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Flashcards in sections Deck (102):
1

Pre-AIA
35 USC 102

2100 law
700 examination (apply)

2

patentable SM

2100 patentability

3

Guidelines for the Examination of Patent Applications Under the 35 U.S.C. 112(a) or Pre-AIA 35 U.S.C. 112, para. 1

2100
“Written Description” Requirement
The Enablement Requirement
The Best Mode Requirement

4

Claim interpretation

2100
broadest reasonable consistent with the spec
plain meaning

5

Proper multi-dependent claim
Product-by-Process Claims
Apparatus and Article Claims —
Functional Language

2100

6

prior art under different sections of law vs. all types of stuff that can be prior art
abandoned app
canceled matter
admissions (jepson claim)
Genus-species situations

2100

900 all types of stuff that can be prior art

7

35 USC 103

2100
obviousness

2100 law
700 examination (apply)

8

AIA 102

2100 law
700 examination (apply)

9

Use of Affidavits or Declarations Under 37 CFR 1.130 To Overcome Prior Art Rejections under AIA 102

2100

10

Guidelines for the Examination of Patent Applications Under the 35 U.S.C. 112(b) or Pre-AIA 35 U.S.C. 112, para. 2

2100
Subject Matter Which the Inventor or
a Joint Inventor Regards as The
Invention

Claims Must Particularly Point Out and Distinctly Claim the Invention (interpretation, )

11

Identifying and Interpreting a 35 U.S.C. 112(f) or Pre-AIA 35 U.S.C. 112, Sixth Paragraph Limitation

2100
means plus function language

Will be invoked if 3-prong test:
o Claim limitations must use the phrase “means for” or “step for”
o The “means for” or “step for” must be modified by functional language; and
o “means for” or “step for” must not be modified by structure, material or acts for achieving the function

the broadest reasonable interpretation of a claim limitation that invokes 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, is the structure, material or act described in the specification as performing the entire claimed function and equivalents to the disclosed structure, material or act.

12

design patent

1500

13

plant patent

1600

14

biotech

2400

15

rejection of claims

700 examination

16

Swearing Behind a Reference — Affidavit or Declaration Under 37 CFR 1.131(a); 1.132

700

17

parts, form and content of applications

600

18

Pre/post-AIA Oaths and declarations

600

19

Alteration of a patent app before filing

600

20

• Inventorship

600

21

• Notice of omitted items

600

22

Multiple dependent claims requirements

608.01n

23

• Incorporation by reference

600

24

• App Data Sheet (ADS)

600

25

• Information disclosure statement (IDS)

2000

26

duty of disclosure

2000
related to IDS

27

Types of Applications

200

28

Status of Applications

200

29

protest

1900

30

statutory invention registration (SIR) (pre-AIA) and the pre-grant publication process and document
o Prior art under 102(e) of the filing date but doesn’t confer right to exclude

1100

31

appeal

1200

32

allowance and issue

1300

33

Patent term and term extension/ adjustment

2700

34

Secrecy, Access (Information on the Status of an Application), National Security & Foreign Filing (license)

100

35

Ownership and Assignment (assignability)

300

36

Representative of Inventor or Owner

400

37

Receipt and Handling of Mail and Papers

500

38

Restriction and Double Patenting

800

39

Classification and Search

900

40

Matters Decided by PTO Officials – Petitions

1000

41

PCT

1800

42

interferences

2300

43

Maintenance Fees

2500

44

Reexam (Inter Parte)

2600

45

Citation of Prior Art and Ex Parte Reexam

2200

46

Prior Art? Classification, and Search

900
canceled matter in patent files, abandoned apps, peding apps, foreign patent non patent publication

47

Amendment, applicant's action

714

48

“The filing of an RCE will be treated as a withdrawal of the appeal by the applicant, regardless of whether the RCE includes the appropriate fee or a submission.”

1215

49

correcting inventor's name/ inventorship

602

50

Accessibility of Assignment Records

301

51

Application Filed Without All Pages of Specification

600

52

disclosure

608 including claims drawings and specification

53

continuation-in-part application vs. continued prosecution
application (CPA)

200 types of application

54

Indefinite Limitations Must Be Considered

2143

55

Period for Reply

710

56

A submission of patents by a member of the public

37 C.F.R. § 1.99(e)

57

whether former employee can acquire ownership interest in patent

309 ownership and assignment

58

IMPROPER CPA TREATED AS RCE

706

59

election made through phone

800 restriction

60

Right of Priority of Foreign Application

213

61

Examiner’s Amendments and Changes

1300 Allowance and Issue

62

Compact Disc Submissions

600

63

PCT flow chart for timeline

1842

64

PPH

708 petition to make special

65

petition to make special

708

66

period for reply

710

67

patent prosecution highway program

708.02c

68

abandonment

711 3 kinds

69

PETITIONSTOREVIVEANABANDONED APPLICATION

711

70

in ex parte reexam, The examiner may also reject the claims based upon other prior art such as public use so long as the request was granted based upon a prior patent or publication.

false; 2200

Information that may be submitted under 35 U.S.C. 301 is limited to prior art consisting of patents or printed publications or written statements of the patent owner filed in a proceeding before a federal court or the Office by the patent owner in which the patent owner took a position on the scope of any claim of the patent.

71

If the Request for Reexamination had been denied because the Patent Office did not agree that a substantial new question of patentability was raised, then Megacorp would have been refunded a major portion of the fee.

2200; true

72

If the Request for Reexamination had been denied because the Patent Office did not agree that a substantial new question of patentability was raised, then Megacorp would have been refunded a major portion of the fee.

2200; true

73

Ex parte reexaminations of patents in litigation are automatically suspended until the litigation is concluded.

false, 2200

74

When is the last day that a third-party preissuance submission could have been filed?

1100

1134.01 Third Party Submissions

the day BEFORE the critical date, e.g. Notice of Allowance

Any third-party submission under this section must be filed PRIOR TO the earlier of:(1) The date a notice of allowance under § 1.311 is given or mailed in the application; or(2) The later of:(i) Six months after the date on which the application is first published by the Office under 35 U.S.C. 122(b) and § 1.211, or(ii) The date the first rejection under § 1.104 of any claim by the examiner is given or mailed during the examination of the application.

75

After a patent is issued to Wilbur's niece Shirley she discovers that the Patent Office omitted two lines of claim 1 in printing the patent. You should:

1400

File a request for a Certificate of Correction.

76

all the required showing to rebut obviousness using 1.132

unexpected results, commercial success...
716-Affidavits or Declarations Traversing Rejections, 37 CFR 1.132

77

transitional phrases, preamble

2111

78

Inherency; Burden of Proof

2112-

79

rejection against different kinds of claims

2100

80

Drawings as Prior Art

2125

81

Domestic and Foreign Patent Applications as Prior Art

2127-

82

Admissions as Prior Art

2129

83

Reasonable Expectation of Suc- cess Is Required for pima facie case of obvious

2143.02

84

103 rejection: Consideration of Applicant’s Rebuttal Arguments

2145
ARGUMENT DOES NOT REPLACE EVIDENCE WHERE EVIDENCE IS NECESSARY

85

Relative Terminology

about, essentially...

2173.05(b)
WHEN A TERM OF DEGREE IS PRESENT, DE- TERMINE WHETHER A STANDARD IS DIS- CLOSED OR WHETHER ONE OF ORDINARY SKILL IN THE ART WOULD BE APPRISED OF THE SCOPE OF THE CLAIM

2171-Two Separate Requirements for Claims Under 35 U.S.C. 112 (b) or Pre-AIA 35 U.S.C. 112, Second Paragraph
2173-Claims Must Particularly Point Out and Distinctly Claim the Invention

86

Relationship Between the Require- ments of the First and Second Para- graphs of 35 U.S.C. 112

2174

87

Making a Prima Facie Case of Equivalence of means plus function 112 6th para

2183-

88

JURISDICTION OF BOARD in appeal, when does it start when does it end

1210 Actions Subsequent to Examiner’s Answer but Before Board’s Decision
I. JURISDICTION OF BOARD
Jurisdiction over the proceeding
passes to the Board upon the filing of a reply brief under § 41.41 or the expiration of the time in which to file such a reply brief, whichever is earlier.
End of jurisdiction. The jurisdiction of the Board ends when:
(1) The Director or the Board enters a remand order (see §§ 41.35(c), 41.35(e), and 41.50(a)(1)),
(2) The Board enters a final decision (see § 41.2) and judicial review is sought or the time for seeking judicial review has expired,
(3) An express abandonment which complies with § 1.138 of this title is recognized,
(4) A request for continued examination is filed which complies with § 1.114 of this title,
(5) Appellant fails to take any required action under §§ 41.39(b), 41.50(a)(2), 41.50(b), or 41.50(d), and the Board enters an order of dismissal, or
(6) Appellant reopens prosecution pursuant to § 41.40(b) or in response to a new ground of rejection entered in a decision of the Board (see § 41.50(b)(1)).

89

appellant's option after the board remand

1207.05 Substitute Examiner’s Answer
I. SUBSTITUTE EXAMINER’S ANSWER RESPONDING TO A REMAND FOR FURTHER CONSIDERATION OF REJECTION
A. Appellant’s Reply

reopen or maintain

90

if appellant choose to maintain appeal by filing a reply brief is accompanied by any amendment, affidavit or other evidence after the board remand, what happens

Maintain appeal .Request that the appeal be maintained by filing a reply brief as provided in 37 CFR 41.41. If such a reply brief is accompanied by any amendment, affidavit or other evidence, it shall be treated as a request that prosecution be reopened before the examiner

91

a proposed amendment filed after the date of filing of a brief to either cancel claims, where such cancellation does not affect the scope of any other pending claim in the proceeding, or to rewrite dependent claims into independent form, what happens

1211.02 Remand To Consider Amendment

There is no obligation resting on the Board to consider new or amended claims submitted while it has jurisdiction of the appeal. However, a proposed amendment filed after the date of filing of a brief to either cancel claims, where such cancellation does not affect the scope of any other pending claim in the proceeding, or to rewrite dependent claims into independent form may be remanded for consideration by the examiner. See MPEP § 1206.
If the proposed amendment is in effect an abandonment of the appeal, the appeal will normally be dismissed by the Board.

92

Review of undesignated new ground of rejection by board decision

1213 Decision by Board
1213.02 New Grounds of Rejection by Board

Any request to seek review of a panel's failure to designate a new ground of rejection in its decision must be raised by filing a request for rehearing as set forth in § 41.52. Failure of appellant to timely file such a request for rehearing will constitute a waiver of any arguments that a decision contains an undesignated new ground of rejection.

93

If the appellant submits an argument without either an appropriate amendment or new evidence as to any of the claims rejected by the Board

1214.01 Procedure Following New Ground of Rejection by Board
I. SUBMISSION OF AMENDMENT OR NEW EVIDENCE

If the appellant submits an argument without either an appropriate amendment or new evidence as to any of the claims rejected by the Board, it will be treated as a request for rehearing

94

REQUEST FOR REHEARING

1214.01 Procedure Following New Ground of Rejection by Board
II. REQUEST FOR REHEARING

1214.03 Rehearing

95

treatment of claims after board's decision

1214-Procedure Following Decision by Board
1214.06 Examiner Sustained in Whole or in Part

96

after appeal
Claims indicated as allowable prior to appeal except for their dependency from rejected claims will be treated


If the Board or court affirms a rejection against an independent claim and reverses all rejections against a claim dependent thereon, after expiration of the period for further appeal, the examiner should proceed

1214.06 Examiner Sustained in Whole or in Part
I. NO CLAIMS STAND ALLOWED


Claims indicated as allowable prior to appeal except for their dependency from rejected claims will be treated as if they were rejected. The following examples illustrate the appropriate approach to be taken by the examiner in various situations:
(A) If claims 1-2 are pending, and the Board affirms a rejection of claim 1 and claim 2 was objected to prior to appeal as being allowable except for its dependency from claim 1, the examiner should hold the application abandoned.
(B) If the Board or court affirms a rejection against an independent claim and reverses all rejections against a claim dependent thereon, after expiration of the period for further appeal, the examiner should proceed in one of two ways:
(1) Convert the dependent claim into independent form by examiner’s amendment, cancel all claims in which the rejection was affirmed, and issue the application; or
(2) Set a 1-month time limit in which appellant may rewrite the dependent claim(s) in independent form. Extensions of time under 37 CFR 1.136(a) will not be permitted. If no timely reply is received, the application is abandoned since no claims stand allowed.

97

third party submission

1134

98

preissuance submisson

1134 third party submission

99

Processing of prior art citations during an ex parte reexamination proceeding

2202
1.502

100

Trade Secret, Proprietary, and Protective Order Materials

724

101

Which of the following patent applications can be filed by facsimile

512 Certificate of Mailing or Transmission

102

amendment in PCT app

Article 34 of the PCT relates to procedures before the International Preliminary Examining Authority, and grants the applicant the right to amend the claims, the description, and the drawings before the international preliminary examination report is established. The amendment made pursuant to Article 34 must not go beyond the disclosure in the international application as filed.
Examination by the International Preliminary Examining Authority will start either by the expiration of the 22nd month from the priority date, or three months from the date of transmittal of the international search report, whichever is later. In this case, three months from the transmittal of the international search report is November 7, 2012, and 22 months from the priority date is February 7, 2013. Therefore, the later is February 7, 2013. Thus, amendments made pursuant to Article 34 of the PCT must be made by February 7, 2013.
Amendments may, however, also be made under Article 19 of the PCT. Article 19 deals with amending the claims before the International Bureau. The opportunity to make amendments under Article 19 is available after the applicant has received the international search report and the written opinion of the International Search Authority, and remains available until the end of 16 months from the priority date or two months after the date the report and opinion are mailed, whichever expires later.