In establishing a disclosure, applicant may rely not only on the description and drawing as filed but also on the original claims if their content justifies it.

Where subject matter not shown in the drawing or described in the description is claimed in the application as filed, and such original claim itself constitutes a clear disclosure of this subject matter, then the claim should be treated on its merits, and requirement made to amend the drawing and description to show this subject matter.

• Review Ed9 10.2019: 608.01(l)

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 covers the differences between rejections and objections. The practical difference between a rejection and an objection is that a rejection, involving the merits of the claim, is subject to Review Ed9 10.2019: by the Patent Trial and Appeal Board, while an objection, if persisted, may be Review Ed9 10.2019:ed only by way of petition to the Director of the USPTO.

• Review Ed9 10.2019: 706.01

This section provides a brief overview of rejections based on prior art. For instance, prior art rejections should ordinarily be confined strictly to the best available art. It covers how to handle reliance on abstracts and foreign language documents in support of a rejection. Essentially, when an abstract is used to support a rejection, the evidence relied upon is the facts contained in the abstract, not additional facts that may be contained in the underlying full text document. In addition, this section covers reliance on admitted prior art in support of a rejection.

This section also briefly covers the distinction between 35 U.S.C. 102 and 103. Essentially, the distinction between rejections based on 35 U.S.C. 102 include those where the claim is anticipated by the reference. No question of obviousness is present. In a rejection based on 35 U.S.C. 103, the reference teachings must somehow be modified in order to meet the claims. Lastly, this section includes a discussion on determining the effective filing date of a claimed invention.

• Review Ed9 10.2019: 706.02

This section covers rejections under 35 U.S.C. 101. Patents are not granted for all new and useful inventions and discoveries. The subject matter of the invention or discovery must come within the boundaries set forth by 35 U.S.C. 101, which permits a patent to be granted only for “any new and useful process, machine, manufacture, or composition of matter, or any new and useful improvement thereof.”

Topics such as double patenting, subject matter eligibility, utility, and the improper naming of an inventor are discussed.

• Review Ed9 10.2019: 706.03(a)

Rejections based on 35 U.S.C. 112 are discussed in chapter 2100 and in our Appendix on 35 U.S.C. 112.

• Review Ed9 10.2019: 706.03(d)

This section covers how new matter filed in an application will lead to a rejection.

• Review Ed9 10.2019: 706.03(o)

Claims may be rejected on the ground that applicant has disclaimed the subject matter involved.

• Review Ed9 10.2019: 706.03(u)

This section covers rejections based on res judicata, which is a term for a matter already judged.

• Review Ed9 10.2019: 706.03(w)

This section covers situations when a final rejection is proper on a first action. Both the times when a final rejection on the first action are proper and improper are discussed.

• Review Ed9 10.2019: 706.07(b)

Filing a request for continued examination (RCE) provides a means for the applicant to continue with the prosecution of his or her application if prosecution becomes closed. Choosing an RCE is an alternative to filing a continuing application under 37 C.F.R. 1.53(b) or a CPA under 37 C.F.R. 1.53(d). This section covers RCE practice in detail.

• Review Ed9 10.2019: 706.07(h)

If an applicant needs more time to file an Office Action, he or she can in some cases be granted an extension of time for the reply. A petition for an extension of time will have to be properly filed.

There are circumstances where a petition for an extension of time will be denied by the Office, such as if the application is involved in a reexamination or an interference proceeding. If the applicant fails to file a reply by midnight on the date the period for reply was due, the application will be regarded as abandoned and the applicant may lose all of his or her rights to an invention. This section covers details on the period for reply.

• Review Ed9 10.2019: 710

In instances where the examiner made a mistake in the Office action and if the applicant brings this to the PTO’s attention, the PTO will “reset” the due date of the reply to begin on a later date. That way the applicant does not lose any time for the PTO’s error. This section covers situations when a reply period is reset or restarted. Included is a discussion on delays in mailing.

• Review Ed9 10.2019: 710.06

This section outlines the procedures followed for amendments and other replies after final rejection or action. In these instances, entry is not a matter of right.

• Review Ed9 10.2019: 714.13

This section covers living subject matter, providing examples of what can be and cannot be patentable. For example, new minerals discovered in the earth are not patentable, but microorganisms produced by genetic engineering can be patented. In addition, it gives specifics on how no patent may issue on a claim directed to or encompassing a human organism, which was added in the America Invents Act (AIA).

• Review Ed9 10.2019: 2105

In certain circumstances where appropriate, an examiner may take official notice of facts not in the record or rely on “common knowledge” in making a rejection, however such rejections should be judiciously applied. This section covers the procedure for relying on common knowledge or taking official notice.

• Review Ed9 10.2019: 2144.03

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