MPEP Ch. 700

Question 1

MPEP Ch. 700

Answer 1

Examination of App

Question 2

Rejections of Claims

Answer 2

Each response must be complete and fully respond to each rejection and objection. Cannot respond to some rejections or objections and defer others until some future time.

Question 3

Rejections

Answer 3

Written refusal to grant claims because the subject matter as claimed is considered unpatentable.
To overcome, first the examiner must be asked for reconsideration and then an appeal pursued to the PTAB.
Most are based on 102, 103, 112, and 101.

Question 4

Objections

Answer 4

The form of the claim, specification, or drawing is improper. May or may not satisfy the statutory requirements but does not satisfy the requirement of the PTO rules.
To overcome, examiner must first be asked for reconsideration and then a petition filed to the Commissioner.

Question 5

Swearing back

Answer 5

For Pre-AIA 102(a) and (e) only.
If the invention date is before the date of the prior art reference, an affidavit may be submitted to show evidence of the invention date. Must be done on a claim by claim basis.

Question 6

Anticipation rejection “proper”

Answer 6

Cannot argue against it. Amend claim.

Question 7

Pre-AIA 102(a)

Answer 7

An act of “another” and must have been prior to the invention (think conception).
Public knowledge or use by others occurring in the U.S.
Publication or issued patent can be anywhere in the world.

Question 8

Pre-AIA 102(b)

Answer 8

Can be acts of the inventor or another. Must be more than one year before filing date.
Public use or any type of sale occurring in the U.S.
Publication or a patent issued anywhere in the world.

Question 9

Pre-AIA 102(d)

Answer 9

Bars patentability if (1) the same applicant filed an app in a foreign country on the same invention; (2) the app is the foreign country was filed more than 12 months before the US app was filed (6 months if design); AND the foreign patent issues before the US app is filed.

Question 10

Pre-AIA 102(e)

Answer 10

A US patent or app becomes prior art as of its US filing date, not its printing date. The 102(f) and 102(g) exception for commonly owned inventions apply to 102(e).
(1) US patents or published apps and PCT apps (after Nov. 29, 2000, designating US and published in english) all have 102(e) dates once they publish.
(2) the prior art date is the earliest effective US filing date or International filing date once the US app or PCT has published.
Note: if PCT was not published in English, no 102(e) date.

Question 11

Pre-AIA 102(e) interferences

Answer 11

If the filing dates of two patents without a common inventor/assignee is within 6 months (or 3 for simple subject matter) an interference may be proper.

Question 12

Pre-AIA 102(f)

Answer 12

Bars patenting of subject matter which the applicant did not invent.
Look for foreign travel on the test

Question 13

Pre-AIA 102(g)

Answer 13

Bars patenting if (1) a prior invention was made in the U.S.; and (2) the prior invention has not been abandoned, suppressed, or concealed; (3) a partial exception is made for commonly owned inventions.
NOTE: The invention, not the app, is the thing that cannot have been abandoned.
Acts as the legal basis for interferences.

Question 14

Pre-AIA 102 (e), (f), and (g) exception

Answer 14

103 defines exception. A prior invention which would otherwise be prior art does not constitute prior art under 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 or subject to an obligation to assign to the same entity.

Question 15

AIA 102(a)(1)

Answer 15

Applies to all apps filed on or after March 16, 2013.
If an invention was described in a patent, printed publication, publicly used, was on sale, or was otherwise available to the public (anywhere in the world) before the effective filing date of the claimed invention, 102 bars patentability

Question 16

AIA 102(a)(2)

Answer 16

US patents and published applications with filing dates occurring before the filing date of the app being examined act as prior art

Question 17

AIA 102(b)(1)

Answer 17

Prior art under 102(a)(1) not prior art if (A) disclosure was made by an inventor, or by another who obtained the subject matter directly or indirectly from the inventor; or (B) if disclose was made by third party, the subject matter disclosed had, before such disclosure, been publicly disclosed by an inventor, or another who obtained the info directly or indirectly from the inventor.

Question 18

AIA 102(b)(2)

Answer 18

Prior art under 102(a)(2) is not prior art if (A) the subject matter disclosed was obtained directly or indirectly from the inventor; or (B) if by a third party, the subject matter disclosed had, before such subject matter was effectively filed under (a)(2) been publicly disclosed by the inventor, or another who obtained the subject matter disclosed directly or indirectly from the inventor; or (c) the subject matter disclosed and the claim invention, not later than the effective filing date of the claimed invention, were owned by the same person or subject to an obligation of assignment to the same person.

Question 19

AIA 102(c)

Answer 19

Defines common ownership. In order to eliminate certain art under 102(a)(2), using 102(b)(2)(C) there must be:

(1) a joint research agreement between one or more parties in effect on or before the effective filing date of the claimed invention;
(2) the claimed invention was made as a result of the actives undertaken within the scope of the agreement; and
(3) the app discloses, or is amended to disclose, all the parties to the agreement.

Question 20

AIA 102(d)

Answer 20

Defines the filing date. The effective filing date is either the date the prior filing was filed, or any priority date to which it is entitled.

Question 21

New Matter

Answer 21

An amendment to an application is supported if a POSA would conclude that nothing new is being added.

Question 22

101

Answer 22

Test will often restate statute or be obvious:
scientific principles, math equations, atomic weapons, purely illegal inventions, naturally occurring, method of doing business, or a method which is purely mental.

Question 23

Final Rejections

Answer 23

May be made by examiner any time a second rejection for the same reason is issued. After final, no longer allowed to submit new evidence. May file a continuation to submit evidence.
If the rejection should not be made final, you should request the examiner withdraw finality; next step is to petition Commissioner

Question 24

Final Rejection, Options

Answer 24

Period for response can be tolled by putting the app in condition for allowance or filing a notice of appeal. A continuation can be filed and the parent abandoned.

Question 25

To avoid abandonment after a Final Rejection

Answer 25

(1) a response must be filed with the examiner agrees places the app in condition for allowance; or
(2) a Notice of Appeal must be filed; or
(3) the examiner, either on his own or in response to a request by applicant, converts the action to a non-final one.
Can also file a RCE or continuation but that abandons app and starts new line of prosecution.

Question 26

Rights after a Final Rejections

Answer 26

None really. An amendment can be submitted if it simply (1) cancels claim(s); (2) complies with requirements as to form or adopt suggestions of the Examiner, or (3) presents claims in better form for consideration on appeal.
Other amendments will not be entered w/o a showing of why they were not presented earlier and why they are necessary.

Question 27

RCE

Answer 27

Must mail or EFS:

1) request (RCE
(2) a submission; and
(3) appropriate fee.

Question 28

Petitions to make special (before Aug. 25, 2006)

Answer 28

Look up.
The following are free:
Serious illness, positive impact on environment, positive impact on energy supply, applicant over 65, and counter terrorism.
Can also petition, with fee, for the following:
prospective manufacturing (ready to go), infringement, safer DNA, by asking (if claims to single invention and agree to restrictions along with patent search, docs, and description), Cancer/HIV diagnosis, treatment, or prevention, superconductivity, biotech apps by small entity.

Question 29

Petitions to make special after Aug. 25, 2006.

Answer 29

Must file a petition to make special under the accelerated exam program and be accompanied by a fee or statement showing invention is directed to environmental quality, conservation of energy resources, or counter terrorism.
Must be non-reissue app, filed EFS, and other requirements. Look up.

Question 30

Prioritized Exam, after 9/16/11

Answer 30

Grants special status until… applicant does something to slow the process down or fails to do something OR patent is allowed or final OA mailed.
Free and automatic if age over 65 or serious illness. Free but effort if environmental, counter terrorism, super conductor.

Question 31

Suspension of Action

Answer 31

Cannot petition to suspend prosecution if there is an action outstanding. Otherwise, can suspend production for up to 6 months per request and fee.

Question 32

Statutory time-limit requirement for response to OAs

Answer 32

Cannot be extended beyond 6 months or face abandonment.

Question 33

Automatic extension (no reason or cause required)

Answer 33

Available for 1, 2, 3, 4, and 5 months but cannot exceed 5 months.
Cannot be obtained:
(1) where the OA so states;
(2) a reply brief (responsive to Examiner’s answer in an appeal to the PTAB and interferences);
(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 reexams cannot be automatically extended and any extension for cause request in a reexam must be filed before that due date.

Question 34

Rules for calculating timeliness of responses

Answer 34

(1) all dates are calculated from the mailing date from the PTO which is stamped on the action.
(2) all responses to OAs must be filed within 6 months from the PTO mailing date. The 6 month period can, and usually is, shorted by the Commissioner.
Statutory due dates can be extended only if they are shortened from the 6-month period.
Non-statutory due dates can be extended unless specifically forbidden to be.

Question 35

Petitions to extend timeline for cause

Answer 35

Cannot be obtained retroactively. Cannot be filed if an automatic extension is available.

Question 36

Two Month Rule

Answer 36

If a response to a Final Rejection is filed within 2 months from the smiling date AND the office does not mail an Advisory Action until the end of the 3 month period set for response the date before which action must be taken to avoid abandonment is automatically extended until the date the office mails the advisory action or the six month period expires, which ever happens first.

Question 37

Extension for Missing Parts

Answer 37

If no correspondence address missing, two months from filing date.
If address, two months from date the Notice of Missing Parts is mailed.
Both have a five month automatic extension that can be used on top of the 2 months.

Question 38

Deadline for Filing an Appeal Brief

Answer 38

Two months after a Notice of Appeal is RECEIVED by the PTO.

Question 39

Meaning of a month

Answer 39

One month: not less than 30 days
Two months: not less than 60 days
Three months or more, always calendar months.

Question 40

Abandonment and Revival

Answer 40

Petition to revive an unintentionally abandoned app must be accompanied by a response to any action which was outstanding at the time of abandonment or a continuation (and a fee).

Question 41

Interviews

Answer 41

Examiner does not record in writing the substance of a communication, the applicant has the obligation to do so.
No interviews before filing.
Usually granted if requested before OA.
Granted as a matter of right after first OA.
Discretionary after Final rejection.
Not normally granted after Appeal Brief has been filed.

Question 42

Manner of Making Amendments in Pending Apps

Answer 42

"Cancelled"
"Previously Presented"
"Withdrawn"
"Currently Amended"
"Original"
"Not Entered"
"New"
Strike through or double bracket deleted.
Underline new.

Question 43

Amendments after notice of allowance.

Answer 43

Not a matter of right.
Must state:
Why the amendment is needed, why no new search or consideration is required, why any amendment or new claims are patentable, and why the amendments were not earlier presented.

Question 44

Asserting Exception under AIA 102(b)

Answer 44

Use a 37 CFR 1.130(a) affidavit or declaration to disqualify a disclosure as prior art because it was made by the inventor, or by one who obtained the subject matter disclosed directly or indirectly from the inventor.
Use a 37 CFR 1.130(b) affidavit or decoration to disqualify a prior public disclosure by an intervening third party if:
(1) the subject matter had been previously disclosed by the inventor or
(2) the subject matter had been disclosed by the inventor before the effective filing date of a patent or app.
Unavailable if the disclosure was more than one year before the effective filing date of claimed invention.

Question 45

1.130 affidavit/declaration requirements

Answer 45

Does not need to show the disclosure was enabling. Must show (1) disclosure in question was made by inventor, directly or indirectly, or (2) subject matter disclosed had, before such disclosure was made or before it was effectively filed, been disclosed by inventor.

Question 46

Swearing back under 1.131

Answer 46

OLD 102(a) and/or (e) rejection can be removed by swearing back, establishing an earlier invention based upon (1) actual reduction to practice, or(2) conception and diligence from the critical date to the actual or constructive reduction to practice.

Question 47

1.132 Affidavit

Answer 47

Used to submit facts during prosecution, such as to rebut a prima facie showing of obviousness, i.e., secondary considerations of non obviousness.