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Flashcards in STUDY GUIDE SET 1 Deck (50):
1

Suspended/excluded practitioner

Suspended/excluded practitioner: The Patent Office does not communicate with attorneys or agents who have been suspended or excluded from practice. Applicant may, of course, file a new power of attorney to have a registered attorney or agent appointed to represent him before the Office. When the practitioner of record is suspended, an Office Action is mailed to the address of the inventor first named in the application. Incorrect answer indicated that a new practitioner is appointed ad litem by the Office. See MPEP § 407 for more information.

2

Correcting Foreign Priority Claim in a Reissue App

Correcting foreign priority claim in a reissue application: Reissue is also available to correct the “error” in failing to take any steps to obtain the right of foreign priority under 35 U.S.C. § 119(a)-(d) before the original patent was granted. In a situation where it is necessary to submit for the first time both the claim for priority and the certified copy of the priority document in the reissue application and the patent to be reissued resulted from a utility or plant application filed on or after November 29, 2000, the reissue applicant will have to file a petition for an unintentionally delayed priority claim under 37 C.F.R. § 1.55(c) in addition to filing a reissue application. See MPEP § 201.14(a). Correct answer mentioned the required petition for an unintentionally delayed priority claim. See MPEP § 1417 for more information.

3

Correcting Foreign Priority Claim with a CoC

Correcting foreign priority claim with a CoC: A certificate of correction (CoC) under 35 U.S.C. § 255 and 37 C.F.R. § 1.323 may be requested and issued in order to perfect a claim for foreign priority in a patented continuing application if the requirements of 35 U.S.C. § 119(a)-(d) or (f) have been satisfied in the parent application prior to issuance of the patent and the requirements of 37 C.F.R. § 1.55(a) are met. Furthermore, if the continuing application which issued as a patent was filed on or after November 29, 2000, in addition to the filing of a certificate of correction request, patentee must also file a petition for an unintentionally delayed foreign priority claim under 37 C.F.R. § 1.55(c). Correct answer included petition for unintentionally delayed priority claim. See MPEP § 201.16 for more information.

4

Section 103 Rejections, when proper:

Section 103 rejections, when proper: Question stated that a Section 103(a) rejection was made based on a publication having the same inventive entity as the application. Correct answer noted that this rejection is improper because the publication is not prior art under any part of Section 102 statute, which defines the applicable world of prior art for a Section 103 rejection. Subject matter that is prior art under 102 can be used to support a rejection under 103. See MPEP § 2141.01 for more information.

5

Non-obviousness

Non-obviousness: Correct answer indicated that the absence of a property which a claimed invention would have been expected to possess based on the teachings of the prior art is evidence of non-obviousness. See MPEP § 716.02(a) for more information. The incorrect answers were (1) producing evidence that all the beneficial results are expected based on the teachings of the prior art references; (2) producing evidence showing that unexpected results occur over less than the entire claimed range; and (3) producing evidence showing that the unexpected properties of a claimed invention have a significance less than or equal to the expected properties.

6

PTO officials:

PTO Officials: If an examiner’s answer is believed to contain a new interpretation or application of the existing patent law, the examiner’s answer, application file, and an explanatory memorandum should be forwarded to the TC Director for consideration. See MPEP § 1003. If approved by the TC Director, the examiner’s answer should be forwarded to the Office of the Deputy Commissioner for Patent Examination Policy for final approval. See MPEP § 1208 for more information.

7

PCT application filed in USPTO receiving office not in prescribed language:

PCT application filed in USPTO receiving office not in prescribed language: PCT Rule 19.4 provides for transmittal of an international application to the International Bureau as the Receiving Office in certain instances. For example, when the international application is filed with the United States Receiving Office and the language in which the international application is filed is not accepted by the United States Receiving Office, or if the applicant does not have the requisite residence or nationality, the application may be forwarded to the International Bureau for processing in its capacity as a Receiving Office. See 37 C.F.R. § 1.412(c)(6). The Receiving Office of the International Bureau will consider the international application to be received as of the date received by the United States Receiving Office. This practice avoids the loss of a filing date in those instances where the United States Receiving Office is not competent to act, but where the international application indicates an applicant to be a national or resident of a PCT Contracting state or is in a language accepted under PCT Rule 12.1(a) by the International Bureau as a Receiving Office. See MPEP § 1805 for more information. Correct answer noted that the filing date of the application will be the date the application was received by the United States Receiving Office.

8

Delayed Priority Claim:

Delayed Priority Claim: Question dealt with a PCT application that was misclassified as a domestic application during entry to U.S. national stage. Question asked about the effect on a foreign priority claim which was made outside time frames to perfect a priority claim on account of the application being misclassified. Correct answer indicated that the delayed priority claim may be accepted if accompanied by a grantable petition to accept an unintentionally delayed claim for priority. A grantable petition to accept an unintentionally delayed claim for priority must include: (1) the claim for priority to the prior foreign application, unless previously submitted; (2) the surcharge; and (3) a statement that the entire delay between the date the claim was due and the date the claim was filed was unintentional. See MPEP § 201.14(a) for more information.

9

Minor Inventor

Minor inventor: A minor (under age 18) inventor may execute an oath or declaration under 37 C.F.R. § 1.63 as long as the person is competent to sign (i.e., understands the document). Incorrect answers stated that a person under 18 can never sign an oath even if he/she understands the document. See MPEP § 409 for more information.

10

Death of inventor with practitioner as part-assignee:

Death of inventor with practitioner as part-assignee: Unless a power of attorney is coupled with an interest (i.e., an attorney is assignee or part-assignee), the death of the inventor (or one of the joint inventors) terminates the power of attorney given by the deceased inventor. A new power from the heirs, administrators, executors, or assignees is necessary if the deceased inventor is the sole inventor or all powers of attorney in the application have been terminated. Question asked about a practitioner that is part-assignee upon death of sole inventor. Correct answer noted that the power of attorney is accompanied with an interest and therefore the power of attorney remains in effect and is not terminated. See MPEP § 409.01 for more information.

11

Examiner considers amendment:

Examiner considers amendment: Jurisdiction passes to the Board: (A) After 2 months from the examiner’s answer, plus mail room time, if no reply brief has been timely filed; (B) After a supplemental examiner’s answer, pursuant to a remand from the Board, has been mailed; (C) After the examiner has notified the appellant by written communication that the reply brief has been entered and considered and that the application will be forwarded to the Board. Question asked
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when an amendment may be considered by the Examiner (e.g., jurisdiction has not passed to Board). Fact patterns A-C were provided as potential answers, making them incorrect. See MPEP § 1210 for more information.

12

Maintenance Fee Petition:

Maintenance Fee Petition under 37 C.F.R. § 1.377: Any petition filed under this section must comply with the requirements of § 1.181(b) and must be signed by an attorney or agent registered to practice before the Patent and Trademark Office, or by the patentee, the assignee, or other party in interest. Correct answer noted that the petition must be signed.

13

PCT/National Stage Inventor:

PCT/National Stage Inventor: If the inventor is not also the applicant, the designation of the United States is invalid. See MPEP 1817.01. Question asked if an agent with a proper power of attorney signed by one inventor can sign box IX. See MPEP § 1820 for more information. More specifically, the fact pattern in the question provided that one of three inventors signed the power of attorney, as well as assignee, which is proper. See PCT Rule 4.15(b).

14

National Stage Requirements:

National Stage Requirements (Multiple Questions): To begin entry into the national stage, applicant is required to comply with 37 C.F.R. § 1.495(b) within 30 months from the priority date. Thus, applicant must pay the basic national fee on or before 30 months from the priority date and be sure that a copy of the international application has been received by the U.S. Designated or Elected Office prior to expiration of 30 months from the priority date. Where the international application was filed with the United States Receiving Office as the competent receiving Office, the copy of the international application referred to in 37 C.F.R. § 1.495(b) is not required upon enter into national stage examination in the U.S. See MPEP § 1893.01(a).

15

Fax Transmission Not Acceptable:

Facsimile Transmission Not Acceptable: Question stated that applicant submitted basic national fee and the copy of the international application via facsimile transmission. Facsimile transmission is not acceptable for submission of the basic national fee and/or the copy of the international application. See MPEP § 1893.01(a)(1).

16

Revival of PCT Application:

Revival of PCT Application: Question dealt with revival under 37 C.F.R.§ 1.137 of a PCT application abandoned as to the United States national stage because the fees and documents required by 35 U.S.C. § 371(c) were not filed prior to the expiration of the time set in 37 C.F.R. § 1.494(b) or (c) or 1.495(b) or (c) (as applicable). A grantable petition requires the following items: (1) the petition fee; (2) a proper reply required to the outstanding Office Action or notice; and (3) a statement that the entire delay was unintentional. The correct answer noted both the petition and fee are required while the incorrect answers did not require the fee.

17

Nucleotide Sequence Listings:

Nucleotide Sequence Listings: A copy of the Sequence Listing must also be submitted in computer readable form (CRF) in accordance with the requirements of § 1.824. The computer readable form must be a copy of the Sequence Listing” and may not be retained as a part of the patent application
file. See 37 C.F.R. § 1.821 for more information. The correct answer stated that the CRF was required, not optional.

18

Certificate of Correction in a Reissue App:

CoC in a Reissue Application: The applicant should include any changes, additions, or deletions that were made by a Certificate of Correction to the original patent grant in the reissue application without underlining or bracketing. The examiner should make certain that all Certificate of Correction changes in the patent have been properly incorporated into the reissue application. See MPEP § 1411.01 for more information. Correct answer indicated that underlying and bracketing of changes should not be used.

19

Invalid Disclaimer:

Invalid Disclaimer: Question stated that while performing due diligence it was observed that a disclaimer in an allowed application whose issue fee has been paid is wholly invalid. An RCE and
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appeal brief were filed to inform the PTO of the invalid disclaimer. Question asked for the outcome of such a situation. An appeal brief is not a proper submission with an RCE, and thus the application will be patented because the RCE will be ignored. See MPEP § 706.07(h) for more information.

20

New Ground of Rejection Added by Board:

New Ground of Rejection Added by Board: If an appellant files an appropriate amendment or showing of facts as to less than all of the claims rejected by the Board under 37 C.F.R. § 1.196(b), and a request for rehearing as to the remainder of the claims so rejected, the examiner will not consider the claims for which rehearing was requested. The request for rehearing will be considered by the Board after prosecution before the examiner with respect to the first group of claims is terminated. Argument as to any of the claims rejected by the Board which is not accompanied by an appropriate amendment or showing of facts as to those claims will be treated as a request for rehearing as to those claims. See MPEP § 1214.01 for more information. Correct answer stated that when the Board makes a new rejection, the appellant has the option of either (1) reopening prosecution before the examiner by submitting an appropriate amendment and/or new evidence or (2) requesting rehearing before the Board.

21

Petition to Make Special/Health:

Petition to Make Special / Health: An application may be made special upon a petition by applicant accompanied by any evidence showing that the state of health of the applicant is such that he or she might not be available to assist in the prosecution of the application if it were to run its normal course, such as a doctor’s certificate or other medical certificate. No fee is required for such a petition. See MPEP § 708.02 for more information. Correct answer indicated that no fee is required for such a petition.

22

Petition to Make Special/Age:

Petition to Make Special / Age: An application may be made special upon filing a petition including any evidence showing that the applicant is 65 years of age, or more, such as a birth certificate or applicant’s statement. No fee is required with such a petition. MPEP § 708.02. Correct answer indicated that no fee is required for such a petition.

23

Date Publication is Available as Prior Art Reference:

Date Publication is Available as a Prior Art Reference: Publication describing an invention was submitted to a museum by inventor. Publication was placed on display before opening of museum. Although a limited opening occurs, members of the public reasonably attributed to the field of the invention are not able to enter. Grand opening occurs and then publication is indexed and shelved on a later date. Question asks for earliest prior art date for the publication. See MPEP § 2128.01 for more information. A publicly displayed document is a printed publication once persons of ordinary skill in the art could see it. Thus, the limited opening did not count, and the reference is prior art only as of the grand opening.

24

Public Policy Considerations for 112:

Public Policy Considerations for 112: In exchange for the patent rights granted, 35 U.S.C. § 112, first paragraph, sets forth the minimum requirements for the quality and quantity of information that must be contained in the patent to justify the grant. The patentee must disclose in the patent sufficient information to put the public in possession of the invention and to enable those skilled in the art to make and use the invention. The applicant must not conceal from the public the best way of practicing the invention that was known to the patentee at the time of filing the patent application. Failure to fully comply with the disclosure requirements could result in the denial of a patent, or in a holding of invalidity of an issued patent. See MPEP § 2162 for more information.

25

Filing Date of Provisional App with Missing Drawing:

Filing Date of Provisional Application with Missing Drawing: A provisional application was filed with a missing drawing. Question asked how the Applicant could get the drawing included with the application and what effect the submission of the missing drawing would have on the filing date of the application. Original filing date was not mentioned as being needed. Therefore, the correct
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answer stated that the Applicant may simply submit the missing drawing and the filing date will be the date on which the missing drawing is received by the Patent Office.

26

Recapture of Canceled Subject Matter:

Recapture of Canceled Subject Matter: The fact pattern of the question was based on a clear broadening of the claimed subject matter and an explicit attempt to recapture subject matter in a reissue application. See MPEP § 1412.02 for more information. Correct answer indicated that a reissue will not be granted to recapture claimed subject matter which was surrendered during the prosecution of the original patent.

27

Broadening in a Reissue Application:

Broadening in a Reissue Application: Question asked examinee to select the answer that constitutes impermissible broadening in a reissue application. Correct answer indicated that claims were being broadened by the removal of a limitation outside the two year time window. See MPEP § 1412.03 for more information.

28

Protest Not Eligible for Patents:

Protest Not Eligible for Patents: Question asked about the propriety of a protest in an application recently published. A protest under 37 C.F.R. § 1.291(a) must be submitted prior to the date the application was published or the mailing of a notice of allowance under 37 C.F.R. § 1.311, whichever occurs first, and the application must be pending when the protest and application file are brought before the examiner in order to be ensured of consideration. Thus, the protest is improper since the application has been published. See MPEP § 1901.04 for more information.

29

Payment of Fees during Ex Parte Reexamination:

Payment of Fees during Ex Parte Reexamination: Who pays for claim fees if during reexamination applicant exceeds number of claims paid for? Under reexamination, there are generally no fees due other than for the request, for addition of claims, and any appeal, brief, or oral hearing. Thus, the applicant is responsible for any fee imposed for the addition of claims. See MPEP § 2233 for more information. Another similar question inquired about who is responsible for paying the fee required for a reexamination certificate. This is a trick question as there is no fee required for issue of the reexamination certificate. Correct answer noted this fact.

30

Prior Art Effect of Abandoned App:

Prior Art Effect of Abandoned Application: An abandoned patent application may become evidence of prior art only when it has been appropriately disclosed, as, for example, when the abandoned patent application is referenced in the disclosure of another patent, in a publication, or by voluntary disclosure. See MPEP § 2127 for more information. However, the subject matter of an abandoned application, including both provisional and non-provisional applications, referred to in a prior art U.S. patent may be relied on in a 35 U.S.C. § 102(e) rejection based on that patent if the disclosure of the abandoned application is actually included or incorporated by reference in the patent. Correct answer noted that the previously abandoned application is prior art under Section 102(e) because the application was incorporated by reference in a prior art patent.

31

Best Mode Requirement:

Best Mode Requirement: There is no requirement in the statute that applicants specifically point out which of their embodiments they consider to be their best; that the disclosure includes the best mode contemplated by applicants is enough to satisfy the statute. See MPEP § 2165.01 for more information. Correct answer indicated that the best mode requirement was satisfied even though applicant did not expressly point out which of the numerous disclosed embodiments was preferred. Please note that after implementation of the AIA, failure to comply with the best mode requirement cannot be used to invalidate a patent in any court proceeding. Therefore, although it still is technically a requirement, there is no consequence for failure to comply with the best mode requirement in a court of law.

32

Duty to Disclose:

Duty to Disclose: Duty to disclose applies to information if it establishes, by itself or in combination with other information, (1) a prima facie case of unpatentability of a claim; or (2) it refutes, or is
inconsistent with, a position the applicant takes in: (i) opposing an argument of unpatentability relied on by the Office, or (ii) asserting an argument of patentability. See 37 C.F.R. § 1.56 for more information. Question dealt with situation (2)(ii) above, and the correct answer noted that a co-inventor must disclose the information because it refuted the other co-inventor’s arguments for patentability.

33

Provisional 102(e) Rejection:

Provisional 102(e) Rejection: Question asked the examinee to select which of the enumerated situations is not appropriate for the issuance of a provisional 102(e) rejection. Correct answer was two non-commonly owned pending applications filed within 3 months of each other with no overlap in inventorship. See MPEP § 706.02(f)(2) for more information. Interference is proper in this case, not a provisional 102(e) rejection, thereby making it the correct answer.

34

Oral Hearing:

Oral Hearing: Question asked which of the following is not required when requesting an oral hearing before the Board of Appeal and Interferences. An appellant who desires an oral hearing before the Board must request the hearing by filing, in a separate paper, a written request therefore, accompanied by the appropriate fee set forth in 37 C.F.R. § 1.17(d), within 2 months after the date of the examiner’s answer. MPEP § 1209. Correct answer stated that the time and date of the hearing must be included. As stated in the MPEP, if appellant has any special request, such as for a particular date or day of the week, this will be taken into consideration in setting the hearing, if made known to the Board in advance, as long as such request does not unduly delay a decision in the case and does not place an undue administrative burden on the Board. The time and date, however, is not required, thereby making it the correct answer.

35

Signature Requirement:

Signature Requirement: Question asked which of the following is not in accordance with the signature requirement. One incorrect answer noted that the signature requirement of 37 C.F.R. § 1.33 does not apply to a notice of appeal. A notice of appeal does not need to be signed, thereby making this answer factually correct. The question, however, asked for the situation that did not comply with the signature requirement, thereby making this answer incorrect. The correct answer stated an amendment signed by only one of the joint inventors complied with the requirement. Amendments and other papers filed in the application must be signed by: (1) a registered attorney or agent of record, (2) a registered attorney or agent not of record who acts in a representative capacity under the provisions of § 1.34(a); (3) an assignee as who has taken over prosecution; or (4) all of the applicants. See MPEP § 714.01(a) for more information.

36

Broadening Reissue:

Broadening Reissue: Where any intent to broaden is indicated in the reissue application within the two years from the patent grant, a broadened claim can subsequently be presented in the reissue after the two year period. A reissue application filed on the 2-year anniversary date from the patent grant is considered to be filed within 2 years of the patent grant. The failure by an applicant to include an oath or declaration indicating a desire to seek broadened claims within two years of the patent grant will bar a subsequent attempt to broaden the claims after the two year limit. See MPEP § 1412.03 for more information. Question indicated that applicant successfully conveyed intent to broaden in oath within two year deadline, even though the claim was not actually broadened until after the two year deadline. Thus, the broadening reissue in this situation is proper.

37

Red or Black Ink:

Red or Black Ink: In an Examiner’s amendment, clean red ink must be used (not blue or black ink). See MPEP § 1302.04. Question asked which procedure is not consistent with proper Patent Office procedures related to Examiner’s amendments. Correct answer indicated that the Examiner must use black ink, which is not proper.

38

Prior Art and Public Accessibility:

Prior Art and Public Accessibility: In order to qualify as prior art, a printed publication must be accessible to the public. Question asked about a paper describing a baseball with a titanium core.
The paper was indexed and cataloged in a museum. The museum had a limited, private opening and subsequently a general opening to all members of the public. Correct answer pointed out that the paper was not prior art as of the private opening and only became prior art when the museum had its public opening. A variant of this question deals with a brochure describing the baseball that is indexed and cataloged in the museum. The correct answer notes that the brochure becomes prior art only when the public opening occurs and after the brochure was indexed and cataloged. See MPEP § 2133.03(a).

39

Ambiguous Claim:

Ambiguous Claim: To satisfy the enablement requirement, a person skilled in the art must be able to make and use the claimed invention without undue experimentation. Question discussed an invention that included a mirror in combination with other components. The specification stated that the mirror can either be parallel to the other components or perpendicular to the other components. The question asked which may serve as the basis of a Section 112, 1st paragraph rejection. The correct answer stated that an apparatus claim includes the mirror but does not indicate whether the mirror is in the parallel or perpendicular configuration. The correct answer also expressly stated that a person skilled in the art would not know which configuration was being covered by the claim. Although this question deals with the enablement requirement, the question can also be properly analyzed under the definiteness requirement of the second paragraph of Section 112. Recall that claims must particularly point out and distinctly define the metes and bounds of the subject matter that will be protected by the patent grant. The claim described in the correct answer clearly fails this standard because the specification provides two potential configurations and the claim does not specify which of the two configurations is being covered. See MPEP § 706.03(d).

40

CD-ROM Submission for Large Tables:

CD-ROM Submission for Large Tables: A single table contained on 51 pages or more may be submitted on a CD-ROM. Multiple tables may be submitted on CD-ROM if they total more than 100 pages. If a compact disc is submitted, it must be submitted in duplicate. See 37 CFR § 1.52(e). Question asked about whether it is proper to submit 52 tables that are each a half page on CD-ROM. Correct answer indicated that it is not proper because the multiple tables do not meet the minimum page requirements. Also, correct answer noted that even if the page requirement was satisfied, the CD-ROM must be submitted in duplicate.

41

PCT Abstract:

PCT Abstract: Where the abstract is established by the International Searching Authority, the applicant may submit comments or proposed modifications on the abstract within one month from the date of mailing of the international search report. The Authority shall decide whether to modify the abstract accordingly. See MPEP § 1826. Question asked about an applicant’s options when the ISA’s supplied abstract is believed to be deficient. Correct answer noted the one month timeframe for a proposed modification to the abstract and also noted that the ISA has the option to accept or reject the proposed modification.

42

PCT Article 19 and 34 Amendments:

PCT Article 19 and 34 Amendments: Under the PCT, it is important to note that an applicant may only amend the claims under Article 19. Under Article 34, the applicant may amend the claims, description, and the drawings. Question asked which sections of the application may be amended under Article 19. The correct answer noted that only the claims may be amended at this stage.

43

Missing Parts under the PCT:

Missing Parts under the PCT: If the Receiving Office finds that a part of the description, claims or drawings is or appears to be missing, it shall promptly invite the applicant to supply the missing parts. An applicant has two months from the date of the invitation to comply with the invitation. See MPEP § 1893. Question asked how long an Applicant has to respond to an invitation to supply missing parts.

44

Correction of Obvious Errors under the PCT:

Correction of Obvious Errors under the PCT: An applicant may submit a request to correct an obvious error in an international application. The request must be submitted to the competent authority within 26 months from the priority date. It shall specify the mistake to be rectified and the proposed rectification, and may, at the option of the applicant, contain a brief explanation. See MPEP § 1836. Question asked which of the following mistakes in a PCT application may be corrected as an obvious error under PCT Rule 91. The correct answer related to the correction of the obvious spelling error “ccar,” which should have been “car.”

45

International Filing Date:

International Filing Date: Under the PCT, an international filing date is afforded to an international application if it contains the designation of at least one Contracting State, the name of the applicant, a part which on the face of it appears to be a description, and a part which on the face of it appears to be a claim or claims. Several questions on the exam discuss situations where Costa Rican, Swedish, and German nationals file an international application in the U.S. Receiving Office and no applicant has a U.S. residence or U.S. nationality. Where no applicant indicated on the request papers is a resident or national of the United States, the USPTO is not a competent Receiving Office for the international application. Nonetheless, the date the international application was filed in the USPTO will not be lost as a filing date for the international application if at least one applicant is a resident or national of any PCT Contracting State. The USPTO will receive the application on behalf of the International Bureau as Receiving Office and, upon payment of a fee equal to the transmittal fee, the USPTO will promptly transmit the international application to the International Bureau. However, if all of the applicants are indicated to be both residents and nationals of non-PCT Contracting States, the application is denied an international filing date. Every fact pattern appearing on the exam to date includes at least one inventor that is a national of a PCT Contracting State. Therefore, the correct answer indicates that an international filing date is afforded to the application, and the application is forwarded to the International Bureau. See MPEP § 1810.

46

Obviousness:

Obviousness: Reliance on a large number of references in a rejection does not, without more, weigh against the obviousness of the claimed invention. See MPEP § 2145. Question involved a claim for sweet smelling paint that was rejected as obvious over eight prior references. The applicant argued that relying on so many references was an indication that the claim was not obvious. Correct answer noted that the applicant’s argument is unpersuasive because the number of references used in an obviousness rejection does not, by itself, weigh against a finding of obviousness.

47

Prior Art Unsatisfactory for its Intended Purpose:

Prior Art Unsatisfactory for its Intended Purpose: If a proposed modification under Section 103 would render the prior art invention being modified unsatisfactory for its intended purpose, then there is no suggestion or motivation to make the proposed modification. See MPEP § 2143. Question asked about the obviousness of a claimed invention. Correct answer noted that because the proposed modification renders the prior art being modified unsatisfactory for its intended purpose there is no motivation to combine the prior art and a rejection under 103 is improper.

48

Commercial Success as a Secondary Consideration of Non-obviousness:

Commercial Success as a Secondary Consideration of Non-obviousness: An applicant who is asserting commercial success to support its contention of non-obviousness bears the burden of proof of establishing a nexus between the claimed invention and evidence of commercial success. Establishing a nexus between commercial success and the claimed invention is especially difficult in design cases. Evidence of commercial success must be clearly attributable to the design to be of probative value, and not to brand name recognition, improved performance, or some other factor. See MPEP § 716.03. In fact, all secondary considerations require a nexus to the claimed invention to be effective. Question dealt with an applicant trying to show commercial success of his invention through the invention’s brand name recognition, which is improper. Correct answer noted that the examiner should maintain the rejection because the brand name recognition does not have a
sufficient nexus to the claimed invention, and therefore does not constitute evidence of commercial success.

49

Extend Patent Term Through Removal of Priority Claim:

Extend Patent Term Through Removal of Priority Claim: Recall that amendments after a final office action are very limited. You may cancel claims, comply with a requirement of form expressly made in the office action, or amend the claims, if the amendments place the rejected claims in better form for consideration on appeal. Question asked about withdrawing a priority claim to an earlier filed non-provisional application to extend the term of the patent that will issue. In the fact pattern, a Notice of Allowance had already been mailed. Because the removal of a priority claim changes the effective filing date of the application that was examined, a Request for Continued Examination (RCE) is required to be filed in order to remove the priority claim after a Notice of Allowance has been issued. Correct answer indicated that a RCE must be filed before payment of the issue fee, and the priority claim may then be removed. See MPEP § 714.16.

50

Late Priority Claim

Late Priority Claim: A priority claim must be submitted during the pendency of the later-filed application and within the later of 4 months from the actual filing date of the later-filed application or 16 months from the filing date of the prior-filed application. See MPEP § 201.11. Question stated that the applicant withdrew a priority claim and now wants to reinstate it after the 4/16 month timeframe to avoid prior art. Because the claim would now be untimely, the correct answer noted that reinstating the priority claim was not possible. Note that under normal circumstances, the applicant could file a petition for an unintentionally delayed priority claim. However, cancellation of a benefit claim to a prior application may be considered as a showing that the applicant is intentionally waiving the benefit claim to the prior application in the instant application. If the applicant later files a petition to accept an unintentionally delayed claim to add the benefit claim to the prior application in the same application from which the benefit claim was canceled, the Patent Office may refuse to accept such benefit claim because the delay was not unintentional.