MPEP Q & A 203: Rejections of Dependent Claims Not Specifying a Further Limitation

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Question:

Should a dependent claim that does not specify a further limitation of the subject matter claimed be rejected under 35 USC 112(d)?

Answer:

Yes, a dependent claim that does not specify a further limitation of the subject matter claimed should be rejected under 35 U.S.C. 112(d).

When two claims in an application comply with the requirements of 35 U.S.C. 112(d) but are duplicates, or else are so close in content that they both cover the same thing, despite a slight difference in wording, it is proper after allowing one claim to object to the other claim under 37 CFR 1.75 as being a substantial duplicate of the allowed claim.

Note however, that court decisions have confirmed applicant’s right to restate (i.e., by plural claiming) the invention in a reasonable number of ways. A mere difference in scope between claims has been held to be enough.

Chapter Details:

The answer to this question can be found in chapter 700 of the MPEP. This chapter covers Examination of Applications.

The answer is from the 9th Edition, Revision 08.2017. 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 comes from section 706.03(k) of the MPEP.  The following is a brief summary of section 706.03(k).

706.03(k) Duplicate Claims

A dependent claim that does not specify a further limitation of the subject matter claimed should be rejected under 35 U.S.C. 112(d).

When two claims in an application comply with the requirements of 35 U.S.C. 112(d) but are duplicates, or else are so close in content that they both cover the same thing, despite a slight difference in wording, it is proper after allowing one claim to object to the other claim under 37 CFR 1.75 as being a substantial duplicate of the allowed claim. Note however, that court decisions have confirmed applicant’s right to restate (i.e., by plural claiming) the invention in a reasonable number of ways. Indeed, a mere difference in scope between claims has been held to be enough.

MPEP Q & A 202: Components of Examiner’s Answer in an Appeal

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Question:

What should an examiner’s answer in an appeal include?

Answer:

An examiner’s answer should include, under appropriate headings, in the order indicated, the following items:

(1) Grounds of Rejection to be Reviewed on Appeal.

A statement that every ground of rejection set forth in the Office action from which the appeal is taken (as modified by any advisory action and pre-appeal brief conference decision) is being maintained by the examiner except for the grounds of rejection (if any) listed under the subheading “WITHDRAWN REJECTIONS.”

The examiner must treat all pending, rejected claims as being on appeal, and must maintain all of the rejections set forth in the Office action from which the appeal is taken, unless appellant has overcome the rejection (e.g., by submitting persuasive arguments, an acceptable terminal disclaimer, or evidence). In situations where the appellant makes a request to hold a rejection in abeyance or did not present any argument on a rejection in the appeal brief, the examiner should maintain the rejection in the examiner’s answer.

This section must also include New Grounds of Rejection – Under the subheading “NEW GROUNDS OF REJECTION,” the examiner must set forth any new grounds of rejection. An examiner’s answer that contains a new ground of rejection must be approved and signed by the Director (or their designee). For each new ground of rejection, a complete explanation supporting the rejection must be provided with a proper reference to the applicable statute, prior art references relied upon, and the claim numbers of the claims that are subject to the rejection in the examiner’s answer.

(2) Response to Argument.

A statement of whether the examiner disagrees with each of the arguments of appellant in the brief with respect to the issues presented and an explanation of the reasons for disagreement with any such argument. The examiner must use headings and subheadings paralleling the headings and subheadings utilized in the appellant’s brief.

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 08.2017. 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 comes from section 1207.02 of the MPEP.  The following is a brief summary of section 1207.02.

1207.02 Contents of Examiner’s Answer

The examiner’s answer should include, under appropriate headings, in the order indicated, the following items:

The examiner’s answer should include, under appropriate headings, in the order indicated, the following items:

(1) Grounds of Rejection to be Reviewed on Appeal.

  • Withdrawn Rejections
  • New Grounds of Rejection

(2) Response to Argument.

MPEP Q & A 201: Drawings Essential Elements of Design Patent Applications

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Question:

Is a drawing an essential element of a design patent application?

Answer:

Every design patent application must include either a drawing or a photograph of the claimed design. As the drawing or photograph constitutes the entire visual disclosure of the claim, it is of utmost importance that the drawing or photograph be clear and complete, and that nothing regarding the design sought to be patented is left to conjecture.

The design must be represented by a drawing that complies with the requirements and must contain a sufficient number of views to constitute a complete disclosure of the appearance of the design. Appropriate and adequate surface shading should be used to show the character or contour of the surfaces represented. Solid black surface shading is not permitted except when used to represent the color black as well as color contrast. Broken lines may be used to show visible environmental structure, but may not be used to show hidden planes and surfaces that cannot be seen through opaque materials. Alternate positions of a design component, illustrated by full and broken lines in the same view are not permitted in a design drawing. Photographs and ink drawings are not permitted to be combined as formal drawings in one application. Photographs submitted in lieu of ink drawings in design patent applications must not disclose environmental structure but must be limited to the design claimed for the article.

Chapter Details:

The answer to this question can be found in chapter 1500 of the MPEP. This chapter covers Design Patents.

The answer is from the 9th Edition, Revision 08.2017. 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 comes from section 1503.02 of the MPEP.  The following is a brief summary of section 1503.02.

1503.02 Drawing

This section covers drawings in design patent applications. It covers topics such as views, the use of surface shading and surface treatments, using broken lines, and photographs and color drawings. For instance, drawings are normally required to be submitted in black ink on white paper.

MPEP Q & A 200: When Drawings Are Not Considered Necessary Under 35 USC 113

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Question:

When is a drawing usually not considered necessary for the understanding of an invention under 35 USC 113 (first sentence)?

Answer:

It has been USPTO practice to treat an application that contains at least one process or method claim as an application for which a drawing is not necessary for an understanding of the invention under 35 U.S.C. 113 (first sentence). The same practice has been followed in composition applications. Other situations in which drawings are usually not considered necessary for the understanding of the invention under 35 U.S.C. 113 (first sentence) are:

  • (A) Coated articles or products: where the invention resides solely in coating or impregnating a conventional sheet (e.g., paper or cloth, or an article of known and conventional character with a particular composition), unless significant details of structure or arrangement are involved in the article claims;
  • (B) Articles made from a particular material or composition: where the invention consists in making an article of a particular material or composition, unless significant details of structure or arrangement are involved in the article claims;
  • (C) Laminated structures: where the claimed invention involves only laminations of sheets (and coatings) of specified material unless significant details of structure or arrangement (other than the mere order of the layers) are involved in the article claims; or
  • (D) Articles, apparatus, or systems where sole distinguishing feature is presence of a particular material: where the invention resides solely in the use of a particular material in an otherwise old article, apparatus or system recited broadly in the claims, for example:
    • (1) A hydraulic system distinguished solely by the use therein of a particular hydraulic fluid;
    • (2) Packaged sutures wherein the structure and arrangement of the package are conventional and the only distinguishing feature is the use of a particular material.

Chapter Details:

The answer to this question can be found in chapter 600 of the MPEP. This chapter covers Parts, Form, and Content of Application.

The answer is from the 9th Edition, Revision 08.2017. 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 comes from section 601.01(f) of the MPEP.  The following is a brief summary of section 601.01(f).

601.01(f) Applications Filed Without Drawings

An “applicant shall furnish a drawing where necessary for the understanding of the subject matter sought to be patented.” Applications filed without drawings are initially inspected to determine whether a drawing is referred to in the specification, and if not, whether a drawing is necessary for the understanding of the invention.

This section covers what happens in instances where the application does not require a drawing as well as those that do require drawings, but was filed without.

MPEP Q & A 199: The Difference Between Applicant Information, Correspondence Information, and Application Information

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Question:

What is the difference between applicant information, correspondence information, and application information?

Answer:

Applicant information includes the name, residence, mailing address, and citizenship of each applicant ( when dealing with pre-AIA 37 CFR 1.41(b)). The name of each applicant must include the family name, and at least one given name without abbreviation together with any other given name or initial. (If the applicant is not an inventor, this information also includes the applicant’s authority (pre-AIA 37 CFR 1.42, 1.43, and 1.47) to apply for the patent on behalf of the inventor. The “mailing address” is the address where applicant customarily receives mail.

Correspondence information includes the correspondence address, which may be indicated by reference to a customer number, to which correspondence is to be directed (when dealing with pre-AIA 37 CFR 1.33(a)).

Application information includes the title of the invention, a suggested classification by class and subclass, the Technology Center (TC) to which the subject matter of the invention is assigned, the total number of drawing sheets, a suggested drawing figure for publication (in a nonprovisional application), any docket number assigned to the application, and the type of application (e.g., utility, plant, design, reissue, provisional). Application information also includes whether the application discloses any significant part of the subject matter of an application under a secrecy order.

Chapter Details:

The answer to this question can be found in chapter 600 of the MPEP. This chapter covers Parts, Form, and Content of Application.

The answer is from the 9th Edition, Revision 08.2017. 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 comes from section 601.05(b) of the MPEP.  The following is a brief summary of section 601.05(b).

601.05(b) Application Data Sheet (ADS) in Application Filed Before September 16, 2012

This section covers details about an application date sheet (ADS) in applications filed before September 16, 2012. Topics covered include supplemental application data sheets and their submission and treatment of inconsistent information.

MPEP Q & A 198: Items Necessary to Accord the International Filing Date the Date of Receipt of the International Application

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Question:

What does the Office need at the time of receipt in order to accord the international filing date the date of receipt of the international application?

Answer:

The receiving Office shall accord as the international filing date the date of receipt of the international application, provided that the Office has found that, at the time of receipt:

(i) the applicant does not obviously lack, for reasons of residence or nationality, the right to file an international application with the receiving Office,

(ii) the international application is in the prescribed language,

(iii) the international application contains at least the following elements:

  • (a) an indication that it is intended as an international application,
  • (b) the designation of at least one Contracting State,
  • (c) the name of the applicant, as prescribed,
  • (d) a part which on the face of it appears to be a description
  • (e) a part which on the face of it appears to be a claim or claims.

Chapter Details:

The answer to this question can be found in chapter 1800 of the MPEP. This chapter covers Patent Cooperation Treaty.

The answer is from the 9th Edition, Revision 08.2017. 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 comes from section 1810 of the MPEP.  The following is a brief summary of section 1810.

1810 Filing Date Requirements

An international filing date is accorded to the earliest date on which the requirements under PCT Article 11(1) were satisfied. If the requirements under PCT Article 11(1) are not satisfied as of the date of initial receipt of the international application papers, the receiving Office will invite applicant to correct the deficiency within a set time limit.

The USPTO is also not competent to receive international applications that are not in the English language and, upon payment of a fee equal to the transmittal fee, the USPTO will forward such applications to the International Bureau provided they are in a language accepted by the International Bureau as receiving Office.

MPEP Q & A 197: What Must a Petition for an Unintentionally Delayed Claim be Filed With?

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Question:

What must a petition for an unintentionally delayed claim be filed with?

Answer:

A petition for an unintentionally delayed claim must be accompanied by:

  • (A) the reference required by 35 U.S.C. 120 and 37 CFR 1.78 to the prior application (unless previously submitted);
  • (B) a petition fee under 37 CFR 1.17(m); and
  • (C) a statement that the entire delay between the date the benefit claim was due under 37 CFR 1.78 and the date the claim was filed was unintentional. The Director may require additional information where there is a question whether the delay was unintentional.

Chapter Details:

The answer to this question can be found in chapter 200 of the MPEP. This chapter covers Types and Status of Application; Benefit and Priority Claims.

The answer is from the 9th Edition, Revision 08.2017. 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 comes from section 211.04 of the MPEP.  The following is a brief summary of section 211.04.

211.04 Delayed Benefit Claims

This section outlines delayed benefit claims. For instance, if the reference required by 35 U.S.C. 120 and 37 CFR 1.78 is not submitted within the required time period, a petition for an unintentionally delayed claim may be filed. Also included is a delayed submission of benefit claims in international applications.

MPEP Q & A 196: Submission of Petition to Withdraw Application from Issue Under 37 CFR 1.313(c)

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Question:

How can petitions to withdraw an application from issue under 37 CFR 1.313(c) be sent to the USPTO?

Answer:

Petitions to withdraw an application from issue under 37 CFR 1.313(c) may be:

  • (A) mailed to “Mail Stop Petition, Commissioner for Patents”;
  • (B) transmitted by facsimile;
  • (C) hand-carried to the Office of Petitions; or
  • (D) filed via EFS-Web as an ePetition.

Chapter Details:

The answer to this question can be found in chapter 1300 of the MPEP. This chapter covers Allowance and Issue.

The answer is from the 9th Edition, Revision 08.2017. 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 comes from section 1308 of the MPEP.  The following is a brief summary of section 1308.

1308 Withdrawal From Issue

This section covers the withdrawal of an application from issue. Specific topics discussed include the withdrawal from issue at the initiative of the applicant both prior to and after the payment of the issue fee.  Withdrawal from issue at the initiative of the Office is also covered.

MPEP Q & A 195: Necessary Items for a Petition for Retroactive License

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Question:

What should a petition for retroactive license include?

Answer:

A petition for retroactive license shall include:

(1) A listing of each of the foreign countries in which the unlicensed patent application material was filed,

(2) The dates on which the material was filed in each country,

(3) A verified statement (oath or declaration) containing:

  • (i) An averment that the subject matter in question was not under a secrecy order at the time it was filed abroad, and that it is not currently under a secrecy order,
  • (ii) A showing that the license has been diligently sought after discovery of the proscribed foreign filing, and
  • (iii) An explanation of why the material was filed abroad through error without the required license first having been obtained, and

(4) The required fee of this chapter.

Chapter Details:

The answer to this question can be found in chapter 100 of the MPEP. This chapter covers Secrecy, Access, National Security, and Foreign Filing.

The answer is from the 9th Edition, Revision 08.2017. 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 comes from section 140 of the MPEP.  The following is a brief summary of section 140.

140 Foreign Filing Licenses

This section covers both expedited foreign filing licenses and retroactive licenses. Essentially, if an inventor files a patent application in the U.S., he or she may not file the same application in a foreign country prior to the passing of six months without first obtaining a foreign filing license. If the inventor files in a foreign country before the 6 month waiting period has passed without getting a license first, he or she must immediately file for a retroactive license.

MPEP Q & A 194: Stop the Publication of an Application

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Question:

Can a petition under 37 CFR 1.138(c) stop publication of an application?

Answer:

A petition under 37 CFR 1.138(c) will not stop publication of the application unless it is recognized and acted on by the Pre-Grant Publication Division in sufficient time to avoid publication. The petition will be granted when it is recognized in sufficient time to avoid publication of the application. The petition will be denied when it is not recognized in time to avoid publication.

Generally, a petition under 37 CFR 1.138(c) will not be granted and the application will be published in regular course unless such declaration of express abandonment and petition are received by the appropriate officials more than four weeks prior to the projected date of publication. It is unlikely that a petition filed within four weeks of the projected date of publication will be effective to avoid publication. Also note that withdrawal of an application from issue after payment of the issue fee may not be effective to avoid publication of an application under 35 U.S.C. 122(b).

 

Chapter Details:

The answer to this question can be found in chapter 700 of the MPEP. This chapter covers Examination of Applications.

The answer is from the 9th Edition, Revision 08.2017. 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 comes from section 711.01 of the MPEP.  The following is a brief summary of section 711.01.

711.01 Express or Formal Abandonment

This section discusses the details of express or formal abandonment. For instance, the applicant or the attorney/agent of record, if any, can sign an express abandonment. Details are provided where a letter of express abandonment is being submitted in an allowed application after the payment of the issue fee, to avoid publication of an application, to obtain a refund of the search and excess claims fee, and an application in interference.