Automatic Extensions cannot be obtain in 6 circumstances:
- Office action states so
- A reply brief (responsive to an Examiner’s answer in an appeal to Board of Patent Appeals and Interferences)
- A request for an oral hearing in an Appeal;
- Responding to a decision of the Board;
- Anything in an interference; and
- Due dates in reexamination cannot be automatically extended and any extension for cause request in a reexamination must be filed before that date due
NOTE:The period to complete a bona fide but incomplete reply to a non-final action can now be extended with an automatic extension of time.
Due Dates for following cannot be extended even for a cause:
- IDS
- Any due date set by statute [such as the 6-mo absolute deadline for replying to office actions]
- The issue fee can now, by statue, be paid late upon a proper showing, but it cannot be extended.
- The deadline for responding to a Notice of Omitted Items.
- 3-mo deadline to obtain refund for a fee paid as a large entity
- Filing formal drawings at time issue fee is paid.
Mailing Date from PTO
All dates are calculated from the mailing date from the PTO which is stamped on the action. The date of receipt by the attorney or applicant is irrelevant to the due date.
Responses to Official Actions
By statute all responses to official actions must be filed within six months from PTO mailing date, but the 6-mo period can be shortened by the Commissioner and usually is so shortened. All due dates from the PTO are either statutory or non-statutory.
Statutory dates can be extended only if they are shortened from the 6 mo period and non-stat dates can be extended unless specifically forbidden to be.
Two-mo rule MPEP 706.07(f)
A special rule covers what happens when a response to a FINAL REJECTION is filed within two months from the mailing date AND the office does not mail an Advisory Action until after the end of the 3-mo prior set for response. In that instance, the date before which action must be taken to avoid abandonment is automatically extended until the date the office mails the advisory actin or the six-mo period expires, which ever happens first.
EX: The PTO mails an Final rejection on Aug. 17, 2008 with 3-mo to respond. A response is filed on Aug. 30, 2008, but the PTO doesn’t mail the Advisory Action until Dec. 1, 2008. A Notice of Appeal filed on Jan. 1, 2009 with a one mo extension of time would be timely because the due date was reset from Nov. 17, 2008 to Dec. 1, 2008 by lateness of the AA. HOWEVER, remember, dude date cannot be extended beyond 6-mo stat limit.
Application with Missing Parts MPEP 601.01(h)
When an application is filed with missing parts (oath, or declaration, or translation into English, and or required filing fee is missing), the applicant has 2 months from the filing date if no correspondence address is included, or two months from the date the Notice of Missing Parts is mailed, to file required papers. The deadline can be extended automatically unto 5 months from the two months [total 7mo] date b/c there is no 6-mo rule. Also, further extensions for cause can be obtained with a proper showing, and fee.
Chap. 700 Quiz set 1
- To be prior art under 102(a) any knowledge or use must be within U.S.
- All acts defining prior art under 102(a) must be by another.
- The on sale of 102(b) must be an offer to sell the invention.
- 102(c) refers to abandoned applications.
- 102(d) requires that the application be issued patent/ filed in a foreign country more than a year before U.S. filing date.
- Under 102(e), a U.S. patent is prior art as of it’s earliest effective U.S. filing date.
Chap. 700 Quiz set 2
- A prior invention is not prior art under 102(g) if it has been abandoned/suppress/ or concealed.
- Swearing back is done by filing a declaration or affidavit under Rule 1.131
- A showing of obviousness using TSM rationale requires:
a. A suggestion or motivation in the prior art to combine.
b. A reasonable expectation of success, and
c. That the reference teach all the claimed limitations.
4. New matter can NEVER be added to a patent application.
5. Patentable subject matter is defined in 35 USC 101 as a process, manufacturer, composition, or machine.
6. An atomic bom is unpatentable.
Chap. 700 Quiz set 3
- After a final rejection, the applicant has a right to cancel claims, comply with formal requirements of the examiner, adopt suggestion of the examiner.
- If a response to a final rejection is filed within 2 months of the date of mailed, the deadline for response is automatically extended or the six month deadline or the date the advisory action is mailed, whichever is first.
- For an action setting a shortened statutory period of three months, in the event of failure to respond, abandonment occurs next day after.
- The deadline for filing an appeal brief is either 2 months from the date the Notice of Appeal is filed or end of the period response which is later.
Chap. 700 Quiz set 4
- A petition to suspend prosecution cannot be filed if an action is outstanding.
- Improper multiple dependant claim count for one claim in calculating the filing fee.
- A response to every official action must by statute be filed within six months.
- The longest extension possible under 37 CFR 136(a) is 5 months.
- The longest extension possible for late payment of an issue fee is 0 months.
Chap. 700 Quiz set 5
- A one-month deadline can never be less than 30 days and a two month deadline can never be less than 60 days.
- The date an application becomes abandoned for failure to respond to an outstanding action is the day after the last day of response.
- When a Notice of Appeal is filed using a Certificate of Mailing, the deadline for filing the Appeal Brief is calculated front he date of Notice of Appeal ACTUALLY received at the PTO.
- All deadlines on Appeal are 2 months.
- Revival under the unavoidable standard requires a showing and a small fee, whereas the unintentional requires a statement only and a large fee.
Chap. 700 Quiz set 6
- A terminal disclaimer is required to revive Design and pre-June 8, 1995 applications.
- Rule 1.137 governs both revival of abandoned and late payment of issue fee.
- A preliminary amendment is filed before any official action and supplemental amendment is filed after a response to a first official action has been filed.
- Swearing back requires filing an affidavit or declaration under 1.131 whereas rebutting a prima facie showing of obviousness requires an affidavit or declaration under 1.132.
Final Rejection
The two-month extension of time begins from the date of the Advisory Action was mailed (this is after the final rejection and applicant submits an amendment). However, the extension cannot extend the time beyond the 6-mo statutory period.
Swearing Back 1.131
Effective date of a U.S. patent is NOT the foreign filing date to which the application may be entitled under 35 USC 119 (a) during examination. The date to be overcome under 37 CFR 1.131 is the effective US filing date, not the foreign priority date.
Reexamination and Prior Arts
MPEP § 2258, under the heading “Prior Patents Or Printed Publications,” states “[r]ejections on prior art in reexamination proceedings may only be made on the basis of prior patents or printed publications. Prior art rejections may be based upon the following portions of 35 U.S.C. 102: . . .(e).”
MPEP § 2258, under the heading “Matters Other Than Patents or Printed Publications,” states “[r]ejections will not be based on matters other than patents or printed publications, such as public use or sale, inventorship, 35 U.S.C. 101, fraud, etc. In this regard, see In re Lanham.
A rejection on prior public use or sale, insufficiency of disclosure, etc., cannot be made even if it relies on a prior patent or printed publication. Prior patents or printed publications must be applied under an appropriate portion of 35 U.S.C. 102 and/or 103 when making a rejection.” Reexamination is limited to substantially new questions of patentability based on patents and publications.
New Matter with Claims
MPEP § 2163.01, under the heading “Support For The Claimed Subject Matter In The Disclosure,” states that “[I]f 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, first paragraph, or denial of the benefit of filing date of a previously filed application.”
MPEP § 2163.01 states that unsupported claims “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.”
- Which of the following best describes a situation for which a reply to the examiner’s Office action including both an affidavit filed under 37 CFR 1.131 and an affidavit filed under 37 CFR 1.132 may be in accord with the patent laws, rules and procedures as related in the MPEP?
In a timely reply to non-final Office action, where the examiner’s sole rejection of appellant’s claims is a rejection under 35 USC 103(a) employing a non-patent document that was published less than one year prior to the filing date of appellant’s patent application.
MPEP § 715, under the heading “Situations Where 37 CFR 1.131 Affidavits or Declarations Can Be Used,” provides that an affidavit under
37 CFR § 1.131 may be used to antedate a reference that qualifies as prior art under 35 U.S.C. § 102(a) but not 35 U.S.C. § 102(b). Also, MPEP § 716 provides that objective evidence traversing a rejection may be presented in a timely submitted affidavit under 37 CFR § 1.132.
Factual assertions
715.07, under the heading “Facts and Documentary Evidence” states that “The essential thing to be shown under 37 CFR 1.131 is priority of invention and this may be done by any satisfactory evidence of the fact. FACTS, not conclusions, must be alleged. Evidence in the form of exhibits may accompany the affidavit or declaration. … 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 (MPEP § 715.07(c)) at least the conception being at a date prior to the effective date of the reference. … In general, proof of actual reduction to practice requires a showing that the apparatus actually existed and worked for its intended purpose.”
ESTABLISHING A PRIMA FACIE CASE OF OBVIOUSNESS
MPEP 2142 under the heading “ESTABLISHING A PRIMA FACIE CASE OF OBVIOUSNESS,” states “To establish a prima facie case of obviousness, three basic criteria must be met. First, there must be some suggestion or motivation, either in the references themselves or in the knowledge generally available to one of ordinary skill in the art, to modify the reference or to combine reference teachings. Second, there must be a reasonable expectation of success. Finally, the prior art reference (or references when combined) must teach or suggest all the claim limitations. The teaching or suggestion to make the claimed combination and the reasonable expectation of success must both be found in the prior art, and not based on applicant’s disclosure.
Appeals Brief Content:
MPEP § 1206, under the heading “Appeal Brief Content,” subheading “(7) Grouping of Claims.” 37 CFR § 1.192(c)(7) requires that an appellant 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 claims subject to the same rejection are separately patentable. Since the appellant here has only performed the two affirmative acts with respect to claims 1, 4 and 6, these are the claims that the Board must consider separately for patentability. The examiner has no input on the grouping of claims.
Rejection base on anticipation:
“To Anticipate A Claim, The Reference Must Teach Every Element Of The Claim.” “A claim is anticipated only if each and every element as set forth in the claim is found, either expressly or inherently described, in a single prior art reference.” See Verdegaal Bros. v. Union Oil Co. of California, 814 F.2d 628, 631, 2 USPQ2d 1051, 1053 (Fed. Cir. 1987). Here, every element of the claim is found in Patent A. See MPEP 2111, under the heading “Claims Must Be Given Their Broadest Reasonable Interpretation,” where it explained that “[d]uring patent examination, the pending claims must be ‘given the broadest reasonable interpretation consistent with the specification,” and cites In re Prater, 415 F.2d 1393, 1404-05, 162 USPQ 541, 550-51 (CCPA 1969) to explain that “reading a claim in light of the specification, to thereby interpret limitations explicitly recited in the claim, is a quite different thing from ‘reading limitations of the specification into a claim,’ to thereby narrow the scope of the claim by implicitly adding disclosed limitations which have no express basis in the claim.” (A) and (B) are incorrect. MPEP § 2111. The claim, as written, is not allowable over Patent A since Patent A disclosed every element recited in the claim.
Petition 1.181
MPEP §§ 714.13 and 1002: 37 CFR § 1.181(f) provides “The mere filing of a petition will not stay the period for reply to an Examiner’s action which may be running against an application, nor act as a stay of other proceedings.” MPEP §§ 714.13 states “[i]t should be noted that under 37 CFR 1.181(f), the filing of a 37 CFR 1.181 petition will not stay the period for reply to an examiner’s action which may be running against an application.” See also MPEP § 1002. Thus, if a petition to vacate a final rejection as premature is filed within 2 months from the date of the final rejection, the period for reply to the final rejection is not extended even if the petition is not reached for decision within that period. However, if the petition is granted and the applicant has filed an otherwise full reply to the rejection within the period for reply, the case is not abandoned.
