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5 Written questions

5 Matching questions

  1. Amendments after the notice of appeal, but before the appeal brief is submitted may contain:
  2. 1207: The Examiner's Answer to an Appeal Brief: What are the three options an examiner has after reading the appeal brief:
  3. When is one in a position to appeal?
  4. 1214.07: Reopening Prosecution: (One option after a rejection on new grounds by the Board):
  5. 1214.05: What happens when Claims are Withdrawn from the Appeal:
  1. a 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.
  2. b In order to even have an appeal available the USPTO has to have issued a second rejection on a claim. The second rejection could either be a normal final rejection, or it could be a rejection where the claim was initially rejected in the original app, a CIP/CPA/RCE was filed to continue the app, and then the same claim was rejected in the continuation (1 time original + 1 time continuation == 2 rejections).
  3. c 1. claim cancellations
    2. any corrections to comply with formal requirements (spelling, punctuation ...)
    3. present the previously rejected claims in a form that is better for appeal; or
    4. Actually amend the spec or claims, however there has to be a good showing and cause given for why this was necessary and also not done earlier.
  4. d Say there are 3 disputed claims, but the appellant either does not argue for some of them on appeal or withdraws arguments for some of them. If 2 of the 3 claims are allowed by the Board (reversing the examiner) and the third claim is considered withdrawn since it is not argued, then the 2 reversed claims go into allowance, and the non-argued claim is now canceled by the appellant's acts.
  5. e Normally once the application is in appeal, the appellant has no right to enter in amendments to the app. However: If the amendment is accompanied by a 37 CFR 1.114 RCE, then the app will go back into prosecution via the RCE along with the amendment.

5 Multiple choice questions

  1. 1) Statutory Disclaimers
    2) Terminal Disclaimers:
  2. This extra evidence may be admitted, but only if the examiner determines that:

    1) The affidavits or other evidence that overcome all rejections under appeal.; and
    2) The showing of good or sufficient reasons why the affidavit or other evidence is actually necessary and was not available earlier.
  3. 1215.01: Withdrawing an appeal: As long as the withdrawal will not actually cause the app to be abandoned, an atty who is not of record (or the atty of record or the applicant) can withdraw an appeal under 37 CFR 1.34.
    Another way to withdraw from appeal is to file an RCE (37 CFR 1.114) along with the 37 CFR 1.117(e) fee and re-open the app for prosecution under the RCE.
    Remember: If the board has a rejection on new grounds in its ruling, or if the examiner files a supplemental answer (after the initial answer) that includes new grounds of rejection, then the applicant has the right to re-open prosecution on the new rejection by filing the standard 37 CFR 1.111 response along with affidavits/evidence under 37 CFR 1.130/1.131/1.132.
  4. Remember, these are for shortening the life of a claim to that of a pre-existing patent. They are useful in avoiding some double-patenting rejections (like a judicial double patenting rejection).

    It must expressly disclaim the terminal part of the patent's term.
    IT must state that the patent on the matter will only be enforceable for the limited time period that is disclaimed.
    Who has to sign a disclaimer: Either the applicant, the assignee (if assigned in full), applicant & assignee together (for partial assignment), or the atty/agent of record.
  5. A failure to provide the appeal brief will result in dismissal of the appeal. However, if some of the claims in the patent were originally allowed, then the parts of the app that are allowed will go back to the examiner and the app will not be immediately abandoned. If however none of the claims were originally allowed, the entire app gets abandoned if the applicant fails to provide a brief. (The normal 37 CFR 1.137 revival terms are available if the abandonment was legally 'unintentional' or 'unavoidable'; remember that a successful 37 CFR 1.137 acts as an RCE).

5 True/False questions

  1. 1211.03: Remand for new affidavits or declarations: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.

          

  2. What are two steps for appealing?(37 CFR 1.4131): Step 1: The applicant has to file notice of appeal, which simply means that the applicant notifies the USPTO of the intent to appeal and includes a fee.

    Step 2: Actually file an appeal brief:
    TIME LIMITS: The applicant has 2 months from the receipt of the notice to appeal until the appeal brief itself is due. If there is an appeal while there are other outstanding deadlines, the appeal acts to toll the other deadlines (just like a pause button). One weird thing: The notice of appeal is supposed to be sent in person or via the Express Mail system. A mailing certificate does not apply here. Instead the USPTO will consider the "date in" at the post office to be the date of receipt of the notice, and that is the date from which the 2 month period begins counting.

          

  3. 1206: Amendments, affidavits, other evidence that gets filed with or after the appeal:it is not a matter of right to have new amendments added on to the application during the appeal process. The amendment process during appeals is under 37 CFR 41.33, and not under the (more permissive) 37 CFR 1.116.

          

  4. Timing of Filing a Reply BriefOptional; must be filed within 2 months of examiner's answer
    Good cause extension of time

          

  5. 1211: When the Board remands an appeal back to the Examiner:
    This can happen in different situations where the board wants the examiner to look at the app again:
    1. Pretend like this is an initial rejection from an examiner in an normal examination and re-open the examination. The applicant will file the standard 37 CFR 1.111 response, and can have the 37 CFR 1.130/1.131/1.132 affidavits and extra evidence if necessary
    Prosecution might be re-opened for this claim, but it is not a full re-opening of prosecution on the whole app, just on the claim in question.

    2. Keep inside the appeal process by requesting a re-hearing before the board to address the new ground.

    3)1214.03: The Rehearing:
    The applicant will try to specifically show where he believes the board misapprehended the claim and why the claim should be allowed.

          

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