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Flashcards in Amendment and Prosecution Review Deck (14)

Background of Invention Section of Application

1. Field of Use statement

2. Background of prior art

**Typically short and small.
**You don't want to make what you're doing trivial


Field of Use Statement

Don't say too much.

General description of the invention.


Background of Prior Art

NEVER USE "Prior Art"

You may be able to get around things by avoiding admissions.

Focus on what prior art teaches.


The Summary of the Invention Section of Application

1. What is it that the invention has to have in a broad generic claim;

2. Describe the difference embodiments

**Avoid "Invention is..."
**Describe in a nutshell


Goal of the Summary

Plain English description of the invention.


Description of the Drawing Section of Application

Listing the drawings.

Caption of the drawing.

**More figures than not


Detailed Description Section of Application

Hip bone is connected to the thigh bone.

Not limited to what is in the drawing.


What do you do after Restriction Notice?

1. Elect with traverse

2. Elect without traverse

**Challenge it immediately


With Traverse

Electing but challenging


Without Traverse

Giving up


What happens if the Examiner puts a restriction a second time?

You can petition the commissioner. **Rare

Examiner's discretion with restrictions.


What can happen within 1 months of restriction requirement?

1. Examiner should call.

2. You can acquiesce

3. Restriction does not have to be mailed.


Withdraw a Claim

Not totally removing it.

Tabling it.

If you withdraw them they are not added later.


Four Items of an Amendment

1. Amendment to Specs
2. Amendments to the claims
3. Amendments to the drawings
4. Remarks/Arguments