U. S. Patent Prosecutor's Desk Reference 2012 Edition
ISBN: 9780199926688 | 0199926689
Format: PaperbackPublisher: Oxford Univ Pr
Pub. Date: 6/22/2012
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U.S. Patent Prosecutor's Desk Reference assists patent prosecutors in responding to Office Actions issued by the United States Patent and Trademark Office (USPTO) rejecting patent application claims. It provides a comprehensive and updated source of law, organized by sections corresponding to the types of rejections made by the USPTO. This 2012 Edition includes all cases from the Federal Circuit and Board of Patent Appeals through December 31, 2011, and is updated with: -Federal Circuit and Board of Patent Appeals and Interferences opinions iss... MORE
| Introduction | p. xi |
| Rejections and Responses | p. 1 |
| Section 1000 Content | p. 3 |
| 1000 35 U.S.C. 101 Inventions Patentable | p. 4 |
| 1100 Non-Statutory Subject Matter Rejection Under 35 U.S.C. 101 | p. 4 |
| 1101 Basis for Rejection | p. 4 |
| 1102 Response to Rejection | p. 4 |
| 1110 Non-Statutory Subject Matter Rejection Under 35 U.S.C. 101-Printed Matter | p. 5 |
| ... MORE | p. 5 |
| 1112 Response to Rejection | p. 5 |
| 1120 Non-Statutory Subject Matter Rejection Under 35 U.S.C. 101-Naturally Occurring Article | p. 6 |
| 1121 Basis for Rejection | p. 6 |
| 1122 Response to Rejection | p. 6 |
| 1130 Non-Statutory Subject Matter Rejection Under 35 U.S.C. 101-Scientific Principle | p. 7 |
| 1131 Basis for Rejection | p. 7 |
| 1132 Response to Rejection | p. 7 |
| 1200 Lack of Utility Rejection Under 35 U.S.C. 101 | p. 11 |
| 1201 Basis for Rejection | p. 11 |
| 1202 Response to Rejection | p. 11 |
| Section 2000 Content | p. 19 |
| 2000 35 U.S.C. 102 Conditions for Patentability, novelty and loss of right to patent | p. 21 |
| 2100 Anticipation Rejection Under 35 U.S.C. 102 | p. 22 |
| 2101 Basis for Rejection | p. 22 |
| 2102 Response to Rejection-The Asserted Reference Does Not Qualify as Prior Art | p. 22 |
| 2102.1 The Asserted Reference Does Not Qualify as Prior Art Under 35 U.S.C. 102(a) | p. 22 |
| 2102.11 The Asserted Reference Was Not Available Prior to the Effective Filing Date of the Application | p. 22 |
| 2102.12 The Asserted Reference Was Not Known or Used | p. 27 |
| 2102.2 The Asserted Reference Does Not Qualify as Prior Art Under 35 U.S.C. 102(b) | p. 27 |
| 2102.21 The Asserted Reference Was Not Available More than One Year Prior to the Effective Filing Date of the Application | p. 27 |
| 2102.22 The Asserted Reference Was Not in Public Use | p. 30 |
| 2102.23 The Asserted Reference Was Not On Sale | p. 31 |
| 2102.24 The Asserted Reference Is Not a Printed Publication | p. 33 |
| 2102.25 The Asserted Reference Is Not Enabling | p. 35 |
| 2102.3 The Asserted Reference Does Not Qualify as Prior Art Under 35 U.S.C. 102(e) | p. 37 |
| 2102.31 The Asserted Reference Was Not Available Prior to the Effective Filing Date of the Application | p. 37 |
| 2102.32 The Asserted Reference Is Publication of Applicant's Own Invention | p. 41 |
| 2103 Response to Rejection-The Asserted Reference Does Not Disclose Every Element of the Claimed Invention | p. 45 |
| 2103.1 The Asserted Reference Does Not Directly Disclose At Least One Element of the Claimed Invention | p. 46 |
| 2103.11 The Examiner Misconstrued a Claim Element | p. 48 |
| 2103.12 The Examiner Misconstrued the Asserted Reference | p. 52 |
| 2103.2 The Asserted Reference Does Not Inherently Disclose At Least One Element of the Claimed Invention | p. 55 |
| Section 3000 Content | p. 58 |
| 3000 35 U.S.C. 103 Conditions for Patentability, non-obvious subject matter | p. 60 |
| 3100 Obviousness Rejection Under 35 U.S.C. 103(a) | p. 61 |
| 3101 Basis for Rejection | p. 61 |
| 3102 Response to Rejection-The Asserted Reference Does Not Qualify as Prior Art | p. 62 |
| 3102.1 The Reference Does Not Qualify as Prior Art Under 35 U.S.C. 102(a), (b), or (e) | p. 62 |
| 3102.2 The Reference Is Non-Analogous Prior Art | p. 63 |
| 3103 Response to Rejection-The Examiner Failed to Establish a Prima Facie Case of Obviousness | p. 66 |
| 3103.1 The Prior Art Does Not Teach or Suggest Every Element of the Claimed Inventions | p. 66 |
| 3103.11 The Examiner Misconstrued a Claim Element | p. 79 |
| 3103.12 The Examiner Misconstrued the Prior Art | p. 85 |
| 3103.13 The Examiner Misconstrued a Product-by-Process Claim | p. 90 |
| 3103.2 There Is No Motivation to Modify the Asserted Reference | p. 91 |
| 3103.3 There Is No Reason to Combine the Asserted References | p. 97 |
| 3103.4 There Is No Motivation to Select the Claimed Element Among the Number Disclosed in the Asserted Reference | p. 109 |
| 3103.5 The Closely Related Compounds Have Dissimilar Properties | p. 113 |
| 3103.51 The Closely Related Compounds Are Dissimilar | p. 114 |
| 3103.52 The Prior Art Compound Has No Utility or Utility Only as an Intermediate | p. 119 |
| 3103.6 The Disclosed Ranges Do Not Overlap | p. 120 |
| 3104 Response to Rejection-The Applicant Rebutted the Prima Facie Case of Obviousness | p. 122 |
| 3104.1 The Prior Art Teaches Away From the Claimed Invention | p. 124 |
| 3104.11 The Prior Art Teaches Away From the Overlapping Ranges | p. 129 |
| 3104.12 The Asserted Prior Art References Teach Away from Their Combination | p. 132 |
| 3104.2 Commercial Success | p. 133 |
| 3104.3 Long-Felt but Unsolved Need | p. 137 |
| 3104.4 Failure of Others | p. 141 |
| 3104.5 Unexpected Results | p. 141 |
| 3104.51 Unexpected Results In Overlapping Ranges | p. 147 |
| 3104.52 Unexpected Results In Closely Related Compounds | p. 148 |
| 3104.6 Skepticism by Those of Skill in the Art | p. 153 |
| 3104.7 Non-Obvious Method of Making a Compound | p. 154 |
| Section 4000 Content | p. 156 |
| 4000 35 U.S.C. 112 Specification | p. 158 |
| 4100 Lack of Written Description Rejection Under 35 U.S.C. 112 | p. 1158 |
| 4101 Basis for Rejection | p. 158 |
| 4102 Response to Rejection | p. 159 |
| 4200 Lack of Enablement Rejection Under 35 U.S.C. 112 | p. 1166 |
| 4201 Basis for Rejection | p. 166 |
| 4202 Response to Rejection | p. 167 |
| 4300 Lack of Best Mode Rejection Under 35 U.S.C. 112 | p. 1176 |
| 4301 Basis for Rejection | p. 176 |
| 4301 Response to Rejection | p. 177 |
| 4400 Lack of Utility Rejection Under 35 U.S.C. 112 | p. 1178 |
| 4401 Basis for Rejection | p. 178 |
| 4402 Response to Rejection | p. 178 |
| 4500 Indefiniteness Rejection Under 35 U.S.C. 112 | p. 2181 |
| 4510 Indefiniteness Rejection Under 35 U.S.C. 112 2 of Non-Means-Plus-Function Elements | p. 181 |
| 4511 Basis for Rejection | p. 181 |
| 4512 Response to Rejection | p. 181 |
| 4520 Rejection of Means-Plus-Function Elements as Indefinite Under 35 U.S.C. 112 2 | p. 185 |
| 4521 Basis for Rejection | p. 185 |
| 4522 Response to Rejection | p. 186 |
| 4600 Multiplicity Rejection Under 35 U.S.C. 112 2 | p. 188 |
| 4601 Basis for Rejection | p. 188 |
| 4602 Response to Rejection | p. 188 |
| Section 5000 Content | p. 190 |
| 5000 Double Patenting | p. 191 |
| 5100 Double Patenting Rejection Under 35 U.S.C. 101 | p. 191 |
| 5101 Basis for Rejection | p. 191 |
| 5102 Response to Rejection | p. 192 |
| 5200 Double Patenting Rejection Under the Judicially Created Doctrine | p. 192 |
| 5201 Basis for Rejection | p. 192 |
| 5202 Response to Rejection | p. 193 |
| Section 6000 Content | p. 202 |
| 6000 35 U.S.C. 171 Patents for design | p. 203 |
| 6100 Non-Statutory Subject Matter Rejection Under 35 U.S.C. 171 | p. 203 |
| 6101 Basis for Rejection | p. 203 |
| 6102 Response to Rejection | p. 204 |
| Section 7000 Content | p. 206 |
| 7000 35 U.S.C. 251 Reissue of defective patents | p. 207 |
| 7100 Lack of Error Rejection Under 35 U.S.C. 251 | p. 207 |
| 7101 Basis for Rejection | p. 207 |
| 7102 Response to Rejection | p. 208 |
| 7200 Correction Outside of Two Years Rejection Under 35 U.S.C. 251 | p. 212 |
| 7201 Basis for Rejection | p. 212 |
| 7202 Response to Rejection | p. 213 |
| 7300 Different Invention Rejection Under 35 U.S.C. 251 | p. 213 |
| 7301 Basis for Rejection | p. 213 |
| 7302 Response to Rejection | p. 214 |
| 7400 Recapture Rejection | p. 214 |
| 7401 Basis for Rejection | p. 214 |
| 7402 Response to Rejection | p. 215 |
| Section 8000 Content | p. 219 |
| 8000 Res Judicata | p. 220 |
| 8100 Res Judicata Rejection Based on Earlier Decision of Board or Appeals Court | p. 220 |
| 8101 Basis for Rejection | p. 220 |
| 8102 Response to Rejection | p. 220 |
| Statutes | p. 223 |
| Index of Cases | p. 231 |
| Court of Appeals for the Federal Circuit | p. 233 |
| Court of Customs and Patent Appeals | p. 253 |
| Board of Patent Appeals and Interferences | p. 265 |
| General Index | p. 271 |
| Table of Contents provided by Ingram. All Rights Reserved. |
Joshua P. Graham was Patent Counsel for Research In Motion, where he was a patent prosecutor and portfolio manager for the Advanced Technology group. Thomas G. Marlow is Intellectual Property Counsel and Director at Fairchild Semiconductor, where he manages worldwide product line and business unit patent strategy, enforcement, and procurement.
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