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5 Written questions

5 Matching questions

  1. For 102(a), (b) prior art (already known or published, or known by the inventor for > 12 months before the effective filing date) there are 4 major ways to fight a rejection:
  2. Remember that upon first filing the app will often consist of:
  3. When amendments are received by the Office AFTER the mailing of allowance (but the amendment's effective date is before the allowance):
  4. New matter with RCE
  5. Deferral of Examination instead of Suspension of Examination (37 CFR 1.103(d)):
  1. a A. Persuasively argue that the claims are patently distinguishable from the prior art. (Hey, our claim is for something different than the prior art, and is still OK!)
    B. Amending the claims to make them patently distinguishable. (OK, we will change the claims so that they are actually different from the prior art).
    C. Perfecting Priority (35 U.S.C. 120) within the time period of 37 CFR 1.78(a), by amending the spec to make a specific reference to a prior app (or by filing an ADS with the reference) and by establishing that the prior app satisfies enablement and description requirements ofr 35 U.S.C. 112. (Try to refer back to a previous app, remember there needs to be at least 1 common inventor/assignee, and the claims have to be supported by the prior valid application).
    D. Perfecting a priority claim under 35 U.S.C. 119(e) for a prior PA. Remember that to get priority the NPA the NPA has to be filed within 12 months of the original PA. So, under a 102(b) rejection (which is for an invention being known for > 12 months) there is always going to have to be an intermediate NPA in there somewhere that keeps the chain intact to get the original filing date of the PA.
  2. b The RCE may not have new matter! If there is new matter, there must be a CIP instead (with the later filing date).
  3. c The app itself (description/claims/drawings), an IDS, an ADS, oaths/decls, statement claiming SES (small entity), and a petition to make special
  4. d For a new patent app, the applicant may claim a deferral for a period up to 3 years after the earliest relied-upon filing date (earliest date the app claims the benefit of, claims foreign priority over, or claims priority over for PAs).
    Example: A new app claims foreign priority over a foreign app filed on 20000103. The action will resume on 20030104 (next working day after the 3 year time period).
  5. e Generally entry into the record for these amendments is up to the examiner, who may reject them. The rule for these amendments matches the rule for ones that actually are sent after the allowance is made (37 CFR 1.312 below).

5 Multiple choice questions

  1. The examiner makes the final decision. If the examiner makes a final finding that the app is barred, his rejection of the claims will state that reason. If the examiner finds in favor of the applicant, the petition will be noted in the record but prosecution may proceed. There is no further review after this decision is made.
  2. 1. Investigation of the app and of prior art (37 CFR 1.104 in Charts)
    2. After an initial rejection (non-final), the applicant must reply to the Office Action (37 CFR 1.111 in Charts)
    3. Replies to the intial Office Action (37 CFR 1.112)
    4. Final Rejections: (37 CFR 1.113, 706.07(a))
  3. If applicant is filing a continuation/divisional of one or more U.S. or international apps, (and if the apps are valid on their own for having filing dates under 35 U.S.C. 120 for U.S. or 35 U.S.C. 365 for IA) then the effective filing date is: the earliest filing date in the line of continuation or divisional apps. (Remember that these apps are not allowed to have any new matter in them)
  4. This is generally information that is material to patentability but that isnot considered favorable to patentability

    The info that goes into the 37 CFR 1.56 "duty to disclose" statements (IDS; prior art submitted by the applicant) can be put into the sealed envelope for a 724 request
    Basically: This is information that needs to be disclosed to let the examiner properly conduct the examination (it's material) but it isnot the favorable basic information needed to actually get the patent (like the parts of the disclosure that the claims directly rely on for patentability).
  5. Remember, the 37 CFR 1.132 affidavit may be filed to traverse a rejection (get around an objection). That sometimes include evidence that the same person invented the prior art that is being referenced, or that the new invention is actually non-obvious. However, the evidence must be weighed against the prima facie case that the invention is obvious.
    1) The weight is a preponderance of evidence
    2) After the prima facie case is established, the burden is on the applicant to meet the weight of the evidence in his favor.

5 True/False questions

  1. Say you make a reply, and then before the Office can fully consider it you supplement the reply with a new amendment. The Office usually prefers the original reply to be correct on its own, but supplemental replies are allowed when:Printed Matter: The text of a book is not patentable (a mechanism to make a book might be, but not the text itself).
    Naturally Occurring Articles: You cannot patent a plant/animal found in nature (genetically engineered ones are different). Example: Peeled shrimp are not patentable (although a new mechanism to actually peel the shrimp could be).
    Scientific Principles: Theoretical discoveries that are not actual inventions cannot be patented.

          

  2. When an Office Action from the USPTO is defective:

    If there are incorrect citations/references or other errors in an Office action:
    This is generally information that is material to patentability but that isnot considered favorable to patentability

    The info that goes into the 37 CFR 1.56 "duty to disclose" statements (IDS; prior art submitted by the applicant) can be put into the sealed envelope for a 724 request
    Basically: This is information that needs to be disclosed to let the examiner properly conduct the examination (it's material) but it isnot the favorable basic information needed to actually get the patent (like the parts of the disclosure that the claims directly rely on for patentability).

          

  3. Getting Extensions of Time (1.136):Remember, the SSPs are shortened periods, the statutory max is still 6 months. So, under 37 CR 1.136(a) the applicant may request an extension of time such that the SSP + Extension == 6 months total.
    A 37 CFR 1.136 request is automatic as long as it is properly made and the fee is paid.
    The request for extension does not have to come during the SSP! It may be allowed at any date up until the last day of the 6 month statutory period.
    The 1.136(a) request may be filed along with the reply in question, before it is filed, or even after it is filed. However: if the 1.136 request is filed after the reply, then the reply's effective date will be considered the date that the extension was requested (this effectively bars making a 1.136(a) request after the max 6 month period is over).
    Under 37 CFR 1.136(b) there are other ways to request an extension, but 1.136(b) is not automatic, the applicant usually has to show good cause for why an extension should be granted. Remember: 1.136(b) only applies when 1.136(a) is not available, AND the 6 month maximum is still absolute, 1.136(b) cannot defeat it.

          

  4. Common Ownership:This means that a party or multiple parties had 100% ownership of both the prior invention and the the new invention at the time the new invention was invented.

    Example: A & B are wholly-owned subsidiaries of MegaCo, and A invents invention X, followed by invention X' (an obvious improvement on X) from B. Since MegaCo owned A & B fully, it is the common owner of both X & X' and will not have prior art problems.
    It works for assignment too: Companies A & B have an agreement to assign each other all inventions made. Employee X of company A has an agreement to assign all of his inventions to company A (but the agreement says nothing about company B). The invention goes from: X -> A <-> B and A & B are both common owners of the invention. Either A or B may then invent X' and not have to worry about prior art from X.
    However: Same example as above, but say that the assignment agreement is only concluded after B has invented X'. In this case, B was not a common owner of X, and A was not a common owner of X', so X' would fail on the 102(e)(f)(g) claims.

          

  5. Constructive RTPfiling a US patent application

          

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