M.P.E.P. 800 Restriction in Applications File Under 35 USC 111; Double Patenting Flashcards

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1
Q

Basis of Restriction

A

An applicant is claiming more than one invention.

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2
Q

What counts as more than one invention?

A

Discretionary to Examiner

What easily recognizable as separate inventions

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3
Q

What do you do in response to a restriction?

A
  1. Election
  2. File a divisional

**Election must be made

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4
Q

When may an application be properly restricted to one of two or more claimed inventions?

A

Only if the inventions are each able to support separate patents AND

Either:
1. independent
2. Distinct

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5
Q

Independent

A

Separate in design, operation, or effect.

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6
Q

Distinct

A

Capable of separate manufacture, use or sale.

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7
Q

Genus

A

generic claim

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8
Q

Species

A

specific version of the genus.

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9
Q

Sub-Combination

A

Smaller part of a larger combination.

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10
Q

How can an examiner show that a restriction is necessary between a combination and a subcombination?

A

Show:
1. That the combination does not require the particulars of the subcombination AND
2. The subcombination can be shown to have utility by itself.

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11
Q

Product, Apparatus and Product Distinction Problem

A

You have to make an election.

Even if you don’t agree.

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12
Q

With Traverse

A

You preserve your right to petition the propriety of the restriction requirement.

Must be abuse of discretion.

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13
Q

Double Patenting

A

Two types:
1. Statutory - Same Invention
2. Obviousness

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14
Q

Obviousness Double Patenting

A

Can’t patent an obvious variation.

Only if you turn in Terminal Disclaimer

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15
Q

Terminal Disclaimer

A

method of responding to the office and saying that these two applications will forever be one and will lapse at the shorter term.

Melding into one.

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16
Q

Provisional Rejections under 102

A

Made on the basis on an earlier filed application that has not published or issued.

Comparison of disclosure.

Pre-AIA 102 (e)

AIA 102 (a)(2)

Only made if there is a common inventor or owner.

17
Q

Provisional Double Patenting

A

Comparison of claims

One common owner or inventor.

18
Q

Can you respond to a restriction over the phone?

A

Yes if Examiner initiated the communication

19
Q

How long do you have to respond to a Restriction?

A

One Month

Can buy five more months $

20
Q

What do you do when you are facing a Same Invention Double Patenting?

A

Cancel
OR
Amend the claims

21
Q

What do you do when you are facing an Obviousness Double Patenting?

A

Terminal Disclaimer

22
Q

What is the main requirement of a restriction response?

A

Elect

23
Q

What do you do if you have a restriction and a linking claim?

A

Elect and point out that since Claim 2 is a linking claim, it is included in the elected invention.