Patent Prosecution Flashcards

An applicant receives a final rejection. Which of the following is NOT a proper response to a final rejection under 37 C.F.R. § 1.116?

Answer: Filing a new continuation application with entirely new claims

Filing a new continuation application is a separate proceeding, not a proper response to a final rejection — the other options are all recognized responses under 37 C.F.R. § 1.116 or related rules.

Under 37 C.F.R. § 1.136(a), how long may an applicant extend the time to respond to an Office Action, and what is the maximum total period allowed?

Answer: Up to 5 months, for a maximum of 6 months total

Under 37 C.F.R. § 1.136(a), an applicant may obtain extensions of up to 5 months, making the maximum response period 6 months from the mailing date of the Office Action.

Which doctrine requires a patent applicant to be bound by arguments and claim amendments made during prosecution to distinguish prior art, even after the patent issues?

Answer: Prosecution history estoppel

Prosecution history estoppel prevents a patentee from recapturing claim scope surrendered during prosecution through narrowing amendments or arguments distinguishing prior art.

A patent examiner issues a non-final Office Action rejecting claims 1-5 under 35 U.S.C. § 103. To traverse the rejection, applicant amends claim 1 to add a new limitation. What must applicant also do to preserve the right to appeal the rejections of claims 2-5?

Answer: Specifically argue the patentability of claims 2-5 in the remarks section

Applicant must specifically argue the patentability of each claim not amended; otherwise the examiner may maintain the rejection for claims 2-5 without separate consideration.

Under 37 C.F.R. § 1.131, an applicant may antedate (swear behind) a prior art reference by submitting a declaration showing conception and reduction to practice. Which reference type CANNOT be sworn behind under Rule 131?

Answer: A patent with a filing date more than one year before applicant's filing date

A reference that predates the applicant's filing date by more than one year is a statutory bar under pre-AIA § 102(b) and cannot be overcome by a Rule 131 declaration.

What is the purpose of a Restriction Requirement in patent prosecution?

Answer: To require the applicant to elect one invention when the application claims two or more independent and distinct inventions

A Restriction Requirement under 35 U.S.C. § 121 requires the applicant to elect prosecution of one of two or more independent and distinct inventions claimed in a single application.

Under the AIA, which of the following correctly describes the 'first inventor to file' system with respect to prior art under 35 U.S.C. § 102(b)(1)?

Answer: A disclosure made by the inventor within one year before the filing date is not prior art

Under AIA § 102(b)(1), a disclosure made one year or less before the effective filing date is not prior art if made by the inventor or joint inventor, or by others who obtained the subject matter from the inventor.