Patent Bar MPEP Q & A Podcast Lisa Parmley, USPTO Patent Practitioner #51006

Question:

What are three pieces of information each patent listed in the Official Gazette may give?

Answer:

As to each patent listed in the Official Gazette, the following information may be given:



* (A) Patent number;

* (B) Title of the invention;

* (C) Name of inventor(s), city, and state or country of residence;

* (D) Assignee’s name, city, and state or country of residence, if assigned;

* (E) Applicant’s name, city, and state or country of residence;

* (F) Filing date and application number;

* (G) For reissue patents, the original patent number and issue date, and the original application number and filing date;

* (H) U.S. benefit application data, if any;

* (I) PCT or international design application data, if any;

* (J) Foreign priority application data, if any;

* (K) Patent Application Publication Number and Publication date, if any;

* (L) International classification;

* (M) CPC classification;

* (N) U.S. classification by class and subclass (for Design and Plant documents);

* (O) Number of claims;

* (P) Selected figure of the drawing, if any;

* (Q) A claim or claims.



Chapter Details:

The answer to this question can be found in chapter 1700 of the MPEP. This chapter covers Miscellaneous.

The answer is from the 9th Edition, Revision 10.2019. Depending on future changes to the MPEP, the question and answer may or may not be applicable in later Editions or revisions.

Section Summary:

This question and answer come from section 1703 of the MPEP.  The following is a brief summary of section 1703.

1703 The Official Gazette

The Official Gazette of the United States Patent and Trademark Office (Official Gazette) is published electronically every Tuesday in two sections, the Official Gazette – Patents and the Official Gazette – Trademarks.

The Official Gazette — Patents reports the reexamination certificates, reissues, plant patents, utility patents, and design patents issued and statutory invention registrations (if any) published on that day.

Question:

Once an appellant has filed a notice of appeal, what situations may that appellant request that prosecution be reopened for?

Answer:

Once appellant has filed a notice of appeal, appellant also may request that prosecution be reopened for the following situations:



* In response to a new ground of rejection made in an examiner’s answer, appellant may file a reply in compliance with 37 CFR 1.111 that addresses the new ground of rejection within two months from the mailing of the examiner’s answer

* In response to a substitute examiner’s answer that is written in response to a remand by the Board for further consideration of a rejection under 37 CFR 41.50(a), appellant may file a reply in compliance with 37 CFR 1.111 that addresses the rejection in the substitute answer within two months from the mailing of the substitute answer



Chapter Details:

The answer to this question can be found in chapter 1200 of the MPEP. This chapter covers Appeals.

The answer is from the 9th Edition, Revision 10.2019. Depending on future changes to the MPEP, the question and answer may or may not be applicable in later Editions or revisions.

Section Summary:

This question and answer come from section 1215.01 of the MPEP.  The following is a brief summary of section 1215.01.

1215.01   Withdrawal of Appeal

This section covers the withdrawal of an appeal. Essentially, where, after an appeal has been filed and before decision by the Board, an applicant withdraws the appeal after the period for reply to the final rejection has expired, the application is to be considered abandoned as of the date on which the appeal was withdrawn unless there are allowed claims in the case.

Question:

List two laboratory techniques the courts have recognized as well-understood, routine, conventional activities in the life science arts when they are claimed in a merely generic manner (e.g., at a high level of generality) or as insignificant extra-solution activity.

Answer:

The courts have recognized the following laboratory techniques as well-understood, routine, conventional activity in the life science arts when they are claimed in a merely generic manner (e.g., at a high level of generality) or as insignificant extra-solution activity:



* Determining the level of a biomarker in blood by any means;

* Using polymerase chain reaction to amplify and detect DNA;

* Detecting DNA or enzymes in a sample;

* Immunizing a patient against a disease;

* Analyzing DNA to provide sequence information or detect allelic variants;

* Freezing and thawing cells;

* Amplifying and sequencing nucleic acid sequences; and

* Hybridizing a gene probe.



Chapter Details:

The answer to this question can be found in chapter 2100 of the MPEP. This chapter covers Patentability.

The answer is from the 9th Edition, Revision 10.2019. Depending on future changes to the MPEP, the question and answer may or may not be applicable in later Editions or revisions.

Section Summary:

This question and answer come from section 2106.05(d) of the MPEP.  The following is a brief summary of section 2106.05(d).

2106.05(d)  Well-Understood, Routine, Conventional Activity

Another consideration when determining whether a claim recites significantly more than a judicial exception is whether the additional element(s) are well-understood, routine, conventional activities previously known to the industry. This consideration is only evaluated in Step 2B of the eligibility analysis.

Question:

If the Board affirms a rejection against independent claim 1, reverses all rejections against dependent claim 2 and claim 3 is allowed, after expiration of the period for further appeal, what should the examiner do?

Answer:

If the Board affirms a rejection against independent claim 1, reverses all rejections against dependent claim 2 and claim 3 is allowed, after expiration of the period for further appeal, the examiner should either:



* Convert dependent claim 2 into independent form by examiner’s amendment, cancel claim 1 in which the rejection was affirmed, and issue the application or ex parte reexamination certificate with claims 2 and 3; or

* Set a 2-month time limit in which appellant may rewrite dependent claim 2 in independent form.



* Extensions of time under 37 CFR 1.136(a) are available.

* If the reply and any necessary extension of time fee are not received before the expiration of the maximum six-month time period set by statute, the examiner will cancel claims 1 and 2 and issue the application with allowed claim 3 only.







Chapter Details:

The answer to this question can be found in chapter 1200 of the MPEP. This chapter covers Appeal.

The answer is from the 9th Edition, Revision 10.2019. Depending on future changes to the MPEP, the question and answer may or may not be applicable in later Editions or revisions.

Section Summary:

This question and answer come from section 1214.06 of the MPEP.  The following is a brief summary of section 1214.06.

1214.06   Examiner Sustained in Whole or in Part; Claims Require Action

This section covers instances where the examiner is sustained in whole or in part. It covers instances where no claims stand allowed, when claims do stand allowed, and when claims require an action.

Question:

What are the four purposes 35 U.S.C. 101 has been interpreted as imposing?

Answer:

35 U.S.C. 101 has been interpreted as imposing four purposes.



* First, 35 U.S.C. 101 limits an inventor to ONE patent for a claimed invention. If more than one patent is sought, a patent applicant will receive a statutory double patenting rejection for claims included in more than one application that are directed to the same invention.

* Second, the inventor(s) must be the applicant in an application filed before September 16, 2012, (except as otherwise provided in pre-AIA 37 CFR 1.41(b)) and the inventor or each joint inventor must be identified in an application filed on or after September 16, 2012.

* Third, 35 U.S.C. 101 defines which categories of inventions are eligible for patent protection.


An invention that is not a machine, an article of manufacture, a composition or a process cannot be patented.

* Fourth, 35 U.S.C. 101 serves to ensure that patents are granted on only those inventions that are “useful.”



Chapter Details:

The answer to this question can be found in chapter 2100 of the MPEP. This chapter covers Patentability.

The answer is from the 9th Edition, Revision 10.2019. Depending on future changes to the MPEP, the question and answer may or may not be applicable in later Editions or revisions.

Section Summary:

This question and answer come from section 2106.07 of the MPEP.  The following is a brief summary of section 2106.07.

2106.07  Formulating and Supporting Rejections For Lack Of Subject Matter Eligibility

Eligibility rejections must be based on failure to comply with the substantive law under 35 U.S.C. 101 as interpreted by judicial precedent. Examination guidance, training, and explanatory examples discuss the substantive law and establish the policies and procedures to be followed by examiners in evaluating patent applications for compliance with the substantive law, but do not serve as a basis for a rejection.

Question:

Name one advantage a CPA has compared to a continuation or divisional application filed under 37 CFR 1.53(b).

Answer:

A CPA has a number of advantages compared to a continuation or divisional application filed under 37 CFR 1.53(b).



* For example, the papers required to be filed in the U.S. Patent and Trademark Office in order to secure a filing date under 37 CFR 1.53(d) are minimal compared to 37 CFR 1.53(b).

* In addition, the Office will not normally issue a new filing receipt for a CPA. See 37 CFR 1.54(b).

* The time delay between the filing date and the first Office action should be less for a CPA than for an application filed under 37 CFR 1.53(b).



Chapter Details:

The answer to this question can be found in chapter 200 of the MPEP. This chapter covers Types, Cross-Noting, and Status of Application.

The answer is from the 9th Edition, Revision 10.2019. Depending on future changes to the MPEP, the question and answer may or may not be applicable in later Editions or revisions.

Section Summary:

This question and answer come from section 201.06(d) of the MPEP.  The following is a brief summary of section 201.06(d).

201.06(d)   37 CFR 1.53(d) Continued Prosecution Application (CPA) Practice

This section discusses 37 C.F.R. 1.53(d), CPA practice in detail. CPA practice is not allowed for utility and plant applications, only design applications. CPA’s are treated as amended applications as of the filing date of the CPA.

This section covers conditions for filing CPA’s, signature requirements, filing date details, small entity/microentity status, extensions of time, inventorship, and examination of CPA’s including the benefit of earlier filing date, terminal disclaimers, prior election, information disclosure statements and preliminary amendments, copies of affidavits, and public access to CPA’s.