Examination Of Nonprovisional Applications - Pi Patent Exam Prep

Front 1

In what order are applications examined?

Back 1

Earliest U.S. filing date; not foreign priority date.

Front 2

What are the rule and requirements for suspension of examination by the office?

Back 2

Rule 103(e) and (f):
- Maximum is 6 months and to be avoided if possible.

Front 3

What are the rule and requirements for suspension of examination by the applicant?

Back 3

1. For good cause Rule 103(a):
- A petition and fee,
- Maximum of 6 months,
- No office action is outstanding.
2. In application with RCE or CPA (in design application). Rule 103(b) and (c):
- Request must be filed with RCE request or CPA,
- 3-month maximum period,
- A processing fee is required.
3. Deferral of examination for published application. Rule 103(d):
- 3 year maximum, from earliest effective filing date.

Front 4

Requirements for entering a third party protest:

Back 4

1. Identifies the application,
2. Protest is filed before publication or notice of allowance,
3. Is served upon the applicant, or, if service is not possible, filed in duplicate in the USPTO.

Front 5

What happens with a protest raising fraud or inequitable conduct?

Back 5

It is just entered in the file. The USPTO doesn't make an investigation.

Front 6

What is a protestor limited to in entering their protest?

Back 6

1. Listing of patents, documents, etc.,
2. Concise explanation of the relevance of each listed item,
3. Copy of each item in written form (or relevant portions),
4. Translation of non-English documents.

Front 7

Does an applicant need to enter a response to a protest?

Back 7

Not unless requested by the USPTO.

Front 8

How are claims construed during examination?

Back 8

1. Broadest reasonable interpretation,
2. In light of the disclosure in the application as filed and the teachings of the prior art,
3. Viewed from the perspective of PHOSITA.

Front 9

What may an examiner base their §102 or §103 rejections on?

Back 9

§102 events, admissions, or (rarely)
"official notice".

Front 10

When can an examiner take official notice of something in the prior art?

Back 10

1. Only when the facts are capable of instant and unquestionable demonstration as being well known (defy dispute),
2. Ordinarily there must be some form of evidence in the record to support an assertion of common knowledge,
3. If applicant adequately traverses the examiner's assertion, the examiner must provide supporting documentary evidence in the next Office action,
4. If the examiner is relying on personal knowledge, they must provide an affidavit setting forth specific factual statements and an explanation (Rule 104).

Front 11

Rejections under §112 paragraph 1:

Back 11

1. Specification lacks written description of claimed invention,
2. Specification does not enable making or use of claimed invention,
3. Specification fails to disclose the best mode.

Front 12

Rejections under §112 paragraph 2:

Back 12

1. Claim is indefinite (fails to "particularly point out and distinctly claim" the invention),
2. Claim fails to claim "the subject matter which the applicant regards as his invention".

Front 13

What is the basis for §112 paragraph 2 rejections based on a claim that fails to claim "the subject matter which applicant regards as his invention"?

Back 13

Rejection must be based on statements outside the application as filed (admission in a brief or remarks). There is a presumption that the claimed invention is what the applicant regards as their invention under MPEP §2172.

Front 14

Rejection based on res judicata is proper when?

Back 14

Proper with respect to a claim or obvious variant (or issue) that has been finally adjudicated, unless new evidence is presented.

Front 15

What must an examiner set forth in an office action for it to be complete?

Back 15

1. Status of every claim,
2. Reasons for rejection of rejected claims, including statutory basis (multiple bases should be made if applicable),
3. Reasons for allowance of claims,
4. Claims that are allowable but for matters of form,
5. Citation of references.

Rule 104
MPEP §707.07

Front 16

Examiner my request information regarding:

Back 16

1. Commercial databases to search,
2. Searches conducted by applicant,
3. Relevant publications, patents and applications of the inventor(s),
4. Information used to draft the application,
5. Information used in the invention process,
6. If claimed invention is an improvement, what is improved,
7. Known use of the invention as of filing data.

Front 17

What must a reply to an examiner's request for information contain?

Back 17

Reply must either provide the requested information or state that it is unknown or not readily available.

Rule 105

Front 18

When is a final rejection proper?

Back 18

On the second or any subsequent action on the merits, unless the action introduces a new ground of rejection not necessitated by applicant's amendment or submission of an IDS filed after the first Office action on the merits (e.g. adding a new reference).

General Rule:
A. Final is proper when the same rejection is being repeated,
B. Final is proper when a new rejection is being made of new or amended claims,
C. Final is not proper when a new rejection is being made of the same claims.

Front 19

When is final rejection proper on the first action?

Back 19

(a) The application is a continuing or substitute application, and
(b) All of the claims:
(i) Are drawn to the same invention claimed in the first application, and
(ii) Would have been properly finally rejected in the first application.

Front 20

When is final rejection not proper on the first action?

Back 20

(a) The application is a continuing or substitute application containing material that was denied entry in the earlier application as raising new issues or presenting new matter, or
(b) The application is a CIP with a claim to subject matter not present in the earlier application.