MPEP 700 - Examination of Applications

Question 1

An example of a fully responsive reply to a non-final Office action on the merits rejecting all the claims in the application as being unpatentable under 35 USC 102 and/or 103 over prior art references?

Answer 1

An example is a timely filed and properly signed written reply which does not include an amendment to the claims, but includes a request for the examiner’s rejections to be reconsidered supported by arguments replying to every ground of rejection and distinctly and specifically points out the supposed errors in every rejection. and pointing out the specific distinctions believed to render the claims patentable over any applied references. 37 CFR 1.111; MPEP 714.02. Section1.111 states in pertinent part: “(a)(1) If the Office action after the first examination ( 1.104) is adverse in any respect, the applicant or patent owner, ¦ must reply and request reconsideration or further examination, with or without amendment. ¦ (b) In order to be entitled to reconsideration or further examination, the applicant or patent owner must reply to the Office action. The reply by the applicant or patent owner must be reduced to a writing which distinctly and specifically points out the supposed errors in the examiners action and must reply to every ground of objection and rejection in the prior Office action. The reply must present arguments pointing out the specific distinctions believed to render the claims, including any newly presented claims, patentable over any applied references. ¦The applicants or patent owners reply must appear throughout to be a bona fide attempt to advance the application or the reexamination proceeding to final action. A general allegation that the claims define a patentable invention without specifically pointing out how the language of the claims patentably distinguishes them from the references does not comply with the requirements of this section.” MPEP 714.02 states “In all cases where reply to a requirement is indicated as necessary to further consideration of the claims ¦ a complete reply must either comply with the formal requirements or specifically traverse each one not complied with.”

Question 2

As far as appealing or petitioning, what is the difference between a claim with an objection and a claim with a rejection?

Answer 2

As stated by MPEP 706.01, “The practical difference between a rejection and an objection is that a rejection, involving the merits of the claim, is subject to review by the Board of Patent Appeals and Interferences, while an objection, if persisted, may be reviewed only by way of petition tithe Commissioner.”

Question 3

If the form of the claim (as distinguished from its substance) is improper, does the examiner make an objection or a rejection?

Answer 3

As stated in MPEP 706.01, “If the form of the claim (as distinguished from its substance) is improper, an “objection” is made. ”

Question 4

Can new matter be added to a patent application after its initial filing?

Answer 4

NO.
New Matter in Specification (MPEP § 2163.06): The Manual of Patent Examining Procedure (MPEP) § 2163.06 clearly states that new matter cannot be added to a patent application after its initial filing. If new matter is added, it can lead to an objection because it violates the written description requirement. This is because the new matter was not originally disclosed in the application as filed. According to MPEP § 2163.07, if the new matter impacts the interpretation or scope of a claim, that claim may be rejected under 35 U.S.C. § 112, first paragraph, for lack of written description or enablement. According to MPEP § 2111.01, claims are given their broadest reasonable interpretation consistent with the specification. If the specification is altered, it could change the interpretation of the claims, thereby affecting their patentability.

Question 5

If a claim evaluated under a 103 rejection has limitations that are not supported in the specification, does the examiner still have to examine the claim?

Answer 5

Yes. MPEP 706.03(o) and 2143.03. MPEP 2143.03, under the heading “Limitations Which Do Not Find Support In The Original Specification Must Be Considered,” states: “When evaluating claims for obviousness under 35 U.S.C. 103, all the limitations of the claims must be considered and given weight, including limitations which do not find support in the specification as originally filed (i.e., new matter).” MPEP 706.03(o) states, “In amended cases, subject matter not disclosed in the original application is sometimes added a claim directed thereto. Such a claim is rejected on the ground that it recites elements without support in the original disclosure under 35 U.S.C. 112, first paragraph, Waldemar Link, GmbH & Co. v. Osteonics Corp. 32 F.3d 556, 559, 31 USPQ2d 1855, 1857 (Fed. Cir. 1994); In re Rasmussen, 650 F.2d 1212, 211 USPQ 323 (CCPA 1981).”

Question 6

How much time does an applicant have to file for A Notice to File Missing Parts of an Application?

Answer 6

The 2-month time period for reply to A Notice to File Missing Parts of an Application is not identified on the Notice as a statutory period subject to 35 U.S.C. 133. Thus, extensions of time of up to 5 months under 37 CFR 1.136(a), followed by additional time under 37 CFR 1.136(b), when appropriate, are permitted.

Question 7

37 CFR 1.136 (a) and (b)?

Answer 7

37 CFR 1.136 Extensions of Time
1.136(a) - obtain extension automatically
1.136(b) - obtain extension with cause

Question 8

37 CFR 1.181

Answer 8

Petition to the Director

Question 9

If an applicant files a petition to an action, does he have to respond to an Examiner’s action?

Answer 9

37 CFR 1.181(f); MPEP 714.13 and 1002: 37 CFR 1.181(f) provides “The mere filing of a petition will not stay the period for reply to an Examiners action which may be running against an application, nor act as a stay of other proceedings.” MPEP 714.13 states “[i]t should be noted that under 37 CFR 1.181(f), the filing of a 37 CFR 1.181 petition will not stay the period for reply to an examiners action which may be running against an application.” See also MPEP 1002.

Question 10

How does the PTO handle a trade secret during prosecution?

Answer 10

Information which is considered by the party submitting the same to be either trade secret material or proprietary material, must be clearly labeled as such and be filed in a sealed, clearly labeled, envelope or container. Each document or item must be clearly labeled as a “Trade Secret” Upon receipt of the envelope or container, the Office will place the envelope or container in an artifact FOLDER if the application is an Image File Wrapper (IFW) application. If the application is maintained in paper, the confidential or proprietary information will be retained in the envelope or container. See 724 Trade Secret, Proprietary, and Protective Order Materials; 724.02 Method of Submitting Trade Secret, Proprietary, and/or Protective Order Materials

Question 11

35 USC 120

Answer 11

Benefit of earlier filing date in the United States

Question 12

MPEP 714
37 CFR § 1.121

Answer 12

MPEP 714 Amendments, Applicant’s Action

37 CFR § 1.121 - Manner of making amendments in applications.

Question 13

MPEP 714(D)
37 CFR 1.84
37 CFR 1.121(d)

Answer 13

MPEP 714(D) - Amendments to the drawings
37 CFR § 1.84 - Standards for drawings
37 CFR 1.121(d) Drawings. One or more application drawings shall be amended in the following manner: Any changes to an application drawing must be in compliance with § 1.84 or, for a nonprovisional international design application, in compliance with §§ 1.84(c) and 1.1026 and must be submitted on a replacement sheet of drawings which shall be an attachment to the amendment document and, in the top margin, labeled “Replacement Sheet.” Any replacement sheet of drawings shall include all of the figures appearing on the immediate prior version of the sheet, even if only one figure is amended. Any new sheet of drawings containing an additional figure must be labeled in the top margin as “New Sheet.” All changes to the drawings shall be explained, in detail, in either the drawing amendment or remarks section of the amendment paper.

(1) A marked-up copy of any amended drawing figure, including annotations indicating the changes made, may be included. The marked-up copy must be clearly labeled as “Annotated Sheet” and must be presented in the amendment or remarks section that explains the change to the drawings.

(2) A marked-up copy of any amended drawing figure, including annotations indicating the changes made, must be provided when required by the examiner.

Question 14

How does 37 CFR 1.136(a) work as to extension of time when there is a Final Action and the applicant files a Notice of Appeal?

Answer 14

706.07 THIS ACTION IS MADE FINAL. Applicant is reminded of the extension of time policy as set forth in 37 CFR 1.136(a). A shortened statutory period for reply to this final action is set to expire THREE MONTHS from the mailing date of this action. In the event a first reply is filed within TWO MONTHS of the mailing date of this final action and the advisory action is not mailed until after the end of the THREE-MONTH shortened statutory period, then the shortened statutory period will expire on the date the advisory action is mailed, and any extension fee pursuant to 37 CFR 1.136(a) will be calculated from the mailing date of the advisory action. In no event, however, will the statutory period for reply expire later than SIX MONTHS from the mailing date of this final action. It only applies to Amendment/Reply not NOA 37 CFR 41.37(a) does not permit the brief to be filed within the time allowed for reply to the action from which the appeal was taken even if such time is later. Once appellant timely files a notice of appeal in compliance with 37 CFR 41.31, the time period for reply set forth in the last Office action is tolled and is no longer relevant for the time period for filing an appeal brief. For example, if appellant filed a notice of appeal within one month from the mailing of a final Office action which sets forth a 3-month shortened statutory period for reply, and then the appellant filed an appeal brief after 2 months from the filing date of the notice of appeal but within 3 months from the mailing of the final action, a petition for an extension of time for one month would be required.

Question 15

MPEP 715; 715.04

Answer 15

MPEP 715 Swearing Behind a Reference — Affidavit or Declaration Under 37 CFR 1.131(a)

MPEP 715.04 Who May Make Affidavit or Declaration Under 37 CFR 1.131(a); Formal Requirements of Affidavits and Declarations

Question 16

37 CFR § 1.114

Answer 16

37 CFR § 1.114 - Request for continued examination is proper if prosecution of the application is closed (application is under appeal, or that the last Office action is a final action (§ 1.113), a notice of allowance (§ 1.311), or an action that otherwise closes prosecution in the application, such as Office action under Ex Parte Quayle )

Question 17

MPEP 716.03

Answer 17

MPEP 716 Affidavits or Declarations Under 37 CFR 1.132 and Other Evidence Traversing Rejections
MPEP 716.03 Commercial Success
MPEP 716.03(a) Commercial Success Commensurate in Scope With Claimed Invention
MPEP 716.03(b) Commercial Success Derived From Claimed Invention

Question 18

MPEP 713

Answer 18

MPEP 713 Interviews

Question 19

MPEP 714

Answer 19

MPEP 714 Amendments (this includes the Manner of Making Amendments, before the Non-Final Action (Preliminary Amendment), After Non-Final Action, After Final Action, after Allowance, etc.

Question 20

37C.F.R. 1.8 or 1.10

Answer 20

1.8 Certificate of mailing or transmission.
Except in the situations enumerated in paragraph (a)(2) of this section or as otherwise expressly excluded in this chapter, correspondence required to be filed in the U.S. Patent and Trademark Office within a set period of time will be considered as being timely filed if the procedure described in this section is followed. The actual date of receipt will be used for all other purposes.

1.10 Filing of correspondence by Priority Mail Express®.
Any correspondence received by the U.S. Patent and Trademark Office (USPTO) that was delivered by the Priority Mail Express® Post Office to Addressee service of the United States Postal Service (USPS) will be considered filed with the USPTO on the date of deposit with the USPS. The date of deposit with USPS is shown by the “date accepted” on the Priority Mail Express® label or other official USPS notation. If the USPS deposit date cannot be determined, the correspondence will be accorded the USPTO receipt date as the filing date. See § 1.6(a).

Question 21

Who can file a broadening reissue application and within what timeframe?

Answer 21

A broadening reissue application must be filed within two years of issuance of the original patent.35 U.S.C. 251; MPEP 1412.03. And it must be filed by the inventor because an assignee may not file a broadening reissue application. MPEP 706.03(x).

Question 22

37 CFR § 1.313

Answer 22

37 CFR § 1.313 - Withdrawal from issue
Applications may be withdrawn from issue (of a Patent) for further action at the initiative of the Office or upon petition by the applicant. To request that the Office withdraw an application from issue, applicant must file a petition under this section including the fee set forth in § 1.17(h) and a showing of good and sufficient reasons why withdrawal of the application from issue is necessary. A petition under this section is not required if a request for continued examine (RCE) issue fee. If the Office withdraws the application from issue, the Office will issue a new notice of allowance if the Office again allows the application.

Question 23

MPEP 704
37 CFR 1.105

Answer 23

MPEP 704 Search and Requirements for Information

37 CFR 1.105 Requirements for information
In the course of examining or treating a matter in a pending or abandoned application, in a patent, or in a reexamination proceeding, including a reexamination proceeding ordered as a result of a supplemental examination proceeding, the examiner or other Office employee may require the submission, from individuals identified under § 1.56(c), or any assignee, of such information as may be reasonably necessary to properly examine or treat the matter, for example:
Commercial databases, Search, Related information, Information used to draft application, Information used in invention process, Improvements, In use, Technical information known to applicant. Technical information known to applicant concerning the related art, the disclosure, the claimed subject matter, other factual information pertinent to patentability, or concerning the accuracy of the examiner’s stated interpretation of such items.

Any reply to a requirement for information pursuant to this section that states either that the information required to be submitted is unknown to or is not readily available to the party or parties from which it was requested may be accepted as a complete reply.

Question 24

Where a final rejection of claims has been made, any question of prematureness of the final rejection should be raised, if at all:

Answer 24

by petition under 37 CFR 1.181 while the application is pending before the examiner.

706.07(c) Final Rejection, Premature
Any question as to prematureness of a final rejection should be raised, if at all, while the application is still pending before the primary examiner. This is purely a question of practice, wholly distinct from the tenability of the rejection. It may therefore not be advanced as a ground for appeal, or made the basis of complaint before the Patent Trial and Appeal Board. It is reviewable by petition under 37 CFR 1.181. See MPEP § 1002.02(c).

Question 25

What are the four factors applied for determining non-obviousness under the Graham V Deere test?

Answer 25

Under 35 U.S.C. § 103, a patent claim is obvious when the differences between the claimed invention and the prior art “are such that the subject matter as a whole would have been obvious at the time the invention was made to a person having ordinary skill in the art.” When discussing the requirements for obviousness under § 103, the landmark case is Graham v. John Deere Co., 383 U.S. 1 (1966). In the Graham case, the Supreme Court established factors to be considered when making an obviousness determination:
(1) the scope and content of the prior art;
(2) the level of skill of a person of ordinary skill in the art;
(3) the differences between the claimed invention and the teachings of the prior art; and (4) the extent of any objective indicia of non-obviousness. 383 U.S. at 17-18.

Question 26

TSM test?

Answer 26

The Federal Circuit has further fleshed out the requirements for obviousness by establishing the so-called Teaching, Suggestion, Motivation (“TSM”) test. When a claim of obviousness is made based on multiple pieces of prior art, the TSM test (as the name indicates) requires some teaching, suggestion, or motivation that would have led a person of ordinary skill in the art to combine the prior art references in the matter claimed in the patent. According to the Federal Circuit, the TSM test is intended to prevent “statutorily proscribed hindsight reasoning when determining the obviousness of an invention.” Alza Corp. v. Mylan Labs., Inc., 464 F.3d 1286, 1290 (Fed. Cir. 2006). In other words, some inventions — like putting together a puzzle — only appear obvious with the benefit of hindsight. The TSM test is intended to combat this type of retrospective analysis by prohibiting one from picking and choosing, using the advantage of hindsight, elements of the patented invention from various sources of prior art. Instead, the TSM test states that there must be some teaching, suggestion, or motivation to combine the various pieces of prior art. Furthermore, the general understanding for some time has been that the teaching, suggestion, or motivation to combine must be explicitly contained in the prior art.

Question 27

first-inventor-to-file date?

Answer 27

first-inventor-to-file provisions, March 16, 2013.

Question 28

When, if ever, is a supplemental oath considered to be an amendment under 37 CFR 1.312?

Answer 28

During a Reissue.
MPEP 714.16:With the exception of a supplemental oath or declaration submitted in a reissue, a supplemental oath or declaration is not treated as an amendment under 37 CFR 1.312. See MPEP 603.01. A supplemental reissue oath or declaration is treated as an amendment under 37 CFR 1.312 because the correction of the patent which it provides is an amendment of the patent, even though no amendment is physically entered into the specification or claim(s). Thus, for a reissue oath or declaration submitted after allowance to be entered, the reissue applicant must comply with 37 CFR 1.312 in the manner set forth in this section. See also 37 CFR 1.175 and MPEP 1414, 1444.

Question 29

What is the criteria for an Accelerated Examination?

Answer 29

Pay a fee; Submit a petition; Submit 3 or less independent claims and no more than 20 total claims; Must e-file

Question 30

37 CFR § 1.63

Answer 30

37 CFR § 1.63 - Inventor’s oath or declaration
(a) The inventor, or each individual who is a joint inventor of a claimed invention, in an application for patent must execute an oath or declaration directed to the application, except as provided for in § 1.64. An oath or declaration under this section must:

(1) Identify the inventor or joint inventor executing the oath or declaration by his or her legal name;

(2) Identify the application to which it is directed;

(3) Include a statement that the person executing the oath or declaration believes the named inventor or joint inventor to be the original inventor or an original joint inventor of a claimed invention in the application for which the oath or declaration is being submitted; and

(4) State that the application was made or was authorized to be made by the person executing the oath or declaration.

(b) Unless the following information is supplied in an application data sheet in accordance with § 1.76, the oath or declaration must also identify:

(1) Each inventor by his or her legal name; and

(2) A mailing address where the inventor customarily receives mail, and residence, if an inventor lives at a location which is different from where the inventor customarily receives mail, for each inventor.

(c) A person may not execute an oath or declaration for an application unless that person has reviewed and understands the contents of the application, including the claims, and is aware of the duty to disclose to the Office all information known to the person to be material to patentability as defined in § 1.56. There is no minimum age for a person to be qualified to execute an oath or declaration, but the person must be competent to execute, i.e., understand, the document that the person is executing.

Question 31

37 CFR § 1.64

Answer 31

37 CFR § 1.64 - Substitute statement in lieu of an oath or declaration
(a) An applicant under § 1.43, 1.45 or 1.46 may execute a substitute statement in lieu of an oath or declaration under § 1.63 if the inventor is deceased, is under a legal incapacity, has refused to execute the oath or declaration under § 1.63, or cannot be found or reached after diligent effort.

Question 32

A PCT application was submitted, but 30 months lapses and the applicant does not provide the necessary requirements for the national stage due to unintentional circumstances. What can the applicant do?

Answer 32

See MPEP 711.03(c), 37 CFR 1.137, and MPEP 1893.02.

Applicant may file a petition to revive an abandoned application in accordance with the provisions of 37 CFR 1.137. For applicants convenience, applicant may use either Form PTO/SB/64PCT (unintentionally abandoned application) for this purpose.