Amendment and Prosecution Review Flashcards

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1
Q

Background of Invention Section of Application

A
  1. Field of Use statement
  2. Background of prior art

**Typically short and small.
**You don’t want to make what you’re doing trivial

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2
Q

Field of Use Statement

A

Don’t say too much.

General description of the invention.

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3
Q

Background of Prior Art

A

NEVER USE “Prior Art”

You may be able to get around things by avoiding admissions.

Focus on what prior art teaches.

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4
Q

The Summary of the Invention Section of Application

A
  1. What is it that the invention has to have in a broad generic claim;
  2. Describe the difference embodiments

**Avoid “Invention is…”
**Describe in a nutshell

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5
Q

Goal of the Summary

A

Plain English description of the invention.

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6
Q

Description of the Drawing Section of Application

A

Listing the drawings.

Caption of the drawing.

**More figures than not

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7
Q

Detailed Description Section of Application

A

Hip bone is connected to the thigh bone.

Not limited to what is in the drawing.

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8
Q

What do you do after Restriction Notice?

A
  1. Elect with traverse
  2. Elect without traverse

**Challenge it immediately

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9
Q

With Traverse

A

Electing but challenging

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10
Q

Without Traverse

A

Giving up

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11
Q

What happens if the Examiner puts a restriction a second time?

A

You can petition the commissioner. **Rare

Examiner’s discretion with restrictions.

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12
Q

What can happen within 1 months of restriction requirement?

A
  1. Examiner should call.
  2. You can acquiesce
  3. Restriction does not have to be mailed.
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13
Q

Withdraw a Claim

A

Not totally removing it.

Tabling it.

If you withdraw them they are not added later.

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14
Q

Four Items of an Amendment

A
  1. Amendment to Specs
  2. Amendments to the claims
  3. Amendments to the drawings
  4. Remarks/Arguments
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