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5 Written questions

5 Matching questions

  1. Non-responsive reply
  2. Suspension for public safety or defense by PTO if
  3. After applicant's reply
  4. What is the proper response to a rejection?
  5. Suspension for Statutory Invention Registration (SIR) if:
  1. a 1) If intentional, must remedy within statutory period to avoid abandonment
    2) If unintentional, examiner can either accept it or require reply within remaining period or set a new 1 month time limit (extendable); new time limit cannot be given after final OA
  2. b PTO accepts a request to publish an SIR in the application
  3. c 1) application is owned by US
    2) Publication may be detrimental to public safety
    3) appropriate agency requests suspension
  4. d Appeal
  5. e 1) Examiner must respond within 2 MONTHS of receipt
    2) Examiner may not make next action a final rejection if it relies on the new material

5 Multiple choice questions

  1. No limit as long as done before aboandoned
  2. 1) Reply to every rejection and objection in OA
    2) Be a bona fide attempt to advance case to final action
    3) Be in writing, typed or written in permanent ink and proper size paper
    4) Be properly signed
  3. 1) infringing product/method is on the market/in use
    2) comparison to claims made
    3) search of prior art or good knowledge
  4. A final rejection is not proper if it is:
    1) the first office action in a CIP at least one claim includes subject matter not present in parent;
    2) the first office action in a substitute application containing material presented after final rejection in an earlier application but was denied entry based on new matter
  5. A final rejection can be the first action in a continuing or substitute application, if all claims are to the same invention as the parent application and could have been finally rejected in parent.

5 True/False questions

  1. Submission with a RCE if a reply to an OA is outstanding1) submission must meet requirement of section 1.111 in order to continue prosecution.
    Payment of the fee for an RCE does NOT toll the running of any time period set for reply.

          

  2. What is needed to get RCE?1) PTO will withdraw the finality of any OA
    2) Will be treated as request to dismiss an appeal and reopen prosecution if filed after filing of the Notice of Appeal but prior to decision
    3) If filed after a decision but before filing an appeal, it will serve to reopen prosecution. However, applicant must submit arguments, amendments, or a showing of facts as to why any rejection upheld or suggested by the Board should be removed

          

  3. Where can interviews occur?1) Inventor/applicant
    2) Registered attorney/agent: of record, or using his file, or known by examiner to be local representative of record attorney

          

  4. When are foreign licenses obtainedInterviews do not occur before a first office action unless it's a continuation (or CPA) or substitute application
    2) No right to an interview after a final rejection
    3) Not normally allowed after filing an appeal brief

          

  5. Foreign Filing Liscense1) Due dates are calculated from PTO mailing date
    2) EOT cannot exceed the 6 month statutory period for Office actions

          

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