Sci.Ev. - rjm Week 08 1 Agenda Talks 5,556,071 7,170,050 7,498,015 More on Prosecution, and more TOAs Simulations

Sci.Ev. - rjm Week 08 2 THIS Week First Hour: ~15 minutes per team = ~ 3 minutes per person = ~ 1-4 slides per person, covering The CLAIM and the particular word or phrase to which your arguments pertain. THE EXACT LANGUAGE OF THE CLAIM must be the first slide(s). It should be reformatted as needed. A handout (15 copies) with the whole claim, reformatted, with an indication of the key word/phrase, is strongly advised, too. Information about the claimed invention Information about the prior art, or what the motivation for the invention was, or other helpful background. (This can be before or after you tell about the claimed invention.) Information about the design around or invalidating prior art (which ever you have chosen) Summary of what (else) you will present You can provide other handouts if you like. Divide the work however you like. Do not worry about PO/AI or Lawyer/Expert status for this. Second Hour: More team meetings / discussion with me.

Sci.Ev. - rjm Week 08 3 Prosecution and TOAs I asked: For each restriction requirement, how many claims were cancelled? If there were NO restriction requirements, then how can ANY claims be CANCELLED because of them?? A RESTRICTION requirement is different from a REjection or an OBjection. All 3 are mentioned in 35 USC 132(a) (see next slide) as possible ways the Patent Office can respond to an application.35 USC 132(a) (I explained this in June 2001 in "An Open Letter to the Supreme Court Concerning Patent Law," Journal of the Patent and Trademark Office Society (83 JPTOS 438; errata 83 JPTOS 683), so that’s where I go when I want to remind myself about it.)

Sci.Ev. - rjm Week U.S.C. 132 Notice of rejection; reexamination. (a)Whenever, on examination, - any claim for a patent is rejected, or any - objection or - requirement made, the Director shall notify the applicant thereof, stating - the reasons for such rejection, or objection or requirement, - together with such information and references as may be useful in judging of the propriety of continuing the prosecution of his application; and if after receiving such notice, the applicant persists in his claim for a patent, with or without amendment, the application shall be reexamined. No amendment shall introduce new matter into the disclosure of the invention. Prosecution and TOAs aka prior art You can overcome a new matter REJECTION by filing a continuation-in-part

Sci.Ev. - rjm Week 08 5 REjection, OBjection, Requirement Claims may also be cancelled because either - the applicants canNOT figure out a way to amend them to overcome the rejection, or - the applicants CAN figure out a way, but it requires so much amending that instead they cancel them and substitute a new claim. In the latter case, you may want to make a visual display, aka claim chart: Original Claim (different language) Common LanguageNew Claim (different language) A widget comprising: a large yellow-green whosits... an enormous chartreuse

Sci.Ev. - rjm Week 08 6 Restrictions, Elections, Divisionals -1 Examiners make a restriction requirement if they find that you claim two different kinds of inventions aka ‘species.’ The rationale is that this will require two separate searches. The filing fee only entitles you to one. Two different inventions? Examples: A method and a composition, or a system including everything and a subsystem including less. Distinguish between counting inventions and counting CLAIMED inventions. Distinguish between genus/species and species in restriction requirements. Get confused twice.

Sci.Ev. - rjm Week 08 7 Restrictions, Elections, Divisionals -2 Applicants are told that they must ELECT a “species”in order to have the examiner commence a search and examination on the merits. What if the applicants want to pursue all the original claims, both the method claims (we’ll call them 1 to 5), and the system claims (6 to 9)? They cancel 6 to 9, and proceed with prosecution of 1 to 5 in the original application, and then file a DIVISIONAL, which is identical to the original application, including all 9 claims, and by preliminary amendment they cancel 1 to 5.

Sci.Ev. - rjm Week 08 8 Simulations Tuesday, 11/30 or 12/1, 7 to 8:20* -- 7,498,015, Kunze et al., METHOD OF MAKING SILANE COMPOSITIONS Dmitry Emily Guillaume MattB Riti critiqued** by [Aaron Ben Denise MattT __] Judges: Rob Goldman (Ropes & Gray), Paul Grewal (Howrie), Craig Allison (Dechert) Wednesday, 12/2, 7 to 8:20* -- 5,556,771, Shen et al., STABILIZED COMPOSITIONS OF REVERSE TRANSCRIPTASE AND RNA POLYMERASE FOR NUCLEIC ACID AMPLIFICATION BumQ (David) MattP Ryan Tiffany critiqued** by [Dmitry Emily Guillaume MattB ?Riti?] Judges: Irvin Tyan (retired at 30~), Lisa Silverman (3L), ______ Wednesday, 12/2, 8:40* to ,170,050, Turner et al., APPARATUS AND METHODS FOR OPTICAL ANALYSIS OF MOLECULES Aaron Ben Denise MattT critiqued** by [BumQ MattP Ryan Tiffany] Judges: Norm Beamer (Ropes & Gray), _____, _______ * Refreshments: 8:20 to 8:40 ** Specific critique assignments TBA And please do not ask questions about critiquing unless you know the answers cannot be found in the document How the Course Will Work, which you promised me you read and understood at the start of the quarter.