AAPA - Updated PTO interpretation

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Jun 9, 2022, 11:48:22 PMJun 9
to Rick's List-Serve (patentlaw@googlegroups.com)

The new Director issued updated guidance today on AAPA. See https://www.uspto.gov/sites/default/files/documents/20220609330updatedAAPAmemo.pdf


The relevant passage appears below:




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Jun 10, 2022, 1:25:16 PMJun 10
to Trujillo, Doreen Y., Rick's List-Serve (patentlaw@googlegroups.com)

Doreen, you said "I don’t think this will be helpful to patentees."  You tactfully made an understatement.  Rick




From: Trujillo, Doreen Y. [mailto:Doreen....@saul.com]
Sent: Friday, June 10, 2022 11:05 AM
To: RICK NEIFELD <rnei...@neifeld.com>; Rick's List-Serve (pate...@googlegroups.com) <pate...@googlegroups.com>
Subject: RE: AAPA - Updated PTO interpretation



Thanks, Rick.


I note that she also states that admissions can be relied upon to supply missing elements/limitations, and that consideration of the admission should not be excluded based upon the number of elements/limitations. She cites exemplary language such as “one of skill in the art would readily understand,” “it is well known,” and use of words like “conventional” and “well-known.”


I don’t think this will be helpful to patentees.




Doreen Y. Trujillo 


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Tel: 610.251.5092 | Fax: 610.251.1407

Doreen....@saul.com | www.saul.com



From: pate...@googlegroups.com <pate...@googlegroups.com> On Behalf Of RICK NEIFELD
Sent: Thursday, June 9, 2022 11:48 PM
To: Rick's List-Serve (pate...@googlegroups.com) <pate...@googlegroups.com>
Subject: AAPA - Updated PTO interpretation


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