Question: Once an appellant has filed a notice of appeal, what situations may that appellant request that prosecution be reopened for? Answer: Once appellant has filed a notice of appeal, appellant also may request that prosecution be reopened for the following situations: In response to a new ground of rejection made in an examiner’s answer, […]

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Question: List two laboratory techniques the courts have recognized as well-understood, routine, conventional activities in the life science arts when they are claimed in a merely generic manner (e.g., at a high level of generality) or as insignificant extra-solution activity. Answer: The courts have recognized the following laboratory techniques as well-understood, routine, conventional activity in the […]

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Question: If the Board affirms a rejection against independent claim 1, reverses all rejections against dependent claim 2 and claim 3 is allowed, after expiration of the period for further appeal, what should the examiner do? Answer: If the Board affirms a rejection against independent claim 1, reverses all rejections against dependent claim 2 and […]

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Question: What are the four purposes 35 U.S.C. 101 has been interpreted as imposing? Answer: 35 U.S.C. 101 has been interpreted as imposing four purposes. First, 35 U.S.C. 101 limits an inventor to ONE patent for a claimed invention. If more than one patent is sought, a patent applicant will receive a statutory double patenting […]

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Question: Name one advantage a CPA has compared to a continuation or divisional application filed under 37 CFR 1.53(b). Answer: A CPA has a number of advantages compared to a continuation or divisional application filed under 37 CFR 1.53(b). For example, the papers required to be filed in the U.S. Patent and Trademark Office in […]

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Question: What is the second part of the Alice/Mayo test often referred to as? Answer: The second part of the Alice/Mayo test is often referred to as a search for an inventive concept. An inventive concept “cannot be furnished by the unpatentable law of nature (or natural phenomenon or abstract idea) itself.” Genetic Techs. v. Merial LLC. Instead, an […]

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Question: How do examiners evaluate integration into a practical application? Answer: Examiners evaluate integration into a practical application by: (1) identifying whether there are any additional elements recited in the claim beyond the judicial exception(s); and (2) evaluating those additional elements individually and in combination to determine whether they integrate the exception into a practical […]

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Question: How is the markedly different characteristics analysis performed? Answer: The markedly different characteristics analysis compares the nature-based product limitation to its naturally occurring counterpart in its natural state. Markedly different characteristics can be expressed as the product’s structure, function, and/or other properties, and are evaluated based on what is recited in the claim on […]

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Question: Give an example of a claim that does not recite mental processes because it cannot be practically performed in the human mind. Answer: Examples of claims that do not recite mental processes because they cannot be practically performed in the human mind include: a claim to a method for calculating an absolute position of […]

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Question: What is meant by a fundamental economic practice or principle? Answer: The courts have used the phrases “fundamental economic practices” or “fundamental economic principles” to describe concepts relating to the economy and commerce. Fundamental economic principles or practices include hedging, insurance, and mitigating risks. The term “fundamental” is not used in the sense of […]

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