Patent: Bar - MPEP 700 Study Guide
Questions and Answers.
Can you respond to some objections/rejections and defer others until a further time? - Answer
No, all objections/rejections must be responded to in full; otherwise, the response is considered
incomplete
What is a rejection vs. objection - Answer -rejection: a written refusal to grant claims because
the subject matter as claimed is deemed unpatentable
-objection: the FORM of the claim, spec, or drawing is (as opposed to substance) is deemed
improper
How do you challenge an objection? - Answer -examiner must be asked for reconsideration
then a petition filed to the commissioner
How do you challenge a rejection? - Answer -examiner must be asked for reconsideration
then an appeal pursued to the Patent Trial Appeal Board
What does it mean to swear back? - Answer -pre-AIA only (102a&e)
-swearing an affidavit that disqualifies prior art by proving the date of invention was prior to the
filing date of the prior art
What is anticipation? - Answer -a reference or state of facts that teaches every aspect of the
claimed invention either directly or indirectly
What is 102C? - Answer -prior art is not valid if it connects to the inventor by some sort of
agreement (think "C" for common ownership
What is 102D? - Answer -prior art determination is based upon "D" for filing Date
What is "New Matter" - Answer -any subject matter not supported by the original disclosure
What 4 things did Thomas Jefferson say were patentable? - Answer -process, machine,
manufacture, or composition of matter
What does a final rejection mean? - Answer -you have 6 months from the mailing date of the
final rejection before you arrive at the "pit of dispair"
Questions and Answers.
Can you respond to some objections/rejections and defer others until a further time? - Answer
No, all objections/rejections must be responded to in full; otherwise, the response is considered
incomplete
What is a rejection vs. objection - Answer -rejection: a written refusal to grant claims because
the subject matter as claimed is deemed unpatentable
-objection: the FORM of the claim, spec, or drawing is (as opposed to substance) is deemed
improper
How do you challenge an objection? - Answer -examiner must be asked for reconsideration
then a petition filed to the commissioner
How do you challenge a rejection? - Answer -examiner must be asked for reconsideration
then an appeal pursued to the Patent Trial Appeal Board
What does it mean to swear back? - Answer -pre-AIA only (102a&e)
-swearing an affidavit that disqualifies prior art by proving the date of invention was prior to the
filing date of the prior art
What is anticipation? - Answer -a reference or state of facts that teaches every aspect of the
claimed invention either directly or indirectly
What is 102C? - Answer -prior art is not valid if it connects to the inventor by some sort of
agreement (think "C" for common ownership
What is 102D? - Answer -prior art determination is based upon "D" for filing Date
What is "New Matter" - Answer -any subject matter not supported by the original disclosure
What 4 things did Thomas Jefferson say were patentable? - Answer -process, machine,
manufacture, or composition of matter
What does a final rejection mean? - Answer -you have 6 months from the mailing date of the
final rejection before you arrive at the "pit of dispair"
