Like this study set? Create a free account to save it.

Sign up for an account

Already have a Quizlet account? .

Create an account

Can you respond to some rejection or objections and defere others until some future time?

Not allowed! Each response must be complete and respond fully to each rejection and objection.

Is it true that in responding to any action, each and every rejection and objection must be addressed?

Yes! Otherwise, the response is incomplete.

The written refusal to grant claims because the subject matter as claimed is considered unpatentable is a


If the form of the claim, spec, or drawing (as distinguished from its substance) is improper, an

objection is made

To test an objection

-ask for a reconsideration
- then, a petition filed to the commissioner.

To test a rejection

- ask for a reconsideration
- then appeal to the Board of Patent Appeals and Interferences

Most rejections are based on 35 USC 102

35 USC 102 (anticipation)

Most rejections are based on 35 USC 103

35 USC 103 (obviousness)

Most rejections are based on 35 USC 112 first para

112 first para (written description, enablement and best mode)

Most rejections are based on 35 USC 101

35 USC 101 (patentable subject matter, lack of utility)

Most rejections are based on 35 USC 112 second para

35 USC 112 second para (particularly pointing out and distinctly claiming.

Can you appeal a restriction requirement?

No, after asking for a reconsideration by examiner, it must be petitioned to the Commissioner.

In an official action, an examiner can do three things:



If rejection is based on prior art...

prior art is the set of circumstances set forth in 35 USC 102 ONLY.

What Rule is swearing back?

37 CFR 1.131

What does swearing back do?

If the applicant wishes to overcome a rejection based on prior art by establishing that the invention date is before the date of the prior art reference. This is done by submitted an affidavit evidence of the invention date.

When swearing back, do you handle the claims separately?

Yes! Handle on a claim by claim basis because various claims have different dates of invention.

What is an anticipation?

An anticipation is a reference or set of facts which teaches every aspect of the claimed invention either directly or indirectly.

When responding to a 35 USC 102 rejection, you can only say that the examiner was wrong only is two ways:

1. The claim is entitled to an earlier date.
2. The prior art does not actually teach each and every element and limitation of the invention.

Another way to overcome a 35 USC 102 rejection is to:

amend the claims by adding another limitation or step or element to patentably distinguish from the prior art.

What does it mean when the question says the the rejection is "proper"

Means you cannot argue against it. You can however, amend the claims

35 USC 102 sets forth 7 acts and documents under which a patent cannot be obtained.

1. a prior publication
2. a prior patent
3. an abandonment of invention
4. prior sale or offer for sale
5. prior use
6. prior public and general knowledge
7. a prior invention

What is a big difference between the acts and the documents which restrict obtaining a patent?

The acts have to be done in the US. The documents can be from anywhere!

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

What is the purpose of these dates?

To establish the applicants own right to a patent, and also move back the date of the applicant invention as prior art under 35 USC 102 (g) during an interference preceding.

35 USC 102 (a)

Prior to invention:

Public Knowledge, US only
Use by others, US only
Publication, Anywhere
Patent obtained, Anywhere

35 USC 102 (b)

More than one year before filing:

Patent obtained, anywhere
Publication, anywhere
Public use, US only
On Sale, US only

To be a 102 (a) prior act, the acts must be made by "another". What about 102 (b)?

The acts can be either of the inventor or another

For something to be prior art under 102 (b), the invention has to be what during the offer for sale?

"ready for patenting" therefore capable of enablement

Is offering the application or the patent rights prior art?

No, because it is not officially an "offer for sale" under 102 (b)

Is knowledge by the public considered "use" by the public under 102 (b)?


35 USC 102 (d)

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.

35 USC 102 (e)

1. US patents or published applications and PCT applications (having an international Application date after Nov 29, 2000) designating the US which are published in English, all have 102(e) dates once they publish

2. The prior art date is the earliest effective US filing date or International filing date once the US application or International Application has published.

A patent application published in the US resulting from an international application entering the national stage is prior art under 102(e) as of its international filing date ONLY IF

the IA was published in English.

An International Bureau Publication of an IA is prior art under 102(e) as of its international filing date IF

it designates the US, and was published in English

If two applications are commonly owned or have a common inventor, what can the patent office do?

Provisionally reject one application citing the other which would be prior art if issued. Such a provisional rejection can be overcome by abandoning one application

When there is no common inventor, can the patent office do this?

No, because that would violate the law requiring applications to be maintained in confidence.

If the filing dates are within six months of each other (three months for simple subject matter),

an interference may be proper if they are claiming the same invention. Otherwise, the Patent Office will issue the one having the earliest filing date and then reject the other under 102 (e)

35 USC 102 (f)

bar patenting subject matter which the applicant did not invent.

35 USC 102 (g)

- 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.

Where is an exception to 35 USC 102 (e) (f) and (g) described:

third paragraph of 35 USC 103

How does the exception to 103 rejections under 102 (e) (f) and (g) work?

A prior invention which would otherwise be prior art under either of these sections is not prior art to determine obviousness if the prior invention and the claimed invention were both, AT THE TIME THE CLAIMED OR LATER INVENTION WAS MADE, owned by the same entity or subject to an obligation to assign to the same entity.

103 stuff skipped.


To overcome a proper rejection under 35 USC 102 or 103,

an amendment can be made with further limitations, but there must be remarks which explain how each and every rejection and objection are overcome.

If new limitations are added through amendment (but were in the original spec) does a supplemental oath or declaration required?


Patentable subject matter is defined in 35 USC 101 as any new and useful:

1. process
2. machine
3. manufacture
4. composition of matter

Which categories are not patentable?

- scientific principles and mathematical discoveries
- atomic weapons
- devices useful for only illegal purposes
- a method of doing business
- thing which are naturally occurring
- a method which is purely mental

A second action can always be made Final even though a new rejection is advanced by the examiner, but only IF

the new rejection was necessitated by some action of the applicant, such as amending the claims.

To avoid an application becoming abandoned in response to a Final Rejection, 1 of 3 things must happen

1. a response must be filed for allowance
2. A notice of appeal must be filed
3. the examiner, either on his or her own initiative or in response to a request by the applicant, converts the action to a non-final one (CPA or RCE)

If a response to a Final Rejection is filed, the examiner may or may not

"enter" the amendment because it raises new issues, or does not place the application in better condition for appeal.

Thus, if there is an appeal, what happens to the information that was not "entered" into the amendment?

The claims appealed are considered without the amendments which were sought in the non-entered response

Any second or Final Rejection can be appealed but no first action can be appealed except in a

continuation application

In a continuation application, the first action can be made final IF

the rejection is the same as made in the parent

The PTO is prepared to pick up the cost of any extension they cause IF

the applicant activates by responding to a Final Rejection within two months of the mailing date of the Final Rejection. There is a "free period" of 3 months from the mailing date of the Final Action or on the mailing date of the Advisory Action, whichever is later.
Further extensions are calculated from the end of the "free" period. In NO EVENT can an applicant extend past SIX months.

What is an Advisory Action?

sent in response to an After Final Amendment that was filed by the applicant within two months.

June 8, 1995

- Any application filed on or before June 8, 1995 and has an effective filing date of June 8, 1993 or earlier can use the Transitional Final Rejection practice

- Any application filed on or after June 8, 1995 are eligible for RCE

What are the requirements to filed an RCE?

- a submission
- fee

prior to the earliest of
-the payment of the issue fee ( unless a 37 CFR 1.313 petition is granted)
- the filing of a court action (unless that action is terminated)

What is a submission?

If a reply to an action is outstanding, the submission must meet reply requirements (37 CFR 1.111). Otherwise, the submission may be
- an IDS
- an amendment
- new arguments
- or new evidence

Which statute governs RCE?

35 USC 132 (b)

If an application is filed before August 25th, 2006, under which categories will special status be granted for free?

- illness
- environment
- energy
- age (over 65)
- counter terrorism

If an application is filed before August 25th, 2006, under which categories will special status be granted with a fee?

- prospective manufacture
- infringement
- safer DNA
- HIV / AIDS and cancer
- Superconductivity materials
- biotech applications filed by a small entity
- For the asking
--claims to a single invention are presented or the inventor agrees to accept any restriction
--the results of a ptentability search are presented
a copy of each reference located is submitted
a detailed dicussion of those references is provided
--the procedure contemplates an interview during the initial three month response period following a first action to resolve

Applications filed on or after August 25th, 2006

an applicant may be granted accelerated examination status.

Skipping 700-42 to 700-45.


How can you get a suspension of action?

with good and sufficient cause and with fee

can suspend prosecution for 6 months

Can you petition for suspension of action while there is an action outstanding?


Can prosecution be suspended in a reexamination?


Can prosecution be suspended to allow submission of an IDS?

No, except in the "no cause" suspension used in CPA or RCE filing. (suspension is no longer than 3 months)

There are two distinct procedures for extending due dates (under what section?)

1.136 (a) automatic extensions

1.136 (b) extensions for cause

Resort to extensions for cause can only be done when

the automatic extensions are used up.

Automatic extensions are available for what kind of time periods?

1 month
2 month
3 month
4 month
5 month

That IS IT! A total automatic extension greater than 5 months is NOT POSSIBLE!

What is the statutory time limit to respond to Office Actions? And can it be extended?

6 months and NO! A response to every Office Action MUST be filed within six months to avoid abandonment.

What is the deadline for filing an appeal brief?

Two months but this is not statutory; therefore, it can be extended to 5 months

What about a response to a notice of missing parts?

Can be extended to 5 months as well.

Automatic extensions cannot be obtained in six circumstances:

1. where the Office Action so states
2. A Reply Brief (responsive to an Examiners Answer in an Appeal to the Board of Patent Appeals and Interferences)
3. A request for an oral hearing in an Appeal
4. Responding to a decision of the Board
5. Anything in an interferences
6. Due dates in reexaminations cannot be automatically extended and any extension for cause request in a reexamination must filed before that due date

Due dates for the following cannot be extended even for cause:

1. IDS
2. Any due date set by statute (such as 6 month absolute deadline set for response to Office Action)
3. The issue fee can now, by statute, be paid late upon a proper showing, but cannot be extended
4. The deadline for responding to a Notice of Omitted Items (2)
5. The three month deadline to obtain a refund for a fee paid as a large entity.
6. Filing Formal Drawings at time Issue Fee is paid.

The period to complete a bona fide but incomplete reply to a non-final action can now be

extended with an automatic extension of time

Petitions for automatic extensions of time can now be provided by:

- previous general authorization for extensions of time
- mere payment of the extension of time fee without a specific request
- general authorization to pay an additional fee

Rules for Timeliness of Response

All dates are calculated from:

the mailing date from the Patent Office which is stamped on the action. The date of receipt is irrelevant

Shortened Statutory Period:

for responding to a restriction requirement?

for responding to Ex Parte Quayle actions (action in which all the rejection and objections are formal)

for responding to all other official actions?

Shortened Statutory Period:

for responding to a restriction requirement? 1 month

for responding to Ex Parte Quayle actions (action in which all the rejection and objections are formal) 2 month

for responding to all other official actions? 3 months

Can automatic extensions be obtained retroactively?

Yes, lets say you have a shortened statutory period of three months, you can get your extension after three months

Can an extension for cause be obtained retroactively?

NO! Must be filed in advance of the established due date.

An untimely response in prosecuting an application results in abandonment. What about reexamination?

A reexamination is NOT a patent application, and a reexamination request can neither be abandoned nor withdrawn.

What about in filing a second response or a Notice of Appeal after filing a first response to a Final Rejection?

This may require a further automatic extension of time.

What is the "two month rule"

If a response to a Final Rejection is filed within two months from the mailing date AND the Office does not mail an Advisory Action until after the end of the three month period set for response. In that instance, the date before which action must be taken to avoid abandonment is automatically extended until the date the Office mails the Advisory Action or the six month period expires, whichever happens first.

Can you obtain an extension of time to pay the issue fee?

No but you can pay late upon proper showing (unavoidable, unintentional)

When obtaining an extension of time in order to file a continuation and have the parent and continuation copending, is response to the outstanding action necessary?


When an application is filed with missing parts, what happens?

Missing parts: oath/declaration, translation, filing fee

the applicant has two months from the filing date (if no correspondence address is included), two month from the date the Notice of Missing Part is mailed, to file the required paper. The deadline can be extended automatically up to five month. THERE IS NO SIX MONTH RULE.

Do small entities get a discount on extension fees?

yes, 50%

The deadline for filing an Appeal Brief is calculated from:

the date the Notice of Appeal is actually received by the Patent Office.

In any application, what can you do about concurrent or future reply requiring a petition for an extension of time as incorporating a petition for that extension?

A written request may be submitted

What is an examiners amendment?

After final rejection or after the applicant has filed a response to a non-official action, the examiner can, if authorized by agent, cause amendments to be made which will place the application in condition for allowance.

After a First Official Action, the ball is returned to the Examiner, so is an extension required if Examiner amends?


After Final Rejection, what is an Examiners Answer treated like?

Like an amendment from the applicant so extensions are necessary.

Filing a response to a Final Rejection in a re-examination automatically extends the deadline for response by how long?


What is the deadline on appeals?


What is a revival?

Bringing an abandoned application back to life.

Two routes exist for reviving an application depending on whether the abandonment was

unavoidable OR unintentional.

Whether unavoidable or unintentional, what is required for revival?

-a proposed response when an action was outstanding as the time of abandonment or the filing of a continuation

To revive an application as unavoidably abandoned:

- the required reply
- fee
- a showing that the entire delay was unavoidable
- any necessary terminal disclaimer/fee

To revive an application as unintentional revival:

- the required reply
- fee
- a statement that the entire delay was unintentional
- any necessary terminal disclaimer/fee

What is a terminal disclaimer?

Terminal disclaimers are required whenever the term of the patent is calculated from the issue date and not the filing date. These are all design patents, utility applications issuing from application filed before June 8, 1995. and plant patents issuing from applications filed before June 8, 1995.

Any request for reconsideration of a decision on a revival petition must be filed:

within two months from the date of the decision

Provisional applications can still be revived BUT

still expire at 12 months.

In an interview, if the examiner does not record in writing the substance of each telephone or personal communication THEN

the applicant has the obligation to do so.

Is an interview before filing permitted?


An interview after first action is a matter of


Interviews after an Appeal brief

are normally not granted.

Can interviews be held without obtaining extensions in time?


What is an amendment?

Any change which is made in the specification, claims, or drawings after or at the same time the application is filed.

How are changes to the specification made?

Changes in the specification are made by submitted a "marked up" version of what needs to be changed and directing the PTO as to where the changes are being made. Paragraph numbering does help.

Drawings may be amended by:

submitted a "clean" version of the drawing to be amended. A "marked-up" version may optionally submitted

How can you respond to an Official Action?

By making an amendment or if no changes are made, then Request for Reconsideration

Can amendments or briefs be amended?


Can a preliminary amendment be submitted with an application?


A petition to revive an abandoned application which had an outstanding Official Action pending at the time it was abandoned must be accompanied by either an

amendment, request for reconsideration, or filing of a continuation.

What is a preliminary amendment?

One made after, or at the time of filing, but before an action is issued.

Why might a preliminary amendment be refused entry?

If they unduly interfere with the preparation of an Office Action and were not filed within three months of filing date (this period is not extendable)

What is a supplemental reply?

A reply filed in follow up to an initially filed reply

When will a supplemental reply be considered as a matter of right?

- cancellation of claims
- adoption of Examiner suggestions
- placing application in condition for allowance
- replying of office requirement made after First reply
- correct informalities
- simplify issues on Appeal

Can oaths be amended?

No, they just be supplemented or replaced. They cannot be amended except for information disclosed in ADS, ie address and bibliographic information.

Amendments after final?

Amendments after final rejection may be entered which means that the Patent Office will proceed on the assumption that they never existed. Amendments sought after Final Rejection and after allowance are subject to special rules. Second and supplemental amendment after final may be refused entry if they unduly interfere with preparation of office action.

How do you change claim wording?

- cancel the claims and replace with changed wording.
- amend the claims already in the application by submitted a re-written "marked-up" copy of the claims you wish to amend.

If a claim is amended, you need status indicators in front. Exclusive:

- cancelled
- previously presented
- withdrawn
- currently amended
- original
- not entered
- new

Are amendments after allowance a matter of right?


Which rule deals with amendments after allowance?


Before the issue fee is paid, amendments may be entered IF

they are needed for proper disclosure and require no substantial work on the part of the examiner.

For an amendment after allowance to be entered, the remarks accompanying the proposed amendment must state the four "whys"

1. Why the amendment is needed
2. Why no new search or consideration is required
3. Why any amended or new claims are patentable
4. Why the amendments where not earlier presented
Think- to be patentable, we need a new search earlier.

What happens in the amendments after allowance are refused?

Then the only option is to file a continuation and make the amendments (preferably in a Preliminary Amendment)

Are amendments allowed after an issue fee has been paid?

No, except in conjunctions with a withdrawal from issue. 37 CFR 1.313

What is swearing back?

establishing a date of invention to remove prior art arising under 102(a) and 102(e) BUT NOT 102(b)

You can swear back by submission of an affidavit or declaration an earlier date of invention based upon:

- an actual reduction to practice OR
- conception and diligence to actual reduction to practice

"discloses but does not claim" can be sworn back BUT "claims the same invention"...

that CANNOT be sworn back.

Swearing back RULE

Rule 1.131

Affidavit Practice Under CFR

CFR 1.131 and 1.132

What is a secondary consideration?

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.

What is Rule 131 used for? Rule 132?

131: used to swear back or antedate
132: used to submit facts to rebut prima facie showing of obviousness, to establish utility or to establish enablement

Only two procedures are available to challenge whether a pending application should issue:

a protest or a Public Use Proceeding.

Protests are covered in chapter 1900

How is a Public Use Proceeding initiated?

by filing a petition requesting that a proceeding be instituted together with the fee. Evidence must be established in the form of affidavits or declarations.

If a prima facie showing has been made,

the Commissioner institutes the proceeding with both the applicant and the petitioner submitting briefs and testimony on the issued of public use and sale.

An applicant who is rejected based upon the conclusions of the Proceeding CAN

appeal the resulting rejection to the Board of Patent Appeals and Interferences.

Can Public Use Proceedings be requested for reexaminations?


but yes for reissue application

Can a petition for a Public Use Proceeding be filed by a party in an interference?


Rather, the issues must be raised by a motion in the interference

Rejection of Claims

Rejection of claims is based on subject matter (substance) and is subject to appeal. Note: objections are based on form and may be reviewed only by petition to the director.

What is the proper response to a rejection?


What is the proper response to objection?

Petition to director

Foreign Filing Liscense

US application will be rejected if applicant files in another country before receiving a foreign license (if the invention was made in US).

When are foreign licenses obtained

Licenses are obtained automatically 6 months after the filing date. They can also be obtained retroactively with a petition (countries filed, dates, not secret, license was diligently sought, filing was in error w/o deceptive intent) and fee.

Final Rejection

A final rejection is any second or later rejection, unless: new rejection of claim that was not added or substantively amended; rejection is based on newly cited art other than info submitted and IDS.

When can a final rejection take place?

A final rejection can be the first action in a continuing or substitute application, if all claims are to the same invention as the parent application and could have been finally rejected in parent.

See more

Please allow access to your computer’s microphone to use Voice Recording.

Having trouble? Click here for help.

We can’t access your microphone!

Click the icon above to update your browser permissions and try again


Reload the page to try again!


Press Cmd-0 to reset your zoom

Press Ctrl-0 to reset your zoom

It looks like your browser might be zoomed in or out. Your browser needs to be zoomed to a normal size to record audio.

Please upgrade Flash or install Chrome
to use Voice Recording.

For more help, see our troubleshooting page.

Your microphone is muted

For help fixing this issue, see this FAQ.

Star this term

You can study starred terms together

Voice Recording