Q) New Matter (4.02.24p)

by patentbar on August 22, 2008 · 3 comments

in Exam Questions

24. In 1995 Patent Agent filed a U.S. patent application containing five claims
(Application 1). All five claims are fully supported under 35 U.S.C. § 112 by the
disclosure of Application 1. In 2000, Patent Agent filed a U.S. patent application
(Application 2) that was a continuation- in-part of Application 1. Application 2 adds new
subject matter to the disclosure of Application 1, and ten additional claims. Of the fifteen
claims in Application 2, claims 1-5 are exactly the same as Application 1, claims 6-10 are
fully supported under 35 U.S.C. § 112 by the disclosure of Application 1, and claims 11-
15 are fully supported under 35 U.S.C. § 112 only by the newly added subject matter of
Application 2. The effective filing date for claims in Application 2 is:
(A) 1-15 is 2000.
(B) 1-15 is 1995.
(C) 1-10 is 1995.
(D) 11-15 is 2000.
(E) (C) and (D).

ANSWER (E) The characterizing feature of a CIP is multiple filing dates. This question again
illustrates that the PTO wants you to know this feature. C and D set forth that the
claims are split between the two applications. Easy question if you remember the
CIP axiom of multiple filing dates. (By the way it also has multiple 102(e) dates
as a reference, but we’ll save that for another day!)

1 Churning Away NoMoreNo Gravatar July 1, 2012 at 2:38 pm

Got this. 06.30.2012

2 brandonsaNo Gravatar February 21, 2013 at 11:34 pm

706.02 (700-23) If the application is a continuation-in-part of an earlier U.S. application, any claims in the new application not supported by the specification and claims of the parent application have an effective filing date equal to the filing date of the new application.

What about the matters disclosed in abstract or other part, rather than spec and claims (although not very common)?

3 youngNo Gravatar May 15, 2016 at 1:35 pm

“Specification” includes “abstract or other part.”
37 CFR 1.77 Arrangement of application elements.
(b) The specification should include the following sections in order:
(1) Title of the invention, which may be accompanied by an introductory portion stating the name, citizenship, and residence of the applicant (unless included in the application data sheet).
(2) Cross-reference to related applications.
(3) Statement regarding federally sponsored research or development.
(4) The names of the parties to a joint research agreement.
(5) Reference to a “Sequence Listing,” a table, or a computer program listing appendix submitted on a compact disc and an incorporation-by-reference of the material on the compact disc (see § 1.52(e)(5)). The total number of compact discs including duplicates and the files on each compact disc shall be specified.
(6) Statement regarding prior disclosures by the inventor or a joint inventor.
(7) Background of the invention.
(8) Brief summary of the invention.
(9) Brief description of the several views of the drawing.
(10) Detailed description of the invention.
(11) A claim or claims.
(12) Abstract of the disclosure.
(13) “Sequence Listing,” if on paper (see §§ 1.821 through 1.825).

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