Patbar Notes Set II Aug 2014 Flashcards
Claims
Claims should preferably be arranged in order of scope so that the first claim presented is the least restrictive. All dependent claims should be grouped together with the claim or claims to which they refer to the extent practicable. Where separate species are claimed, the claims of like species should be grouped together where possible. Similarly, product and process claims should be separately grouped.
A claim which depends from a dependent claim should not be separated therefrom by any claim which does not also depend from said “dependent claim.”
35 U.S.C. 112, fourth paragraph
Example
Claim 1 A house having a roof. (A broad claim)
Claim 2 The house in claim 1 where the roof comprises a wooden frame structure covered by asphalt shingles. (A narrow claim.)
If you infringe 2, you would also have to infringe 1. If you infringe 1, you may not infringe 2 if the house combination has a different kind of roof (for example, a steel frame structure with wooden shingles). As you can see, if you only have a very narrow claim in a patent, it may not be of much value.
112 REQ
(1) Material that is necessary to provide a written description of the claimed invention, the manner of making and using the invention, or the best mode of practicing the invention (112, first paragraph)49.
Describe the claimed invention in the claims (112, 2nd paragraph)50.
Describe the structure, material or acts that correspond to a claimed means or step for performing a specified function (112, 6th paragraph)51.
Drawings
As we have discussed, all drawings are reviewed by the OPAP for compliance with drawing requirements. If the drawings are not acceptable for publication, the OPAP will send a notice setting a 2 month time period to file acceptable drawings. Under the provisions of 37 CFR 1.85, utility and plant applications will not be released for examination until all objections to drawings have been corrected. If corrections are necessary, new drawings must be submitted.
Under the provisions of 37 CFR 1.83, drawings must show every feature of the claimed invention. In some cases conventional features may be represented by a symbol. Tables are not permitted in drawings. When an invention is an improvement of an old machine, a drawing should show the improved portion and in another drawing as much of the old structure to show its connection to the invention.
Tables and CDs
The next topic involves the filing of an appendix on compact disc. Under the provisions of 37 CFR 1.52, certain documents may be filed on compact disc including a computer program listing, a sequence listing, and a table that is more than 50 pages, or if the total number of pages of all tables exceeds 100 pages. The specification must include an incorporation-by -reference of the material on compact disc. A compact disc must be either CD-ROM or CD-R, and it must be filed in duplicate.
IDS requirements 609.04(a)
It has been reported that an exam question involves a 37 CFR 1.97(e) statement where the wording doesn’t explicitly mention that the information from the foreign patent office was the first such citation from a foreign patent office in a counterpart application. If this is true, then the statement would not be a proper statement under 37 CFR 1.97(e).
Dependent Claims
under the heading “II. Treatment Of Improper Dependent Claims,” states “Claims which are in improper dependent form for failing to further limit the subject matter of a previous claim, or for not including every limitation of the claim from which it depends, should be rejected under 35 U.S.C. 112, fourth paragraph by using form paragraphs 7.36 and. 7.36.01.” The claim should not be objected. Further as for (C), MPEP § 608.01(n), under heading “III. Infringement Test,” states “[a] dependent claim does not lack compliance with 35 U.S.C. 112, fourth paragraph, simply because there is a question as to (1) the significance of the further limitation added by the dependent claim, or (2) whether the further limitation in fact changes the scope of the dependent claim from that of the claim from which it depends. The test for a proper dependent claim under the fourth paragraph of 35 U.S.C. 112 is whether the dependent claim includes every limitation of the claim from which it depends. The test is not one of whether the claims differ in scope.”
IDS listing reqs 37 CFR 1.98
(1) Each U.S. patent listed in an information disclosure statement must be identified by inventor, patent number, and issue date.
(2) Each U.S. patent application publication listed in an information disclosure statement shall be identified by applicant, patent application publication number, and publication date.
(3) Each U.S. application listed in an information disclosure statement must be identified by the inventor, application number, and filing date.
Effective Filing Date
(3) If the application claims foreign priority, the effective filing date is the filing date of the U.S. application, unless situation (A) or (B) as set forth above applies. The filing date of the foreign priority document is not the effective filing date, although the filing date of the foreign priority document may be used to overcome certain references.
(4) If the application properly claims benefit to a provisional application, the effective filing date is the filing date of the provisional application for any claims which are fully supported under the first paragraph of 35 U.S.C. 112 by the provisional application.
3 conditions for 102(e) to apply:
(C) If the potential reference resulted from, or claimed the benefit of, an international application, the following must be determined:
(1) If the international application meets the following three conditions:
(a) an international filing date on or after November 29, 2000;
(b) designated the United States; and
(c) published in English,
then the international filing date is a U.S. filing date for prior art purposes under 35 U.S.C. 102(e).
QUESTION 102 (e)
The question states that J.J. Smithy filed a patent application on November 1, 2000, without claiming the benefit of any earlier application. Claims in the application were rejected under 102 based on the following references. Which reference was properly applied under 102(e). The references are:
(A) A WIPO publication of an international application under PCT Article 21(2), which has an international filing date of October 3, 2000, was published in English and designated the U.S.
(B) A U.S. patent by J.J. Smithy that has a filing date of September 5, 2000.
(C) A U.S. application publication by inventor Jones that was filed on August 8, 2000.
(D) A journal article by Marks published October 11, 2000.
(E) All of the above.
The answer (C) is correct because it is an application filed by another prior to the filing date of the application. The reference in answer (A) is not a proper reference since it has an international filing date before November 29, 2000. Answer (B) is incorrect because it is not the invention of another. Answer (D) is incorrect because 102(e) refers to patents and patent applications, not journal articles.
102 (e) QUESTION 2
The question states: Applicant files a patent application in Japan on January 5, 2000. Applicant files a PCT international application designating the United States on January 5, 2001, based on the Japanese application. The international application is published in English on July 5, 2001. The international application enters the national stage in the United States on September 5, 2001. The USPTO publishes the application on June 6, 2002. The application issues as a United States patent on December 3, 2002. What is its earliest possible 35 USC 102(e) prior art date for the application published by the United States, in view of the amendment to Title 35 by the American Inventors Protection Act of 1999 and the Intellectual Property and High Technology Technical Amendments Act of 2002?
(A) January 5, 2000.
(B) January 5, 2001.
(C) July 5, 2001.
(D) June 6, 2002.
(E) December 3, 2002.
Answer (B) is the most correct answer. 35 U.S.C. § 102(e)(1) provides that a US published application of a national stage of an international application filed on or after November 29, 2000 has a prior art effect as of its international filing date, if the international application designated the United States, and was published in English. Because in the above fact pattern, the international application designated the United States and was published in English, and was filed on or after November 29, 2000, the USPTO published application is entitled to its international filing date of January 5, 2001 for prior art purposes under 35 U.S.C. § 102(e)(1).
Provisional Rejections of 102 (e)
706.02(f)(1)
MPEP Section 2136
If at least one common inventor exists between the applications or the applications are commonly assigned and the effective filing dates are different, then a provisional rejection of the later filed application should be made. The provisional rejection is appropriate in circumstances where if the earlier filed application is published or becomes a patent it would constitute actual prior art under 35 U.S.C. 102.
A provisional rejection under 35 U.S.C. 102(e) can be overcome in the same manner that a 35 U.S.C. 102(e) rejection can be overcome.
If there is no common assignee or common inventor and the application was not published, the confidential status of applications must be maintained and no rejection can be made relying on the earlier filed, unpublished application.
Rejections Under 103(a) Using Prior Art Under Only 102(e), (f) or (g) (706.02(l))
35 U.S.C. 103
(c)(1) Prior art developed by another person that qualifies as prior art under 102(e), (f) or (g), cannot be used to make an obviousness rejection where the subject matter and the claimed invention were, at the time the claimed invention was made, owned by the same person or subject to an assignment to the same person, which includes the parties to a joint research agreement.
It is important to recognize that 35 U.S.C. 103(c) applies only to consideration of prior art for purposes of obviousness under 35 U.S.C. 103; it is NOT applicable to anticipatory prior art cited under 35 U.S.C. 102.
Prior to November 29, 1999, 35 U.S.C. 103(c) provided that subject matter developed by another which qualifies as prior art only under subsections 35 U.S.C. 102(f) or 35 U.S.C. 102(g) is not to be considered when determining whether an invention sought to be patented is obvious under 35 U.S.C. 103, provided the subject matter and the claimed invention were commonly owned at the time the invention was made.
Provisional Rejection (Obviousness) Under 35 U.S.C. 103 Using Provisional Prior Art Under 35 U.S.C. 102(e) (706.02(k))
Where two applications of different inventive entities are copending, not published under 35 U.S.C. 122(b), and the filing dates differ, a provisional rejection under 35 U.S.C. 103 based on provisional prior art under 35 U.S.C. 102(e) should be made in the later filed application unless the application has been excluded under 35 U.S.C. 103(c), including the new provisions added by the CREATE Act. Otherwise the confidential status of unpublished application, or any part thereof, under 35 U.S.C. 122 must be maintained. Such a rejection alerts the applicant that he or she can expect an actual rejection on the same ground if one of the applications issues and also lets applicant know that action must be taken to avoid the rejection.
