Patent bar outline

Patent Bar Outline
Outline and Factoids

§ 103 Right of Public To Inspect Patent Files and
Some Application Files
If a patent application has been published, then a copy of the specification,
drawings, and all papers relating to the file of that published application may
be provided to any person upon written request and payment of the fee.

§ 106 Control of Inspection by Assignee
The assignee of record of the entire interest in an application may intervene in
the prosecution of the application, appointing an attorney or agent of his own
choice. Such intervention, however, does not exclude the applicant from
access to the application to see that it is being prosecuted properly, unless
the assignee makes specific request to that effect
An inventor that did not sign the oath or declaration is entitled to inspect any
paper sign the application, and order copies
An inventor that did not sign the oath or declaration cannot revoke or give power
of attorney without agreement of all named inventors of the applicant
An inventor who has assigned his rights is not empowered to exclude a non-

§ 201.06 Divisional Application
A continuation application may be filed by providing a new specification and
drawings and a newly executed declaration provided the new specification
and drawings do not contain any subject matter that would have been new
matter in the prior application
A complete continuation application by the same inventors as those named in
the prior application may be filed by providing a new and proper specification
(including one or more claims), any necessary drawings, a copy of the signed
declaration as filed in the prior application (the new specification, the claim(s),
and drawings do not contain any subject matter that would have been new
matter in the prior application), and all required fees

§ 201.08 Continuation-in-Part Application
A CIP is an application filed during the lifetime of an earlier nonprovisional
application by the same applicant, which repeat either some or substantial
portion or all of the earlier nonprovisional application, and adds matter not
disclosed in the said earlier nonprovisional application
A CIP may only be filed under 1.53(b)
A CIP cannot be filed as a continued prosecution application under 1.53(d)
An application claiming the benefits of a provisional application under 119(e)
should not be called a CIP of the provisional application

§ 300 Ownership and Assignment
Assignment data printed on the patent will be based solely on the information
supplied on the Issue Fee Transmittal Form
Irrespective of whether the assignee participates in the prosecution of the
application, the patent issues to the assignee if so indicated on the Issue Fee
Transmittal form
A new assignment document need not be recorded for a divisional or
continuation application where the assignment recorded in the parent
application remains the same

§ 306 Assignment of Division, Continuation,
Substitute, and CIP in Relation to Parent Application
A prior assignment recorded against the original application is applied to the
division or continuation application because the assignment recorded against
the original application gives the assignee rights to the subject matter
common to both applications

§ 409 Death, Legal Incapacity, or Unavailability of
Inventor
The fact that a nonsigning inventor is on vacation or out of town and is therefore
temporarily unavailable to sign the declaration is not an acceptable reason
An acceptable reason for filing an application with a declaration signed by a joint
inventor on behalf of himself and the nonsigining joint inventor is the
nonsigning joint inventor refuses to join in the application

§ 410 Representations to the Patent Office
The certification requirement has permitted the PTO to eliminate the separate
verification requirement

§ 500 Receipt and Handling of Mail and Papers
§ 502.01 Correspondence Submitted by Facsimile
Correspondence not permitted to be filed by facsimile transmission includes:
National patent application specification and drawing (provisional or nonprovisional) or
other correspondence for the purpose of obtaining an application filing date, other than a
continued prosecution application
Continued prosecution is permitted
§ 509 Payment of Fees
With the exception under § 1.53 an application for patent may be assigned a filing date without
payment of the basic filing fee, fees and charges payable are required to be paid in advance,
that is, at the time of requesting any action

§ 600 Parts, Form, and Content of Application
§ 601.01 Complete Applications
The filing fee for a non-provisional application can be submitted after the filing date
A filing date for a non-provisional application is granted on the date on which a specification
containing a description and at least one claim, and any drawing required are filed
A provisional application requires:
A specification, a drawing (as prescribed), an application fee, and a cover sheet complying with
the rule
A provisional application does not require a claim
§ 601.01(c)

§ 601.05 Bibliographic Information - ADS
The information relating to the naming of inventors and the information relating
to setting forth citizenship is governed by the oath or declaration regardless of
whether or not the ADS is filed after the oath or declaration
An ADS is a voluntary submission in either a provisional application or a
nonprovisional application
The oath or declaration governs any inconsistency with the ADS when the
inconsistency relates to the setting forth the citizenship of the inventor(s)
Captured bibliographic information derived from an application data sheet
containing errors may be recaptured by a request therefor and the submission
of a supplemental application data sheet, an oath, or declaration or a letter

§ 605 Applicant
Effective September 16, 2012, the Office revised the rules of practice to permit a person to whom the
inventor has assigned or is under an obligation to assign an invention to file and prosecute an
application for patent as the applicant, and to permit a person who otherwise shows sufficient
proprietary interest in the matter to file and prosecute an application for patent as the applicant on
behalf of the inventor. See MPEP § 605.01 for information regarding the applicant in applications
filed on or after September 16, 2012.
For applications filed before September 16, 2012, a person to whom the inventor assigned an invention
could file and prosecute an application for patent, but the inventor is considered the applicant. See
MPEP § 605.02 for information regarding the applicant in applications filed before September 16,
2012.

§ 608.01 Specification
The specification, including the claims, may contain chemical and mathematical
formulae, but shall not contain drawings or flow diagrams
Claims in a patent application may contain tables not necessary to conform with
§ 112
§ 608.01(n) Dependent Claims
For fee calculation purposes, a multiple dependent claim will be considered to be that number of
claims which direct reference is made therein. Also, any claim depending from a multiple
dependent claim will be considered to be that number of claims to which direct reference is
made in that multiple dependent claim.

§ 608.01 Specification (cont.)
§ 608.01(n) Dependent Claims
A proper multiple dependent claim must refer back in the alternative only (ex. as in claims 1, 2, or
3 . . .)
A proper multiple dependent claim refers in the alternative to only one set of claims
A proper multiple dependent claim depends only from preceding claims
“Any of the preceding claims” is acceptable multiple dependent claim wording
§ 608.01(p) Completeness of Specification
It is not proper to incorporate non-essential material by reference to a hyperlink
Abandoned applications less than 20 years old can be incorporated by reference if commonly

§ 608.02 Drawings
Unless applicant is otherwise notified in an Office action, objections to the
drawings in a utility or plant application will not be held in abeyance
A request to hold objections to drawings in abeyance will not be considered a
bona fide attempt to advance the application to final action
Correcting objected to drawings to comply and make suitable for reproduction is
a bona fide response
The Office no longer considers drawings as formal or informal. Drawings are
either acceptable or unacceptable. Drawings will be accepted by the Office if
the drawings are readable and reproducible for publication purposes.

§ 609 Information Disclosure Statement
The practitioner must certify that no item of information contained in the IDS
was known to any individual designated more than three months prior to the
filing of the IDS.

§ 704 Replies to a Requirement for Information
§ 704.12(b) What Constitutes a Complete Reply
A reply stating that the information required to be
submitted is unknown and/or is not readily available to
the party or parties from which it was requested will
generally be sufficient, unless the reply was
ambiguous and a more specific answer is possible

§ 706 Rejection of Claims
A rejection involves the merits of the claim and is subject to review by the Board
If the form of the claim (as distinguished from its substance) is improper, an
objection is made
An objection, if persisted, may be reviewed only by way of petition to the
Commissioner
An example of a matter of form as to which objection is made is dependency of
a claim on a rejected claim, if the dependent claim is otherwise allowable

§ 706.03(x) Reissue
35 U.S.C. 251 forbids the granting of a reissue “enlarging the scope of the claims of the original patent”
unless the reissue is applied for within 2 years from the grant of the original patent (or the reissue
application properly claims the benefit of a broadening reissue application filed within 2 years of the
patent grant). This is an absolute bar and cannot be excused. This prohibition has been interpreted
to apply to any claim which is broader in any respect than the claims of the original patent. Such
claims may be rejected as being barred by 35 U.S.C. 251.
For a reissue application filed prior to September 16, 2012, 35 U.S.C. 251 permits the filing of a reissue
application by the assignee of the entire interest only in cases where it does not “enlarge the scope
of the claims of the original patent.” For reissue applications filed on or after September 16, 2012,
the assignee of the entire interest may file the reissue application if (1) the application does not seek
to enlarge the scope of the claims of the original patent, or (2) the application for the original patent
was filed under 37 CFR 1.46 by the assignee of the entire interest. Such claims which do enlarge
the scope may also be rejected as barred by the statute.
A defective reissue oath affords a ground for rejecting all the claims in the reissue application.

§ 706.07(b) Final Rejection, When Proper on First
Action
The claims of a new application may be finally rejected in the first Office action in those situations where (A) the new application is a
continuing application of, or a substitute for, an earlier application, and (B) all claims of the new application (1) are drawn to the
same invention claimed in the earlier application, and (2) would have been properly finally rejected on the grounds and art of
record in the next Office action if they had been entered in the earlier application.
The claims of an application for which a request for continued examination (RCE) has been filed may be finally rejected in the action
immediately subsequent to the filing of the RCE (with a submission and fee under 37 CFR 1.114) where all the claims in the
application after the entry of the submission under 37 CFR 1.114 (A) are drawn to the same invention claimed in the application
prior to the entry of the submission under 37 CFR 1.114, and (B) would have been properly finally rejected on the grounds and
art of record in the next Office action if they had been entered in the application prior to the filing of the RCE under 37 CFR
1.114.
It would not be proper to make final a first Office action in a continuing or substitute application or an RCE where that application
contains material which was presented in the earlier application after final rejection or closing of prosecution but was denied
entry because (A) new issues were raised that required further consideration and/or search, or (B) the issue of new matter was
raised.
It would not be proper to make final a first Office action in a continuation-in-part application where any claim includes subject matter

§ 706.07(f) Time for Reply to Final Rejection
Examiner’s amendment
Where a complete first reply to a final Office action has been filed within 2 months of the final
Office action
An examiner’s amendment to place the application in condition for allowance may be made
without payment of extension fees
Where a complete first reply to a final Office action has not been filed within 2 months of the final
Office action
Applicant's authorization to make an amendment to place the application in condition for
allowance must be made either within the 3 months shortened statutory period, or
Within an extended period for reply that has been petitioned and paid for

§ 708.02 Petition to Make Special
(c) A petition to make an application special may be filed without a fee if the
basis for the petition is:
(1) The applicant’s age or health; or
(2) That the invention will materially:
(i) Enhance the quality of the environment;
(ii) Contribute to the development or conservation of energy resources; or
(iii) Contribute to countering terrorism.
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

§ 709 Suspension of Action
The period of filing a proper reply after a final rejection is six months, after
which, the application becomes abandoned
If a reply to an outstanding Office action does not accompany an RCE, the RCE
is improper and the Office will not recognize the request for suspension

§ 710 Period for Reply
§ 710.02(e) Final Rejection - Time for Reply
Applicant must, within two months from the date of the notice of appeal OR within the time
allowed for reply to the action from which the appeal was taken, if such time is later file a brief
The time allowed applicant for reply to the action from which the appeal was taken may be the
mail date of the Advisory Action

§ 713 Interviews
A request for an interview prior to the first Office Action is ordinarily granted in continuing or substitute
applications. A request for an interview in all other applications before the first action is untimely and
will not be acknowledge if written, or granted if oral
Interview will not be permitted off Office premises without the authority of the Commissioner
Interview for the discussion of the patentability of a pending application will not occur before the first
Office action, unless the application is a continuing or substitute application
An interview should be had only when the nature of the case is such that the interview could serve to
develop and clarify specific issues and lead to a mutual understanding between the examiner and
the applicant, and thereby advance the prosecution of the application

§ 714.02 Must Be Fully Responsive
The reply to a non-final Office action must present arguments pointing out the
specific distinctions believed to render the claims, including any newly
presented claims, patentable over any applied references
Even if a reply includes an amendment canceling all the claims and adding new
claims, the reply must include how the newly presented claims overcome the
rejections or point out the supposed errors by the examiner

§ 715 Swearing Behind a Reference
It is sufficient to clearly establish conception of the invention prior to the
effective date of the reference, and diligence from just prior to the effective
date of the reference to actual reduction to practice
Applicant must show evidence of facts establishing diligence
The affidavit or declaration must state facts and produce such documentary evidence and
exhibits in support thereof as are available to show conception and completion of invention in
this country or in a NAFTA or WTO member country

§ 716 Affidavits or Declarations Traversing Rejection
Probative evidence of commercial success to support a contention of non-
obviousness in a utility case includes:
Gross sales figures accompanied by evidence as to market share
Gross sales figures accompanied by evidence as to the time period during which the product was
sold
Gross sales figured accompanied by evidence as to what sales would normally be expected in
the market
Gross sales figures must be measured against a logical standard in order to
determine whether or not there is commercial success
A rejection on the adequacy of the enabling disclosure should be overcome by

§ 804.02 Avoiding a Double Patenting Rejection
Statutory
A rejection based on the statutory type of double patenting can be avoided by amending the
conflicting claims so that they are not coextensive in scope
A terminal disclaimer is not effective
Use of 1.131 affidavit is inappropriate
Nonstatutory
Can be avoided by filing a terminal disclaimer in the application
The filing of a terminal disclaimer to obviate a rejection based on nonstatutory double patenting is
not an admission of the propriety of the rejection

§ 818 Election and Reply
An immediate appeal for a restriction cannot be taken until the restriction
requirement is made final
The applicant is required to specifically point out the reasons on which he bases
his conclusions that a requirement to restrict is in error. An election must be
made even if the requirement is traversed.

§ 1204 Notice of Appeal
PATENT APPLICANT.— An applicant for a patent, any of whose claims has
been twice rejected, may appeal from the decision of the primary examiner to
the Patent Trial and Appeal Board, having once paid the fee for such appeal.
(b) PATENT OWNER.— A patent owner in a reexamination may appeal from
the final rejection of any claim by the primary examiner to the Patent Trial and
Appeal Board, having once paid the fee for such appeal.

§ 1205 Appeal Brief
If the examiner disagrees with the reasons given, the reason for disagreement
should be addressed in the Examiner’s Answer
Appellant must file a brief under this section within two months from the date of
filing the notice of appeal
Where the applicant omits the statement required, whether the claims stand or
fall together, yet presents arguments in the argument section of the brief, the
applicant should be notified of noncompliance and given time to correct the
deficiency
Where an appeal brief fails to address any ground of rejection, appellant shall
be notified by the examiner that he must correct the defect by filing a brief

§ 1205 Appeal Brief (cont.)
The Board has the responsibility for determining whether appeal briefs filed in patent
applications comply with 37 CFR 41.37, and will complete the determination before the
appeal brief is forwarded to the examiner for consideration. The determination should
be completed within approximately one month from the filing of the appeal brief. If the
appeal brief is determined to be compliant with the rules or it contains only minor
informalities that do not affect the Board panel’s ability to render a decision, the Board
will accept the appeal brief and forward it to the examiner for consideration. If the Board
determines that the appeal brief is non-compliant with 37 CFR 41.37 and sends
appellant a notice of non-compliant brief requiring a corrected brief, appellant will be
required to file a corrected brief within the time period set forth in the notice to avoid the
dismissal of the appeal. The Board will also have the responsibility for determining
whether corrected briefs comply with 37 CFR 41.37.

§ 1206 Amendments and Affidavits or Other
Evidence Filed With or After Appeal
Amendments filed after the filing of a notice of appeal, but prior to the date of
filing a brief, may be admitted only to:
(A) cancel claims;
(B) comply with any requirement of form expressly set forth in a previous action;
(C) present rejected claims in better form for consideration on appeal; or
(D) amend the specification or claims upon a showing of good and sufficient reasons why the
amendment is necessary and was not earlier presented.

§ 1206 Amendments and Affidavits or Other
Evidence Filed With or After Appeal (cont.)
An appellant must perform two affirmative acts in the brief to receive separate
consideration of the patentability of a plurality of claims that are subject to the
same rejection. The appellant must (1) state that the claims do not stand or
fall together and (2) present arguments why the claim subject to the same
rejection are separately patentable.
Where the appellant only performed the two affirmative acts with respect to
specific claims, only those claims are considered by the Board separately for
patentability

§ 1208 Reply Briefs
The question of whether an answer contains a new ground of rejection is a
petitionable, not appealable, matter
Any allegation that an examiner’s answer contains an impermissible new
ground of rejection is waived if not timely raised by way of a petition
To avoid waiver of the right to contest the examiner’s action, the appellant must file a timely
petition.

§ 1211 Remand by Director or Board
The Board may remand to the examiner for a fuller description of the claimed
invention
The Board may remand to the examiner for a clearer explanation of the
pertinence of the references
The Board may remand for a selection by the primary examiner of a preferred or
best ground of rejection when multiple rejections of a cumulative nature have
been made by the examiner
The Board has no authority to require the examiner to consider an affidavit
which has not been entered after final rejection and which was filed while the
application was pending before the examiner

§ 1214 Procedure Following Decision by Board
Claims indicated as allowable prior to appeal except for their dependency from
rejected claims will be treated as if they were rejected
Where the Board reverses the rejection of the dependent claims and affirms the
rejection of the independent claims:
The examiner may convert the dependent claims into independent form by examiner’s amendment,
cancel the affirmed independent claims and allow the application
The examiner may mail an Office action setting a 1-month time limit in which the applicant may
rewrite dependent claims in independent form. If no timely reply is received, the examiner should
amend the dependant claims into independent form and allow the application
The mailing of a Board decision does not abandon an application

§ 1308 Withdrawal from Issue
A petition to withdraw the application from issue is not required if a proper RCE
is filed before payment of the issue fee
A practitioner can file a continuing application on or before the date that the
issue fee is due and permit the parent application to become abandoned for
failure to pay the issue fee
A petition to withdraw the application from issue can be filed after payment of
the issue fee to permit the express abandonment of the application in favor of
a continuing application
A petition to withdraw the application from issue can be filed after the payment
of the issue fee to permit consideration of a RCE

§ 1306 Issue Fee
The time period set for the payment of the issue fee is statutory and cannot be
extended. However, if payment is not timely made and the delay in making
the payment is shown to be unavoidable, upon payment of a fee for delayed
payment, it may be accepted as though no abandonment had occurred, but
there will be a reduction on the patent term adjustment for the period of
abandonment
Deferral is not available following the notice of allowance

§ 1400 Correction of Patents
§ 1401 Reissue
35 U.S.C. 251 and pre-AIA 35 U.S.C. 251 permit the reissue of a patent to correct an error in the
patent and provide criteria for the reissue. Pre-AIA 35 U.S.C. 251 requires that any error to be
corrected must have been made “without deceptive intention.” Effective September 16, 2012,
Public Law 112-29, sec. 20, 125 Stat. 284 (Leahy-Smith America Invents Act (AIA)), amended
35 U.S.C. 251 to eliminate the “without deceptive intention” clause. This law as amended
applies to reissue applications filed on or after September 16, 2012. 37 CFR 1.171 through
1.178 are rules directed to reissue.
A dependent claim is construed to contain all the limitations of the claim upon
which it depends, therefore it must be at least as narrow as the independent
claims upon which it depends and is not a broadened reissue claim
There must be at least one error in the patent to provide grounds for reissue of

§ 1400 Correction of Patents (cont.)
In a reissue application, additions and deletions to the original patent should be
made by underlining and bracketing, respectively, except for changes made
in prior Certificates of Correction and disclaimer(s) of claims under § 1.321(a)

§ 1400 Correction of Patents (cont.)
§ 1412.02 Recapture of Cancelled Subject Matter
Recapture occurs when the claim is broadened. Adding a limitation would narrow the claim.
§ 251 prescribes a 2-year limit for filing applications for broadening reissues
If the limitation now being omitted or broadened in a reissue was originally
presented/argued/stated in the original application to make the claims allowable over a
rejection or objection made in the original application is impermissible recapture
§ 1412.03 Broadening Reissue Claims
Broadening reissue applications must be filed within two years of issuance of the original patent

§ 1412.04 Correction of Inventorship by Reissue
While reissue is a vehicle for correcting inventorship in a patent, correction of inventorship should be
effected under the provisions of 35 U.S.C. 256 and 37 CFR 1.324 by filing a request for a Certificate
of Correction if:
(A) the only change being made in the patent is to correct the inventorship; and
(B) all parties are in agreement and the inventorship issue is not contested.
Where the provisions of 35 U.S.C. 256 and 37 CFR 1.324 do not apply, a reissue application is the
appropriate vehicle to correct inventorship.
The reissue oath or declaration pursuant to 37 CFR 1.175 must state that the applicant believes the
original patent to be wholly or partly inoperative or invalid through error of a person being incorrectly
named in an issued patent as the inventor, or through error of an inventor incorrectly not named in
an issued patent, and, for applications filed before September 16, 2012, must also state that such
error arose without any deceptive intention on the part of the applicant.

§ 1481 Certificate of Correction
Two separate statutory requirements must be met before a Certificate of Correction for an applicant’s
mistake may issue. The first statutory requirement concerns the nature, i.e., type, of the mistake for
which a correction is sought. The mistake must be:
(1) of a clerical nature,
(2) of a typographical nature, or
(3) a mistake of minor character.
The second statutory requirement concerns the nature of the proposed correction. The correction must
not involve changes which would:
(1) constitute new matter or
(2) require reexamination.

§ 1500 Design Patents
Both design and utility patents may be obtained on an article of the invention
resides both in its utility and ornamental appearance
The design for an article consists of the visual characteristics embodied in or
applied to an article
Design patent applications are not included in the PTC
A claim directed to a computer-generated icon shown on a computer screen
complies with the “article of manufacture” requirements of § 171
A claimed design may encompass multiple articles or multiple parts within an
article

§ 1810 Filing Date Requirements
An international filing date is accorded to the earliest date on which the requirements under PCT Article
11(1) were satisfied. If the requirements under PCT Article 11(1) are not satisfied as of the date of initial
receipt of the international application papers, the receiving Office will invite applicant to correct the
deficiency within a set time limit. See PCT Article 11(2) and PCT Rule 20.3. In such case, the
international filing date will be the date on which a timely filed correction is received by the receiving
Office.
The request may be signed by an attorney or agent who is registered to practice before the USPTO
An all too common occurrence is that applicants will file an international application in the U.S. Receiving
Office and no applicant has a U.S. residence or nationality. Applicants are cautioned to be sure that at
least one applicant is a resident or national of the U.S. before filing in the U.S. Receiving Office
The international application must contain at least the following elements:
(a) an indication that it is intended as an international application,

§ 1900 Protest
A protest may be filed by an attorney or other representative on behalf of an unnamed
principal
Information which may be relied on in a protest includes information indicating violation of
the duty of disclosure
While a protest must be complete and contain a copy of every document relied on by the
protestor, a protest without copies of prior art documents will not necessarily be ignored
A protest must be submitted prior to the date the application was published or the mailing
of a notice of allowance, which occurs first, provided the application is pending
Since a protestor is not authorized to participate in the prosecution of a pending
application, the examiner must not communicate in any manner with the protestor

§ 2100 Patentability
The Supreme Court has held that biological materials such as microorganisms,
and non-human animals, is patentable subject matter, provided it is made by
man.
Courts have found utility for a therapeutic intervention despite the fact that an
applicant is at a very early stage in the development of a pharmaceutical
product or therapeutic regimen based on a claimed pharmacological or
bioactive compound or composition
Where the claimed and prior art products are identical or substantially identical
in structure or composition, or are produced by identical or substantially
identical processes, a prima facie case of either anticipation or obviousness
has been established

§ 2107 Examination Guidelines for the Utility
Requirement
An applicant can sustain the burden of rebutting and overcoming a showing of
no specific and credibility utility by:
Providing reasoning or arguments rebutting the basis or logic of the prima facie showing
Amending the claims
Providing evidence in the form of a declaration rebutting the basis or logic of the prima facie
showing
Providing evidence in the form of a printed publication rebutting the basis or logic of the prima
facie showing

§ 2111 Claim Interpretation; Broadest Reasonable
Interpretation
When the specification expressly provides a special definition for a term used in
the claims, the term must be given that special meaning
A term is given its plain meaning only when the specification does not provide a
definition for the term
While a claim is read in light of the specification, it is improper to narrow the
claim by interpreting it as including elements or steps disclosed in the
specification but not recited in the claim
The transitional term “comprising”, which is synonymous with “including,”
“containing,” or “characterized by,” is inclusive or open-ended and does not

§ 2111 Claim Interpretation; Broadest Reasonable
Interpretation
The transitional phrase “consisting of” excludes any element, step, or ingredient
not specified in the claim
A claim which depends from a claim which “consists of” the recited elements or steps cannot add
an element or step
The transitional phrase “consisting essentially of” limits the scope of a claim to
the specified materials or steps “and those that do not materially affect the
basic and novel characteristics of the claimed invention”

§ 2112 Rejection Based on Inherency; Burden of
Proof
Something which is old does not become patentable upon discovery of a new
property
Claiming of a new use, new function or known property which is inherently
present in the prior art does not necessarily make the claim patentable

§ 2113 Product-by-Process Claims
The best reply to a rejection would be to argue that the claimed product has an
unexpected characteristic and to support that argument with evidence
showing that the result of the prior art patent does not posses this
characteristic compared to the claimed product
Focus is on product properties
Once the examiner provides a rationale, the burden shifts to the applicant to
come forward with evidence establishing an unobvious difference between
the claimed product and the prior art product
The patentability of product-by-process claims is based on the product itself

§ 2121 Prior Art; General Level of Operability
Required to Make a Prima Facie Case
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
A non-enabling reference may qualify as prior art for the purposes of
determining obviousness
A reference contains an enabling disclosure if the public was in possession of
the claimed invention before the date of invention (pre-AIA) or filing

§ 2129 Admission as Prior Art
Figures in the application labeled “prior art” held to be an admission that what
was pictured was prior art relative to applicant’s invention
Admitted foundational discovery is a statutory bar
Where the specification discloses that the subject matter of the preamble was
invented by another before applicant’s invention, the preamble is properly
treated as prior art

§ 2137.01 Inventorship
The inventor is not required to reduce the invention to practice
An inventor must contribute to the conception of the invention
As long as the inventor maintains intellectual domination over making the
invention, ideas, suggestions, and materials may be adopted from others

§ 2143 Basic Requirements of Prima Facie case of
Obviousness
To establish a prima facie obviousness of a claimed invention, all of the claimed
limitations must be taught or suggested by the prior art
US patents may be used as of their filing dates to show that the claimed subject
matter is anticipated or obvious

§ 2144 Supporting a Rejection Under § 103
When an applicant seasonably traverses an officially noticed fact, the examiner
may cite a reference teaching the noticed fact and make the next action final
The examiner should vacate a rejection based on official notice if no support for
the noticed fact can be found in response to a challenge by the applicant
An applicant is entitled to respond to a rejection by requesting reconsideration,
with or without amending the application
Obviousness of Similar and Overlapping Ranges, Amount, and Proportions
A prima facie case of obviousness exists where the claimed ranges and the prior art are close
enough that one of ordinary skill in the art would have expected them to have the same
properties

§ 2144 Supporting a Rejection Under § 103 (cont.)
In order to rely on equivalence as a rationale supporting an obviousness
rejection, the equivalency must be recognized in the prior art, and cannot be
based on applicant’s disclosure or the mere facts that the components at
issue are functional or mechanical

§ 2163.01 Support for the Claimed Subject Matter in
Disclosure
A written description requirement issue generally involves the question of whether the subject matter of a claim
is supported by [conforms to] the disclosure of an application as filed. If the examiner concludes that the
claimed subject matter is not supported [described] in an application as filed, this would result in a rejection
of the claim on the ground of a lack of written description under 35 U.S.C. 112(a) or pre-AIA 35 U.S.C. 112,
first paragraph, or denial of the benefit of the filing date of a previously filed application. The claim should
not be rejected or objected to on the ground of new matter. As framed by the court in In re Rasmussen, 650
F.2d 1212, 211 USPQ 323 (CCPA 1981), the concept of new matter is properly employed as a basis for
objection to amendments to the abstract, specification or drawings attempting to add new disclosure to that
originally presented. While the test or analysis of description requirement and new matter issues is the
same, the examining procedure and statutory basis for addressing these issues differ.

§ 2163.06 Review of New matter Objections and
Rejections
An objection and requirement to delete new matter from the specification is subject to supervisory review by
petition under § 1.181
A rejection of claims for lack of support by the specification (new matter) is reviewable by appeal to the Board
The examiner should still consider the subject matter added to the claim in making rejections based on
prior art since the new matter rejection may be overcome by applicant.
A rejection of claims is reviewable by the Board, whereas an objection and requirement to delete new matter is
subject to supervisory review by petition.
If both the claims and specification contain new matter either directly or indirectly, and there has been both a
rejection and objection by the examiner, the issue becomes appealable and should not be decided by
petition
When the claims have not been amended, per se, but the specification has been amended to add new matter, a

§ 2172 Subject Matter Which the Inventor Regards
as the Invention
A claim which fails to interrelate essential elements of the invention as defined by applicant in the
specification may be rejected under § 112 for failure to point and and distinctly claim the invention
A claim which omits matter disclosed to be essential to the invention as described in the specification or
other statements of record may be rejected as not enabling
Failure to disclose the best mode need not rise to the level of active concealment or grossly inequitable
conduct in order to support a rejection or invalidate a patent
The best mode requirement is a separate and distinct requirement from the enablement requirement
If there is no disclosure of the best mode contemplated by the inventor at the time the application is filed,
such a defect cannot be cured by submitting an amendment seeking to put into the specification
something required to be there when the patent application was originally filed

§ 2173 Claims Must Particularly Point Out and Distinctly
Claim the Invention
§ 2173.02 Definiteness of claim language must be analyzed, not in a vacuum, but in light of:
The content of the particular application disclosure
The teachings of the prior art
The claim interpretation that would be given by one possessing the ordinary level of skill in the
pertinent art at the time the invention was made
§ 2173.05(c) Numerical ranges and amounts Limitations
Where the invention is a non-theoretical alloy, the sum of the claimed constituents cannot exceed
100% unless the percentage is based on weight
An effective amount has been held to be indefinite when the claim fails to state the function that is
to be achieved and more than one effect can be implied from the specification

§ 2217 Statement Applying Prior Art in a Request
Filed under 35 U.S.C. 302
A prior art patent cannot be properly applied as a ground for reexamination if it
is merely used as evidence of alleged prior public use or sale, or insufficiency
of disclosure
The prior art patent must be applied directly to the claims or relate to the
application of other prior art patents or printed publications to claims on such
grounds

§ 2258 Scope of Ex Parte Reexamination
Rejections will not be based on matters other than patents or printed
publications
Matters that will not be considered include public use or sale, inventorship, 101, conduct issues,
etc.

§ 2285 Copending Ex Parte Reexamination and
Reissue Proceedings
If both a reissue application and an ex parte reexamination proceeding are
pending concurrently on a patent, a decision will normally be made (A) to
merge the two proceedings or (B) to stay one of the proceedings

§ 101
Inventorship
Only the inventor may file for a patent
Must be a joint inventor and have sufficient proprietary interest in the invention to file a patent
application on one’s behalf
Inventorship cannot be changed when there is deceptive intent
A § 101 deficiency also creates a deficiency under § 112
If compositions are in fact useless, the specification cannot have taught how to use them
It is not essential that the invention accomplish all its intended functions

§ 102
A reference is no less anticipatory if, after disclosing the invention, the reference
then disparages it
The question whether a reference “teaches away” from the invention is
inapplicable to an anticipation analysis
An extra reference or evidence can be used to show an inherent characteristic
of the thing taught by the primary reference

pre-AIA § 102(b) & § 102(a)
A statutory bar cannot be overcome by acquiring the patent
On sale activities is not a proper subject matter for reexamination, and
inequitable conduct cannot be resolved or absolved by reexamination
pre-AIA § 102(b) “on sale” is “in this country”; § 102(a) “on sale” does not have
a geographic limit

pre-AIA § 102(a)
To perfect priority after a properly based 102(a) rejection, it is necessary to
amend the specification of the application to contain a specific reference to a
prior application having a filing date prior to the reference

pre-AIA § 102(e) & 102(a)(2)
The subject matter of an abandoned application, including both provisional and
non-provisional applications, referred to in a prior art US patent or US patent
application publication may be relied on in a 102(a)(2) or pre-AIA 102(e)
rejection based on that patent or patent application publication if the
disclosure of the abandoned application is actually included or incorporated
by reference in the patent

pre-AIA § 102 & § 102(b)
DISCLOSURES MADE 1 YEAR OR LESS BEFORE THE EFFECTIVE FILING
DATE OF THE CLAIMED INVENTION.—A disclosure made 1 year or less
before the effective filing date of a claimed invention shall not be prior art to
the claimed invention under subsection (a)(1) if
(A) the disclosure was made by the inventor or joint inventor or by another who obtained the
subject matter disclosed directly or indirectly from the inventor or a joint inventor

pre-AIA § 102(d)
An application must issue into a patent before it can be applied in a § 102(d)
rejection
To establish a bar, the foreign patent or inventor’s certificate must be actually
granted, it need not be published
If an applicant files a foreign application, later files a US application claiming
priority based on the foreign application, and then files a CIP application
whose claims are not entitled to the filing date of the US parent, the effective
filing date of the CIP application is the filing date of the CIP. Thus, the
applicant cannot obtain the benefit of either the US parent or foreign
application filing dates.

pre-AIA § 102(e)
To overcome a rejection properly based on § 102(e):
May argue that the claims are patentably distinguishable from the prior art
File an affidavit or declaration showing that the reference invention is not by “another”
File an affidavit or declaration showing prior invention, if the reference is not a US patent that
either claims the same invention or claims an obvious variation of the subject matter in the
rejected claims
Refers to patents and patent applications only
If (1)…the applications are commonly assigned and (2) the effective filing dates
are different, then a provisional rejection of the later filed application should
be made

pre-AIA § 102(g)
A process is reduced to actual practice when it is successfully performed
The same evidence sufficient to establish a constructive reduction to practice is
not necessarily sufficient to establish actual reduction to practice
The entire period during which diligence is required must be accounted for by
either affirmative acts or acceptable excuses
Work relied upon to show reasonable diligence must be directly related to the
reduction to practice
No prior patent application nor issued patent is required for a rejection under
this section

pre-AIA § 103(a) and § 103
The claimed invention as a whole must be considered. The proper question is
whether the invention as a whole, not just the differences between the prior
art and the claims, would have been obvious.
An obviousness analysis requires consideration not just of what is literally
recited in the claims, but also of any properties inherent in the claimed subject
matter that are disclosed in the specification
The four factual inquiries following Graham are:
Determining the scope and contents of the prior art
Ascertaining the differences between the prior art and the claims in issue (claimed invention?)

pre-AIA § 103(a) and § 103
It is not necessary in order to establish a prima facie case of obviousness…that
there be a suggestion or expectation from the prior art that the claimed
[invention] will have the same or a similar utility as one newly discovered by
the applicant.

pre-AIA § 112, 2nd paragraph & § 112(b)
A Markush group is an acceptable form of alternative expression provided the
introductory phrase “consisting of”, and the conjunctive “and” are used

§ 112
The written description requirement is separate and distinct from the enablement requirement
A claim which fails to interrelate essential elements of the invention as defined by applicant in the
specification may be rejected under § 112 for failure to point and and distinctly claim the invention
A claim which omits matter disclosed to be essential to the invention as described in the specification or
other statements of record may be rejected as not enabling
Failure to disclose the best mode need not rise to the level of active concealment or grossly inequitable
conduct in order to support a rejection or invalidate a patent
The best mode requirement is a separate and distinct requirement from the enablement requirement
If there is no disclosure of the best mode contemplated by the inventor at the time the application is filed,
such a defect cannot be cured by submitting an amendment seeking to put into the specification
something required to be there when the patent application was originally filed

§ 112 (cont.)
The use of the close ended claim term “consists” in an independent claim precludes the addition of
further components in a dependent claim
The use of the exemplary language “such as” is improper in claims
An independent claim that consists of X, Y and Z is improperly broadened if the dependent claim
consists of only X and Y
An independent claim limiting a range from 50 to 60 is improperly broadened if the dependent claim
limits a range from 40 to 70
Drawings submitted after the filing date of the application may not be used to overcome any insufficiency
of the specification due to lack of an enabling disclosure
An applicant need only make one credible assertion of specific utility for the claimed invention to satisfy
§ 101 and § 112. Additional statements of utility, even if not “credible”, do not render the claimed

§ 112 (cont.)
If the examiner concludes that the claimed subject matter is not supported in an application as filed, this
would result in a rejection of the claim on the ground of a lack of written description or denial of the
benefit of filing date of a previously filed application

§ 119 Benefit of earlier filing date; right of priority
The inventions must be the same in the foreign and the US applications
Foreign priority benefit may be claimed to any foreign application that names a
US inventor as long the as the US named inventor of the foreign application
invention and § 119 requirements are met
Where two or more foreign applications are combined in a single US
application, the US application may claim benefit under § 119(a) to each of
the foreign applications
The right of priority provided for by 119 shall be six months in the case of design
patents

§ 122 Confidential status of applications; publication of patent applications
§122(b)(2)(B)(iii) An applicant who has made a request under clause (i) but who
subsequently files, in a foreign country or under a multilateral international
agreement specified in clause (i), an application directed to the invention
disclosed in the application filed in the Patent and Trademark Office, shall
notify the Director of such filing not later than 45 days after the date of the
filing of such foreign or international application. A failure of the applicant to
provide such notice within the prescribed period shall result in the application
being regarded as abandoned.

§ 133 Time for prosecuting applications
Upon failure of the applicant to prosecute the application within six months after
any action therein, of which notice has been given or mailed to the applicant,
or within such shorter time, not less than thirty days, as fixed by the Director
in such action, the application shall be regarded as abandoned by the parties
thereto.
A shortened time period for reply is not identified as a statutory period subject to
§ 133. Thus, extension of time up to 5 months under § 1.136(a), followed by
additional time under § 1.136(b), when appropriate, are permitted

pre-AIA § 251 & § 251 Reissue of Defective Patents
No reissued patent shall be granted enlarging the scope of the claims of the
original patent unless applied for within two years from the grant of the
original patent.
Whenever any patent is, through error, deemed wholly or partly inoperative or
invalid, by reason of a defective specification or drawing, or by reason of the
patentee claiming more or less than he had a right to claim in the patent, the
Director shall, on the surrender of such patent and the payment of the fee
required by law, reissue the patent for the invention disclosed in the original
patent, and in accordance with a new and amended application, for the
unexpired part of the term of the original patent. No new matter shall be
introduced into the application for reissue.

§ 371 National Stage; Commencement
A copy of the international application and the basic national fee necessary to
enter the national stage as required by 371(c) may not be submitted by
facsimile transmission

§ 1.14 Patent applications preserved in confidence.
If a redacted copy of the application was used for the patent application
publication, the copy of the specification, drawings, and papers may be
limited to a redacted copy

§ 1.27 Small entity status
Not all fees are subject to the small entity reduction
The fee for recording a document affecting title is not entitled to a reduction
If one grants a license to the Government resulting from a rights determination, it will not constitute a
license so as to prohibit claiming small entity status
One may establish small entity status by a written assertion of entitlement to small entity status
While no specific words or wording are required to assert small entity status, the intent to assert small
entity status must be clearly indicted in order to comply with the assertion requirement
The refiling of an application as a continuation, divisional, or continuation-in-part application, including a
continued prosecution, of the filing of a reissue application, requires a new assertion as to continued
entitlement to small entity status for the continuing or reissue application
Where an assignment of rights . . . to other parties who are small entities occurs subsequent to an

§ 1.28 Refunds and errors in small entity status
If small entity status is established in good faith and the small entity fees are
paid in good faith, and it is later discovered that such status as a small entity
was established in error, the error will be excused upon compliance with the
separate submission and itemization requirements and the deficiency
payment requirement
The only mechanism for correcting a good faith error in claiming small entity
status is by filing a request in compliance with § 1.28(c)

§ 1.83 Content of Drawing
If subject matter capable of illustration is originally claimed and it is not shown in
the drawing, the claim is not rejected by applicant is required to add it to the
drawing. Examiner shall require such additional illustration within a time
period of not less than two months from the date of the sending of a notice
thereof.
Drawings submitted after the filing date of the application may not be used to overcome any
insufficiency of the specification due to lack of an enabling disclosure or otherwise inadequate
disclosure therein, or to supplement the original disclosure thereof for the purpose of
interpretation of the scope of any claim.

§ 1.321
(a) A patentee may disclaim or dedicate to the public . . . any terminal part of the
term, of the patent granted

§ 1.136 Extension of time
§ 1.136(a)(1) If an applicant is required to reply within a nonstatutory or
shortened statutory time period, applicant may extend the time period for
reply up to the earlier of the expiration of any maximum period set by statute
or five months after the time period set for reply, if a petition for an extension
of time and the fee set in § 1.17(a) are filed, unless . . .

§ 1.137 Revival of abandoned application, or
terminated or limited reexamination prosecution.
(f) Abandonment for failure to notify the Office of a foreign filing. A nonprovisional
application abandoned pursuant to 35 U.S.C. 122(b)(2)(B)(iii) for failure to timely
notify the Office of the filing of an application in a foreign country or under a
multinational treaty that requires publication of applications eighteen months after
filing, may be revived pursuant to this section. The reply requirement of paragraph
(c) of this section is met by the notification of such filing in a foreign country or
under a multinational treaty, but the filing of a petition under this section will not
operate to stay any period for reply that may be running against the application.

Design patents shall be granted for the term of fourteen years from the date of
grant
Upon written request, a person citing patents and printed publications to the
Office that the person believes has a bearing on the patentability of a
particular patent, may request that his or her name remain confidential
Power of attorney
Powers of attorney to firms filed in executed applications filed after 1971, are not recognized by
the PTO
Power of attorney must be for a(n) attorney(s) or agent(s)
An assignment will not itself operate as a revocation of a power or authorization previously given
Revocation of the power of the principal attorney or agent revokes powers granted by him to
other attorneys or agents

Antedate means “to come (before) something”, “to precede in time”
After a proper final rejection by a primary examiner, review of new matter
becomes appealable and should not be decided by petition
Note primary examiner
Lack of support by specification (new matter) is reviewable by appeal
Objection and requirement to delete new matter from specification is subject to
supervisory review by petition
For a nonprovisional application to receive a filing date, an oath or declaration
can be submitted after the filing date
All patents should use the metric units followed by the equivalent English units
when describing their inventions in the specifications of patent applications

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