis. 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 invention and the prior art; and
* Resolving the level of ordinary skill in the pertinent art.

This section also covers rationales to support rejections under 35 U.S.C. 103, the applicant’s reply, and consideration of applicant’s rebuttal evidence.
Patent Bar MPEP Q & A Podcast
Brought to you by PatentEducationSeries.com, based on their widely popular Patent Bar Review Course ... the PES Patent Bar Review.

This is the perfect podcast to study for the Patent Bar exam on the go. The Patent Bar MPEP Q & A Podcast covers one specific point from the MPEP per 3 to 5 minute episode. You'll get a question along with the detailed answer. In addition to the question and answer you'll get a detailed summary of the exact section where the answer is found. It's short, but packed full of valuable information. Perfect for exercising, driving, or waiting in line.

Please visit PatentEducationSeries.com for more free information to help you learn more about and pass the Patent Bar exam. We're here to help you succeed. We've helped scores of engineers, scientists, and attorneys get on the road to a new career as a Patent Practitioner since 2001. The contents of this podcast is not legal advice; for full disclaimer information visit: PatentEducationSeries.com.