5 Written questions
5 Matching questions
- Can you appeal a restriction requirement?
- When is a final rejection improper?
- What does RCE do?
- Petitions for automatic extensions of time can now be provided by:
- A second action can always be made Final even though a new rejection is advanced by the examiner, but only IF
- a 1) PTO will withdraw the finality of any OA
2) Will be treated as request to dismiss an appeal and reopen prosecution if filed after filing of the Notice of Appeal but prior to decision
3) If filed after a decision but before filing an appeal, it will serve to reopen prosecution. However, applicant must submit arguments, amendments, or a showing of facts as to why any rejection upheld or suggested by the Board should be removed
- b No, after asking for a reconsideration by examiner, it must be petitioned to the Commissioner.
- c - 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
- d the new rejection was necessitated by some action of the applicant, such as amending the claims.
- e A final rejection is not proper if it is:
1) the first office action in a CIP at least one claim includes subject matter not present in parent;
2) the first office action in a substitute application containing material presented after final rejection in an earlier application but was denied entry based on new matter
5 Multiple choice questions
- 1) infringing product/method is on the market/in use
2) comparison to claims made
3) search of prior art or good knowledge
- No, they just be supplemented or replaced. They cannot be amended except for information disclosed in ADS, ie address and bibliographic information.
- "ready for patenting" therefore capable of enablement
- 1) application is under appeal
2) last office action is final
3) notice of allowance
4) Another action that closes prosecution
- 1) Applicant
2) the PTO
3) overlapping applications by same applicant or assignee
5 True/False questions
Who can perform express abandonment? → By filing a written declaration identifying the application; however, express abandonment of the application may not be recognized by the Office unless it is actually received in time to act before date of issue or publication.
Filing a response to a Final Rejection in a re-examination automatically extends the deadline for response by how long? → Like an amendment from the applicant so extensions are necessary.
Prospective manufacture → 1) sufficient capital facilities
2) will not manufacture w/o granted patent
3) will manufacture if patent is granted
4) made a prior art search or has good knowledge of prior art
What 6 applications is a RCE not available for? → 1) Adding new matter to an application (must use a CIP for that)
3) Design applications
4) Patents under reexaminations (reissues are fine)
5) Patents and international application filed before June 8, 1995
6) Application after the filing of notice of appeal or civil suit unless appeal or suit is terminated while application is still pending
If the form of the claim, spec, or drawing (as distinguished from its substance) is improper, an → objection is made