5 Written questions
5 Matching questions
- 35 USC 102 (g)
- What is a secondary consideration?
- Submission with a RCE if a reply to an OA is outstanding
- 35 USC 102 (d)
- The written refusal to grant claims because the subject matter as claimed is considered unpatentable is a
- a rejection
- b describes objective indications that the invention is not obvious. These are indications that the real world puts a high value on the invention, and include unexpected results, commercial success, failure of others, copying by others, licensing, and skepticism of experts.
- c 35 USC 102 (d) bars anyone from obtaining a US patent on a given invention only is all of the following has happened:
1. filed in a foreign country
2. filing in the foreign county was 12 months prior to US application filing
3. foreign patent issued before the US patent filed.
- d - prior invention made in US (except in interference, then NAFTA or WTO country activity counts as well)
- prior invention must not be abandoned, suppressed, or concealed (ASC)
- a partial exception is made for commonly owned inventions.
- e 1) 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.
5 Multiple choice questions
- Prior to invention:
Public Knowledge, US only
Use by others, US only
Patent obtained, Anywhere
- an amendment can be made with further limitations, but there must be remarks which explain how each and every rejection and objection are overcome.
- Rule 1.131
- 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
- Applicant must be ensure the substance of the interview is made of record in the app--often the examined agrees to do it. Full response to OA is still required.
5 True/False questions
An applicant for a patent can now establish a date of invention by acts in a NAFTA country after ____ or in a WTO country after ____. → NAFTA country after Dec 8, 1993
WTO country after Jan 1, 1996
Abandonment of an application → An anticipation is a reference or set of facts which teaches every aspect of the claimed invention either directly or indirectly.
What submissions are not allowed with a RCE? → An anticipation is a reference or set of facts which teaches every aspect of the claimed invention either directly or indirectly.
Who can properly sign a response? → 1) Applicant with assignee's consent
3) Attorney/Agent of record
4) Attorney/Agent not of record, who acts in a representative capacity when filing a continuing application, may expressly abandon the prior application as of the filing date granted to the continuing application
Can you obtain an extension of time to pay the issue fee? → No.