5 Written questions
5 Matching questions
- Unexpected Results:
- supplemental amendments are not allowed by right, but could be considered if the amendment is limited to the following six resolutions:
- to get the 37 CFR 1.130 affidavit there are 2 important points that are easier to meet:
- The basics of the Examination Process:
- Inventions for Countering Terrorism:
- a When an invention that might otherwise seem obvious has unexpected positive results then as long as the applicant can produce the objective proof that the positive results occurred and were not actually expected by prior art, then that can go against prior art.
This can include: A much greater effect than expected by prior art (like prior art anticipated a 2x gain, but I got an 8x gain)
Having superior properties than is expected.
Also: absence of a property that actually was expected can also work (like a drug that the prior art taught would be addictive, but unexpectedly turned out not to be addictive).
- b Examiner will review the file to make sure all the necessary elements (oath, spec, claims, drawings, etc.) are present.
The claim then gets put on a storage rack waiting for the first Office action.
When the examination begins, the examiner (1) reads the spec and claims, and then (2) searches prior art.
- c File the petition, No Fee Required.
- d cancellation of a claim
adoption of examiner's suggestions
placement of the app into the condition of allowance (correcting the app to allow it to issue)
reply to an OA that was made after the original reply was filed
correction of typos and other formal errors; OR
simplification of issues for appeal.
- e 1. There does not have to be a common owner or JRA at the time the new invention is made, just a common owner at the present time.
2. The inventions do not have to be patently distinct like is required in 37 CFR 1.131. (terminal disclaimer takes care of that)
5 Multiple choice questions
- must have fee
available for: Information properly submitted that was not found to be material; Info unintentionally submitted in application; Info submitted in incorrect application; Cannot be used for info forming part of the original disclosure, however, applicant can try to petition for a waiver to get originally filed material expunged
- The applicant will file amendment(s) to reply to final rejections, and the amendments may be non-entered (not part of the official app). This is to buy time to either file an appeal, or to file an RCE under 37 CFR 1.114, possibly a CIP with new matter (37 CFR 1.53(b)), or for design patents a CPA under 37 CFR 1.53(d).
- even if the invention produces the beneficial result, that is evidence showing the invention is obvious. The applicant's best bet is to try to show that the magnitude of the beneficial effect was so significantly different than what was expected that it ought to be non-obvious.
- 1) The petition is filed within 2 weeks of receipt of OA; and
2) the reply period had to be for: payment of the issue fee (getting a granted patent), or the reply period was only a 1 month/30 day reply period; and
3) The petition includes this evidence:
1. Evidence showing the actual date of receipt at the correspondence address
2. A copy of the original envelope showing the postmark date (used to prove the date on which the OA was actually sent)
3. Statement setting forth the fact that the OA was received on the date show by the evidence in (1) and that the envelope in (2) actually contained the OA.
- In this case the applicant unintentionally failed to respond to an OA. The applicant could offer proof, or will (if responding promptly enough) be able to swear a statement that the delay was unintentional. Remember, that bad faith on the applicant's part will usually end in the patent being revoked.
5 True/False questions
9 CRUCIAL Examples Showing 102 in action: (pages 231-240): → The amendments must be made before the issue fee is paid
The applicant may attempt to file amendments after allowance, but remember Ex Parte Quayle, there is no right to have the amendment examined and added, just the ability to request at the exmainer's discretion.
The applicant has to make a detailed statement as to how the new amendment is needed for: (A) proper disclosure and protection of the invention, and (B) require no substantial work on the part of the office.
Amedendments to the Drawings: → The examiner can also make requests for amendments too.
Who is allowed to swear back a reference? (715.04 who can file the 37 USC 1.131 affidavit) → 1) All of the inventors of the subject matter claimed
2) An aff/decl by less than all the inventors where it is shown that less than all of the named inventors on the app actually invented the subject matter being sworn back to.
3) When there is a 37 CFR 1.47 petition that is accepted (when the inventor refuses to sign or cannot sign) then the aff can be signed by the 37 CFR 1.47 applicant, or by legal representative.
4) When it is not possible to produce the inventor, then the assignee or other party with proprietary interest may sign.
Formally, the affidavit just has to be a sworn, written statement (may be an oath or declaration)
The main sequence (5 steps) for how claims are treated by the USPTO is: → 1. examine patent, claims, search prior art ->
2. If rejecting a claim, issue first rejection ->
3. Applicant may appeal under 37 CFR 1.111, may have amendments (but no new matter!) to back the appeal ->
4. If not accepted, a second rejection (that is usually a final rejection) is issued ->
5. If there is a final rejection, then the applicant has 1 more chance under the (narrower) 37 CFR 1.116 to appeal the final rejection.
When interviews are (and are not) Granted: → In this case the applicant unintentionally failed to respond to an OA. The applicant could offer proof, or will (if responding promptly enough) be able to swear a statement that the delay was unintentional. Remember, that bad faith on the applicant's part will usually end in the patent being revoked.