Patent Application Preparation & Filing Flashcards

An applicant files a nonprovisional utility application without an oath or declaration. The USPTO issues a Notice to File Missing Parts. Under 37 CFR 1.53(f), how long does the applicant have to file the oath or declaration without losing the filing date?

Answer: 2 months from the mailing date of the notice, extendable under 37 CFR 1.136(a)

The Notice to File Missing Parts sets a 2-month period for filing missing items such as the oath or declaration, and this period may be extended under 37 CFR 1.136(a) upon payment of extension fees.

A continuation application is filed claiming benefit of a parent application. The continuation includes a new example not present in the parent. Under 35 U.S.C. § 112(a), which claims in the continuation can receive the parent's filing date?

Answer: Only claims fully supported by the parent's original disclosure can receive the parent's filing date

Only claims that are fully supported by the parent application's disclosure as filed are entitled to the parent's filing date; claims requiring the new matter are limited to the continuation's filing date.

Under 37 CFR 1.136(a), an applicant may extend a shortened statutory period for reply. What is the maximum extension period available as of right (without a petition showing cause)?

Answer: 5 months

Under 37 CFR 1.136(a), extensions of up to 5 months are available as of right upon payment of the appropriate fee, making the total response period up to 6 months for a 1-month shortened statutory period.

An applicant files a Request for Continued Examination (RCE) after a final rejection. Under 37 CFR 1.114, what must accompany the RCE?

Answer: A submission (such as an amendment or reply) and the required fee

An RCE under 37 CFR 1.114 requires a fee and a submission, which may be an amendment, new arguments, or new evidence; without both, the RCE is improper.

A practitioner drafts a means-plus-function claim element reciting 'means for fastening.' Under 35 U.S.C. § 112(f), what must the specification disclose to satisfy the written description requirement for this element?

Answer: The specification must disclose the corresponding structure, material, or acts that perform the recited function

Under § 112(f), a means-plus-function claim element is construed to cover the structure described in the specification that performs the recited function, so the specification must disclose corresponding structure.

An applicant files a design patent application. Which of the following is NOT a required component of a design patent application under 37 CFR 1.154?

Answer: An abstract describing the novel features of the design

Design patent applications do not require an abstract; the required components include a preamble, description of the drawings, the drawings themselves, and a single claim.

An inventor claims a method with five steps. The examiner argues one step is not enabled because undue experimentation would be required to practice it. Under the Wands factors, which consideration is LEAST relevant to the undue experimentation analysis?

Answer: The commercial success of products practicing the claimed method

The Wands factors focus on the difficulty of practicing the invention, not on its commercial success; commercial success is relevant to obviousness secondary considerations, not enablement.