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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 |
1111 Basis for Rejection | 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 |
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