Chapter 700

Question 1

Title of Chapter

Answer 1

Examination of Patents

Question 2

rejection

Answer 2

• involve merits of claim, subject to review by PTAB
• unpatentable
• contested by: ask examiner to reconsider, appeal

Question 3

objection

Answer 3

• form of claim improper

- contest by: examiner reconsideration, filing petition to Commissioner

Question 4

rejections not based on prior art

Answer 4

• under 35 UCS 101
• -double patenting
• -subject matter eligibility
• -utility
• -improper naming of inventor
• 35 USC 112(a) [pre-aia 112 1st paragraph]
• 35 USC 112(b) [pre-aia 112 2nd paragraph]

etc.

Question 5

time to reply to final rejections

Answer 5

3 month shortened statutory period (SSP)

Question 6

RCE under 37 CFR 1.114 proper

Answer 6

• an Office action is a final rejection
• a Notice of Allowance has issued
• an Office action under Ex Parte Quayle (this is a legal proceeding, the details of which are not discussed in the MPEP) has occurred
• an application is under appeal by the Patent Trial and Appeal Board

Question 7

RCE under 37 CFR 1.114 NOT proper

Answer 7

• it has been abandoned
• the issue fee has been paid
• the applicant has filed a Notice of Appeal to the Federal Circuit (unless the appeal is terminated and the application still remains pending afterward)

Question 8

RCE vs CPA

Answer 8

refer to table

Question 9

petition to make special

Answer 9

• applicant’s health
• applicant’s age (65+)
• environmental quality
• energy (cat A, cat B)
• inventions for countering terrorism
• advancement of examination
  
  • • accelerated examination
  • • prioritized examination (track 1, provided by AIA)

Question 10

SSP - 2 months

Answer 10

(A) Requirement for restriction or election of species only (no action on the merits).
(B) When a reply by an applicant for a nonfinal Office action is bona fide but includes an inadvertent omission, the examiner may set a 2 month shortened statutory time period to correct the omission.
(C) Winning party in a terminated interference to reply to an unanswered Office action.
Where, after the termination of an interference proceeding, the application of the winning party contains an unanswered Office action, final rejection or any other action, the primary examiner notifies the applicant of this fact. In this case reply to the Office action is required within a shortened statutory period running from the date of such notice.
(D) To reply to an Ex parte Quayle Office action.
When an application is in condition for allowance, except as to matters of form, such as correction of the specification, a new oath, etc., the application will be considered special and prompt action taken to require correction of formal matters. A 2-month shortened statutory period for reply should be set.
(E) Multiplicity rejection — no other rejection.

Question 11

SSP - 3 months

Answer 11

To reply to any Office action on the merits.

Question 12

express/formal abandonment

Answer 12

• after payment of issue fee
• avoid pub
• refund search fee & excess claims fee
• app in interference

Question 13

revive abandon/late payment of issue fee

Answer 13

• unintentional delay

- other reqs MPEP 711.03

Question 14

amendments

Answer 14

MPEP 714