M.P.E.P. 700 Examination of Applications Flashcards
What leads to a rejection?
The law
How many appeals do you get in terms of rejection?
After the second or final rejection.
What leads to objection?
Rules
What can you do if you are given an objection?
You can petition if there is a second and final objection.
What affidavit can be filed to swear back against prior art?
1.131 Affidavit
What affidavit can be filed to predate disclosure by someone else?
1.130 Affidavit
Anticipation
A single reference having EVERYTHING you are claiming.
How do you challange anticipation rejection?
- Examiner’s reference does not have the complete invention.
- Examiner’s date found is invalid.
- Amending the claims
NAFTA and WTO Dates
NAFTA - after December 8, 1993
WTO - After January 1, 1996
Shields but does not convert what you’ve done into prior art against other people.
Old 102(a)
Deals with someone doing something first.
Public Knowledge -> U.S. Only -> Prior to Invention
Use by others -> U.S. Only -> Prior to Invention
Publication -> Anywhere -> Prior to invention
Patent Obtained -> Anywhere -> Prior to invention.
Inventor can never get themselves into trouble
Old 102(b)
Acts by either the inventor or another.
Patent Obtained -> Anywhere -> > 1 Year
Publication -> Anywhere -> > 1 Year
Public Use -> In this Country -> > 1 Year
On Sale -> In this Country -> > 1 Year
Old 102(c)
Abandonment by disparaging the patent/application
Old 102(d)
All the following MUST happen to bar Patent:
- Same applicant filed in foreign country for same invention.
- Filed more than 12 months (6 months for design) before US filing
- The foreign patent issued before US filing.
Old 102(e)
Prior Art IF:
- US Patents, Published Applications, AND PCT (after 11/20/00, designating the US and published in English)
- FOoT/DUSE
- November 29, 2000
- DUSE - designate US, published in English
- FOoT/DUSE
- The prior art date is the earliest effective US filing date or International filing date once the US application or International Application.
Ways to keep your dates and applications from getting in the way into each other under 102(e)
File all together
Old 102(f)
Can’t get a patent on something you didn’t invent.
Old 102(g)
Three components to bar a Patent:
- The prior invention must have been made in the US (during interference WIPO/NAFTA count)
AND - The prior invention must not have been abandoned (3 months), suppressed or concealed; (loser goes after this)
**A partial exception is made for commonly owned inventions. (applies to (e), (f) and (g))
**Look for reference that DISCLOSES AND CLAIMS
Exception to Old 102 (e) (f) and (g) that arise in 103
Not prior art to determine obviousness 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
- Subject to an obligation to assign to the same entity
New 102 (a)
- Entire universe of prior art.
- Disclosures that made it into the public domain anywhere.
- Before the effective filing date of the application.
New 102 (a)(1)
Disclosures anywhere in the world including:
- Patents
- Printed Publications
- Public use/On Sale
- Otherwise available to public
before effective filing date
New 102 (a)(2)
US Patents
OR
Published application
with filing dates occurring before the filing date of the application
New 102(b)
The Exceptions
These work as the disclosure by the Inventor/Coinventor/Derived from Inventor predates the intervening disclosure within the year
Own Disclosure/ Third Party Disclosure/ Filing (Within 1 Year)
New 102(b) (1) exceptions to 102 (a)(1)
Disclosures made 1 year or less before the effective filing date of the claimed invention by:
- Inventor/CI/JI/directly or indirectly from Inventor
OR - inventor disclosure contained subject matter.
New 102(b)(2)
Disclosures appearing in applications and Patents
New 102(b)(2) exceptions to 102 (a)(2)
Disqualifies prior art if:
- subject matter disclosed was obtained directly or indirectly
- subject matter disclosed by inventor
- Owned by the same person no later than effective filing date.
New 102(c)
Subject matter disclosed and a claimed (not issued or published) application shall be deemed to have common ownership if:
- SJM was developed/made by one of a joint research agreement in place before effective filing date
- Claimed invention was made as a result of the activities of joint research agreement
AND - The application discloses or is amended to disclose the names of the paties to the joint research agreement.
New 102(d)
Not a prior art section.
Tells you date of prior art.
EARLIEST EFFECTIVE FILING DATE
- can be foreign (published US application, Issued US Patents, Published WIPO PCT that designate US)
When does NEW law apply?
Filed on or after March 16, 2013 and do not have any claims that have priority before.
Obviousness
The examiner asserts that a PHOSITA would find it obvious to modify what is taught by one reference in light of what is taught by another reference.
Rationales that may support a conclusion of obviousness
- Combing prior art elements to yield predictable results.
- Simple Substitution of one element
- Use of known technique to improve
- Applying known technique to known device ready for improvement to yield predictable results
- Obvious to try - return to invention’s filing date
- Known work in one field used in another field of work
- Some teach, suggestion, or motivation would have led PHOSITA to modify prior art to arrive at claimed invention.
KSR Test
- Is the prior art suggestive of the combination in accord with a KSR rationale?
- Is there a likelihood of success for the combination?
- Does the combination include all of the elements recited in the claim?
Two ways to defeat an Obviousness Rejection
- To establish by arguments and/or submission of facts that the examiner is wrong;
OR - To submit facts which rebut the prima facia showing by either:
- establishing earlier date of invention
- by establishing that the totality of facts show the invention is not obvious
What are your two arguments with the PTO?
- PHOSITA would not make the combination suggested by the examiner as obvious;
AND/OR - The resulting combination is not the claimed invention.
Two paths after 103 rejection?
- Amendment
2. Argue on the basis of fact
Rejections Based on New Matter
Specifications, drawings, claims must have it or it will be deemed new matter.
(derived, inferred counts)
Rejections under 101 Patentable Subject Matter
Patentable subject matter;
- Process
- Machine
- Manufacture, or
- Composition of matter
Rejections under 101 NOT Patentable Subject Matter
- Scientific principles and mathematical discoveries
- Atomic weapons
- Illegal purpose devices only
- Method of doing business
- Things occurring in nature
- Purely mental
Utility under 101
Bare utility.
You have to say that it is useful.
Final Rejection
Procedure used by the Patent Office saying that their filing fee is used up and you have 6 months to decide what to do.
**Think about being on train tracks
Final Rejection Track Paths (4)
- Easiest - Allowance ( you file amendment and cancel bad ones)
- Notice of Appeal (Gives 7 months)
- The Examiner changes from final rejection.
- CON/DIV/CIP/CPA
**You have 6 months to get off the train to abandonment