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Chapter 2100 Flashcards

1
Q

2103

A

Patent Examination Process

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2
Q

2104

A

Requirements of 35 U.S.C. 101

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3
Q

2105

A

Patent Eligible Subject Matter — Living Subject Matter

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4
Q

2106

A

Patent Subject Matter Eligibility

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5
Q

2106.03

A

Eligibility Step 1: The Four Categories of Statutory Subject Matter

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6
Q

2106.05

A

Eligibility Step 2B: Whether a Claim Amounts to Significantly More

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7
Q

2106.06

A

Streamlined Analysis

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8
Q

2106.07

A

Formulating and Supporting Rejections For Lack Of Subject Matter Eligibility

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9
Q

2107

A

Guidelines for Examination of Applications for Compliance with the Utility Requirement

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10
Q

2109

A

Inventorship

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11
Q

2111

A

Claim Interpretation; Broadest Reasonable Interpretation

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12
Q

2112

A

Requirements of Rejection Based on Inherency; Burden of Proof

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13
Q

2114

A

Apparatus and Article Claims — Functional Language

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14
Q

2115

A

Material or Article Worked Upon by Apparatus

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15
Q

2116

A

Novel, Nonobvious Starting Material or End Product

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16
Q

2117

A

Markush Claims

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17
Q

2120

A

Rejection on Prior Art

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18
Q

2120.01

A

Rejections Under 35 U.S.C. 102(a)(1) and (a)(2) and Pre-AIA 35 U.S.C. 102(a), (b), or (e): Printed Publication or Patent

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19
Q

2120.02

A

Rejections Under 35 U.S.C. 102(a)(1) or Pre-AIA 35 U.S.C. 102(a) or (b): Knowledge by Others, or Public Use, or On Sale

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20
Q

2121

A

Prior Art; General Level of Operability Required to Make a Prima Facie Case

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21
Q

2122

A

Discussion of Utility in the Prior Art

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22
Q

2123

A

Rejection Over Prior Art’s Broad Disclosure Instead of Preferred Embodiments

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23
Q

2124

A

Exception to the Rule That the Reference Must be Prior Art

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24
Q

2125

A

Drawings as Prior Art

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25
Q

2126

A

Availability of a Document as a “Patent” for Purposes of Rejection Under 35 U.S.C. 102(a) or Pre-AIA 35 U.S.C. 102(a), (b), and (d)

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26
Q

2127

A

Domestic and Foreign Patent Applications as Prior Art

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27
Q

2128

A

“Printed Publications” as Prior Art

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28
Q

2129

A

Admissions as Prior Art

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29
Q

2131

A

Anticipation — Application of 35 U.S.C. 102

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30
Q

2132

A

Pre-AIA 35 U.S.C. 102(a)

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31
Q

2133

A

Pre-AIA 35 U.S.C. 102(b)

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32
Q

2134

A

Pre-AIA 35 U.S.C. 102(c)

33
Q

2135

A

Pre-AIA 35 U.S.C. 102(d)

34
Q

2136

A

Pre-AIA 35 U.S.C. 102(e)

35
Q

2137

A

Pre-AIA 35 U.S.C. 102(f)

36
Q

2138

A

Pre-AIA 35 U.S.C. 102(g)

37
Q

2139

A

Rejections Under Pre-AIA 35 U.S.C. 102

38
Q

2141

A

Examination Guidelines for Determining Obviousness Under 35 U.S.C. 103

39
Q

2141.01

A

Scope and Content of the Prior Art

40
Q

2141.01(a)

A

Analogous and Nonanalogous Art

41
Q

2141.02

A

Differences Between Prior Art and Claimed Invention

42
Q

2141.03

A

Level of Ordinary Skill in the Art

43
Q

2142

A

Legal Concept of Prima Facie Obviousness

44
Q

2143

A

Examples of Basic Requirements of a Prima Facie Case of Obviousness

45
Q

2144

A

Supporting a Rejection Under 35 U.S.C. 103

46
Q

2145

A

Consideration of Applicant’s Rebuttal Arguments and Evidence

47
Q

2146

A

Pre-AIA 35 U.S.C. 103(c)

48
Q

2147

A

Biotechnology Process Applications; Pre-AIA 35 U.S.C. 103(b)

49
Q

2148

A

Form Paragraphs for Use in Rejections Under Pre-AIA 35 U.S.C. 103

50
Q

2150

A

Examination Guidelines for 35 U.S.C. 102 and 103 as Amended by the First Inventor To File Provisions of the Leahy-Smith America Invents Act

51
Q

2151

A

Overview of the Changes to 35 U.S.C. 102 and 103 in the AIA

52
Q

2152

A

Detailed Discussion of AIA 35 U.S.C. 102(a) and (b)

53
Q

2153

A

Prior Art Exceptions Under 35 U.S.C. 102(b)(1) to AIA 35 U.S.C. 102(a)(1)

54
Q

2154

A

Provisions Pertaining to Subject Matter in a U.S. Patent or Application Effectively Filed Before the Effective Filing Date of the Claimed Invention

55
Q

2155

A

Use of Affidavits or Declarations Under 37 CFR 1.130 To Overcome Prior Art Rejections

56
Q

2156

A

Joint Research Agreements

57
Q

2157

A

Improper Naming of Inventors

58
Q

2158

A

AIA 35 U.S.C. 103

59
Q

2159

A

Applicability Date Provisions and Determining Whether an Application Is Subject to the First Inventor To File Provisions of the AIA

60
Q

2161

A

Three Separate Requirements for Specification Under 35 U.S.C. 112(a) or Pre-AIA 35 U.S.C. 112, First Paragraph

61
Q

2162

A

Policy Underlying 35 U.S.C. 112(a) or Pre-AIA 35 U.S.C. 112, First Paragraph

62
Q

2163

A

Guidelines for the Examination of Patent Applications Under the 35 U.S.C. 112(a) or Pre-AIA 35 U.S.C. 112, first paragraph, “Written Description” Requirement

63
Q

2164

A

The Enablement Requirement

64
Q

2165

A

The Best Mode Requirement

65
Q

2166

A

Rejections Under 35 U.S.C. 112(a) or Pre-AIA 35 U.S.C. 112, First Paragraph

66
Q

2171

A

Two Separate Requirements for Claims Under 35 U.S.C. 112 (b) or Pre-AIA 35 U.S.C. 112, Second Paragraph

67
Q

2172

A

Subject Matter Which the Inventor or a Joint Inventor Regards as The Invention

68
Q

2173

A

Claims Must Particularly Point Out and Distinctly Claim the Invention

69
Q

2174

A

Relationship Between the Requirements of 35 U.S.C. 112(a) and (b) or Pre-AIA 35 U.S.C. 112, First and Second Paragraphs

70
Q

2175

A

Form Paragraphs for Use in Rejections Under 35 U.S.C. 112(b) or Pre-AIA 35 U.S.C. 112, Second Paragraph

71
Q

2181

A

Identifying and Interpreting a 35 U.S.C. 112(f) or Pre-AIA 35 U.S.C. 112, Sixth Paragraph Limitation

72
Q

2182

A

Search and Identification of the Prior Art

73
Q

2183

A

Making a Prima Facie Case of Equivalence

74
Q

2184

A

Determining Whether an Applicant Has Met the Burden of Proving Nonequivalence After a Prima Facie Case Is Made

75
Q

2185

A

Related Issues Under 35 U.S.C. 112(a) or (b) and Pre-AIA 35 U.S.C. 112, First or Second Paragraphs

76
Q

2186

A

Relationship to the Doctrine of Equivalents

77
Q

2187

A

Form Paragraphs for Use Relating to 35 U.S.C. 112(f) or Pre-AIA 35 U.S.C. 112, Sixth Paragraph

78
Q

2190

A

Prosecution Laches and Res Judicata

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