CERT Exam

Reject only Claim 2 under 35 USC 112, first paragraph for lack of a proper written description.

Object to the introduction of new matter under 35 USC 132.

With regard to the new matter in the specification, object to the introduction of new matter under 35 USC 132 and require cancellation to the new matter from the descriptive portion of the specification. With regard to the claims, reject only Claim 2 under USC 112, first paragraph because as no new matter was directly added to Claim1.

With regard to the new matter in the specification, object to the introduction of new matter under 35 USC 132 and require cancellation to the new matter from the descriptive portion of the specification. Regarding the claims, reject Claim 1 and 2 under USC 112, first paragraph because the new matter in the specification affects the scope of the claims

Take the actions described in Answer (D), and refuse to consider the new matter for purposes of making rejections based on prior art

Filing evidence under 37 CFR 1.132 tending to show unexpected results of the invention.

Filing a grantable petition under 37 CFR 1.78(a) and amending the specification of application A to claim benefit under 35 USC 120 by s specific reference to a prior copending application B that was filed before November 23, 2004 by the same inventor and discloses the invention claimed in application A in the manner provided by the firs paragraph of 35 USC 112.

Submitting arguments pointing out that the rejection under 35 USC 102(b) relies on more than one reference.

Filing eveidence under 37 CFR 1.132 tending to show commercial success of the invention.

Filing a declartation and exhibits under 37 CFR 1.131 to antedate the reference U.S. patent.

A preliminary amenment that adds disclosure and is filed along with the application, without an oath or declaration under 37 CFR 1.63, enjoys the status as part of the original disclosure even if not referred to in any subsequently filed oath or declartion.

If the date of receipt of a preliminary amendment, submitted without a certificate of mailing, is later than the mail date of the first Office action, and the amendment is not responsive to the first Office action, the Office will mail a new Office action and restart the period for reply.

If a preliminary amendment is filed along with the application, and the application is filed with an oath or declaration under 37 CF 1.63 thata does not also refer to the preliminary amendment, the examiner will object to the preliminary amendment as presenting "new matter" if the ppreliminary amendment contains subject matter not otherwise included in the specification and drawings of the application as filed.

A preliminary amendment filed after the filing date f the application must be considered as part of the original disclosure of the application if the amendment and application referenced in a subsequently filed oath or declaration.

B and D

Reject all the claims based upon a broadening reissue outside the two year statutory period authorized by 35 USC 251 since applicant did not file a claim to a broadened reissue claim within the two year period set by 35 USC 251

Reject all the claims based upon a broadening reissue outside the two year statutory period authorized by 35 USC 251 since applicant did not file a broadened reissue claim at time of filing.

Reject all the claims based upon a broadening reissue outside the two year statutory period authorized by 35 USC 251 since applicant transmittal letter indicated that the filing of the reissue application was a narrowing reissue and that the broadening amendment was not permissible even if filed within the two-years from the grant of the original patent.

Determine that the application is proper broadening reissue and reject the claims under the recapture doctrine since the claims are broader than the issued claims.

Determine that the application is proper broadening reissue and perform an examination and issue an Office action in due course.

The allowance is a first action allowance of an original (noncontinuing) application where the claims are very close the cited prior art.

The examiner is withdrawing a rejection based on reasons not suggested by the applicant's argument alone, and the examiner realizes that amore cogent argument is available.

There are multiple arguements of the rejection by applicant in an appeal brief, and the examiner seeks to clarify the written record by indicating which arguments were persuasive.

The applicant has fully complied with 37 CFR 1.111(b_ and (c), and 27 CFR 1.133(b) during prosecution.

The allowance of method claims is based upon article limitations therin that impart patentability to the claims, and it might not be readily apparent that the limitations impart the patentability.

A rejection of application claims for obviousness-type double patenting over the claims of a patent which names a different inventive entity (where on inventor is in common with the inventive entity in the application) and was not commonly owned at the time applicant made his or her invention can be overcome with an affidavit or declaration under 37 CFR 1.121 showing that the applicant made the invention in the United States prior to the effective filing date of the patent.

A rejection for obviousness-type double patenting of application claims over patent claims can properly rely on one's judgment whether the invention claimed in an application is an obvious variation of an embodiment disclosed in the patent which provides support for the paten claims on which the rejection is based.

The filing of a terminal disclaimer to overcome an obviousness-type double patenting rejection constitutes a binding admission that the rejection is proper

Application claims are properly rejected for obviousness-type double patenting over claims of a patent having an effective filing date earlier than the effective filing date of the application only if both of the following two conditions are satisfied: (a) the rejected application claims recite an obvious variation of the subject matter recited in the patent claims on which the rejection is based; and (b) the patent claims on which the rejection is based recite an obvious variation of the subject matter recited in the rejected application claims.

None of the other proposed answers is in accordance with the patent laws, rules and procedures as related in MPEP.

When an examiner lists references on a form PTO-892, the examiner lists refereces that were previously cited by the applicant (and initialed by an examiner) on an Information Disclosure Statement.

At time of allowance, the examiner may cite pertinent art in an examiner's amendment or statement of reasons for allowance. Such pertient art should be listed as usual on form PTO-892, a copy of which is attached to the Notice of Allowability form PTOL-37

In any application, otherwise ready for issue, in which an erroneous citation has not been formally corrected in an official paper, the examiner is directed to correct the citation by an examiner's amendment.

All references cited by examiner during the prosecution, must be listed on either a form PTO-892 or on an Information Disclosure Statement and initialed. All such references citations will be printed in the patent.

When an examiner lists references on a form PTO-892, the examiner lists references that are relied upon in a prior art rejection or mentioned as pertinent in the Office action.

Extrinsic evidence may not be used to illustrate that a prior art reference anticipates a claim

A prior art reference that disparages the performance of a device cannot anticipate a claim to the device.

Evidence of unexpected results can be relied on to overcome a rejection based on 35 USC 102 (a)

When a claim covers several compositions, and on of the compositions is in the prior art, the claim is anticipated.

Under 35 USC 102, a primary examiner may not reject a claim by relying on a reference from a nonanalogous art.

The assignee signs a request for status of an application.

The assignee signs a terminal disclaimer.

The assignee signs a small entity statement.

The assignee appoints a registered practitioner to prosecute an application.

The assignee consents to the correction of inventorship.

Applicants must submit information on possible public uses, offers to sell, and derived knowledge or inventorship conflicts.

Applicants must submit prior art that is material to patentability brought to applicant's attention in any related foreign application.

Applicants must submit evidence of level of skill in the art

Where claims are copied or substantially copied from a paten, the source of the copied claims must be disclosed.

Applicants must disclose the existence of on-going litigation or prior litigation involving the subject matter for which a patent is being sought.

The reply is timely filed because the practitioner filed a reply, along with a proper extension of time, within the maximum statutory period of six months, July 4, being a Federal holiday

The reply is timely filed because the telephone call to the examiner to clarify the rejection within the shortened statutory period automatically restarted the period for a written response.

The reply is not timely filed

The reply is not timely filed because the case became abandoned when no response and no request for an extension of time, along with the appropriate fee, were received within the there-month shortened statutory period.

Whether or not the response was timely filed cannot be determined without knowing the ground of rejection.

June 1, 1998

June 1, 1999

October 1, 2001

March 7, 2002

April 1, 2003

A requirement under 37 CFR 1.105 issued with or without an Office action on the merits is an Office action for patent term adjustment purposes.

Applicant under 37 CFR 1.136(a) may extend the period for reply to a requirement under 37 CFR 1.105 issued without an Office action on the merits.

Applicant or patent owner is required by 37 CFR 1.105 to submit information already known, but is not required to search for information that is unknown.

Failure of applicant to reply to a requirement under 37 CFR 1.105 issued without an Office action on the merits results in the abandonment of the application.

Similar to 37 CFR 1.56, applicant or patent owner is required by 27 CFR 1.105 to submit information only if it is material to patenatblility.

For a disclaimer to be accepted, it may be signed by only the applicant where the application is not assigned.

For a disclaimer to be accepted, it may be signed by the both applicant and the assignee where each own a part interest in the application.

For a disclaimer to be accepted, it may be signed by only an attorney or agent of record.

For a disclaimer to be accepted, it may be signed by only the assignee of a part interest in the application

For a disclaimer to be accepted, it may be signed by only the assignee of the entire interest if the application is assigned.

It may not be necessary to correct the inventorship of a provisional application under 37 CFR 1.48(d) or (e) if, upon the filing of a corresponding non-provisional application with the correct inventorship, there would be an overlap of inventors.

Where a non-provisional application is inadvertently filed that omits an inventor, correction of the inventorship is not necessary where all claims to the omitted inventor's invention are deleted during prosecution.

Rather than correct inventorship by filing a request under 37 CFR 1.48(a) to delete an inventorship with a claim of benefit under 35 USC 120.

Where there is a transliteration error in an inventor's name in an application, a request to correct inventorship under 37 CFR 1.48 is unnecessary.

Once an inventorship error is discovered in regard to an application awaiting a first Office action on the merits, applicant should wait, and act to correct the inventorship between the time the issue fee is paid and the patent issues.

Persuasively arguing that the claims are patentably distinguishable from the prior art reference.

Amending the claims to patentably distinguish over the prior art reference.

Antedating the refernce by filing an affidavit or declaration under 37 CFR 1.131.

Filing an affidavit or declaration under 37 CFR 1.132 showing that the reference invention is by "another".

Antedating the reference by pefecting a claim for priority under 35 USC 119(a)-(d).

Amend the inventorship of the second application to include inventrs A and B because they were the first to invent the first four steps of the method claimed in the second application and file a termina disclaimer to disqualify the first patent as prior art against the claims of the second application.

Amend the claims of the second application to patentably distinguish ove the invention described in the first patent and other reference.

File a statement by C, D and E stating that PQR was an exclusive licensee of the first patent at the time the invention claimed in the second application was made.

File an affidavit by an official of PQR, who is empowered to act on behalf f the corporation, explaining that PQR was an exclusive licensee of the first patent at the time the invention claimed in the second application was made.

File a terminal disclaimer to disqualify the first patent as prior art against the claims of the second application.