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Flashcards in 2000 april Deck (29):

a multi-dependent claim added by amendment to a pending patent application should not be entered until
the proper fee has been received by the PTO.

true; 608.01n exact word
E. Handling of Multiple Dependent Claims by the Technology Center Technical Support Staff


Claim 1, (iv) passing a second gas over said base heated to said second temperature, said second gas consisting of a mixture of hydrogen, SiCl4, AlCl3, and methane, whereby said second gas decomposes over said heated base to form a second deposit layer adjacent said first layer, said second layer comprising silicon, aluminum and carbon.

Claim 4. The method of claim 1, wherein said second gas further comprises Argon.

independent claim 1 uses the close ended claim term “consists” in connection with the second gas, which precludes the addition of further components to the second gas in dependent claim.


A lesser burden of proof may be required to make out a case of prima facie obviousness for product-by-process claims than is required to make out a prima facie case of obviousness when the product is claimed in the conventional fashion.

exact word


Certificate of Correction
correction of patents



last date for filing a Brief on Appeal without an extension of time



rejection of claims



period for reply

final rejection - time for reply


Swearing Behind a Reference — Affidavit or Declaration Under 37 CFR 1.131(a)

When any claim of an application or a patent under reexamination is rejected, the inventor of the subject matter of the rejected claim, the owner of the patent under reexamination, or the party qualified under § 1.42 or § 1.46,

may submit an appropriate oath or declaration to establish invention of the subject matter of the rejected claim prior to the effective date of the reference or activity on which the rejection is based.

Under 37 CFR 1.131(a) which provides for the establishment of a date of completion of the invention in a NAFTA or WTO member country, as well as in the United States, an applicant can establish a date of completion in a NAFTA member country on or after December 8, 1993, and can establish a date of completion in a WTO member country other than a NAFTA member country on or after January 1, 1996


Affidavits or Declarations Traversing Rejections, 37 CFR 1.132



Applicant received a Final Rejection with a mail date of Tuesday, February 29, 2000. The Final Rejection set a 3 month shortened statutory period for reply. Applicant files an Amendment and a Notice of Appeal on Monday, March 27, 2000. The examiner indicates in an Advisory Action that the Amendment will be entered for appeal purposes, and how the individual rejection(s) set forth in the final Office action will be used to reject any added or amended claim(s). The mail date of the examiner’s Advisory Action is Wednesday, May 31, 2000. Which of the following dates is the last date for filing a Brief on Appeal without an extension of time?

MPEP § 710.02(e), pages 700-82 and 83, under the heading “FINAL REJECTION – TIME FOR REPLY” states, “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...”
Hence, since no extension fee was paid in the fact pattern, the time allowed applicant for reply to the action from which the appeal was taken is the mail date of the Advisory Action, i.e., May 31, 2000. 37 C.F.R. § 1.192(a) recites, in pertinent part, “Appellant must, within two months from the date of the notice of appeal under § 1.191 or within the time allowed for reply to the action from which the appeal was taken, if such time is later, file a brief in triplicate.


pre-AIA 104

In proceedings in the Patent and Trademark Office, in the courts, and before any other competent authority, an applicant for a patent, or a patentee, may not establish a date of invention by reference to knowledge or use thereof, or other activity with respect thereto, in a foreign country other than a NAFTA country or a WTO member country


different prior art types that can be overcame by 1.131



Which of the following documents, if any, must also contain a separate verification statement?
(A) Small entity statements.
(B) A petition to make an application special.
(C) A claim for foreign priority.
(D) An English translation of a non-English language document.

the certification requirement set forth in 37 C.F.R. § 10.18(b) “has permitted the PTO to eliminate the separate verification requirement previously contained in 37 C.F.R. ...1.27 [small entity statements], ...1.52 [English translations of non-English documents], ...1.55 [claim for foreign priority], [and] ...1.102 [petition to make an application special].”


You received a final Office action, dated February 1, 2000, containing an indication that claim 1 is allowable subject matter, but objecting to the specification, on the grounds that the subject matter of the electronics control unit, though adequately described in the original specification, was required to be shown in the drawings.

If subject matter capable of illustration is originally claimed and it is not shown in the drawing, the claim is not rejected but applicant is required to add it to the drawing.
See MPEP § 608.01(l). about drawings


In the course of prosecuting a patent application, you receive a final rejection wherein the examiner has set a 3 month shortened statutory period for reply. You file an initial reply with a Certificate of Mailing in accordance with 37 C.F.R. § 1.8 within 2 months of the final rejection mail date. The examiner responds with an Advisory Action having a mail date before the end of the 3 month shortened statutory period. In accordance with proper PTO practice and procedure, the fee for an extension of time for applicant to take subsequent appropriate action in the PTO is calculated from:

MPEP § 710.02(e), right column of page 700-83, recites, “[I]f applicant initially replies within 2 months from the date of mailing of a final rejection and the examiner mails an advisory action before the end of 3 months from the date of mailing of the final rejection, the shortened statutory period will expire at the end of 3 months from the date of mailing of the final rejection. In such a case, any extension fee would then be calculated from the end of the 3-month period.”


21. All of the following portions of a patent application can be used for interpreting the scope of the claims except the?
(A) description of the preferred embodiment.
(B) abstract of the disclosure.
(C) background of the invention.
(D) drawings.
(E) detailed description of the drawings.



Restriction in Applications Filed Under 35U.S.C. 111; Double Patenting



1.131 can overcome rejections under only?

pre-AIA 102(a) and 102(e) only


didn't file with oath and d, forgot to include one inventor, but file oath with both inventors, good?

yes; The original mistake in omitting one inventor from the list of inventors was automatically corrected by filing the oath executed by both
37CFR§1.48(f) Correcting or updating the name of an inventor: Any request to correct or update the name of the inventor or a joint inventor, or the order of the names of joint inventors, in a nonprovisional application must include:
(1) An application data sheet in accordance with § 1.76 that identifies each inventor by his or her legal name in the desired order; and
(2) The processing fee set forth in § 1.17(i).


how many common inventors required for a divisional to claim benefit from a parent

120 requires only one common inventor for a divisional to claim benefit from a parent


cancel claims, get a patent and then file reissue for the cancelled ones?

the deliberately cancelled claims cannot be recaptured by reissue.


Requirements To Establish Actual Reduction To Practice



enablement requirement
when must it be enabling

Specification Must Be Enabling as of the Filing Date


request abandonment but after An appropriate PTO official acknowledges receipt and accepts the express abandonment. regret and want to revive

express abandonment was the result of a deliberative, intentional course of action. so can't be revived


Claims Must Particularly Point Out and Distinctly Claim the Invention
the use of "effective amount"



Citation of References



using declassified material as evidence even though it was declassified after the filing date

The publication is prima facie evidence of prior knowledge even though it was available only for limited distribution as of its printing date.

MPEP § 707.05(f), “For the purpose of anticipation
predicated upon prior knowledge under 35 U.S.C. 102(a), the above noted declassified material
may be taken as prima facie evidence of such prior knowledge as of its printing date even though
such material was classified at that time.”

knowledge by others


if no hit in the chapter u r searching, do?

search in index


petition to make special; order of examination