The running of the first period is not suspended nor affected by an ex parte limited time action or even by an appeal therefrom. 2/2

710.04: There sometimes arises a situation where two different periods for reply are running against an application, the one limited by the regular statutory period, the other by the limited period set in a subsequent Office action. 1/2

… to only subject matter in the parent application and redesignating the CIP as a divisional of the parent application. 2/2

804.01: a patentee cannot retroactively recover the safe harbor protection of 35 U.S.C. 121 against nonstatutory double patenting by amending a patent that issued from a continuation-in-part application … 1/2

… (1) the requirements of 35 U.S.C. 119(a)-(d) or (f) had been satisfied in the patented application or in a parent application prior to issuance of the patent, (2) the requirements of 37 CFR 1.55 are met, and (3) the correction sought would not require further examination. 2/2

216.01(I): a certificate of correction under 35 U.S.C. 255 and 37 CFR 1.323 may be requested and issued in order to perfect a claim for foreign priority benefit in a patent if … 1/2

2172.01: “Broad language in the disclosure (including the abstract) omitting an allegedly critical feature tends to rebut the argument of criticality … [and] features that are merely preferred are not critical.” [Quoting In re Goffe, 542 F.2d 564, 567 (CCPA 1976).]

1613: Pursuant to 35 U.S.C. 119(f), an application for a plant patent may rely upon an application for plant breeder’s rights filed in a WTO member country (or in a foreign UPOV Contracting Party) for priority under 35 U.S.C. 119(a) through (c).

106: an application filing or intervention [by an applicant or an assignee of the entire interest] does not exclude the inventor from access to the application to see that it is being prosecuted properly, unless the applicant or assignee makes specific request to that effect.

The same applies to a claim canceled via a prior reexamination certificate, reissue patent, or certificate of correction. 2/2

2250.03(I): A claim that has been disclaimed under 35 U.S.C. 253 and 37 CFR 1.321(a) as of the date of filing of the request for reexamination is not considered to be a claim in the patent under reexamination for purposes of excess claims fee calculations. 1/2

2163(I)(B): Under certain circumstances, omission of a limitation can raise an issue regarding whether the inventor had possession of a broader, more generic invention.

The transitional phrase “composed of” has been interpreted in the same manner as either “consisting of” or “consisting essentially of,” depending on the facts of the particular case. 2/2

2111.03(IV): Transitional phrases such as “having” must be interpreted in light of the specification to determine whether open or closed claim language is intended. ... 1/2

713.08: Demonstrations of apparatus or exhibits too large to be brought into the Office may be viewed by the examiner outside of the Office (in the Washington, D.C. area) with the approval of the supervisory patent examiner.

1893.01(d): a translation that includes modifications other than changes that have been properly accepted under PCT Rule 26 or 91 (e.g., a translation that includes headings that were not present in the international application as originally filed) is unacceptable

However, the Office will accept photographs in utility and design patent applications if photographs are the only practicable medium for illustrating the claimed invention. 2/2

1503.02(V): Drawings in design applications may be submitted in black and white or in color. See 37 CFR 1.84(a). Photographs, including photocopies of photographs, are not ordinarily permitted in utility and design patent applications. 1/2

… when two or more independent inventions and/or two or more distinct inventions are claimed in an application. 2/2

802.02: Restriction is the practice of requiring an applicant to elect a single claimed invention (e.g., a combination or subcombination invention, a product or process invention, a species within a genus) for examination … 1/2

2015: providing material information to other Government agencies, including the FDA, while simultaneously withholding the same information from the USPTO undermines both the intent and spirit of the duty of disclosure and violates those duties.

… (C) is an equivalent of the means- (or step-) plus-function limitation, the examiner should provide an explanation and rationale in the Office action as to why the prior art element is an equivalent. 2/2

2183: If the examiner finds that a prior art element (A) performs the function specified in the claim, (B) is not excluded by any explicit definition provided in the specification for an equivalent, and … 1/2

608.02(b)(III): IT IS APPLICANT’S RESPONSIBILITY TO SEE THAT NO NEW MATTER IS ADDED when submitting replacement drawings after allowance since they will _not_ normally be reviewed by an examiner. [Shouty text in original.]

1504.03(II): When a claim is rejected under 35 U.S.C. 103 as being unpatentable over prior art, features of the design which are functional and/or hidden during end use may not be relied upon to support patentability.

Thus the required provisional election (see MPEP § 818.01(b)) becomes an election without traverse if accompanied by an incomplete traversal of the requirement for restriction. 3/3

… on which he or she bases his or her conclusion(s) that a requirement to restrict is in error. A mere broad allegation that the requirement is in error does not comply with the requirement of 37 CFR 1.111. 2/3

818.01(a): As indicated in the first sentence of 37 CFR 1.143, the traverse to a requirement for restriction must be complete as required by 37 CFR 1.111(b). Under this rule, the applicant is required to specifically point out the reason(s) … 1/3

1605: A plant patent is granted only on the entire plant. Only one claim is necessary and only one is permitted. A method claim in a plant patent application is improper.

2131.03(II): If the prior art disclosure does not disclose a claimed range with “sufficient specificity” to anticipate a claimed invention, any evidence of unexpected results within the narrow range may render the claims nonobvious.