Question: Name two examples of situations where there may be a remand by the Board for examiner action that is not for further consideration of a rejection. Answer: The following are two examples of situations where there may be a remand by the Board for examiner action that is not for further consideration of a […]

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Question: List 2 types of applications that will not be published. Answer: The Office will not publish the following applications: Provisional applications; Design applications; International design applications; and Reissue applications (because reissue applications are not kept confidential). Chapter Details: The answer to this question can be found in chapter 1100 of the MPEP. This chapter […]

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Question: What are the most common types of linking claims? Answer: The most common types of linking claims which, if allowable, act to prevent restriction between inventions that can otherwise be shown to be divisible, are (A) genus claims linking species claims; and (B) subcombination claims linking plural combinations. Chapter Details: The answer to this […]

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Question: List 2 non-structural generic placeholders that may invoke 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, paragraph 6. Answer: The following is a list of non-structural generic placeholders that may invoke 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, paragraph 6: “mechanism for,” “module for,” “device for,” “unit for,” “component for,” “element for,” “member […]

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Question: List two documents a person acting in a representative capacity may not sign. Answer: A person acting in a representative capacity may not sign: a power of attorney, a document granting access to an application, a change of correspondence address, a terminal disclaimer, or a request for an express abandonment without filing a continuing […]

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re   Question: List one example of what an oath or declaration must do. Answer: An oath or declaration must: identify the inventor or joint inventor executing the oath or declaration by his or her legal name; identify the application to which it is directed; include a statement the person executing the oath or declaration […]

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Question: Name one item that an applicant may submit, in addition to a statement regarding common ownership as objective evidence that common ownership existed? Answer: The applicant may submit the following evidence: (A) Reference to assignments recorded in the U.S. Patent and Trademark Office which convey the entire rights in the application and the commonly […]

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Question: What is a divisional application? Answer: A divisional application is a later application for an independent or distinct invention, carved out of a nonprovisional application (including a nonprovisional application resulting from an international application or international design application), an international application designating the United States, or an international design application designating the United States […]

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Question: Name one circumstance where joint ownership exists. Answer: Joint ownership occurs when any of the following cases exist: Multiple partial assignees of the patent property; Multiple inventors who have not assigned their right, title and interest; or A combination of partial assignee(s), and inventor(s) who have not assigned their right, title and interest. Chapter […]

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Question: Once Office personnel have established the Graham factual findings and concluded that the claimed invention would have been obvious, what must the applicant do? Answer: Once Office personnel have established the Graham factual findings and concluded that the claimed invention would have been obvious, the burden then shifts to the applicant to: show that […]

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