Chapter 700

Question 1

For proper examination of application, who can the examiner or other Office employees require information from?

Answer 1

any inventor named in the application

any assignee

any attorney or agent who prepares or prosecutes the application

every other person who is substantively involved in preparation or prosecution of the application

who is associated with the inventor

involved in the preparation or prosecution of the application

who is associated with the inventor, the assignee, or with anyone to whom there is an obligation to assign the application

Question 2

What type of information can be requested for proper examination of the application?

Answer 2

scope of information is broad and includes anything reasonably necessary and the applicant is required to make a good faith attempt to obtain the information and to make a reasonable inquiry once the information is requested

Question 3

What are the requirements of patentability?

Answer 3

novelty - 35 USC 102

usefulness - 35 USC 101

non-obviousness - 35 USC 103

requirements of disclosure: written description, enablement, best mode

Question 4

What is the difference between rejection and objection of claims?

Answer 4

rejection is a refusal to grant claims because the subject matter as claimed is considered unpatentable. Is subject to review by the Board

objection is when the form of the claim is improper (i.e. dependency on rejected independent claim). Is reviewed by petition only

Question 5

What is 35 USC 102 and when does it take effect?

Answer 5

Novelty standard. If the claim is anticipated by reference, then it is rejected under 102

Only applies to applications with the EFD on or after March 16, 2013

Question 6

What is 35 USC 103?

Answer 6

Non-obviousness standard. If the prior art’s teachings must somehow be modified (obvious to POSITA) in order to cover the claims, then it is rejected under 103

Question 7

What is prior art?

Answer 7

information available to the public before the EFD of a patent application

Question 8

What prior art is used reject claims?

Answer 8

If the prior art teaches, suggests, or implies the invention as defined by the claims of a pending patent application

Also, a statement by an applicant in the specification or made during prosecution identifying the work of another as “prior art” whether or not it would otherwise qualify as prior art

Question 9

How to obtain an effective filing date?

Answer 9

If not priority claiming, then the EFD is the filing date of the application

For continuation, divisional to an earlier application (including international), then the EFD is the same as the earliest filing date in line of continuation or divisional applications

For continuation-in-part of an earlier application, any new claims in the application would have the EFD equal to the filing date of the CIP application. Any claims fully supported in the parent application will have an EFD of earlier parent application

To claim priority to an earlier foreign or provisional application, the claim must be made within 12 months of the first application’s filing date

Question 10

What is 35 USC 102(b)?

Answer 10

If the publication date of the reference is more than 1 year prior to the EFD of the application and the reference contains each and every element of the claims, it is rejected under 35 USC 102(b)

It sets forth the “public use” and “on-sale” statutory bars which discourage the removal of inventions from the public domain which the public justifiably comes to believe are freely available

“bar” to patentability if satisfied, and there is nothing applicant can do to overcome the rejection.

Therefore, the applicant must cancel or amend the rejected claim to cover different subject matter

Question 11

What is 35 USC 102(e)?

Answer 11

If the publication date of the reference is within 1 year of EFD, (falls within grace period) and the inventive entity of the application is different than that of a patent reference. And, the claims are rejected baed on subject matter disclosed in US patents, US patent applications, WIPO publications of international applications as of their EFD

Question 12

What is 35 USC 102(a)?

Answer 12

Rejection solely due to printed publications and the reference occurs within 1 year of application’s EFD and must not be applicants work or derived from the applicant’s own work

Question 13

What is 35 USC 102(c)?

Answer 13

Rejection of patent for abandonment

The Patent Office must show actual abandonment which requires deliberate surrender of patent rights that amounts to the inventor dedicating his invention to the public

Question 14

What is 35 USC 102(d)?

Answer 14

If all of these conditions are met, then patent will be rejected:

1. a foreign application must be filed more than 12 months before the EFD of the US application
2. the foreign and US applications must be filed by the same applicant, his legal representative, or assignee
3. the foreign application must have actually issued as a patent or inventor’s certificate before the filing in the US
4. same invention must be involved

Question 15

What is 35 USC 102(f)?

Answer 15

Rejected if the applicant did not invent the subject matter sought to be patented

If the applicant derived the invention from the true inventor, a complete conception by another and communication of conception is requried

Question 16

What is 35 USC 102(g)?

Answer 16

Rejection due to another made the invention in the US before the applicant and had not abandoned, suppressed, or concealed it

Question 17

What is 35 USC 102(g)(1)?

Answer 17

Interference - a Patent Office proceeding between 2 or more applicants to determine which of the applicants is entitled to priority

During interference, the Board has jurisdiction until it’s terminated

Question 18

How are interferences terminated?

Answer 18

after a final Board judgment in the interference and the period seeking judicial review has expired (generally 2 months after decision)

after completion of judicial review

Question 19

What is 35 USC 102(g)(2)?

Answer 19

Rejection f there is evidence indicating that the subject matter at issue has been actually reduced to practice by another before the applicant’s invention and there has been no abandonment, suppression, or concealment by the other party

Question 20

What are the types of reduction to practice?

Answer 20

constructive reduction to practice - occurs when an applicant filed patent application covering the invention

actual reduction to practice - the party constructed a physical embodiment of the invention or performed the inventive process, and the embodiment or process operated of its intended purpose

Question 21

What is 35 USC 103?

Answer 21

Non-obviousness requirement for patent protection

Authorizes a rejection when the claimed invention is obvious in light of 1 or more prior art references (to POSITA)

Question 22

What is Teaching Suggestion Motivation (TSM) Test?

Answer 22

It is a guideline that remain the foundation of any determination of obviousness

1. there must be some suggestion or teaching in the prior art to combine elements in the prior art in order to find a patent claim obvious
2. simply locating the elements in the prior references is not enough to issue an obviousness rejection
3. the examiner must also identify some motivation to combine the 2 prior art references
4. only after the examiner identifies some teaching, suggestion, or motivation to combine the 2 prior art reference may the examiner issue an obviousness rejection

Question 23

Besides the TSM test, what is the guideline the Patent Office uses to support obviousness rejection?

Answer 23

1. combining prior art elements according to known methods to yield predictable results
2. simple substitution of 1 known element for another to obtain predictable results
3. use of a known technique to improve similar devices, methods, or products in the same way
4. applying a known technique to a known device, method, or product ready for improvement to yield predictable results
5. obvious to try - choosing from a finite number of identified, predictable solutions with a reasonable expectation of success
6. known work in one field of endeavor may prompt variations of it for use in either the same field or a different one based on design incentive or other market forces if the variations are predictable to POSITA

Question 24

What are the amendments Section 3 of AIA made to the patent laws?

Answer 24

Effective March 16, 2013

converted US patent system from “first-to-invent” to “first-to-file” system

eliminated the requirement that prior public use or sale activity to be in US to be prior art

treat US patents and US patent application publication as prior art as of their EFD, regardless of whether the earliest EFD is based upon an application filed in the US or in another country

treat commonly owned patents and patent application publication, or those resulting from a joint research agreement, as being the same inventive entity for purposes of section 102 and 103

Question 25

What does Section 102 of AIA provide?

Answer 25

A person is not entitled to a patent if the claimed invention was patented, described in a printed publication, or in public use, on sale, or otherwise available to the public before the EFD of the claimed invention A person is not entitled to a patent if the claimed invention was described in a patent, or in an application for patent published, in which the patent or application, as the case may be, names another inventor, as was effectively filed before the EFD of the claimed invention

Question 26

What is Effective Filing Date?

Answer 26

Earliest of: 1. the actual filing date of the patent or the application for the patent containing a claim to the claimed invention OR 2. the filing date of the earliest provisional, nonprovisional, international (PCT) or a foreign patent application to which the patent or application is entitled to benefit or priority as to such claimed invention

Question 27

Under AIA, what is a derivation proceeding?

Answer 27

If a dispute arises as to which of 2 applicants is a true inventor, it will be resolved through a derivation proceeding conducted by the Board This replaces the interference in the former, first-to-invent regime Applicant is no longer permitted to "swear behind" a prior art reference

Question 28

What is 35 USC 101?

Answer 28

It defines what type of subject matter may be patented: process machine manufacture composition of matter AND it must be useful (utility requirement) even if the invention might be new, useful, and non-obvious, the Patent Office cannot issue the patent unless it falls within the boundaries set by section 101

Question 29

What is 35 USC 112?

Answer 29

3 requirements included in the specification 1. best mode 2. enablement 3. written description

Question 30

What is "machine-or-transformation" test?

Answer 30

To see if a process or method claim is patent eligible The test ensures that the process is limited to a particular practical application The test ensure that the process is not simply claiming an abstract idea, a mental process, or substantially all practical use of a law of nature or a natural phenomenon The claimed process must be tied to a particular machine or apparatus or it should particularly transform a particular article to a different state or thing

Question 31

What is a utility requirement?

Answer 31

Invention has a well-established utility that a POSITA would immediately appreciate why the invention is useful OR a utility disclosed in the specification of the application in a specific, substantial, and credible fashion

Question 32

What is a written description?

Answer 32

requires an applicant to disclose the invention in a clear, complete, and concise fashion core elements of the invention must be described or depicted in detail test: is the specification sufficient to show that the applicant was in possession of the claimed invention as of the filing date of the application

Question 33

What is an enablement?

Answer 33

it requires an applicant to provide enough detail describing the invention to enable one of ordinary skill in the art to make and use the invention without undue experimentation

Question 34

What is best mode requirement?

Answer 34

It requires the applicant to disclose the applicant's best mode of making or using the claimed invention, NOT the preferred it's a safeguard against the desire on the part of some applicants to obtain patent protection without making a full disclosure, as required by the patent statute

Question 35

What is continuation-in-part application?

Answer 35

It allows new matter to be added to the application but the new subject matter is not entitled to the filing date of the parent application

Question 36

What are the 4 ways an issued patent can be corrected or amended?

Answer 36

by reissue by the issuance of a certificate of correction (which becomes part of the patent) by disclaimer by reexamination

Question 37

What is a reissue application?

Answer 37

it is used to correct an error in the patent which was made without deceptive intent, and as a result of the error, the patent is wholly or partly invalid

Question 38

What are some common reasons for filing a reissue application?

Answer 38

the claims are too narrow or too broad the disclosure contains inaccuracies the applicant failed to or incorrectly claimed foreign priority the applicant failed to make reference to or incorrectly made references to prior co-pending applications

Question 39

What is 35 USC 251?

Answer 39

it forbids the granting of a reissue "enlarging the scope of the claims of the original patent" unless the reissue is applied for within 2 years from the grant of the original patent

Question 40

What are the 2 types of rejections?

Answer 40

non-final final

Question 41

What is a final rejection?

Answer 41

A second or any subsequent action on the merits shall be "final" except where the examiner introduces a new ground of rejection Final rejection is proper when applicant's amendment is the cause of the new ground of rejection or the new rejection is based on information submitted by the applicant in an IDS If the new application is a continuing application of or a substitute for, an earlier application, all claims of the new application may be finally rejected in the first Office Action

Question 42

Under AIA, what is a prioritized examination and its goal?

Answer 42

With a request for expedited examination and a fee, it will accord a special status to the application To goal is to provide on average, a final disposition within 12 months of prioritized status being granted from the date prioritized status has been granted

Question 43

What are some of the conditions of prioritized examinations?

Answer 43

All non-provisional applications for original utility or plant patent qualify for expedited examination if filed on or after September 26, 2011 The application cannot contain more than 4 independent claims, more than 30 total claims, or multiple dependent claim, if more, then it will terminate the prioritized examination if the applicant files a petition for an extension of time to file a reply or a request for a suspension of action, prioritized examination of the application will be terminated

Question 44

What is a petition to "make special"?

Answer 44

It is a petition to make special must be based on a good faith belief that the invention in fact qualifies for special status to expedite the examination It does not require a petition fee

Question 45

What are the 2 reasons behind petition to "make special"?

Answer 45

petition based on age, if an applicant is 65 years or older petition based on health if accompanied with evidence showing that due to applicant's poor health, he may not be available to assist in the prosecution of the application

Question 46

What is the maximum statutory period for reply to an Office Action?

Answer 46

6 months and is computed form the date stamped or printed on the Office Action to the date of receipt by the Patent Office with applicant's reply However, shortened period are used in practically all cases. Applicant may request an extension of time along with an appropriate fee

Question 47

What happens if the applicant does NOT reply within 6 months?

Answer 47

The application becomes abandoned for failure to timely reply If shortened statutory period for reply is provided, then the application is not considered abandoned until the time allowed for an extension has elapsed, usually 6 months from Office Action

Question 48

What are the causes of abandonment?

Answer 48

failure to reply within the statutory period insufficient reply - applicant did not specifically address each of the examiner's rejections and objections. If good faith attempt has been provided, then the applicant may be given a new time period for reply to supply the omission

Question 49

What does an interview consist of?

Answer 49

The personal appearance of an applicant, attorney, or agent before the examiner or a telephone conversation or video conference or email between such parties presenting matters for examiner's consideration

Question 50

When are requests for interview prior to the first Office Action granted?

Answer 50

It's ordinarily granted in continuing or substitute applications In other applications, it is encouraged where the examiner determines that such an interview would advance prosecution of the application

Question 51

What are the 3 categories of amendments?

Answer 51

amendments made before a first Office Action and before and after a non-final rejection amendments made after a final rejection amendments made after the date of filing a notice of appeal

Question 52

How should amendments be submitted?

Answer 52

Amendments must be in writing, signed by the applicant or his representative and it should address every rejection and objection to an Office Action stated by the examiner Reply to an Office Action is due within 6 months from the date of the Office Action or any shortened statutory period contained in the Office Action

Question 53

If a final rejection has been entered, what are the 3 choices an applicant has?

Answer 53

applicant may abandon the application applicant may submit a request for continued examination (RCE) which reopens prosecution, effectively turning the final rejection into a non-final rejection upon payment of the fee applicant may appeal the examiner's decision to the Board

Question 54

When are amendments accepted?

Answer 54

If: an amendment may be made canceling claims or complying with any requirement of form expressly set forth in a previous Office Action an amendment presenting rejected claims in better form for consideration on appeal may be admitted an amendment touching the merits of the application or patent under reexamination may be admitted upon a showing of good and sufficient reasons why the amendment is necessary and was not earlier presented

Question 55

What is the Rule 131 affidavit or declaration used with?

Answer 55

With the "swearing back" procedure It allows applicant to swear behind prior art activity that occurs after the applicant's invention date but before the filing date assigned to an application It cannot be used to overcome a statutory bar or a patent reference claiming the same invention Under AIA, Rule 131 cannot be used to swear behind prior art reference for those applications subject to the AIA's first-to-file provisions

Question 56

What are the 2 circumstances Rule 131 affidavit or declaration are used?

Answer 56

1. to antedate a reference or activity that qualifies as prior art under section 102(a) but not under 102(b) or 102(d) 2. to antedate a reference that qualifies as prior art under section 102(e) prior to applicant's EFD and teaches but does not claim the same patentable invention [within the grace period]

Question 57

What are some circumstances where Rule 131 affidavit or declaration is INAPPROPRIATE?

Answer 57

1. where the prior art publication is more than 1 year prior to applicant's or patent owner's EFD, thereby constituting a "statutory bar" under section 102(b) 2. where the reference is foreign patent for the same invention to the asme applicant issued prior to the filing date of the domestic application on an application filed more than 12 months prior to the filing date of the domestic application, bar under section 102(d) 3. when an applicant has clearly admitted on the record that subject matter relied on in the reference is prior art