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704.11(a) Examples of Information Reasonably Required [R-3] - 700 Examination of Applications
704.11(a) Examples of Information Reasonably Required [R-3]
37 CFR 1.105(a)(1)(i)-*>(viii)< lists specific examples of information that may be reasonably required. Other examples, not meant to be exhaustive, of information that may be reasonably required for examination of an application include:
(A) The name and citation of any particularly relevant indexed journal, or treatise.
(B) The trade name of any goods or services the claimed subject matter is embodied in.
(C) The citation for, the dates initially published and copies of any advertising and promotional literature prepared for any goods or services the claimed subject matter has been embodied in.
(D) The citation for and copies of any journal articles describing any goods or services the claimed subject matter has been embodied in.
(E) The trade names and providers of any goods or services in competition with the goods or services the claimed subject matter has been embodied in.
(F) Any written descriptions or analyses, prepared by any of the inventors or assignees, of goods or services in competition with the goods or services the claimed subject matter has been embodied in.
(G) Identification of pending or abandoned applications filed by at least one of the inventors or assigned to the same assignee as the current application that disclose similar subject matter that are not otherwise identified in the current application.
(H) A reply to a matter raised in a protest under 37 CFR 1.291.
(I) An explanation of technical material in a publication, such as one of the inventor's publications.
(J) The identification of changes made in a reformatted continuing application filed under 37 CFR 1.53(b).
(K) A mark-up for a continuation-in-part application showing the subject matter added where there is an intervening reference.
(L) Comments on a new decision by the Federal Circuit that appears on point.
(M) The publication date of an undated document mentioned by applicant that may qualify as printed publication prior art (35 U.S.C. 102(a) or (b)).
(N) Comments on information of record which raises a question of whether applicant derived the invention from another under 35 U.S.C. 102(f).
>(O) Art related to applicant's invention, applicant's disclosure, or the claimed subject matter.
(P) Other factual information pertinent to patentability.
(Q) The accuracy of the examiner's stated analysis of such items.
(R) Clarification of the correlation and identification of what structure, material, or acts set forth in the specification would be capable of carrying out a function recited in a means or steps plus function claim limitation. If it is not apparent to the examiner where in the specification and drawings there is support for a particular claim limitation reciting a means to accomplish a function, and if an inquiry by the examiner for such support is met by a stated lack of knowledge thereof by the applicant, the examiner could very well conclude that there is no such support and make appropriate rejections under, for example, 35 U.S.C. 112, first paragraph (written description) and 35 U.S.C. 112, second paragraph.
(S) Interrogatories or Stipulations.
(1) Of the common technical features shared among all claims, or admission that certain groups of claims do not share any common technical features,
(2) About the support found in the disclosure for means or steps plus function claims (35 U.S.C. 112, paragraph 6),
(3) Of precisely which portion(s) of the disclosure provide the written description and enablement support for specific claim element(s),
(4) Of the meaning of claim limitations or terms used in the claims, such as what teachings in the prior art would be covered by particular limitations or terms in a claim and which dictionary definitions would define a particular claim term, particularly where those terms are not used per se in the specification,
(5) Of which portions of each claim correspond to any admitted prior art in the specification,
(6) Of the specific utility provided by the claimed subject matter on a claim-by-claim basis,
(7) As to whether a dependent claim element is known in the prior art based on the examiner having a reasonable basis for believing so,
(8) Of support for added limitations in an amended claim,
(9) Of facts related to public use or sale situations.<
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