Patbar Notes Set III Aug 2014

Question 1

Exam Question-Track 1 Prioritized Examination over MPEP Accelerated Examination (MPEP 708.02(a)

Answer 1

Exam Question-Track 1 Prioritized Examination over MPEP Accelerated Examination (MPEP 708.02(a), Part III

This exam question is tricky because it makes you choose between the new prioritized Track 1 or Accelerated Examination in 700. However, the fact pattern states that the practitioner’s secretary just quit the office and now, any response to an Office Action (OA) will take him 6 weeks. This is key because under Accelerated Examination the response to an OA is one month, no extensions, whereas Prioritized Track 1 allows for normal 3 months responses. That’s why you choose Track 1 prioritized over MPEP Accelerated Examination (MPEP 708.02(a), part III).

Another: Got a question on the new expedited Track I; make sure to know it must not exceed 4 independent claims and 30 total claims.

Question 2

Situation with 60 yr. old inventor on death bed. Which avenue to pursue for disposition in 12 months?

Answer 2

Situation with 60 yr. old inventor on death bed. Which avenue to pursue for disposition in 12 months?

Options were Prioritized Examination with 10000 granted prioritized examination requests, prioritized examination with 500 granted prioritized examination requests, petition for accelerated examination, petition to make special based on age, and petition to make special based on health. I chose PE with 500 granted prioritized examination requests.

Question 3

Final Rejection-Time for Reply

Answer 3

Final Rejection-Time for Reply
If an applicant initially replies within 2 months from the date of mailing of any final rejection setting a 3-month shortened statutory period for reply and the Office does not mail an advisory action until after the end of the 3-month shortened statutory period, the period for reply for purposes of determining the amount of any extension fee will be the date on which the Office mails the advisory action advising applicant of the status of the application, but in no event can the period extend beyond 6 months from the date of the final rejection.

Question 4

When 1.131 swearing back inappropriate:

Answer 4

(1) Where the reference publication date is more than 1 year prior to applicant’s or patent owner’s effective filing date. Such a reference is a “statutory bar” under 35 U.S.C. 102(b). A reference that only qualifies as prior art under 35 U.S.C. 102(a) or (e) is not a “statutory bar.”
(2) Where the reference U.S. patent or U.S. patent application publication claims the same patentable invention (i.e, the claims in the U.S. patent or U.S. patent application publication would, if prior art, have anticipated or rendered obvious the subject matter of the rejected claim in the application).
- Where the applicant had admitted the reference as prior art.
- Cannot be used to overcome double patenting

Question 5

1.131 Swearing back date of reference

Answer 5

The date to be overcome under 37 CFR 1.131 is the effective U.S. filing date, not the foreign priority date. When a U.S. patent or U.S. patent application publication reference is entitled to claim the benefit of an earlier filed application, its effective filing date is determined under 35 U.S.C. 102(e).
A printed publication, including a published foreign patent application, is effective as of its publication date, not its date of receipt by the publisher.

Question 6

when to swear behind 1.131

Answer 6

The first is where a reference applies under 102(a) and the prior art is less than one year before the applicant’s effective U.S. filing date. If the reference is a U.S. patent or patent application publication, the reference may not be claiming the same patentable invention. (and)

The second is where the reference applies under 102(e) and the prior art date is prior to the applicant’s effective U.S. filing date, and the reference is not claiming the same patentable invention. Under 102(e), the applicant’s foreign filing date is irrelevant.

Question 7

Prior art

Answer 7

U.S. patent application publications are prior art under 35 U.S.C. 102(a) and 102(b) as of the publication date. Under amended 35 U.S.C. 102(e)(1), a U.S. patent application publication under 35 U.S.C. 122(b) is considered to be prior art as of the earliest effective U.S. filing date of the published application.

Question 8

Third party submissions after patent application publication:

Answer 8

(d) The submission SHALL NOT INCLUDE any explanations, and is limited to 10 total patents or publications.
(e) The submission must be filed within 2 months from the publication date or prior to a notice of allowance, whichever is earliest. A submission filed at any other time must be accompanied by a processing fee and include items that could not have been submitted earlier.

Question 9

Third party submissions after patent application publication:

Answer 9

Any submission not filed within the time period specified in 37 CFR 1.99(e) is permitted only when the patents or publications could not have been submitted to the Office earlier.
Submissions after the time period specified in 37 CFR 1.99(e) must be accompanied by
(1) a satisfactory explanation why the patents or publications being submitted in the submission could not have been submitted to the Office earlier, and
(2) the processing fee as set forth in 37 CFR 1.17(i).

Only patents and publications are allowed, no other material under 37 CFR 1.99

Question 10

Product-by-process claims

Answer 10

It has been reported that an exam question involves a product-by-process question. One of the answers states that a case for “anticipation” is easier to show when product-by-process claims are used as compared to traditional claims. The MPEP clearly has a quotation from a case that says “obviousness” is easier to show when using product-by-process claims. Additionally, the MPEP makes reference to a case where both anticipation and obviousness are easier to prove in product-by-process claims because only the product (and not the process) is examined for anticipation/obviousness.

Question 11

Product-by-process claims

Answer 11

The reporter picked the answer that states that a case for “anticipation” is easier to show. The other viable answer said product-by-process claims can ONLY be used when traditional claiming techniques are inappropriate (there is no support for this statement in the MPEP).

Another test taker agreed that the MPEP states that anticipation and obviousness are both easier to show when you use a product-by-process claim. The other choices were: (1) product-by-process can only be used in chemical cases and (2) you should use product-by-process only when the process is novel. Neither of these answers are supported in the MPEP. See MPEP 2113 and 2173.05(p).

Question 12

Canceled matter as prior art

Answer 12

Canceled matter in the application file of a U.S. patent cannot be relied upon in a rejection under 35 U.S.C. 102(e). The canceled matter only becomes available as prior art as of the date the application issues into a patent since this is the date the application file history becomes available to the public.

Question 13

Species will anticipate a claim to a genus

Answer 13

It has been reported that an exam question involves a claim reciting a number of compositions. If one of the compositions is disclosed by the prior art, the prior art anticipates the claim. The applicant can amend the claim by removing the species, which would avoid the rejection.

Question 14

102(b) Prior Art

Answer 14

One year bar measured from U.S. Filing date
Prior art does not need to be identical, obvious variant will also be a 102b bar.
Applicant’s own work can be a bar, if the app is filed one year AFTER the publication.
Two of these - the public use' and the on sale’ objections in U.S. only!!!
102(b) bars public use or sale, not public knowledge.
-Even If the Invention Is Hidden, Inventor Who Puts Machine or Article Embodying the Invention in Public View Is Barred from Obtaining a Patent as the Invention Is in Public Use.
Offer for sale or secret sale can bar under 102b.

Question 15

WHEN THERE IS A COMMON ASSIGNEE OR INVENTOR, A PROVISIONAL 35 U.S.C. 102(e) REJECTION OVER AN EARLIER FILED UNPUBLISHED APPLICATION CAN BE MADE

Answer 15

Based on the assumption that an application will ripen into a U.S. patent (or into an application publication), it is permissible to provisionally reject a later application over an earlier filed, and unpublished, application under 35 U.S.C. 102(e) when there is a common assignee or inventor.
It has been reported that the above point has been tested on the exam.
For applications filed on or after November 29, 1999 or pending on or after December 10, 2004, a provisional rejection under 35 U.S.C. 103(a) using prior art under 35 U.S.C. 102(e) is not proper if the application contains evidence that the application and the prior art reference were owned by the same person, or subject to an obligation of assignment to the same person, at the time the invention was made.

Question 16

If the international application has an international filing date prior to November 29, 2000, apply the reference under the provisions of 35 U.S.C. 102(e) prior to the AIPA amendments:

Answer 16

For U.S. patents, apply the reference under 35 U.S.C. 102(e) as of the earlier of the date of completion of the requirements of 35 U.S.C. 371(c)(1), (2) and (4) or the filing date of the later-filed U.S. application that claimed the benefit of the international application.
For U.S. application publications and WIPO publications directly resulting from international applications, never apply these references under 35 U.S.C. 102(e). These references may be applied as of their publication dates under 35 U.S.C. 102(a) or (b).
For U.S. application publications of applications that claim the benefit of an international application filed prior to November 29, 2000, apply the reference under 35 U.S.C. 102(e) as of the actual filing date of the later-filed U.S. application that claimed the benefit of the international application.

Question 17

Means plus function

Answer 17

The question introduces a “step for crossing the road” as a limitation in a claim. The step recites a number of acts numbered (1) through (5). A prior art reference published two years before the application was filed describes the other limitations in the claim and acts (1)-(4), but not (5). The examiner makes a rejection under 102(b). The question asks what would be a complete reply to overcome the rejection. The correct answer is that a “step” plus function in a claim is construed to cover the corresponding acts in the specification or their equivalents. In order to acticipate, a prior art reference must disclose each and every act, or its equivalent. If the reference can be shown not to disclose one of the acts, or its equivalents, then it does not anticipate the claim. The applicant would argue that neither step (5) or the equivalent of (5) is disclosed in the reference. See MPEP 2181, Part II.

Question 18

Multiplicity

Answer 18

A rejection under 112, second paragraph, may also involve 37 CFR 1.75(b), which requires that the claims must not be “unduly multiplied.” If the applicant presents an unreasonable number of claims a rejection under 112, second paragraph, based on undue multiplicity may be appropriate.

Question 19

Ambiguous claim

Answer 19

Another problem with a claim is where the claim attempts to include two statutory classes of inventions in the same claim, such as an apparatus and the method of using the apparatus. Such a claim is indefinite since it is unclear which invention is being claimed.

Question 20

112 Sixth Paragraph

Answer 20

The claim limitation must use the phrase “means for” or “step for”.

The phrase “means for” or “step for” must be modified by functional language. (and)

The phrase “means for” or “step for” must not be modified by sufficient structure, material or acts for achieving the specified function.

An element in a claim may be expressed as a means or step for performing a specified function without the recital of structure, material, or acts to support the function. (and)

The claim shall be construed to cover the corresponding structure, material or acts described in the specification and equivalents thereof.

Question 21

Markush Claims 2173.05(h)

Answer 21

Acceptable Markush claim: R is selected from group consisting A, B, C, and D.

Alternative expressions using “or” are acceptable, such as “wherein R is A, B, C, or D.”

“containing A, B, and optionally C” is ok.

But cannot use “comprising” and cannot use, R is selected from a group consisting of A, B, C, OR D.

Question 22

Markush

Answer 22

“Or” terminology is acceptable as in the expression “wherein R is A, B or C” and in other phrases such as “made entirely or in part of”, and “iron, steel or any other magnetic material.”

The term “optionally” may be considered acceptable so long as there is no ambiguity as to which alternatives are covered in the claim. (and)

Negative limitations may be used in a claim, such as “said element being free from A, B and C.” Another acceptable negative limitation was, “incapable of forming a dye with said oxidized developing agent” because the scope of the claim was clear.

Question 23

It has been reported that an exam question asks how the examiner makes a prima facie case of equivalence in a means-plus-function situation posed in the form of the question “which of the following are in accord with MPEP 2183.”

Answer 23

Factors that will support a conclusion that the prior art element is an equivalent are:
(1) The prior art element performs the identical function specified in the claim in substantially the same way, and produces substantially the same results as the corresponding element disclosed in the specification.
(2) A person of ordinary skill in the art would have recognized the interchangeability of the element shown in the prior art for the corresponding element disclosed in the specification.
(3) There are insubstantial differences between the prior art element and the corresponding element disclosed in the specification.
A showing of at least one of the above-noted factors by the examiner should be sufficient to support a conclusion that the prior art element is an equivalent.

First, unless an element performs the identical function specified in the claim, it cannot be an equivalent for the purposes of 35 U.S.C. 112, sixth paragraph

Question 24

Overcoming equivalence rejection MPEP 2183

Answer 24

A question states that the applicant is claiming a “means for pulling the door open.” The specification describes a handle and a knob as being used for pulling the door open. A prior art patent discloses the door opened by pulling on an attached bar. The examiner used the reference to make a 102 rejection and explained why the attached bar is the equivalent of the structure described in applicant’s specification. The question asks what would be the most correct reply to overcome the rejection. A claim limitation expressed in mean plus function language shall be construed to cover the corresponding structure in the specification or its equivalents, and for this reason the examiner has made a prima facie case of equivalence. The correct answer is that the applicant should amend the claim substituting “means for pulling the door open” with the structure of the handle and knob. Note that for equivalence to apply, the prior art must have an identical function.

Question 25

November 29, 1999

Answer 25

Only patents which issued from original applications filed in the United States on or after November 29, 1999, are eligible for inter partes reexamination. (There may be a variation of this question that involves a hair gel rather than football pads.)

Question 26

Reexamination MPEP 2200

Answer 26

We are now going to begin our review of ex parte reexamination. The basic characteristics of ex parte reexamination are as follows:

Anyone can request a reexamination at anytime during the enforceable life of the patent.

Prior art considered during reexamination is limited to patents and printed publications applied under 35 USC 102 or 103.

A substantial new question of patentability must be present for reexamination to be ordered.

Actual examination is ex parte in nature.

The requester may seek review of a denial of a request for reexamination by filing a petition within one month under 37 CFR 1.181.

A reexamination will normally be conducted to its conclusion and issuance of a reexamination certificate.

Question 27

Reexamination MPEP 2249

Answer 27

The order for reexamination will set a period of not less than two months that the patent owner may file a statement on the new question of patentability, including proposed amendments.

If the patent owner reply, the third party requester may file a reply within 2 months. No extension is allowed. If the patent owner does not reply to the reexamination request, no statements will be allowed.

The time for taking action by the patent owner will be extended only for sufficient cause and for a reasonable time specified. Any request must be filed on or before the deadline.

The reply is not limited to the issues raised in the statement and may include additional prior art patents and printed publications.

Question 28

The question states that the patentee has filed a reexamination of patent X.

Answer 28

Patent X contains independent claims 1-4 each directed to an apparatus. They were the only claims ever presented for examination. In the first Office action claims 1-4 are rejected as being obvious over patent Z. The question asks which of the following claims would be subject to rejection for improperly enlarging the scope of the original claims. It is stated that any dependent claim is properly dependent. Four of the claims are proper dependent claims, and one is a process claim (“A method of separating material including ….). To determine the correct answer, the MPEP directs the reader to a discussion of this topic in the chapter on reissue applications, MPEP 1412.03. In Part III, this section states that the addition of a process (i.e, method) claim as a new category of invention where there was no method claims in the original patent is generally considered a broadening of the invention. The other answers introduced proper dependent claims which by definition could not be broader than the claims in the patent.

Question 29

Reexamination proceeding

Answer 29

Patent owner cannot submit an application data sheet (ADS) in a reexamination proceeding since a reexamination proceeding is not an “application”. An ADS is an improper paper in a reexamination proceeding.

It has been reported that an exam question involves a reexamination that was terminated. If a delay in filing a reply results in the termination of the reexamination, the reexamination may be revived if the delay was unavoidable or unintentional. See 37 CFR 1.137(a)-(b).

The filing of a first response to a final rejection having a shortened statutory period will automatically extend the response period for one month.

Question 30

It has been reported that a prior exam question involves whether a Federal Court decision was binding on the Office.

Answer 30

On the other hand, a final Federal Court holding of invalidity or unenforceability (after all appeals), is binding on the Office. Upon the issuance of a final holding of invalidity or unenforceability, the claims being examined which are held invalid or unenforceable will be withdrawn from consideration in the reexamination.

Question 31

Maintenance Fees

Answer 31

(c) Identification of the patents for which maintenance fees are being paid must include the patent number, and the application number on which the maintenance fee is being paid. If the payment includes identification of only the patent number (i.e., does not identify the application number), the Office may apply the payment to the patent identified by patent number in the payment or may return the payment.
(d) Payment of maintenance fees and any surcharges should identify the fee being paid for each patent as to whether it is the 3 1/2-, 7 1/2-, or 11 1/2-year fee, whether small entity status is being changed or claimed, the amount of the maintenance fee and any surcharge being paid, and any assigned customer number.

Question 32

Dependent claims

Answer 32

MPEP § 608.01(n), 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 should be objected to under 37 CFR 1.75(c) by using a form paragraph.” The claim should not be rejected. 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.”

Question 33

Dependent Claims

Answer 33

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.”

Question 34

Inventor name

Answer 34

If the typographical or transliteration error is not detected until after the payment of the issue fee, because amendments are not permitted after the payment of the issue fee, either (A) the application must be withdrawn from issue under 37 CFR 1.313(c)(2) and a request to correct the spelling of the inventor’s name submitted with a request for continued examination (RCE) under 37 CFR 1.114, or (B) a certificate of correction must be filed after the patent issues requesting correction of the spelling of the inventor’s name.]