Q) Anticipation

August 7, 2008

Another question on the exam: whether there is a different standard for patents vs. publication when it comes to showing enablement for anticipation purposes. (i.e. a prior art reference has to be enabling). I though that US patents were presumed enabling, but I read in the MPEP that for prior art purposes all art requires […]

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Q) Claims stand or fall together (4.00.28p)

August 7, 2008

Reported on the exam: Variant of April 12, 2000 PM – see 28 answer (A) as a concept. One question reported about the applicant asserting the claims do not rise or fail together, and the Examiner’s Answer stating that they do. Question was, what will the Board do as to the rejected claims? 1206 Appeal […]

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Q) Indefinite Claim using 'high'

August 7, 2008

This question asked if a claim was indefinite because it used the word ‘high’ instead of a range. There were various answers ranging from never to always. I chose one in the middle which said something about it being acceptable as long as there is enough description in the specification that would allow one of […]

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Q) Investigating Deceptive Intent

August 7, 2008

“I had a question asking about what situation does the PTO still investigate violotations of 37 CFR 1.56. I think the answer is in MPEP 1448” 1448 FRAUD, INEQUITABLE CONDUCT, OR DUTY OF DISCLOSURE ISSUES The Office no longer investigates and rejects reissue applications under 37 CFR 1.56. The Office will not comment upon duty […]

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Q) 2 Month Rule for Final Office Action

August 7, 2008

“I had a question that asked about extension fees when the Applicant has replied to a final Office action before 2 months after the mailing date of the Office action. Know that the date of mailing of the Examiner Advisory action resets the 3 month date for calculating extensions of time.” EDIT (8/31/07): Thats not […]

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Q) Chemical Claim (MPEP 2100)

August 7, 2008

Reported on the test: An application had claimed a chemical that was useful for relieving headaches. The application did not disclose how to make said chemical. Examiner rejects claim on enablement and written description. Applicant shows that a PHOSITA would know how to make said chemical and points formulas and technical data in the spec. […]

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