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9780199926688

U.S. Patent Prosecutor's Desk Reference 2012

by ;
  • ISBN13:

    9780199926688

  • ISBN10:

    0199926689

  • Format: Paperback
  • Copyright: 2012-06-22
  • Publisher: Lexis Nexis Matthew Bender
  • View Upgraded Edition

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Summary

Patent prosecution is more than drafting patents--it is also advocating patentability. The challenge that each patent prosecutor be an effective draftsman and advocate is compounded by mounting pressure to procure high quality patents at minimum cost. There is a need for a quick, reliable reference to assist prosecutors in creating, researching, and supporting patentability arguments. In theU.S. Patent Prosecutor's Desk Reference, Joshua P. Graham and Thomas G. Marlow assist 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. Each section of this reference work includes the basis for the rejection, responses to the rejection, and legal authority supporting the responses. 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 issued in 2011 -A focus on precedential and informative opinions from the Board of Patent Appeals and Interferences -A new section on rejections under 35 U.S.C. 251 based on the recapture rule -Full text of cited sources available at www.usppdr.com (http://www.usppdr.com) This desk reference cites five different authority sources: statutes that govern the granting of patents; theManual of Patent Examining Procedure, Eighth Edition, which dictates how examiners determine whether a patent application should be allowed; decisions by the Board of Patent Appeals and Interferences,which is the administrative body of the U.S. Patent and Trademark Office that reviews decisions made by the examiners; the U.S. Court of Customs and Patent Appeals, which was the body that reviewed decisions made by the Board of Patent Appeals and Interferences until the Federal Circuit came into existence in 1982; the U.S. Court of Appeals for the Federal Circuit,which reviews decisions made by the Board of Patent Appeals and Interferences. TheU.S. Patent Prosecutor's Desk Referenceprovides a comprehensive and reliable guide for prosecutors who create, research, and support patentability arguments. Discussions of the decisions made by the Board of Patent Appeals and Interferences, the U.S. Court of Customs and Patent Appeals, and the U.S. Court of Appeals for the Federal Circuit generally have four parts:Technology Area, Quotable Language, Rejection Response, and Relevant Facts.

Author Biography

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.

Table of Contents

Introductionp. xi
Rejections and Responsesp. 1
Section 1000 Contentp. 3
1000 35 U.S.C. 101 Inventions Patentablep. 4
1100 Non-Statutory Subject Matter Rejection Under 35 U.S.C. 101p. 4
1101 Basis for Rejectionp. 4
1102 Response to Rejectionp. 4
1110 Non-Statutory Subject Matter Rejection Under 35 U.S.C. 101-Printed Matterp. 5
1111 Basis for Rejectionp. 5
1112 Response to Rejectionp. 5
1120 Non-Statutory Subject Matter Rejection Under 35 U.S.C. 101-Naturally Occurring Articlep. 6
1121 Basis for Rejectionp. 6
1122 Response to Rejectionp. 6
1130 Non-Statutory Subject Matter Rejection Under 35 U.S.C. 101-Scientific Principlep. 7
1131 Basis for Rejectionp. 7
1132 Response to Rejectionp. 7
1200 Lack of Utility Rejection Under 35 U.S.C. 101p. 11
1201 Basis for Rejectionp. 11
1202 Response to Rejectionp. 11
Section 2000 Contentp. 19
2000 35 U.S.C. 102 Conditions for Patentability, novelty and loss of right to patentp. 21
2100 Anticipation Rejection Under 35 U.S.C. 102p. 22
2101 Basis for Rejectionp. 22
2102 Response to Rejection-The Asserted Reference Does Not Qualify as Prior Artp. 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 Applicationp. 22
2102.12 The Asserted Reference Was Not Known or Usedp. 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 Applicationp. 27
2102.22 The Asserted Reference Was Not in Public Usep. 30
2102.23 The Asserted Reference Was Not On Salep. 31
2102.24 The Asserted Reference Is Not a Printed Publicationp. 33
2102.25 The Asserted Reference Is Not Enablingp. 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 Applicationp. 37
2102.32 The Asserted Reference Is Publication of Applicant's Own Inventionp. 41
2103 Response to Rejection-The Asserted Reference Does Not Disclose Every Element of the Claimed Inventionp. 45
2103.1 The Asserted Reference Does Not Directly Disclose At Least One Element of the Claimed Inventionp. 46
2103.11 The Examiner Misconstrued a Claim Elementp. 48
2103.12 The Examiner Misconstrued the Asserted Referencep. 52
2103.2 The Asserted Reference Does Not Inherently Disclose At Least One Element of the Claimed Inventionp. 55
Section 3000 Contentp. 58
3000 35 U.S.C. 103 Conditions for Patentability, non-obvious subject matterp. 60
3100 Obviousness Rejection Under 35 U.S.C. 103(a)p. 61
3101 Basis for Rejectionp. 61
3102 Response to Rejection-The Asserted Reference Does Not Qualify as Prior Artp. 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 Artp. 63
3103 Response to Rejection-The Examiner Failed to Establish a Prima Facie Case of Obviousnessp. 66
3103.1 The Prior Art Does Not Teach or Suggest Every Element of the Claimed Inventionsp. 66
3103.11 The Examiner Misconstrued a Claim Elementp. 79
3103.12 The Examiner Misconstrued the Prior Artp. 85
3103.13 The Examiner Misconstrued a Product-by-Process Claimp. 90
3103.2 There Is No Motivation to Modify the Asserted Referencep. 91
3103.3 There Is No Reason to Combine the Asserted Referencesp. 97
3103.4 There Is No Motivation to Select the Claimed Element Among the Number Disclosed in the Asserted Referencep. 109
3103.5 The Closely Related Compounds Have Dissimilar Propertiesp. 113
3103.51 The Closely Related Compounds Are Dissimilarp. 114
3103.52 The Prior Art Compound Has No Utility or Utility Only as an Intermediatep. 119
3103.6 The Disclosed Ranges Do Not Overlapp. 120
3104 Response to Rejection-The Applicant Rebutted the Prima Facie Case of Obviousnessp. 122
3104.1 The Prior Art Teaches Away From the Claimed Inventionp. 124
3104.11 The Prior Art Teaches Away From the Overlapping Rangesp. 129
3104.12 The Asserted Prior Art References Teach Away from Their Combinationp. 132
3104.2 Commercial Successp. 133
3104.3 Long-Felt but Unsolved Needp. 137
3104.4 Failure of Othersp. 141
3104.5 Unexpected Resultsp. 141
3104.51 Unexpected Results In Overlapping Rangesp. 147
3104.52 Unexpected Results In Closely Related Compoundsp. 148
3104.6 Skepticism by Those of Skill in the Artp. 153
3104.7 Non-Obvious Method of Making a Compoundp. 154
Section 4000 Contentp. 156
4000 35 U.S.C. 112 Specificationp. 158
4100 Lack of Written Description Rejection Under 35 U.S.C. 112p. 1158
4101 Basis for Rejectionp. 158
4102 Response to Rejectionp. 159
4200 Lack of Enablement Rejection Under 35 U.S.C. 112p. 1166
4201 Basis for Rejectionp. 166
4202 Response to Rejectionp. 167
4300 Lack of Best Mode Rejection Under 35 U.S.C. 112p. 1176
4301 Basis for Rejectionp. 176
4301 Response to Rejectionp. 177
4400 Lack of Utility Rejection Under 35 U.S.C. 112p. 1178
4401 Basis for Rejectionp. 178
4402 Response to Rejectionp. 178
4500 Indefiniteness Rejection Under 35 U.S.C. 112p. 2181
4510 Indefiniteness Rejection Under 35 U.S.C. 112 2 of Non-Means-Plus-Function Elementsp. 181
4511 Basis for Rejectionp. 181
4512 Response to Rejectionp. 181
4520 Rejection of Means-Plus-Function Elements as Indefinite Under 35 U.S.C. 112 2p. 185
4521 Basis for Rejectionp. 185
4522 Response to Rejectionp. 186
4600 Multiplicity Rejection Under 35 U.S.C. 112 2p. 188
4601 Basis for Rejectionp. 188
4602 Response to Rejectionp. 188
Section 5000 Contentp. 190
5000 Double Patentingp. 191
5100 Double Patenting Rejection Under 35 U.S.C. 101p. 191
5101 Basis for Rejectionp. 191
5102 Response to Rejectionp. 192
5200 Double Patenting Rejection Under the Judicially Created Doctrinep. 192
5201 Basis for Rejectionp. 192
5202 Response to Rejectionp. 193
Section 6000 Contentp. 202
6000 35 U.S.C. 171 Patents for designp. 203
6100 Non-Statutory Subject Matter Rejection Under 35 U.S.C. 171p. 203
6101 Basis for Rejectionp. 203
6102 Response to Rejectionp. 204
Section 7000 Contentp. 206
7000 35 U.S.C. 251 Reissue of defective patentsp. 207
7100 Lack of Error Rejection Under 35 U.S.C. 251p. 207
7101 Basis for Rejectionp. 207
7102 Response to Rejectionp. 208
7200 Correction Outside of Two Years Rejection Under 35 U.S.C. 251p. 212
7201 Basis for Rejectionp. 212
7202 Response to Rejectionp. 213
7300 Different Invention Rejection Under 35 U.S.C. 251p. 213
7301 Basis for Rejectionp. 213
7302 Response to Rejectionp. 214
7400 Recapture Rejectionp. 214
7401 Basis for Rejectionp. 214
7402 Response to Rejectionp. 215
Section 8000 Contentp. 219
8000 Res Judicatap. 220
8100 Res Judicata Rejection Based on Earlier Decision of Board or Appeals Courtp. 220
8101 Basis for Rejectionp. 220
8102 Response to Rejectionp. 220
Statutesp. 223
Index of Casesp. 231
Court of Appeals for the Federal Circuitp. 233
Court of Customs and Patent Appealsp. 253
Board of Patent Appeals and Interferencesp. 265
General Indexp. 271
Table of Contents provided by Ingram. All Rights Reserved.

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