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Flashcards in STUDY GUIDE SET 2 Deck (40):
1

Rule 131 Affidavit:

Rule 131 Affidavit: The following parties may make an affidavit or declaration under Rule 131: (A) all of the inventors; (B) less than all named inventors where it is shown that less than all named inventors of an application invented the subject matter of the claim or claims under rejection; (C) the assignee when it is not possible to produce the affidavit or declaration of the inventor; or (D) the legal representative of the inventor if the inventor is legally insane or dead. Question asked which of the listed entities may sign a Rule 131 affidavit. Correct answer was all of the inventors.

2

102(d) Bar for Design Patent:

102(d) Bar for Design Patent: For design patent applications, rejections under Section 102(d) apply when the foreign patent has actually issued before the U.S. filing date based on an application filed more than six (6) months prior to filing the application in the United States. See MPEP § 1504.02. Note that for utility patent applications the timeframe is one year. Question tested the distinction between utility and design patents with respect to Section 102(d), and the correct answer noted that the critical date for design patents is six months.

3

Right of Foreign Priority for Design Patents:

Right of Foreign Priority for Design Patents: In order to obtain the benefit of an earlier foreign filing date for design patent applications, the United States application must be filed within 6 months of the earliest date on which any foreign application for the same (or a substantially similar) design was filed. See MPEP § 1504.10. Question stated that a foreign design patent was issued in Spain for a telephone design, and then a U.S. design patent was subsequently filed within 6 months on a similar design. A continuation-in-part (CIP) application was then filed claiming priority to the U.S. design and the Spanish design after the 6 month deadline. Correct answer noted that the CIP application will be barred under Section 102(d) because the priority claim to the Spanish design patent is untimely, and therefore the Spanish design patent is prior art against the CIP application.

4

Public Use Bar:

Public Use Bar: The public use bar under Section 102(b) arises where the invention is in public use before the critical date and is ready for patenting. See MPEP § 2133.03. Question dealt with lip gloss that was perfected and used at parties. Although the inventor did not tell anyone how it was made, she did not file a patent application until more than one year after she completed testing of the lip gross. The correct answer noted that her use is a 102(b) bar to her patent application.

5

Trademarks in Claims:

Trademarks in Claims: Where a trademark or trade name is used in a claim as a limitation to identify or describe a particular material or product, the claim does not comply with the requirements of Section 112, second paragraph. See MPEP § 706.03(d). Question dealt with a claim directed to a VELCRO fastener. Correct answer noted that the examiner should maintain the rejection because the trademark is used in a claim to describe a material. Note that trademarks are allowed in the specification but not generally in the claims.

6

Small Entity Status:

Small Entity Status: Generally, (1) independent inventors (those who have not assigned, granted, conveyed, or licensed any rights in the invention), (2) small businesses with less than 500 employees, (3) non-profit organizations, (4) the government, and (5) universities qualify for small entity status.
A written assertion of small entity status may be filed by an attorney or agent registered with the Patent Office, at least one inventor, or an assignee. Refund of an over paid fee may requested within three months of the date of the overpayment. See MPEP § 509.02. Question asked the test taker to select the entity that does not qualify for small entity status. Correct answer was a company that employed over 500 people, even though 250 were independent contractors. Other questions asked about the time frame for requesting a refund of an overpaid fee, which is three months from the overpayment.

7

Treatment of Trade Secret Information:

Treatment of Trade Secret Information: Trade secret information submitted in a sealed envelope will not become part of the public record if a petition to expunge is filed and the information is found not to be material to patentability. See MPEP § 724.04. Question concerned trade secret information submitted during a reexamination. Correct answer noted that it is improper to keep information from the public file if it is material to patentability even though it is trade secret information.

8

Multiplicity:

Multiplicity: If an undue multiplicity rejection under Section 112, second paragraph is appropriate, the examiner should contact the applicant by telephone explaining that the claims are unduly multiplied. The examiner should also request that the applicant select a specified number of claims for purpose of examination. See MPEP § 2173.05(n). Question dealt with an application covering a broom handle with hundreds of claims on specific features of the handle. Correct answer noted that the examiner should call the applicant, and the applicant should select which claims should be examined.

9

Drawings as Prior Art:

Drawings as Prior Art: When a prior art reference does not disclose that the drawings are to scale and is silent as to dimensions, arguments based on measurement of the drawing features are of little value. See MPEP § 2125. Question concerned the design of a fan and lamp combination. Examiner located the same design in the prior art, but applicant argued that the dimensions of his design were different. Correct answer noted that the obviousness rejection should be maintained because the prior art was silent as to the scale of the disclosed design.

10

Maintenance Fee Returned:

Maintenance Fee Returned: A petition under Rule 377 would not be appropriate where there is a complete failure to include at least one correct mandatory identifier for the patent since no evidence would be present as to the patent on which the maintenance fee was intended to be paid. See MPEP § 2580. Question stated that the Patent Office returned a maintenance fee for complete failure to identify the patent on which to apply the maintenance fee. Correct answer noted that a petition is not appropriate because there was a complete failure to identify the patent. There is also a variant of this
question which does not state that there was a complete failure to identify the patent. Under this case, where at least some identifier was provided, a petition under Rule 377 is appropriate if signed by an attorney or agent registered to practice before the Patent Office, or by the patentee, the assignee, or other party in interest.

11

Correction of Inventorship in Reissue Application:

Correction of Inventorship in Reissue Application: Recall that in order to file a reissue application, there must be at least one error in the patent as issued. Although inventorship can be corrected through a reissue, there must be an error in inventorship. Question related to a patent with 10 claims. The subject matter of claims 1-5 was invented by inventor A, and the subject matter of claims 6-10 was invented by inventor B. The patent had been assigned to Company X. Company X now wants to divide the claims through multiple reissue applications so that one reissue contains claims 1-5 and another reissue contains claims 6-10, thereby having only one inventor per application. Correct answer noted that this is not a defect amenable to correction through reissue.

12

Means-plus-function Claim Construction:

Means-plus-function Claim Construction: Recall that when a claim limitation is in means-plus-function form, the proper scope of the limitation is the corresponding structure identified in the specification for performing the recited function plus any equivalents thereof. Question asked how an examiner may present a prima facie case of equivalence for a means-plus-function limitation. See MPEP § 2183. Correct answer noted that there are three ways to determine equivalence, namely: (1) the prior art element performs the identical function specified in the claim in substantially the same way, and produces substantially the same results as the corresponding element disclosed in the specification, (2) a person of ordinary skill in the art would have recognized the interchangeability of the element shown in the prior art for the corresponding element disclosed in the specification, and (3) there are insubstantial differences between the prior art element and the corresponding element disclosed in the specification.

13

Death of Inventor:

Death of Inventor: There are numerous questions in the Patent Office question database about what happens when an inventor dies. You should know the following. In case of the death of the inventor, the legal representative (executor, administrator, etc.) of the deceased inventor may make the necessary oath or declaration, and apply for and obtain the patent. Where the inventor dies during the time intervening between the filing of the application and the granting of a patent thereon, the patent may be issued to the legal representative upon proper intervention. See 37 C.F.R. § 1.42. Heirs of the inventor may apply for a patent only if there is no will or the will did not appoint an executor. See MPEP § 409.01(a). When an applicant who has prosecuted an application after assignment dies, the administrator of the deceased applicant’s estate may carry on the prosecution unless and until the assignee intervenes. See MPEP § 409.01(e). Unless a power of attorney is coupled with an interest (i.e., a patent practitioner 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. See MPEP § 409.01(e).

14

Canadian Patent Agent:

Canadian Patent Agent: Any foreigner not a resident of the United States who shall file proof to the satisfaction of the OED Director that he or she is registered and in good standing before the patent office of the country in which he or she resides and practices may be registered as a patent agent to practice before the USPTO for the limited purpose of presenting and prosecuting patent applications of applicants located in such country, provided that the patent office of such country allows substantially reciprocal privileges to those admitted to practice before the Patent Office. See 37 CFR § 11.6(c). Question concerned a Canadian patent agent desiring to prosecute an applicant for Canadian applicants. Correct answer noted that the Canadian Agent is registered to practice before the Canadian Patent Office, which accords similar privileges regarding representation, and therefore
may practice before the U.S. Patent Office for the limited purpose of representing and prosecuting patent applicants of applicants located in Canada.

15

Term of Patent Granted on International (PCT) Application:

Term of Patent Granted on International (PCT) Application: A patent granted on an international application filed on or after June 8, 1995 and which enters the U.S. national stage will have a term which ends twenty years from the filing date of the international application. Foreign priority is not considered in determining the term of a patent. Accordingly, a U.S. patent issued from an international application claiming foreign priority has a term which ends twenty years from the filing date of the international application and not twenty years from the filing date of the foreign application to which priority is claimed. See MPEP § 2701. Question concerned the term of a U.S. patent based on a PCT application that was filed in Germany in 1995. Correct answer noted that the term is twenty years from the international filing date.

16

Correspondence Transmitted by Facsimile: 502.01

Correspondence Transmitted by Facsimile: Most papers can be submitted to the Patent Office by fax. These include continued prosecution applications (CPAs), amendments, declarations, petitions, information disclosure statements (IDS), terminal disclaimers, notices of appeal and appeal briefs, requests for continued examination (RCEs), assignment documents, issue fee transmittals and authorizations to charge deposit accounts. See MPEP § 502.01. Question concerned a practitioner registered to practice before the USPTO visiting a client in Germany. The practitioner prepares an office action reply and authorization to charge a deposit account on the last day of the six month period to reply. The practitioner was not of record in the case (that is, no power of attorney was signed naming him as the attorney for applicants). Correct answer noted that the practitioner may file the response and authorization to charge the deposit account by fax while acting in a representative capacity for the applicants.

17

Enablement vs. Written Description:

Enablement vs. Written Description: Recall that the standard for enablement is whether the specification shows to one skilled in the art how to make and use the claimed invention. The standard for written description is whether a person skilled in the art would recognize that the applicant had possession of the invention as of the filing date. Question related to a chemical compound, but the specification did not include a formula and there was no way for one skilled in the art to know how to make it. The specification, however, includes evidence indicating that the applicant was in possession as of the filing date of the application. Correct answer noted that the examiner may reject the claims for lack of enablement but not written description. Remember, enablement and written description are two separate requirements, each with its own standard. A variant of this question indicated that a formula was provided, but the specification did not include evidence that the applicant was in possession of the invention. In this case, the correct answer is that the examiner may reject the claim for failure to comply with the written description requirement but not the enablement requirement.

18

Indefiniteness:

Indefiniteness: The fact that claim language, including terms of degree, may not be precise, does not automatically render the claim indefinite under 35 U.S.C. 112, second paragraph. Question concerned a claim that used the word “high” instead of providing a precise range. The correct answer stated the use of “high” is proper as long as one skilled in the art would understand the scope of the claim in light of the specification. See MPEP § 2173.05(b).

19

Fraud / Inequitable Conduct:

Fraud / Inequitable Conduct: The Patent Office no longer investigates or rejects applications for fraud, inequitable conduct, or duty of disclosure issues under Rule 56. The Patent Office will also not comment upon duty of disclosure issues which are brought to the attention of the Patent Office except in special circumstances. An admission or judicial determination of fraud, inequitable conduct, or violation of the duty of disclosure is the only special circumstance in which the Patent Office may make a rejection based on failure to comply with Rule 56. See MPEP § 1448. Question
asked when is it appropriate for an examiner to reject a claim for fraud or inequitable conduct. Correct answer was when there has been a judicial determination of inequitable conduct brought to the attention of the examiner.

20

Time for Reply to Final Rejection:

Time for Reply to Final Rejection: 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 the3-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 Patent Office mails the advisory action advising applicant of the status of the application, but in no event can the period extend beyond 6 months from the date of the final rejection. See MPEP § 710.02(e). Question asked what date is an extension measured from when an applicant responds to a final rejection within 2 months and the advisory action is mailed within the 3 month shortened statutory period. Since the examiner responded within 3 months, extensions are measured from the shortened statutory period. A variant of this question states that the examiner mails the advisory action after 3 months, in which case extensions are measured from the mailing date of the advisory action.

21

Appeal Brief:

Appeal Brief: Generally, an applicant has 2 months from the date of the notice of appeal for the appellant to file an appeal brief. This 2-month time period to file an appeal brief may be extended up to 5 additional months with the payment of the necessary fee. See MPEP § 1205.01. Thus, the application will not become abandoned until 7 months after the filing of a notice of appeal. Although failure to file the required appeal brief within the permissible time will result in dismissal of the appeal, if any claims stand allowed, the application does not become abandoned by the dismissal, but is returned to the examiner for action on the allowed claims. See MPEP § 1215.04. Question involved an applicant’s failure to file an appeal brief within 7 months of filing a notice of appeal. The application included allowed claims. Correct answer noted that the application is returned to the examiner for action on the allowed claims. A first variant of this question asked whether an applicant may file a continuation application or a request for continued examination (RCE) one day before the 7 month deadline occurs. Correct answer for this variant is that the continuation or RCE can be filed, but the parent application that was appealed will go abandoned if no action is taken in the patent application before the 7 month deadline. A second variant stated that the applicant included a statement in the continuation application that the Commissioner is authorized to deduct any necessary fees for the parent patent application. Question asked whether the parent application would still get abandoned. Correct answer noted that an extension of time will not be effected in the prior application by filing a petition for an extension of time, extension fee, or fee authorization, in the continuing application because the petition for an extension of time (or constructive petition) must be directed toward and filed in the application to which it pertains. See MPEP § 710.02(e). A third variant asked which documents need to be signed. Correct answer was that the notice of appeal does not need to be signed but the appeal brief does need to be signed. See MPEP § 1204.

22

Terminal Disclaimers:

Terminal Disclaimers: A terminal disclaimer must be signed:(i) by the applicant, or (ii) if there is an assignee of record of an undivided part interest, by the applicant and such assignee, or (iii) if there is an assignee of record of the entire interest, by such assignee, or (iv) by an attorney or agent of record. See MPEP § 1490. Question asked who is authorized to sign a terminal disclaimer in an application where two companies have each been assigned a 40% interest in the application and the inventor retains a 20% interest. Correct answer noted that all three entities (both companies and the inventor) must sign. A variant on this question asked whether a practitioner operating in a representative capacity (that is, does not have a power of attorney from the applicants) may sign the disclaimer. Correct answer to this variant noted that because the practitioner is only acting in a representative capacity (and is not of record because no power of attorney has been filed) he cannot sign the disclaimer.

23

Piecemeal Examination:

Piecemeal Examination: Piecemeal examination should be avoided as much as possible. The examiner ordinarily should reject each claim on all valid grounds available, avoiding, however, undue multiplication of references and cumulative rejections. Piecemeal examination is appropriate in the following situation: (1) where an application is too informal for a complete action on the merits; (2) where there is an undue multiplicity of claims, and there has been no successful telephone request for election of a limited number of claims for full examination; (3) where there is a misjoinder of inventions and there has been no successful telephone request for election and (4) where disclosure is directed to perpetual motion. See MPEP § 707.07(g). Question asked when is piecemeal examination appropriate and listed these four situations. Correct answer was that all four situations are appropriate for piecemeal examination.

24

Assignment and Ownership:

Assignment and Ownership: There are several situations where an owner or assignee may take action in an application without first verifying or establishing ownership. Examples of these situations include (1) when the assignee signs a request for a continued prosecution, (2) where papers establishing ownership were filed in the prior application and ownership has not changed; (3) when the assignee signs a small entity statement or a statement of common ownership of two inventions; or (4) when filing a request for reexamination of a patent. See MPEP § 324. Question asked which document may an assignee that is not of record sign. Correct answer was a small entity statement. A variant of this question asked what is necessary for an assignee to establish ownership in an application. Correct answer was documentary evidence of a chain of title from the original owner to the assignee (e.g., copy of an executed assignment) and a statement affirming that the documentary evidence of the chain of title from the original owner to the assignee was, or concurrently is, submitted for recordation.

25

Rejection After Allowance:

Rejection After Allowance: A claim noted as allowable shall thereafter be rejected only with the approval of the primary examiner. When a new reference is discovered, which obviously is applicable to one or more of the allowed claims in an application in issue, the examiner must draft a memorandum addressed to the Technology Center (TC) Director and requesting that the application be withdrawn from issue for the purpose of applying the new reference. See MPEP § 1308.01. Question asked what is the proper procedure for a rejection after allowance, and the correct answer noted that the rejection may be made with the approval of the primary examiner after the application has been withdrawn from issue.

26

Information Disclosure Statements:

Information Disclosure Statements: An information disclosure statement (IDS) will be considered by the examiner if filed on or after the mailing date of a final office action or notice of allowance provided the IDS is accompanied by: (1) payment of a fee and (2) a statement that each item in the IDS was not known by the applicant or his attorney or agent more than three months prior to the filing of the IDS. See MPEP § 609.04(b). Question concerned a reference cited by a foreign patent office in a counterpart application less than three months ago. Correct answer noted that applicant may submit an IDS including the reference if the fee is paid and the statement provided. A variant of this question indicated that the reference was known more than three months before submitting the IDS. In such a case, a petition to have the application withdrawn from issuance should be filed along with a continuation application (or an RCE) with an IDS containing the reference.

27

Appeal:

Appeal: Recall that an applicant for a patent dissatisfied with the primary examiner’s decision in the second rejection of his or her claims may appeal to the Board for review of the examiner’s rejection by filing a notice of appeal and the required fee. A notice of appeal may be filed after any of the claims has been twice rejected, regardless of whether the claim has been finally rejected. See MPEP § 1204. For example, if a claim was rejected in a parent application, and the claim is again rejected in a continuing application, then applicant may file an appeal in the continuing application. The
examiner’s answer to the appeal may contain a new ground of rejection. In such a case where a new ground of rejection is necessary, the examiner should generally reopen prosecution after obtaining supervisory approval. There is no new ground of rejection when the basic thrust of the rejection remains the same such that an appellant has been given a fair opportunity to react to the rejection. For example, where the statutory basis for the rejection remains the same, and the evidence relied upon in support of the rejection remains the same, a change in the discussion of, or rationale in support of, the rejection does not constitute a new ground of rejection requiring prosecution be reopened. When the Board (as opposed to the examiner) makes a new ground of rejection, the appellant, within two months from the date of the decision, can decide to either (1) reopen prosecution or (2) request a rehearing. See MPEP § 1207.03. Question involved two claims that are appealed to the Board. The Board affirms the rejection of the first claim but overruled the rejection of the second claim and entered a new ground of rejection for the second claim. Prosecution is reopened for the second claim and the examiner subsequently rejects the second claim. Correct answer noted that the applicant may file a second appeal for the second claim. The correct answer also noted that the Board’s affirmance of the examiner’s rejection with respect to the first claim will be treated as non-final for purposes of seeking judicial review, and no request for reconsideration of the affirmance need be filed at that time. A variant of this question asked when may the applicant present new arguments that have not been raised in the appeal brief or reply brief. The correct answer noted that appellant may present a new argument based upon a recent relevant decision of either the Board or a federal court. See MPEP § 1209.

28

Reissue Application of Patent with Certificate of Correction:

Reissue Application of Patent with Certificate of Correction: 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. This includes changes made by a Certification of Correction dated before the filing of the reissue application or dated during the pendency of the reissue application. See MPEP § 1411.01. Question asked how should changes to a patent made by a certificate of correction (CoC) be presented in a reissue of that patent. Correct answer noted that changes should be on a clean sheet without underlining or bracketing.

29

102(e) Date for WIPO Publication of PCT Application:

102(e) Date for WIPO Publication of PCT Application: Under revised 35 U.S.C.102(e), an international filing date which is on or after November 29, 2000 is a United States filing date if the international application designated the United States and was published by the World Intellectual Property Organization (WIPO) under the Patent Cooperation Treaty (PCT) in the English language. Therefore, the prior art date of a reference under Section 102(e) may be the international filing date (if all three conditions noted above are met) or an earlier U.S. filing date for which priority or benefit is properly claimed. See MPEP § 706.02(a). Question asked about the 102(e) date for an international application published only in German. Correct answer noted that the publication does not have a 102(e) date because it was not published in English. This is still the case even if a translation is furnished. Again, if the international application was not published in English, it does not have a 102(e) date.

30

Excess Claim Fee:

Excess Claim Fee: An excess claim fee will be assessed if the application contains more three independent claims or more than twenty claims total. See MPEP § 607. Question asked about the number of claims included in the basic filing fee. Correct answer noted that an applicant is entitled to 3 independent claims and 20 total claims for the basic filing fee.

31

Restriction Requirement:

Restriction Requirement: If the applicant disagrees with a requirement for restriction, he may request reconsideration and withdrawal or modification of the requirement. In requesting reconsideration, the applicant must include a provisional election of one invention for prosecution. If the applicant does not provisionally elect one of the inventions, the response is improper and incomplete. See MPEP § 818.03(b). Question concerned an applicant traversing a restriction requirement but not
electing an invention. Correct answer noted that this is improper, and the applicant must provisionally elect an invention in order for the reply to be complete. A first variant of this question related to “linking claims.” The question asked how an applicant may traverse a restriction requirement when a linking claim was present. Correct answer noted that applicant should traverse on the ground that there is some relationship (other than and in addition to the linking claim) that also prevents restriction. A second variant concerns restriction requirements for combinations and subcombinations. To support a requirement for restriction between combination and subcombination inventions, (1) there must be a serious search burden (as evidenced by separate classification, status, or field of search), (2) the subcombination must have utility by itself; and (3

32

Translation of Foreign Language Reference:

Translation of Foreign Language Reference: When submitting foreign language prior art references in information disclosure statements (IDS), a concise explanation of its relevance must be provided. A translation, however, is generally not required. See MPEP § 609.04(a). Question asked for the requirements associated with citing a foreign reference in an IDS. Correct answer noted that a concise explanation regarding relevance is required but a complete translation is not required. The only time a translation is required to be submitted with the IDS is when a written English language translation is already within the possession, custody or control of the applicant or his attorney or agent.

33

PTO Forms 892 and 1449:

PTO Forms 892 and 1449: Keep in mind that Applicants disclose information to the Patent Office using PTO Form 1449 (or the new Form SB/08). This is the form for an Information Disclosure Statement (IDS). Upon submission of Form 1449, the examiner will initialize the form after he considers the information submitted. When the examiner locates relevant information, however, he lists the information on PTO Form 892. Where an applicant in an amendment refers to a reference that is subsequently relied upon by the examiner, such reference shall be cited by the examiner in the usual manner using a form PTO-892, unless applicant has listed the reference on a form SB/08 that has been initialed by the examiner. See MPEP § 609.04(a). Question asked which statement was not in compliance with Patent Office procedure. The correct answer stated that the examiner lists information that was previously cited by the applicant in an IDS on the PTO Form 892. Because the applicant has already included the information in an IDS (presumably on Form 1449), the examiner should initialize Form 1449 and not re-cite the information on Form 892.

34

Enablement of Prior Art:

Enablement of Prior Art: When the reference relied on expressly anticipates or makes obvious all of the elements of the claimed invention, the reference is presumed to be operable (enabling). Once such a reference is found, the burden is on applicant to provide facts rebutting the presumption of operability. The level of disclosure required within a reference to make it an enabling disclosure is the same no matter what type of prior art is at issue. It does not matter whether the prior art reference is a U.S. patent, foreign patent, a printed publication or some other publication. See MPEP § 2121. Question concerned whether there is a different standard of enablement for prior art that is a U.S. patent and a non-patent publication. Correct answer noted that the level of disclosure required to make a prior art reference an enabling disclosure does not depend on the type of reference.

35

Canceled Matter as Prior Art:

Canceled Matter as Prior Art: Canceled matter in the application file of a U.S. patent or U.S. application publication is not a proper reference as of the filing date under 35 U.S.C. 102(e). See MPEP § 901.01. Question asked which of the statements was inconsistent with USPTO procedure. The correct answer stated that cancelled matter from a U.S. patent can be used as 102(e) prior art.

36

PCT Application Designating U.S. Only:

PCT Application Designating U.S. Only: If the United States is the only PCT Contracting State designated in an international application, the international application will not be published by the International Bureau (IB) at 18 months. The application will, however, be published by the USPTO
if it enters the national stage in the United States. It will be published again if it is allowed to issue as a United States patent. See MPEP § 1803.

37

Section 102/103 rejection:

Section 102/103 rejection: Although the examiner should not typically issue cumulative rejections, in some circumstances it is appropriate to issue a 102/103 rejection of the same claim. For example, while a finding of nonequivalence prevents a prior art element from anticipating a means or step plus function limitation in a claim, it does not prevent the prior art element from rendering the claim limitation obvious to one of ordinary skill in the art. Because the exact scope of an equivalent may be uncertain, it would be appropriate to apply a Section 102/103 rejection where the balance of the claim limitations are anticipated by the prior art relied on. See MPEP § 2183. Also, where an applicant claims a composition in terms of a function (that is, a product by process claim), and the prior art is the same as that of the claim but the function is not explicitly disclosed by the reference, the examiner may make a rejection under both Section 102 and 103, expressed as a 102/103 rejection. Question asked when is it not appropriate for an examiner to issue a 102/103 rejection. Correct answer was when such a rejection would be cumulative.

38

KSR

The six other rationales identified in the 2007 KSR Guidelines are: (1) Combining prior art elements according to known methods to yield predictable results; (2) simple substitution of one known element for another to obtain predictable results; (3) use of a known technique to improve similar devices, methods, or products in the same way; (4) applying a known technique to a known device, method, or product ready for improvement to yield predictable results; (5) obvious to try— choosing from a finite number of identified, predictable solutions, with a reasonable expectation of success; and (6) known work in one field of endeavor may prompt variations of it for use in either the same field or a different one based on design incentives or other market forces if the variations are predictable to one of ordinary skill in the art. Any rationale employed must provide a link between the factual findings and the legal conclusion of obviousness.

Graham v. John Deere, 383 U.S. 1, 17– 18 (1966) (scope and content of the prior art; differences between the claimed invention and the prior art; level of ordinary skill in the art; and secondary indicia of nonobviousness)

39

International Application and prior art dates

An international publication may be used as prior art under 102(a) and (b) as of its publication date. It may be used under 102(e) as of its filing date if the international application:

Was filed on or after November 29th, 2000.

Designated the U.S. (and)

Was published in English.

40

PCT Art 19 vs. 34 amendments

The international application may include amendments made under Article 19 and Article 34. Article 19 amendments are exclusively amendments to the claims after the international search report has been established. Article 19 amendments are transmitted to the IPEA by the International Bureau. Under Article 34 the applicant has the right to amend the claims, the description, and the drawings before the start of international preliminary examination.