37 CFR 1.111 - Reply by applicant or patent owner to a non-final Office action
| Cite as | 37 CFR 1.111 |
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412 practice notes
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Patent cases: Patent business goals; implementation,
...Providing no cause suspension of action (37 CFR 1.103); (12) Requiring a handling fee for preliminary amendments and supplemental replies (37 CFR 1.111); (13) Changing amendment practice to replacement by paragraphs/ claims (37 CFR (14) Providing for presumptive elections (37 CFR 1.141); (1......
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Amendments to the Rules of Practice for Trials Before the Patent Trial and Appeal Board
...Office should evaluate a motion to amend in the same way that the entry of a supplemental response in prosecution is evaluated, as under 37 CFR 1.111(a)(2). Response: These suggestions are not adopted. Under 35 U.S.C. 316(a)(9) and 326(a)(9), the Office has the authority to set forth standa......
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Certusview Techs., LLC v. S&N Locating Servs., LLC, Case No.: 2:13cv346
...interview, Teja, Nielsen, and Chambers submitted an Amendment and Reply in response to the October 6, 2011 Office Action, pursuant to 37 C.F.R. § 1.111. Trial Tr. Vol. 3A at 431:14-24; '344 Patent File History, 688-711, DX-234.113. In the February 13, 2012 Amendment and Reply, Teja gave a s......
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Ziggity Systems, Inc. v. Val Watering Systems, Civ. A. No. 89-625.
...with the other elements of the invention. Therefore, because claims may be amended to distinguish over prior references, see, e.g., 37 C.F.R. § 1.111(b), the inclusion of language referring to ball rotation or spinning is not new Hence, I conclude that defendants have not met their burden o......
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384 cases
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Certusview Techs., LLC v. S&N Locating Servs., LLC, Case No.: 2:13cv346
...interview, Teja, Nielsen, and Chambers submitted an Amendment and Reply in response to the October 6, 2011 Office Action, pursuant to 37 C.F.R. § 1.111. Trial Tr. Vol. 3A at 431:14-24; '344 Patent File History, 688-711, DX-234.113. In the February 13, 2012 Amendment and Reply, Teja gave a s......
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Ziggity Systems, Inc. v. Val Watering Systems, Civ. A. No. 89-625.
...with the other elements of the invention. Therefore, because claims may be amended to distinguish over prior references, see, e.g., 37 C.F.R. § 1.111(b), the inclusion of language referring to ball rotation or spinning is not new Hence, I conclude that defendants have not met their burden o......
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Astra Aktiebolag v. Andrx Pharmaceuticals, Inc., No. 99 Civ. 8926 (BSJ), 99 Civ. 9887 (BSJ), 99 Civ. 8927 (BSJ), 00 Civ. 4467 (BSJ), 98 Civ. 3657 (BSJ), 98 Civ. 8094 (BSJ), 99 Civ. 8928 (BSJ), 99 Civ. 9888 (BSJ).
...'342 patent "claimed use of omeprazole as an antimicrobial agent" and distinguished the reference on that basis. (P10A, Amendment under 37 C.F.R. § 1.111 of 7/22/91, at 3.) On this ground, the examiner granted the '342 patent. (P10A, Notice of Allowability of 8/29/91.) Accordingly, the file......
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Hyatt v. Office of Mgmt. & Budget, No. 17-17101
...information a patent applicant might provide when filing amendments for a patent application and when challenging adverse PTO actions. 37 C.F.R. §§ 1.111, 1.115, 1.116.4 The American Association for Equitable Treatment, Inc. joined Hyatt in filing the complaint.5 To the extent Hyatt challen......
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12 firm's commentaries
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MBHB Snippets: Review of Developments in Intellectual Property Law - Volume 10, Issue 1 - Winter 2012
...1113 types of responses allowed to a final Office action (and the pros and cons of each). Endnotes 1 37 C.F.R. § 1.1 et seq. (2010). 2 37 C.F.R. § 1.111. 3 Id.; 37 C.F.R. § 1.116; U.S. Patent & Trademark Office, Manual of Patent Examining Procedure 714.12 (8th ed., rev. 8, 2010) [hereinafte......
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Opportunity to Reform Existing PTO Regulations and Ease Patent Application Paperwork Burden
...in the claims." The PTO can't ask more from you than the statute does. • Are there regulations that are gratuitously burdensome? 37 C.F.R. § 1.111(b), until 2004, permitted you to file a supplementary amendment up until the time it would "unduly interfere with an Office action being prepare......
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Now What? Strategies for Responding to Final Office Actions
...and prosecution, and litigation matters in the computing field. krantz@mbhb.com Endnotes 1. 37 C.F.R. § 1.1 et seq. (2010). 2. 37 C.F.R. § 1.111. 3. Id.; 37 C.F.R. § 1.116; U.S. Patent & Trademark Office, Manual of Patent Examining Procedure 714.12 (8th ed., rev. 8, 2010) [hereinafter M.P.E......
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Rules And Practice Tips Regarding Official Notice At The U.S. Patent And Trademark Office
...Applicant may challenge the official notice by specifically pointing out the supposed errors in the Examiner's factual assertion. See 37 C.F.R. §1.111(b). A proper challenge must include arguments as to why the noticed fact is not considered to be common knowledge or well-known in the art. ......
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5 books & journal articles
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Responding to Nonstatutory Double Patenting Rejections: A Practitioner's Perspective
...argument, the examiner is likely to just wait until the continuation application actually publishes and then reissue the rejection. 12. 37 C.F.R. § 1.111. 13. Id. § 1.137(b). 14. Id. § 1.183. 15. 383 U.S. 1 (1966). 16. 550 U.S. 398 (2007). 17. Otsuka Pharm. Co., Ltd. v. Sandoz, Inc., 678 F.......
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The Impact of GDPR on Online Brand Enforcement: Lessons Learned and Best Practices for IP Practitioners
...argument, the examiner is likely to just wait until the continuation application actually publishes and then reissue the rejection. 12. 37 C.F.R. § 1.111. 13. Id. § 1.137(b). 14. Id. § 1.183. 15. 383 U.S. 1 (1966). 16. 550 U.S. 398 (2007). 17. Otsuka Pharm. Co., Ltd. v. Sandoz, Inc., 678 F.......
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Prosecution Insights Gleaned from a Review of Recent Patent Examiner Training
...to present “a writing which distinctly and specifically points out the supposed errors in the examiner’s action” to comply with 37 C.F.R. § 1.111(b). The training reminds examiners that, under MPEP section 710.01, they may accept a noncompliant response under 37 C.F.R. § 1.111(b) and should......
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The Colorblind Patent System and Black Inventors
...argument, the examiner is likely to just wait until the continuation application actually publishes and then reissue the rejection. 12. 37 C.F.R. § 1.111. 13. Id. § 1.137(b). 14. Id. § 1.183. 15. 383 U.S. 1 (1966). 16. 550 U.S. 398 (2007). 17. Otsuka Pharm. Co., Ltd. v. Sandoz, Inc., 678 F.......
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