Nov 2014 Notes

Question 1

When to use petition v appeal with new matter rejection

Answer 1

“Where the new matter is confined to amendments to the specification, review of the examiner’s requirement for cancellation is by way of petition. But where the alleged new matter is introduced into or affects the claims, thus necessitating their rejection on this ground, the question becomes an appealable one.”

Question 2

Small Entity Status Assertion

Answer 2

The refiling of an application under § 1.53 as a continuation, divisional, or continuation-in-part application, including a continued prosecution application under § 1.53(d), or the filing of a reissue application, requires a new assertion as to continued entitlement to small entity status for the continuing or reissue application.”

“Where an assignment of rights…to other parties who are small entities occurs subsequent to an assertion of small entity status, a second assertion is not required.”

Question 3

Assignee

Answer 3

the assignee may not file a broadening reissue application. MPEP § 706.03(x).

Question 4

Request for reexamination

Answer 4

A request for reexamination may not properly rely upon evidence of public use or sales.

Question 5

Reexamination proceeding

Answer 5

MPEP § 2258. MPEP § 2258, under the heading “I. Prior Patents Or Printed Publications,” states “Rejections on prior art in reexamination proceedings may only be made on the basis of prior patents or printed publications. Prior art rejections may be based upon the following portions of 35 U.S.C. 102: . . .(e).

Question 6

35 U.S.C. § 103(c)

Answer 6

The prior art exception in 35 U.S.C. § 103(c) only applies to references that are only prior art under 35 U.S.C. § 102(e), (f), or (g). In this situation, the Jones patent qualifies as prior art under § 102(a) because it was issued prior to the filing of the Clark application. See MPEP § 706.02(l)(3). Also, evidence or common ownership must be, but has not been, presented. Mere argument or a statement alleging common ownership does not suffice to establish common ownership.