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5 Written questions

5 Matching questions

  1. Reconsideration and Court Appeal
  2. When should the request for an oral hearing be made?
  3. 1205.02: What actually goes into the Appeal Brief:
  4. 1214.04: What happens when the Examiner is Reversed in full:
  5. Timing of Filing a Request for Oral Hearing
  1. a TIME: the request is 2 months from the examiner's initial or supplemental answer (just like other time limits in an appeal), however it can only be extended for good cause (37 CFR 1.136(b)) not automatically.
  2. b Optional; must be filed within 2 months of examiner's answer
    Good cause extension of time
  3. c At this point, the app goes directly back to the examiner, he will either then put all the claims in allowance and get the patent ready for issue, or the examiner may request his own re-hearing (again a 2 month time frame for that re-hearing).
  4. d Like any other response, the appeal must be responsive to every ground of rejection made on the merits. If the applicant does not argue against a ground for rejection, it is summarily sustained.
    Components of the brief:
    1. Real party of interest (the inventor/applicant/assignee)
    2. Related appeals & interferences (background info on other proceedings)
    3. Status of Claims (which ones are allowed/rejected)
    4. Status of Amendments
    5. Summary of claimed subject matter
    6. Grounds of rejection to be reviewed on appeal (what the examiner said the grounds of rejection were)
    7. Argument (why the claims should not be rejected)
    8. Claims appendix
    9. Evidence appendix (this is where additional affidavits and other evidence are put)
    10. Related proceedings appendix.
  5. e 1) Can request rehearing on paper within 2 months from Boards decision
    2) Good cause extension of time available
    3) Court action must start within 2 months (at least 60 days) from decision

5 Multiple choice questions

  1. 1) Statutory Disclaimers
    2) Terminal Disclaimers:
  2. 1) Must be made before jurisdiction passes to the Board
    2) Allowed if amendment adopts a suggesion made, or if it removes an issue
    3) Not allowed if raises new issues or increases total number of claims
    4) Examiner may reopen prosecution to issue a new rejection (from the amendment or based on an IDS filed by applicant)
  3. 1.REOPEN THE PROSECUTION and enter in a new ground for rejection (as long as this is approved by his supervising examiner).
    2. WITHDRAW THE FINAL REJECTION and allowing the claims (when the appeal overcomes the grounds for rejection). or;
    3. MAINTAIN THE APPEAL by drafting an examiner's answer that will go along with the appeal brief to the board. After 20040913 this brief may also contain new grounds for a rejection too.
  4. These are where the patentee expressly disclaims 1 or more claims in the patent. This is usually due to losing a lawsuit or something along those lines.
  5. These are only considered when the appellant makes the showing under 37 CFR 1.116(c) as to why the affidavits are necessary, and as to why they were not presented earlier.

5 True/False questions

  1. 1215.02: If at least some of the claims for the app are allowed, thenLike any other response, the appeal must be responsive to every ground of rejection made on the merits. If the applicant does not argue against a ground for rejection, it is summarily sustained.
    Components of the brief:
    1. Real party of interest (the inventor/applicant/assignee)
    2. Related appeals & interferences (background info on other proceedings)
    3. Status of Claims (which ones are allowed/rejected)
    4. Status of Amendments
    5. Summary of claimed subject matter
    6. Grounds of rejection to be reviewed on appeal (what the examiner said the grounds of rejection were)
    7. Argument (why the claims should not be rejected)
    8. Claims appendix
    9. Evidence appendix (this is where additional affidavits and other evidence are put)
    10. Related proceedings appendix.

          

  2. Appeal process1) File notice of appeal within 2 months of final (second) rejection on merits
    2) EOT available for up to 3 more months

          

  3. Affidavits & Other Evidence:1) Must be made before jurisdiction passes to the Board
    2) Allowed if amendment adopts a suggesion made, or if it removes an issue
    3) Not allowed if raises new issues or increases total number of claims
    4) Examiner may reopen prosecution to issue a new rejection (from the amendment or based on an IDS filed by applicant)

          

  4. 1216: The People's Court: Going to Court: When can it happen?Remember: This can only happen after the Board has issued a rejection, if the Board remands back to the examiner there is no issue that the courts have subject matter jurisdiction over.
    TIME: 2 months after the Board's final decision (in case there are re-hearing requests that are in play it is from the final time at which the Board is no longer hearing anything new about the appeal). Extensions are only for good cause.

          

  5. What is required to be in appeal brief?One important caveat: Remember that when filing an RCE after a final rejection the applicant has a choice: Either appeal, or file the RCE. By filing an RCE the applicant is agreeing not to file an appeal, at least until the claim is rejected under the RCE itself. So even if there are 2 rejections in the original app, when the applicant files an RCE he is waiving the appeal until there is another rejection.

          

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