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21 Cards in this Set

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What is examination and how does it start?
examiner is assigned application and examination begins with a review of the file to make sure all parts are present and then it is placed in storage racks awaiting a first Office action

After taking case for examination, examiner first reads specification and claims then searches the prior art
What is a "requirements for information"?
in some cases examiner may desire to request certain types of info from applicant orothers associated wiht the filing or prosecution of the patent app, including an assignee

Info may include commercial databases, search of prior art, or other related info
What info may be required?
examiner is authorized to request any info reasonable necessary to proply examine the application

must be a reasonable basis for the info required (usually pertains to info necessary to find prior art)

requirement for info should be narrowly specified and limited in scope
When may a requirement for info be made?
it is discretionary and may be made at any time once the necessity is reognized (usually prior to or with the first Office action)
What constitutes a reply?
replies must be filed within the time period set including any extensions under 37 CFR 1.136 to avoid abandonment

applicnt must reply with info resonably and readily available where there is a reasonable necessity to the examineation, even if this info would not be required under the duty of disclosure
What is a complete reply?
a reply to each item requirested by the examiner or a statement that the info is unknown and/or is not readily available
What is an incomplete reply?
it is handled like an incomplete amendment under 37 CFR 1.135(c)

if reply was a bona fide attempt but through inadvertence incomplete, applicant will be a given a new time period to supply the ommission
What if applicant or others (assignee or other involved in application) feel that the request is unfair?
applicants may seek to have the requirement withdrawn or modified by fliling a petition under 37 CFR 1.181 but the time period to reply continues to run
What is a rejection of a claim?
if the invention is not considered patentable as claimed, than the claimes will be rejected

a rejection means that the claims do not define a usefule, novel, nonobvious and enabled invention clearly described in the specification

examiner must cite best references available

rejections are appealable to Board of Appeals and Interferences
What can an applicant do if a claim is rejected in an Office action?
applicant can file a reply to the Office action with or without amendment under 37 CFR 1.111

application will be reconsidered and examined in the same manner and applicant may reply to each non-final Office action

final rejections can be replied to under 37 CFR 1.116

second Office action is almost always made final
What is an objection?
if the form of a claim is improper, an objection is made which is reviewable by way of petition
What is prior art?
defined by statute under 102 as items predating applicant filing date, earliest effective date or foreign filing date

types of prior art all relate to objective evidence that applicant was not the first to invent in the US or applicant did not make the invention or an inventio by another was accessible in the US or elsewhere in the world before this invention date, or applicant delayed filing application beyond the 1 year grace period
What is the difference between 102 and 103 prior art?
rejection based on 102 prior art is made where the invention is found in one single reference (evidence that a conception of the invention has taken place b/c th reference teaches all features of it)

rejection based on 103 prior art usually requires the teaching from a number of references and their modification (combination of elements or features from a number of conceved inventions) wouldhave been obvious to one with ordinary skills at the time invention was made
What is an effective filing date?
(a) continuation or divisional app of one or more earlier US apps - same as earliest filing date in the line of contination or divisional apps
(b) continuation in part of ealier US app - any claims in new app not supported by the specification and claims of parent app have dage equal to filing date of new app; claims fully suppoerted have effective filing date of earlier parent app
(c)app claiming foreign priority - date of US app unless (a) or (b) applies (filing date of foreign priority document is not effective date, although filing date of forein priority document may be used to overcome certain references
(d) app entitle to priority from provisional app - filing date of provisional app
How is the effective filing date used?
it is considered the date the application was filed in the US and examiner uses it for purposes of applying prior art usually comparing it with a date of reference to determine whether a rejection should be made
What are the 6 standard ways of avoiding a rejection based on 102 prior art?
(1) persuasively arguing that claims are patentably distinguishable from prior art
(2) amending claims to patentably distinguish over the prior art
(3) filing ffidavit or declaration showing that the reference invention is not by "another"
(4)filing affidavit or declaration showing prior invention if the reference is not a US patent or US patent app publication claiming the same patentable invention
(5)perfecting a claim to priority under 35 USC 119(a)-(d); foreign priority filing date must antendate the reference and be perfected; filing date of priority document is not perfected unless applicant has filed a certified priority document in the app and examiner has established that the prioriey document satisfies the enablement and description requirements
(6) perfecting priority under 35 USC 119(e) or 120 within the time periods set or filing a grantalbe peition by amending the apecification fo the app to contain a specific reference to a priot app or by filing applicaiton data sheet which contains a specific reference to a prior app and by establishing that the prior app satisfies the enablement and wrtieen descritption requireemnts
Explain the approach (1).
it is based on a comparis on of the applican't claimed invention and the invention discosed in the reference

applicant can claim that all of the features of the invention are not found in the reference in which case emaniner may withdraw the rejection
Explain the approach (2).
amends claims and then states that all of the features of the invention are not found in the reference

any chancges must be fully supporte in the application as filed
Explain the approact (3)
certain types of prior art must be disclosing inventions by another which means another inventive entity but insome cases the invention disclosed in the refeence is the invention made by the applicant
Explain approach (4)
certain types of prior art must predate the applicants invention date

if inventor had the foresignt to carefully document his or her invention dates, they can file an affidavit showing prior inventiona nd submit evidence of invention dates
Explain approach (5) and (6)
applicant should have taken the necessary steps to claim the bvenefit of earlier US applications and a foreign priority date some time before the examination starts

usually this will not be necssary becasue the examiner will not make the rejection in the first place