Amendment and Prosecution Review

Question 1

Background of Invention Section of Application

Answer 1

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

Question 2

Field of Use Statement

Answer 2

Don’t say too much.

General description of the invention.

Question 3

Background of Prior Art

Answer 3

NEVER USE “Prior Art”

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

Focus on what prior art teaches.

Question 4

The Summary of the Invention Section of Application

Answer 4

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

Question 5

Goal of the Summary

Answer 5

Plain English description of the invention.

Question 6

Description of the Drawing Section of Application

Answer 6

Listing the drawings.

Caption of the drawing.

**More figures than not

Question 7

Detailed Description Section of Application

Answer 7

Hip bone is connected to the thigh bone.

Not limited to what is in the drawing.

Question 8

What do you do after Restriction Notice?

Answer 8

1. Elect with traverse
2. Elect without traverse

**Challenge it immediately

Question 9

With Traverse

Answer 9

Electing but challenging

Question 10

Without Traverse

Answer 10

Giving up

Question 11

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

Answer 11

You can petition the commissioner. **Rare

Examiner’s discretion with restrictions.

Question 12

What can happen within 1 months of restriction requirement?

Answer 12

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

Question 13

Withdraw a Claim

Answer 13

Not totally removing it.

Tabling it.

If you withdraw them they are not added later.

Question 14

Four Items of an Amendment

Answer 14

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