An applicant may file a utility, plant or design patent application. This section covers the many different types of applications including national and international patent applications along with the different types of filings (i.e. provisional, nonprovisional, divisional, etc ...).

• Review Ed9 10.2019: 201

A continuation is a second application for the same invention claimed in a prior nonprovisional application and filed before the original prior application becomes abandoned or patented. This section covers details on continuation applications.

• Review Ed9 10.2019: 201.07

The specification is a written description of the invention and of the manner and process of making and using the same. This section covers general information about the specification and includes a discussion on the paper requirements, alteration of application papers, certified copies of an application-as-filed, use of the metric system in patent applications, filing of non-English language applications, illustrations in the specification, and hyperlinks.

• Review Ed9 10.2019: 608.01

This section outlines in detail the rules of dependent claims including multiple dependent claims. It gives examples of acceptable multiple dependent claims and examples of unacceptable multiple dependent claims. There is also a brief discussion of restriction practice, how multiple dependent claims are handled at the PTO (by both the Technology Center Staff and Examiners).

In addition, this section includes examples of claims that will be objected to and the current practice where each embodiment of each claim must be treated on an individual basis. Also included is a section on calculating fees for multiple dependent claims as well as an example.

The treatment of improper dependent claims is discussed including infringement tests, claim form and arrangement, and rejection and objection.

• Review Ed9 10.2019: 608.01(n)

This section outlines how a reply by an applicant or the patent owner to a non-final Office action must be fully responsive.

• Review Ed9 10.2019: 714.02

This section covers the specification and claims involved in plant patents. It references the related rules and statutes.

• Review Ed9 10.2019: 1605

This section provides an overview of the patent examination process. Essentially, the examiner must determine what the applicant has invented and is seeking to patent, then conduct a thorough search of the prior art, determine whether the claimed invention complies with 35 U.S.C. 101, 35 U.S.C. 112, 35 U.S.C. 102, and 35 U.S.C. 103, then clearly communicate their findings, conclusions, and their bases.

• Review Ed9 10.2019: 2103

This section describes the principles behind rejections based on utility (whether or not an invention has any use) and obviousness based on one or more prior art references. In addition, there is a discussion on how to interpret claims within the scope of these utility or obviousness rejections.

• Review Ed9 10.2019: 2107

Useful inventions have a practical utility or specific utility without having to pursue further research to identify or reasonably confirm it. An applicant must identify why an invention is useful (unless it has a well-established utility), otherwise the claimed invention will be deficient under 35 U.S.C. 101 and 35 U.S.C. 112 first paragraph.

• Review Ed9 10.2019: 2107.01

This section discusses procedural considerations related to rejections for lack of utility. It includes a discussion of inoperative inventions which includes those that do not operate to produce the results claimed by the patent applicant. In addition, it discusses credibility which must be believable to a person of ordinary skill in the art based on the totality of evidence and the reasoning provided. Lastly, it covers a prima facie showing, which must explain why a person of ordinary skill in the art would conclude it is more likely than not that asserted utility is not credible.

• Review Ed9 10.2019: 2107.02

Pre-AIA 35 U.S.C. 112 is based on 6 different paragraphs; paragraphs (1) through (6) while AIA 35 U.S.C. 112 includes paragraphs (a) through (f). This section discusses the three separate requirements for the specification under 35 U.S.C. 112(a) or pre-AIA 35 U.S.C. 112, first paragraph.

Pre-AIA first paragraph or AIA (a) both state that the specification must include a written description of the invention, enablement, and best mode of carrying out the claimed invention. In addition, both state that the three requirements are separate and distinct from each other.

• Review Ed9 10.2019: 2161

This section covers the written description requirement of the first paragraph or paragraph (a) of 35 U.S.C. 112. The essential goal of the written description requirement is to clearly convey that the applicant has invented the subject matter which is claimed.

This section covers further details of the written description as well as signs of an inadequate written description along with amendments. For instance, the written description requires an essential feature in the original claims, the feature must also be described in the specification or claims, and must not be conventional in the art or known to one of ordinary skill in art. A broad generic disclosure is not necessarily a sufficient written description of a specific embodiment, especially where the broad generic disclosure conflicts with the remainder of the disclosure.

• Review Ed9 10.2019: 2163

This section covers the enablement requirement of the first paragraph or paragraph (a) of 35 U.S.C. 112. The specification must be enabling to a person “skilled in the art to which it pertains, or with which it is most nearly connected”. People have to be able to use the invention.

The inventor has to know how it works and the specification must clearly convey how to make and use the invention without undue experimentation. The topic of undue experimentation is covers in further details. Essentially, the information contained in the disclosure of an application must be sufficient enough to inform those skilled in the relevant art how to both make and use the claimed invention.

As long as the specification discloses at least one method for making and using the claimed invention that bears a reasonable correlation to the entire scope of the claim, then the enablement requirement of 35 U.S.C. 112 is satisfied.

• Review Ed9 10.2019: 2164

This section covers the best mode requirement of the first paragraph or paragraph (a) of 35 U.S.C. 112. If an inventor comes up with a great idea that works well, it would violate the laws of patentability for the inventor to keep the “best mode” of making and using that invention for him/herself. This best mode requirement forces an applicant to express the full disclosure of the claimed subject matter in order to receive a patent.

The AIA did not eliminate the best mode requirement, but it does provide that, regarding patent validity or infringement proceedings, the failure to disclose the best mode should not be a basis on which any claim of a patent may be canceled or held invalid or otherwise unenforceable. Please note that this change is only applicable in patent validity or infringement proceedings, an evaluation of an application still includes compliance with the best mode requirement.

This section further discusses facts about the best mode including how a specific example of the best mode is not required. Instead, the best mode may be represented by a preferred range of conditions.

• Review Ed9 10.2019: 2165

This section discusses subject matter which the inventor or a joint inventor regards as the invention. The invention set forth in the claims must be presumed to be the invention regarded by the inventor or joint inventor unless there is evidence to the contrary.

• Review Ed9 10.2019: 2172

A claim which omits matter disclosed to be essential to the invention as described in the specification or in other statements of record may be rejected under 35 U.S.C. 112(a) or pre-AIA 35 U.S.C. 112, first paragraph, as not enabling. Such essential matter may include missing elements, steps or necessary structural cooperative relationships of elements described by the applicant(s) as necessary to practice the invention. In addition, a claim which fails to interrelate essential elements of the invention as defined by applicant(s) in the specification may be rejected under 35 U.S.C. 112(b) or pre-AIA 35 U.S.C. 112, second paragraph, for failure to point out and distinctly claim the invention.

• Review Ed9 10.2019: 2173.01

This section includes a discussion on how to determine whether claim language is definite. During prosecution, applicant has an opportunity and a duty to amend ambiguous claims to clearly and precisely define the metes and bounds of the claimed invention. A decision on whether a claim is indefinite under 35 U.S.C. 112, second paragraph requires a determination of whether those skilled in the art would understand what is claimed when the claim is read in light of the specification.

• Review Ed9 10.2019: 2173.02

This section covers the topic of numerical ranges and amounts limitations. Generally, the recitation of specific numerical ranges in a claim does not raise an issue of whether a claim is definite. Use of a narrow numerical range that falls within a broader range in the same claim may render the claim indefinite when the boundaries of the claim are not discernible.

• Review Ed9 10.2019: 2173.05(c)

A claim term is functional when it recites a feature ‘‘by what it does rather than by what it is.’’ This section covers functional limitations in further detail.

• Review Ed9 10.2019: 2173.05(g)

This section sets forth guidelines for the examination of 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, “means or step plus function” limitations in a claim. It covers the steps for determining whether a claim limitation invokes 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph. A description is necessary to support a claim limitation which invokes 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph.

This section covers how to determine 35 U.S.C. 112(b) or pre-AIA 35 U.S.C. 112, second paragraph compliance when 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph. This section also covers how to determine whether 35 U.S.C. 112(a) or pre-AIA 35 U.S.C. 112, first paragraph support exists.

• Review Ed9 10.2019: 2181