MPEP 700 - Examination of Applications

Question 1

Pre-AIA 102(a) Analysis

Answer 1

Acts are considered prior art if:

1. Made prior to invention;
2. By another person;
3. “Known or Used by others” in U.S. ONLY; or Patented or in Printed Publication ANYWHERE in the world.

Question 2

Pre-AIA 102(b) Analysis

Answer 2

Acts are prior art if:

1. Made by another OR the inventor(s);
2. Acts made more than 1 year prior to filing;
3. Acts consist of: (i) On sale/offer to sell or “public use” IN U.S. ONLY; or (ii) Patented obtained or in printed publication ANYWHERE in the world.

NOTE: This is the 1-Year grace period.

Question 3

Pre-AIA 102(c)

Answer 3

Abandonment in this section only occurs when there is an intent to abandon.

Question 4

Pre-AIA 102(d)

Answer 4

Bars anyone from obtaining a patent if all of the following occurs:

1. Same applicant or his or her legal representative or assignee filed an application in a foreign country on that same invention (claims included or that could have been included); and
2. The application in that foreign country was filed more than 12 months before the U.S. Application was filed (6 months for design patent); and
3. The foreign patent issued before the US Application was filed. The patent need not have been published but the granted patent rights must have been enforceable.

Question 5

Pre-AIA 102(e)

Answer 5

1. U.S. Patent or published applications and PCT applications (having an International Application Date after 11/9/2000) designating the US which are published in English, all have 102(e) dates once they publish. (D.U.S.E).
2. The prior art date is the earliest effective U.S. filing date or International filing date once the U.S. application or International Application has published.

US Applications:
1. Generally, a patent application published in the US is prior art as of its filing date under §102(e)(1).

2. Patent application published in the US resulting from an IA (International Application) entering the national stage is prior art as of its international filing date only if the IA was published in English – otherwise NO §102(e) date.

Question 6

Old §102(e), (f), and (g) Exception

Answer 6

A prior invention which would otherwise be prior art under either of these sections is not prior art to determine (i.e. 103 rejection) if the prior invention and the claimed invention were both, at the time the claimed or later invention was made, owned by the same entity or subject to an obligation to assign to the same entity.

REMEMBER:

1. Only applies to (e), (f), and (g); and
2. The time that counts is at the time the invention was made.

Question 7

Pre-AIA 102(g)

Answer 7

Three critical components:

1. Prior invention must have been made in the US (except during an interference NAFTA and WTO country activity counts as well).
2. The prior invention must not have been abandoned, suppressed, or concealed (think “ASC”).
3. Partial exception is made for commonly owned inventions.

Question 8

Pre-AIA 102(f)

Answer 8

Application claiming subject matter the applicant did NOT INVENT.

Question 9

2 Ways to Overcome Obviousness Rejection

Answer 9

1. Establish by arguments and/or submissions of facts that the examiner is wrong; OR
2. Submit facts which rebut the prima facie showing by either establishing an earlier filing date of invention or by establishing that the totality of facts show the invention is not obvious.

Question 10

Rights after Final Rejection

Answer 10

Amendments may only be submitted as a matter of right only if they simply:

1. Cancel Claims;
2. Comply with requirements as to form or adopt suggestions of the Examiner; or
3. Present claims in better form for consideration on appeal.

Other amendments will not be entered without showing why they were not presented earlier and why they are necessary.

Question 11

3 Ways of Avoiding Abandonment After Final Rejection

Answer 11

1. Response filed which the examiner agrees places the application in condition for allowance; or
2. A notice of appeal is filed; or
3. Examiner in his own initiative or in response to a request by an applicant, converts the action into a non-final one.

Question 12

RCE (Requirements)

Answer 12

Requirements:
1. Request (RCE);
2. Submission; and
3. Appropriate Fee.
4. Must be filed prior to the earliest of the following: (i) Payment of an issue fee; (ii) Abandonment; (iii) or
Filing of a court action (unless that action is terminated).

NOTES:

1. No divisionals are possible since it’s the same application.
2. Eligible for applications filed on or after June 8, 1995.

Question 13

When are automatic extensions of time NOT ALLOWED?

Answer 13

1. Office Action states so;
2. A Reply Brief;
3. A request for an oral hearing in an appeal;
4. Responding to a decision of the Board;
5. Anything in an interference; and
6. Due dates in reexaminations cannot be automatically extended and any extension for cause request in a reexamination must be filed before that date due.

Question 14

Rejection vs. Objection

Answer 14

Rejection is based on laws, and you can appeal a rejection.

Objection is based on rules, and you can petition an objection.

Question 15

Interviews

Answer 15

Timing:
1. Interview before filing is never permitted.

2. An interview before a first action is usually granted in continuing and substitute applications.
   An interview after a first rejection is a matter of right.
3. Interviews after a Final Rejection is permitted at the discretion of the examiner.
4. Interviews after an appeal brief has been filed are normally not granted.

Procedure:

1. Does not change obligations to respond to actions in writing.
2. Models (non-dangerous) and exhibits can be brought to the interview.
3. Interviews simply to “sound out” the examiner are NOT permitted.

Question 16

Preliminary Amendment

Answer 16

1. Amendments made before an Office Action is issued or filed with the application.
2. May be denied entry if not filed within 3 months and it would unduly interfere with preparation of Office Action.

Question 17

Supplemental Replies

Answer 17

Definition: A reply filed in a follow up to an initially filed reply.

Only will be considered as a matter of right in the following situations:

1. Cancellation of claims;
2. Adoption of examiner suggestions;
3. Placing application in condition for allowance;
4. Replying to office requirements made after First reply;
5. Correct informalities;
6. Simplify issues on appeal.

Question 18

Amendment of Oaths

Answer 18

Oaths must be supplemented or replaced; they cannot be amended except for information disclosed in ADS; i.e., address and bibliographic information.

Question 19

Amendment after Final

Answer 19

May be entered, meaning Patent Office treats amendments as part of application, or denied entry meaning the Patent Office will treat them as if they don’t exist.

Amendments sought after Final Rejection and after allowance are subject to special rules.

Question 20

Two Ways to Change Claim Wording

Answer 20

1. Cancel and rewrite claims, starting the numbering after the highest previous claim (even if unentered); or
2. Amend the claims already in the application by submitting a re-written marked up version of the claims you wished to amend.

Question 21

Amendments after Notice of Allowance

Answer 21

Post-Issuance amendment is not permitted as a matter of right.

Before issue fee is paid, such amendment may be entered if they are needed for proper disclosure and require no substantial work on part of examiner.

Must state the four “whys”:

1. Why is the amendment needed;
2. Why no new search or consideration is required;
3. Why any amended or new claims are patentable; and
4. Why the amendments were not earlier presented.

NOTE: If refused, only option is to file a Continuation.

Question 22

Swearing Back (1.131 and 1.130)

Answer 22

Used to remove PRE-AIA 102(a) and 102(e) rejections by “swearing back”.

Done by submission of affidavits or declarations an earlier date of invention based upon:

1. An actual reduction to practice; or
2. Conception and diligence from the critical date to the actual or constructive reduction to practice (the filing date of the application is the date of constructive reduction to practice).

Question 23

1.132 Affidavit

Answer 23

Used to submit facts during prosecution by oath or declaration that rebut prima facie showing of obviousness, to establish utility to to establish enablement.