700 Content Flashcards
Rejection of Claims
Must respond to each rejection
Rejection if written refusal to grant a claim
Most Based on
35 USC 101 - Subject Matter and/or lack of utility
35 USC 102 - Anticipation
35 USC 103 - Obviousness
35 USC 112 (a) - written description, enablement, best mode
35 USC 112 (b) - pointing out and distinctly claim CI
Official Actions for Examiners
OAR Rule
- Object to a claim
- Allow a claim
- reject a claim and explain why
Rules for Prior Art Rejection
Based on 35 USC 102 ONLY
Pre AIA - Date of Invention
Post AIA - Effective filing date
Can be overcome by amending claims to distinguish btwn prior art and CI
Test for Prior Art
Determination of Filing/Invention Date for CI
Determination of Filing/Invention Date for alternate invention
Two dates are compared
Anticipation Rejection
CI was used widely by people
CI essentially lacks novelty
This rejection can only be overcome by Examiner Error
Pre AIA 102 Categories for Prior Art
Prior publication Prior Patent Abandonment of Application Prior Sales or Offer to sale Prior Use Prior Public Knowledge and General knowledge Prior Invnetion
NAFTA and WTO
Date of invention if a NAFTA country after Dec 8, 1993
Date of invention if WTO after Jan 1, 1996
AIA 35 USC 102
Changed from first to invent to first to file system
more simple then old 102 and applies to all aplications
AIA 102 Prior Art
Patents
Printed Publications
Public use
On Sale
Otherwise available to general public
No matter how long disclosure has been prior art it is always prior art
Includes PCT apps with earlier eff. filing dates
AIA 102 (b)(1)- Prior Art exceptions
- Disclosure was made by inventor who obtained SM disclosed from another inventor (stolen idea)
- SM disclosed had been publicly disclosed by the inventor through a third party (carmal candy machine example)
AIA 102 (b)(2) - Prior Art Exceptions
- SM disclosed was obtained directly or indirectly from inventor
- through third part the SM had been publicly disclosed by the inventor prior to filing date
- SM disclosed and claimed invention were owned by the same person or subject to an obligation of assignment to same person
AIA 102 C - Common Ownership
-SM disclosed was developed and CI was made by one or more parties in a joint research agreement prior to eff. filing date
- CI was made as a result of activities within scope of JA
Application discloses or is amended to include all names or parties
AIA 102 (d)
Defines what the filing date is of prior art (applies to us patents, us published applications, and published PCT apps that designate US)
Obviousness Rejections Under 103
-Examiner will assert that an ordinary person skilled in the art would find it obvious to modify what is taugh
rejection must be supported by clear reasoning why it would be obvious
Arguments against Obviousness
Person of ordinary skill would not consider CI obvious
Resulting combination that is obvious is not the CI
