Examples of Information Reasonably Required

37 CFR

1.105(a)(1)(i)-(viii)

list 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. Regarding the identification of

applications filed before June 8, 1995,

35 U.S.C. 122(a)

requires

the identified applications to be kept in confidence by the Office and no

information concerning the same is to be given without authority of the

applicant or owner unless necessary to carry out the provisions of an Act of

Congress or in such special circumstances as may be determined by the Director.

See

MPEP §

103

and

Hyatt v. United States Patent and

Trademark Office

, No. 1:13-cv-1535 (E.D. Va., May 29, 2014) (2014

WL 2446176).

(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

visions of an Act of

Congress or in such special circumstances as may be determined by the Director.

See

MPEP §

103

and

Hyatt v. United States Patent and

Trademark Office

, No. 1:13-cv-1535 (E.D. Va., May 29, 2014) (2014

WL 2446176).

(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

pre-AIA 35 U.S.C. 102(a)

or

(b)

).

(N) Comments on information of record which raises a question of

whether the inventor derived the invention from another under

35 U.S.C.

101

and

115

, and

pre-AIA 35 U.S.C.

102(f)

.

(O) Art related to the claimed 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(a)

or pre-AIA 35 U.S.C. 112, first paragraph (written

description) and

35 U.S.C

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(a)

or pre-AIA 35 U.S.C. 112, first paragraph (written

description) and

35 U.S.C. 112(b)

or pre-AIA

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(f)

or

pre-AIA 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,

he

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.

(T) Information from the applicant regarding a

third-party submission under

37 CFR 1.290

. In no

circumstance may an examiner direct a requirement for information to the third

party that submitted the paper under

37 CFR

1.290

. See

MPEP § 1134

.

(U) Information from the applicant regarding

rescission of a statement under

37 CFR 1.55

or

1.78

. See

MPEP § 704.14(a)

for form

paragraph

7.104.02

.