Chapter 700 and 2100 Examination of Applications and Patentability

Question 1

When is an object patentable?

Answer 1

The object must not be a naturally occurring composition.

Question 2

What are the three tests for patentability?

Answer 2

1. Useful/Utility
2. New or Novel
3. Non Obvious

Question 3

Rule regarding patent Utility

Answer 3

A claimed invention must have a specific and substantial utility.

Question 4

What is the minimum number of utilities required for an object to be patentable?

Answer 4

An applicant need only provide one credible assertion of specific utility for each claimed invention.

Question 5

Rule on the rejection of a patent application for no special utility.

Answer 5

Any rejection based on lack of utility should include a DETAILED DESCRIPTION as to why the claimed invention has no special or substantial utility. Examiner should provide DOCUMENTED EVIDENCE (Publication date is irrelevant).

Question 6

How does one know if the patent is useful (has a utility)?

Answer 6

An invention has a well established utility if a POSITA would IMMEDIATELY appreciate why the invention is useful.

Question 7

Utility of an object where an asserted special and substantial utility is not credible.

Answer 7

If an asserted asserted special and substantial utility is not credible, a PRIMA FACIE showing of no specialization or substantial utility must establish that it is MORE LIKELY THAN NOT that a POSTIA would not consider any special and substantial utility asserted by applicant for the claimed invention as credible.

Question 8

How to overcome a rejection when there is a prima facie showing of no specific and substantial credible utility?

Answer 8

1. Provide reasoning or arguments;
2. Amend the claims; or
3. Provide evidence in the form of a declaration under 37 CFR 1. 132

Question 9

When shall inventions be granted?

Answer 9

For any:

1. new and useful process
2. machine
3. manufacture
4. composition of matter, or
5. any new and useful improvement

Question 10

Reasons for for rejection based on “Lack of Utility” (35 USC 101)

Answer 10

1. Any substantially unaltered thing occurring in nature.
2. Printed matter
3. A scientific principle including mathematical discoveries. (However, methods for and devices using such principles may be patentable.)

Question 11

What is not necessary in order to establish prima facie patentablity under the Utility requirement of 35 USC 101?

Answer 11

Not necessary that there be a suggestion or expectation from the prior art that the claimed invention will have the same or similar utility.

Question 12

What is considered Prior Art for a USC 102(a) rejection?

Answer 12

1. A patent for the same subject matter already obtained anywhere in the world.
2. Public knowledge in the US ONLY.
3. Publication ANYWHERE in the WORLD.
4. USE by OTHERS in the US ONLY. (Others are an entity different from the inventors even if it varies only by one person.

Question 13

What causes a rejection under 35 USC 102(b)?

Answer 13

1. Patent or publication for the same subject matter ANYWHERE that was PRINTED or ISSUED more than ONE YEAR PRIOR to the application.
2. Public knowledge or use IN THE US for more than ONE YEAR PRIOR.

Question 14

What creates a statutory bar under USC 102(b)?

Answer 14

The inventor DISCLOSES the work MORE THAN 1 YEAR before FILING of the application.

This is measured from the US FILING DATE.

EXPERIMENTAL USE does not bar a patent, but it must be it’s PRIMARY PURPOSE (not secondary to commercial exploitation).

Question 15

What is the rule on Abandoned Inventions under USC 102(c)?

Answer 15

An abandoned invention CANNOT be patented later.