MPEP 700/2100 - Go together here for the benefit of both brevity and clarity.

MPEP 700 - Examination of Applications

The patent bar exam places major emphasis on this section. The examination of applications is one of the most thoroughly tested sections on the exam. The details of RCE's should be paid close attention to. The sections on abandonment and extensions will be referenced several times. Making amendments to the application is also very important and the process of swearing back, rule 37 C.F.R. 1.131, will be tested.

MPEP 2100 - Patentability

This chapter is tested very heavily. You should plan to memorize all the sections of 35 U.S.C. 102 including how to overcome each type of rejection. 35 U.S.C. 103 is also very important. Pay special attention to the specification requirements under 35 U.S.C. 112. Learning the material presented in this chapter is key to passing the patent bar exam.

Here's what you need to know regarding Chapters 700 and 2100

Patentability:
For an object to be patentable, it must not be a naturally occurring composition

Disclosure of utility:
1. a claimed invention must have a specific and substantial utility
2. an applicant need only provide one credible assertion of specific utility for each claimed invention to satisfy the utility requirement; and
3. any rejection based on lack of utility should include a detailed description as to why the claimed invention has no special or substantial utility

The examiner should provide documented evidence regardless of the publication date

The invention has a well established utility if a person of ordinary skill in the art would immediately appreciate why the invention is useful based on the characteristics of the invention and the utility is specific, substantial and credible

Where an asserted special and substantial utility is not credible, a prima facie showing of no specialization or substantial utility must establish that it is more likely than not that a person skilled in art would not consider any special and substantial utility asserted by applicant for the claimed invention as credible

An applicant may overcome a rejection by an examiner who established a prima facie showing of no specific and substantial credible utility for a claimed invention by:
1. providing reasoning or arguments
2. amending the claims; or
3. providing evidence in the form of a declaration under 37 C.F.R. 1.132 providing evidence in the form of a printed publication rebutting the basis or logic of prima facie showing
a. even the mere identification of a pharmacological activity of a compound that is relevant to an asserted pharmacological use provides an "immediate benefit to the public"

35 U.S.C. 101
1. inventions will be granted for "any new and useful process, machine, manufacture, or composition of matter, or any new and useful improvement thereof'
2. rejections based on a lack of utility (35 U.S.C. 101) may include:
a. any substantially unaltered thing occurring in nature, for example - a shrimp with its head and digestive tract removed is not patentable
b. printed matter
c. a scientific principle, divorced from any tangible structure, so mathematical discoveries are not patentable - however, the methods of using such principles and devices embodying the principles may be patentable.

In order to establish prima facie, it is not necessary that there be a suggestion or an expectation from the prior art that the claimed invention will have the same or a similar utility as one which is newly discovered by the applicant

35 U.S.C. 102
For anticipation under 35 U.S.C. 102, the reference must teach every aspect of the claimed invention, either explicitly or impliedly

102(a)
Prior art under U.S.C. 102(a) includes:
1. a patent for the same subject matter obtained anywhere in the world
2. public knowledge in the U.S. only
3. publication anywhere in the world, or
4. use by others in the U.S. only, which means that the knowledge must be used in this country - prior knowledge that is not present in the U.S., even if common in a foreign country, cannot be the basis of a rejection under 35 U.S.C. 102(a). By others refers to any entity different from the inventive entity, even if it only differs by one person

102(b)
If there is a patent or publication for the same subject matter anywhere that was printed or issued more than one year prior to the application, or public knowledge or use in the U.S. more than one year prior to the application, there will be a rejection under 35 U.S.C. 102(b).

What creates a statutory bar?
If the inventor discloses his or her own work more than 1 year before the filing of the patent application, the inventor is barred from obtaining a patent on that work
1. The one year time bar is measured from the U.S. filing date
2. Experimental use does not bar a patent, however it must be the primary purpose, and any commercial exploitation that results from it must be incidental.

102(c)
Abandoned inventions will be rejected under 35 U.S.C. 102(c)

If an invention is abandoned, it cannot be patented later. For example, if 10 years pass by without the filing of a patent, the invention may be considered abandoned. A delay in making the first application is not sufficient to determine abandonment

102(d)
A person shall be entitled to a patent unless the invention was first patented, or was the subject of an invention, certified by the applicant or his legal representatives or assigns, more than 12 months before the filing of the application in the U.S.

For a foreign patent to qualify as a reference:
1. It need not be published, but the patent rights granted must be enforceable;
2. It must be filed more than 12 months before the effective filing date of the u.s. application;
3. It must be filed by the same applicant as the u.s. application, his or her legal representative or assigns;
4. It must have actually issued as a patent or inventor's certificate before the filing of an application in the u.s.; and
5. It must involve the same invention

There are four conditions that must be present in order to bar the granting of a patent under 35 U.S.C. 102(d):
1. more than 12 months filing of a foreign application
2. the foreign application must have been filed by the same applicant as in the U.S. or by his/her legal representatives or assigns
3. the foreign patent or inventor's certification must actually be granted before the U.S. filing date
4. the same invention must be involved

102(e)
A rejection under 35 U.S.C. 102(e) will be made where the "patent was filed by another with an earlier filing date". Publications of international applications filed before November 29, 2000 do not have a 35 U.S.C. 102(e) date at all.

In order for a reference to qualify as a reference under 35 U.S.C. 102(e), it must be a:
1. U.S. patent; or
2. U.S. application publication

For WIPO publication of an international application the international application under 35 U.S.C. 102(e) must meet the following conditions:
1. it must have an international filing date on or after November 29, 2000
2. it must designate the U.S.; and
3. it must be published under PCT Article 21(2) in English
4. There must be a showing that the disclosure relied on is the applicant's own work:
a. Applicant need not prove diligence or reduction to practice to establish that he or she invented the subject matter
5. And a sharing of conception by applicant before the filing date of reference

102(f)
If the subject matter was invented by someone else and not the inventor(s) listed on the application, there will be a rejection under 35 U.S.C. 102(f).

The inventors listed must be exactly those that invented the actual work. For example, if A, B and C invented something, and only A, B are listed on the application, the application is invalid since C should also be listed.

A person will receive a patent unless he, himself did not invent the subject matter sought to be patented.

The mere fact that a claim recites the use of various compositions, each of which can be assumed to be old, does not provide a proper basis for a 35 U.S.C. 102(f) rejection.

There is no requirement that an inventor be the one to reduce the invention to practice so long as reduction to practice was done on his or her behalf.

102(g)
(g)(1) deals with conflicts with priority of the invention that are discovered during the course of an interference - someone else invented the same thing at almost the same time and did not abandon, suppress or conceal it

(g)(2) deals with the issue of an invention that was made in this country by another inventor who had not abandoned, suppressed, or concealed it.

The U.S. has a first to invent rather than a first to file system:
1. an interference is held to try to determine which party was the first to invent the invention
2. the first to conceive the invention and constructively reduce it to practice will be the sole party to obtain a patent

Subject matter under 35 U.S.C. 102(g) is available only if the invention was made in this country:
1. if the invention is reduced to practice in a foreign country, but knowledge of the invention was brought into this country and disclosed to others, the inventor can derive no benefit from the work done abroad
2. such knowledge is merely evidence of the conception of the invention
3. the applicant can establish a date of invention in a NAFTA member country or WTO member country

The difference between constructive and actual reduction to practice is that:
1. Constructive reduction of practice is the date of the filing at the PTO.
2. Actual reduction to practice is the date the invention was sufficiently tested to its intended proven purpose

Diligence:
reasonable diligence must only be shown between the date of the actual reduction of practice and the public disclosure to avoid the inference of abandonment

35 U.S.C. 103
35 U.S.C. 103 is based on the obviousness of the subject matter

In order to determine obviousness, the examiner will:
1. determine the scope and contents of the prior art
2. ascertain the differences between the prior art and the claims in issue
3. resolve the level of ordinary skill in the pertinent art; and
4. evaluate evidence of secondary considerations

Overcoming a rejection based on 35 U.S.C. 103(a) may be accomplished by:
1. persuasively arguing that the claims are patentably distinguishable from the prior art
2. amending the claims to patentably distinguish them over the prior art
3. filing an affidavit or declaration under 37 C.F.R. 1.131
4. filing an affidavit or declaration showing that the reference invention is not by "another"

Perfecting a claim to priority - perfecting priority by amending the specification of the application to contain a specific reference to a prior application:
1. In order to establish a prima facie case of obviousness, it is not necessary that there be a suggestion or expectation from the prior art that the claimed invention will have the same or a similar utility as one newly discovered by the applicant.
2. The rationale for proving obviousness may be found in a specific reference, from common knowledge in the art, scientific principles; art recognized equivalents, or a legal precedent.
3. In considering the disclosure of a reference, it is proper to take into account not only specific teachings of the reference, but also the inferences which one skilled in the art would reasonably be expected to draw there from.

Combining equivalents known for the same purpose:
it is prima facie obvious to combine two compositions, each of which is taught by the prior art to be useful for the same purpose in order to form a third composition to be used for the very same purpose

to make out a case of obviousness, one must:
1. determine the scope and contents of the prior art
2. ascertain the differences between the prior art and the claims in issue
3. determine the level of skill in the pertinent art
4. evaluate any evidence of secondary considerations

Arguing economic infeasibility:
the fact that a combination would not be made by businessmen for economic reasons does not mean that a person of ordinary skill in the art would not make the combination because of some technological incompatibility.

Request for continued examination - actions in which the prosecution will be considered closed and a request for continued examination may be proper include:
1. an Office action that is a final action
2. when a Notice of Allowance has issued
3. an Office action under Ex Parte Quayle when an application is under appeal

The filing for a request for continued examination (RCE), including the submission after the filing of a Notice of Appeal to the Board but prior to a decision on an appeal, is considered a request to withdraw the appeal and reopens the prosecution of the application

The submission may be an amendment to the written description

In those instances in which an applicant seeks to add new matter to the disclosure of an application, the procedure set forth in 37 C.F.R. 1.114 is not available, and the applicant must file a Continuation-In-Part application under 37 C.F.R. 1.53(b) containing such new matter.

Petition to make special:

The following categories do not require a fee for a petition to make special:
1. illness/health of applicant
2. age of applicant
3. environmental contributions
4. enhancement of energy resources

The following categories require the payment of a fee:
1. prospective manufacture
2. infringement
3. safer DNA
4. HIV/AIDS and cancer
5. superconductivity
6. countering terrorism
7. biotech applications filed by small entities
8. all other instances where a petition to make special is filed

Extension of due dates

When extending due dates:
1. total automatic extension cannot be greater than five months
2. total statutory time limit for all responses to Official Actions cannot be extended more than six months

Due dates cannot be extended for the following:
1. IDSs
2. any due date set by statute as the six month absolute deadline
3. payment of the issue fee, although it can be paid late
4. deadline for responding to a Notice of Omitted Items
5. the two month deadline to obtain a refund for a fee paid as a large entity

Unavoidable delay:

To prove unavoidable delay the following evidence is required:
1. listing of the procedures in place that should have avoided the error resulting in the delay the training and experience of the people responsible for the error
2. copies of applicable docketing records to show that the error was the cause of the delay
3. proper notification of a change in correspondence address must be shown to prove unavoidable delay

Unintentional delay:

The applicant must attempt to prove that his or her delay was unintentional; to do this he or she will have to submit a petition that includes:
1. evidence showing that the delay was unintentional
2. the required reply
3. the required fee
4. any terminal disclaimer that is deemed necessary

Petitions:
1. must be filed within 2 months from the action complained of
2. the mere filing of a petition will not stay the period for replying to an examiner's action which may be running against an application, nor act as a stay of other proceedings

Amendments:

Amendments must be signed by:
1. the attorney or agent of record
2. the registered attorney or agent acting under 37 C.F.R. 1.34(a)
3. the assignee of record of entire interest or all the assignees if partial assignments are granted
4. all of the applicants

New matter includes:
1. matter wholly unsupported by the original disclosure
2. adding specific percentages or compounds when the original disclosure was broader
3. the omission of a step from a method

Swearing back

Swearing back can be used for:
1. a rejection under 35 U.S.C. 102(a) based on a journal article that describes the invention as claimed
2. a rejection under 35 U.S.C. 102(e) based on a patent that discloses but does not claim the same patentable invention
3. a reference with a patent issue date less than one year prior to the applicant's effective filing date, showing but not claiming the same patentable invention
4. the date of foreign patent or publication is less than 1 year prior to applicant's effective filing date

The date to overcome is the effective U.S. filing date, not the foreign priority date

Printed publications are effective as of the publication date, not the date of receipt by the publisher

The lapse of time between the completion or reduction to practice of an invention and the filing of an application thereon is not relevant to an affidavit or declaration under 37 C.F.R. 1.131

After conception has clearly been established, diligence must be considered prior to the establishment of the effective date

35 U.S.C. 112

Enabling disclosure:
1. the specification must enable a person skilled in the art to make and use the claimed invention without undue experimentation
2. it must be consistent with published information
3. enablement for the claims in a utility application is found in the specification preceding the claims, as opposed to being in the claims
4. the claims do not provide their own enablement
5. the lack of necessity to theorize or explain the failures does not alleviate the inventor from complying with 35 U.S.C. 112, first paragraph by providing an enabling disclosure that is commensurate in scope with the claims

Best mode:
1. used to restrain inventors from applying for patents while at the same time concealing from the public the preferred embodiments of their inventions which they have in fact conceived
2. affirmation of a best mode rejection must show that the quality of an applicant's best mode disclosure is so poor as to effectively result in concealment
3. This law prevents an applicant from claiming subject matter that was not described in the application as filed, and the proscription against the introduction of new matter in a patent application serves to prevent an applicant from adding to the informational content of a patent application after it is filed

Filing dates and the state of art:
1. an applicant cannot use a patent to the prove state of art for purpose of satisfying the enablement requirement if the patent has an issue date later than the effective filing date of the application
2. a later dated publication cannot be used to enable an earlier dated application

Undue experimentation:
1. the claimed invention must be enabled so that any person skilled in the art can make and use the invention without undue experimentation
2. the information contained in the disclosure of an application must be sufficient to inform those skilled in the relevant art on how to both make and use the claimed invention

The best mode requirement keeps applicants from obtaining patent protection without making a full disclosure as required by the statute

Facts about best mode:
1. a specific example is not required
2. the best mode may be represented by a preferred range of conditions or a group of reactants
3. a designation as best mode is not required
4. the disclosure only needs to include the best mode
5. there is no requirement to update the best mode
6. if the best mode is not disclosed in the application, such a defect cannot be amended by adding any new matter

35 U.S.C. 112, 4th paragraph:
1. a dependent claim cannot be broader than the claim from which it depends
2. up to 300 amps includes 0 to 300 amps
a. example: if the specification discloses a 100-300 amp range the dependent claim is broader
3. open ended numerical ranges may render the claim indefinite:
a. the term "up to" includes zero as a lower limit

A claim limitation will be interpreted to invoke 35 U.S.C. 112, sixth paragraph if it meets the following 3 prong analysis:
1. the claim limitations must use the phrase "means for" or "step for"
2. the "means for" or "step for" must be modified by functional language
3. the phrase "means for" or "step for" must not be modified by structure, material or acts for achieving the specified function

If an applicant wishes to have the claim limitation treated under 35 U.S.C. 112, sixth paragraph, the applicant must either:
1. amend the claim to include the phrase "means for" or "step for" in accordance with these guidelines; or
2. show that even though the phrase "means for" or "step for" is not used, the claim limitation is written as a function to be performed and does not provide any structure, material, or acts which would preclude application of 35 U.S.C. 112, sixth paragraph

Transitional phrases frequently used in claims and their meanings:

Comprising:
1. is inclusive or openended and does not exclude additional, unrecited elements or method steps
2. "including" and "characterized by" are synonymous with comprising

Consisting essentially of:
1. limits the scope of a claim to the specified materials or steps; and
2. to those that do not materially affect the basic and novel characteristics of the claimed invention

Consisting of:
1. cannot add an element or step, equal to comprising
2. the phrase "consisting of' excludes any step not specified in the claim
3. claim that depends from a claim which "consisting of' the recited steps cannot add a step

Inherency:
under the principles of inherency, if a prior art device, in its normal and usual operation, would necessarily perform the method claimed, then the method claimed will be considered to be anticipated by the prior art device

Enabling references:
1. the level of disclosure required within a reference to make it an "enabling disclosure" is the same no matter what type of prior art is at issue
2. it does not matter whether the prior art reference is a U.S. patent, foreign patent, printed publication or other
3. a reference contains an enabling disclosure if the public was in possession of the claimed invention before the date of the invention

Publicly accessible:
1. prior art disclosures on the internet are thought of as publicly available once the item was posted, if there is no posting date, it cannot be relied upon as prior art, but it may be relied upon to provide evidence regarding the state of the art
2. one need not prove someone actually looked at a publication when that publication is publicly accessible
3. a printed publication has been made available to the extent that persons interested and ordinarily skilled in the subject matter or art, who exercise reasonable diligence, can locate it

Anticipation of ranges:
When a claim reciting ranges covers several compositions, the claim is anticipated if one of them is in the prior art