MPEP 700 - Examination of Applications

Question 1

2 Ways to Overcome Obviousness Rejection

Answer 1

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 2

Search and Requirements for Information

Answer 2

⚠️ An Examiner or other office employee may require from individuals have duty to disclose (e.g., inventor, attorney or agent, other person who is substantively involved, other disclosing information to attorney, agent, or inventor) the submission of information as may be reasonably necessary to properly examine or treat a matter in a pending or abandoned application, national stage application, in a patent, or in a reexamination.

facts and factual information, that are know to applicant, or readily obtained after reasonable inquiry by applicant, NOT requesting opinions that may be held or would be required to be formulated by applicant

Facts derived or discovered independently by applicant, for example, from an experimentation, is prohibited

704

Question 3

Rights after Final Rejection

Answer 3

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.

706.07

Question 4

2 Months Rule

Answer 4

If the first reply is filed within 2 mos of the date of the final office action, the shortened statutory period will expire at 3 mos from the date of the final rejection or on the date the advisory action is mailed, whichever is later.

706.07(f)

Question 5

3 Ways of Avoiding Abandonment After Final Rejection

Answer 5

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 6

RCE (Requirements)

Answer 6

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.

706.07(h)

Question 7

When are automatic extensions of time NOT ALLOWED?

Answer 7

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.

710.02(e)

Question 8

Attorney of record calls an error to the attention of the examiner

Time period to response

Answer 8

Within 1 month, the reply period restarts;
More than 1 month after the date of the OA the office will set a new period for response if requested to do so by the applicant to substantially equal the time remaining in the response period

710.06

Question 9

Rejection vs. Objection

Answer 9

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

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

Question 10

Interviews

Answer 10

Timing:
1. Interview before filing is never permitted.
NOTE: Interview for the discussion of the patentability of a pending application will not occur before the first OA unless the application is a continuing or substitute application

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.

713

Question 11

Preliminary Amendment

Answer 11

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.
3. Present on the filing date of the application is treated as part of the original disclosure of the application, otherwise not part of the original disclosure therefore NEW MATTER

NOTE: A preliminary amendment field with a submission to enter the national stage of an international application is NOT part of the original disclosure because it was NOT present on the international filing date

714.01(e)

Question 12

Supplemental Replies

Answer 12

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.

714.03(a)

Question 13

Amendment of Oaths

Answer 13

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

Question 14

Amendment after Final

Answer 14

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.

714.13

Question 15

Two Ways to Change Claim Wording

Answer 15

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 16

Amendments after Notice of Allowance

Answer 16

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.

714.16

Question 17

Swearing Back (1.131 and 1.130)

Answer 17

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).

715 Per-AIA

Question 18

1.132 Affidavit

Answer 18

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

Timeliness:
1). prior to a final rejection
2). before appeal in an application not having a final rejection
3). after final rejection but before or on the same date of filing an appeal UPON a showing of good and sufficient reasons
4). after the prosecution is closed filed with RCE

716