Chapter 700 Examination of Applications
`
`701
`702
`702.01
`703
`704
`
`Statutory Authority for Examination
`Requisites of the Application
`Obviously Informal Cases
`[Reserved]
`Search and Requirements for
`Information
`Search
`[Reserved]
`
`704.01
`704.02
`-704.09
`704.10
`704.11
`704.11(a)
`
`704.11(b)
`
`704.12
`
`704.12(a)
`
`704.12(b)
`
`704.12(c)
`
`704.13
`704.14
`
`704.14(a)
`704.14(b)
`
`704.14(c)
`
`704.14(d)
`
`705
`705.01
`705.01(a)
`
`705.01(b)
`705.01(c)
`705.01(d)
`705.01(e)
`705.01(f)
`706
`706.01
`706.02
`706.02(a)
`
`Requirements for Information
`What Information May Be Required
`Examples of Information
`Reasonably Required
`When May a Requirement for
`Information Be Made
`Replies to a Requirement for
`Information
`Relationship of Requirement for
`Information to Duty of Disclosure
`What Constitutes a Complete
`Reply
`Treatment of an Incomplete
`Reply
`Time Periods for Reply
`Making a Requirement for
`Information
`Format of the Requirement
`Examiner’s Obligation Following
`Applicant’s Reply
`Petitions to Requirements Under
`37 CFR 1.105
`Relationship to Information
`Disclosure Statements
`Patentability Reports
`Instructions re Patentability Reports
`Nature of P.R., Its Use and
`Disposal
`Sequence of Examination
`Counting and Recording P.R.s
`[Reserved]
`Limitation as to Use
`Interviews With Applicants
`Rejection of Claims
`Contrasted With Objections
`Rejection on Prior Art
`Rejections Under 35 U.S.C.
`102(a)(1) and (a)(2) and Pre-AIA
`35 U.S.C. 102(a), (b), or (e);
`Printed Publication or Patent
`
`706.02(a)(1)
`
`706.02(a)(2)
`
`706.02(b)
`
`706.02(b)(1)
`
`706.02(b)(2)
`
`706.02(c)
`
`706.02(c)(1)
`
`
`706.02(c)(2)
`
`706.02(d)
`
`706.02(e)
`
`706.02(f)
`
`706.02(f)(1)
`
`706.02(f)(2)
`
`706.02(g)
`
`706.02(h)
`
`706.02(i)
`
`706.02(j)
`
`706.02(k)
`
`Determining Whether To
`Apply 35 U.S.C. 102(a)(1) or
`102(a)(2)
`Determining Whether To
`Apply Pre-AIA 35 U.S.C.
`102(a), (b), or (e)
`Overcoming a 35 U.S.C. 102
`Rejection Based on a Printed
`Publication or Patent
`Overcoming a 35 U.S.C.
`102(a)(1) or 102(a)(2)
`Rejection Based on a Printed
`Publication or Patent
`Overcoming a Pre-AIA 35
`U.S.C. 102(a), (b), or (e)
`Rejection Based on a Printed
`Publication or Patent
`Rejections Under 35 U.S.C.
`102(a)(1) or Pre-AIA 35 U.S.C.
`102(a) or (b); Knowledge by
`Others or Public Use or Sale
`Rejections under 35 U.S.C.
`102(a)(1); Public Use or
`Public Sale
`Rejections under Pre-AIA 35
`U.S.C. 102(a) and (b); Public
`Use or On Sale
`Rejections Under Pre-AIA 35
`U.S.C. 102(c)
`Rejections Under Pre-AIA 35
`U.S.C. 102(d)
`Rejection Under Pre-AIA 35
`U.S.C. 102(e)
`Examination Guidelines for
`Applying References Under
`Pre-AIA 35 U.S.C. 102(e)
`Provisional Rejections Under
`35 U.S.C. 102(a)(2) or
`Pre-AIA 35 U.S.C. 102(e);
`Reference Is a Copending
`U.S. Patent Application
`Rejections Under Pre-AIA 35
`U.S.C. 102(f)
`Rejections Under Pre-AIA 35
`U.S.C. 102(g)
`Form Paragraphs for Use in
`Rejections Under 35 U.S.C. 102
`Contents of a 35 U.S.C. 103
`Rejection
`Provisional Rejection
`(Obviousness) Under 35 U.S.C.
`
`700-1
`
`Rev. 07.2015, November 2015
`
`IPR2017-00041
`Bayer Ex. 2008
`
`

`
`MANUAL OF PATENT EXAMINING PROCEDURE
`
`103 Using Provisional Prior Art
`Under Pre-AIA 35 U.S.C. 102(e)
`Rejections Under Pre-AIA 35
`U.S.C. 103(a) Using Prior Art
`Under Only Pre-AIA 35 U.S.C.
`102 (e), (f), or (g)
`Rejections Under Pre-AIA 35
`U.S.C. 103(a) Using Prior Art
`Under Pre-AIA 35 U.S.C.
`102(e), (f), or (g); Prior Art
`Disqualification Under
`Pre-AIA 35 U.S.C. 103(c)
`Establishing Common
`Ownership or Joint Research
`Agreement Under Pre-AIA
`35 U.S.C. 103(c)
`Examination Procedure With
`Respect to Pre-AIA 35
`U.S.C. 103(c)
`Form Paragraphs for Use in
`Rejections Under 35 U.S.C. 103
`Biotechnology Process
`Applications; Pre-AIA 35 U.S.C.
`103(b)
`Rejections Not Based on Prior Art
`Rejections Under 35 U.S.C. 101
`Barred by Atomic Energy Act
`Rejections Under 35 U.S.C.
`112(a) or Pre-AIA 35 U.S.C. 112,
`First Paragraph
`Rejections Under 35 U.S.C.
`112(b) or Pre-AIA 35 U.S.C. 112,
`Second Paragraph
`Form Paragraphs for Use Relating
`to 35 U.S.C. 112(f) or Pre-AIA
`35 U.S.C. 112, Sixth Paragraph
`[Reserved]
`
`Duplicate Claims
`[Reserved]
`Nonelected Inventions
`[Reserved]
`New Matter
`[Reserved]
`
`Foreign Filing Without License
`[Reserved]
`Disclaimer
`After Interference or Former
`Public Use Proceeding
`Res Judicata
`
`706.02(l)
`
`706.02(l)(1)
`
`706.02(l)(2)
`
`706.02(l)(3)
`
`706.02(m)
`
`706.02(n)
`
`706.03
`706.03(a)
`706.03(b)
`706.03(c)
`
`706.03(d)
`
`706.03(e)
`
`706.03(f)
`-706.03(j)
`706.03(k)
`706.03(l)
`706.03(m)
`706.03(n)
`706.03(o)
`706.03(p)
`-706.03(r)
`706.03(s)
`706.03(t)
`706.03(u)
`706.03(v)
`
`706.03(w)
`
`Rev. 07.2015, November 2015
`
`700-2
`
`706.03(x)
`706.04
`
`706.05
`
`706.06
`
`706.07
`706.07(a)
`
`706.07(b)
`
`706.07(c)
`706.07(d)
`
`706.07(e)
`
`706.07(f)
`706.07(g)
`706.07(h)
`
`Reissue
`Rejection of Previously Allowed
`Claims
`Rejection After Allowance of
`Application
`Rejection of Claims Copied From
`Patent
`Final Rejection
`Final Rejection, When Proper on
`Second Action
`Final Rejection, When Proper on
`First Action
`Final Rejection, Premature
`Final Rejection, Withdrawal of,
`Premature
`Withdrawal of Final Rejection,
`General
`Time for Reply to Final Rejection
`Transitional After-Final Practice
`Request for Continued
`Examination (RCE) Practice
`Examiner’s Letter or Action
`Primary Examiner Indicates Action
`for New Assistant
`Applications Up for Third Action and
`5-Year Applications
`[Reserved]
`Citation of References
`Copies of Cited References
`Citation of Related Art and
`Information by Applicants
`Order of Listing
`Reference Cited in Subsequent
`Actions
`Data Used in Citing References
`[Reserved]
`Incorrect Citation of References
`Citation of Decisions, Orders
`Memorandums, and Notices
`Completeness and Clarity of
`Examiner’s Action
`Complete Action on Formal
`Matters
`[Reserved]
`
`707
`707.01
`
`707.02
`
`707.03-707.04
`707.05
`707.05(a)
`707.05(b)
`
`707.05(c)
`707.05(d)
`
`707.05(e)
`707.05(f)
`707.05(g)
`707.06
`
`707.07
`
`707.07(a)
`
`707.07(b)
`-707.07(c)
`707.07(d)
`
`707.07(e)
`
`707.07(f)
`707.07(g)
`
`Language To Be Used in
`Rejecting Claims
`Note All Outstanding
`Requirements
`Answer All Material Traversed
`Piecemeal Examination
`
`IPR2017-00041
`Bayer Ex. 2008
`
`

`
`EXAMINATION OF APPLICATIONS
`
`707.07(h)
`
`707.07(i)
`
`707.07(j)
`
`707.07(k)
`707.07(l)
`707.08
`
`707.09
`
`707.10
`707.11
`707.12
`707.13
`708
`708.01
`708.02
`708.02(a)
`708.02(b)
`708.02(c)
`
`708.03
`709
`709.01
`
`710
`710.01
`710.01(a)
`710.02
`
`710.02(a)
`710.02(b)
`
`710.02(c)
`
`710.02(d)
`
`710.02(e)
`710.03
`710.04
`710.04(a)
`710.05
`
`710.06
`
`711
`711.01
`
`Notify of Inaccuracies in
`Amendment
`Each Claim To Be Mentioned in
`Each Office Action
`State When Claims Are
`Allowable
`Numbering Paragraphs
`Comment on Examples
`Reviewing and Initialing by Assistant
`Examiner
`Signing by Primary or Other
`Authorized Examiner
`Entry
`Date
`Mailing
`Returned Office Action
`Order of Examination
`List of Special Cases
`Petition To Make Special
`Accelerated Examination
`Prioritized Examination
`Patent Prosecution Highway
`Program
`Examiner Tenders Resignation
`Suspension of Action
`Overlapping Applications by Same
`Applicant or Owned by Same
`Assignee
`Period for Reply
`Statutory Period
`Statutory Period, How Computed
`Shortened Statutory Period and Time
`Limit Actions Computed
`[Reserved]
`Shortened Statutory Period:
`Situations in Which Used
`Specified Time Limits: Situations
`in Which Used
`Difference Between Shortened
`Statutory Periods for Reply and
`Specified Time Limits
`Extension of Time
`[Reserved]
`Two Periods Running
`Copying Patent Claims
`Period Ending on Saturday, Sunday,
`or a Federal Holiday
`Situations When Reply Period Is
`Reset or Restarted
`Abandonment of Patent Application
`Express or Formal Abandonment
`
`711.02
`
`711.02(a)
`711.02(b)
`
`711.02(c)
`711.03
`
`711.03(a)
`
`711.03(b)
`
`711.03(c)
`
`711.03(d)
`
`711.04
`
`711.04(a)
`711.04(b)
`
`711.04(c)
`
`711.05
`
`711.06
`
`711.06(a)
`
`712
`713
`713.01
`713.02
`
`713.03
`
`713.04
`
`713.05
`
`713.06
`
`713.07
`713.08
`713.09
`713.10
`
`714
`714.01
`
`Failure To Take Required Action
`During Statutory Period
`Insufficiency of Reply
`Special Situations Involving
`Abandonment
`Termination of Proceedings
`Reconsideration of Holding of
`Abandonment; Revival
`Holding Based on Insufficiency
`of Reply
`Holding Based on Failure To
`Reply Within Period
`Petitions Relating to
`Abandonment
`Examiner’s Statement on Petition
`To Set Aside Examiner’s Holding
`Public Access to Abandoned
`Applications
`Date of Abandonment
`Ordering of Patented and
`Abandoned Files
`Notifying Applicants of
`Abandonment
`Letter of Abandonment Received
`After Application Is Allowed
`Abstracts, Abbreviatures, and
`Defensive Publications
`Citation and Use of Abstracts,
`Abbreviatures, and Defensive
`Publications as References
`[Reserved]
`Interviews
`General Policy, How Conducted
`Interviews Prior to First Official
`Action
`Interview for “Sounding Out”
`Examiner Not Permitted
`Substance of Interview Must Be Made
`of Record
`Interviews Prohibited or Granted,
`Special Situations
`No Inter Partes Questions Discussed
`Ex Parte
`Exposure of Other Cases
`Demonstration, Exhibits, Models
`Finally Rejected Application
`Interview Preceding Filing
`Amendment Under 37 CFR 1.312
`Amendments, Applicant’s Action
`Signatures to Amendments
`
`700-3
`
`Rev. 07.2015, November 2015
`
`IPR2017-00041
`Bayer Ex. 2008
`
`

`
`MANUAL OF PATENT EXAMINING PROCEDURE
`
`714.01(a)
`
`714.01(b)
`714.01(c)
`
`714.01(d)
`
`714.01(e)
`
`714.02
`714.03
`
`714.03(a)
`714.04
`
`714.05
`
`714.06
`714.07
`714.08
`-714.09
`714.10
`
`714.11
`
`714.12
`
`714.13
`
`714.14
`
`714.15
`
`714.16
`
`714.16(a)
`
`714.16(b)
`
`714.16(c)
`
`714.16(d)
`
`714.16(e)
`
`Unsigned or Improperly Signed
`Amendment
`[Reserved]
`Signed by Attorney or Agent Not
`of Record
`Amendment Signed by Applicant
`but Not by Attorney or Agent of
`Record
`Amendments Before First Office
`Action
`Must Be Fully Responsive
`Amendments Not Fully Responsive,
`Action To Be Taken
`Supplemental Amendment
`Claims Presented in Amendment With
`No Attempt To Point Out Patentable
`Novelty
`Examiner Should Immediately
`Review
`[Reserved]
`Amendments Not in Permanent Ink
`[Reserved]
`
`Claims Added in Excess of Claims
`Previously Paid For
`Amendment Filed During Interference
`Proceedings
`Amendments and Other Replies After
`Final Rejection or Action
`Amendments and Other Replies After
`Final Rejection or Action, Procedure
`Followed
`Amendments After Allowance of All
`Claims
`Amendment Received in Technology
`Center After Mailing of Notice of
`Allowance
`Amendment After Notice of
`Allowance, 37 CFR 1.312
`Amendments Under 37 CFR
`1.312, Copied Patent Claims
`Amendments Under 37 CFR
`1.312 Filed With a Motion Under
`37 CFR 41.208
`Amendments Under 37 CFR
`1.312, Additional Claims
`Amendments Under 37 CFR
`1.312, Handling
`Amendments Under 37 CFR
`1.312, Entry in Part
`
`Rev. 07.2015, November 2015
`
`700-4
`
`Amendment Filed After the Period
`for Reply Has Expired
`Entry of Amendments
`List of Amendments, Entry Denied
`List of Amendments Entered in Part
`Amendments Inadvertently Entered,
`No Legal Effect
`[Reserved]
`
`714.17
`
`714.18
`714.19
`714.20
`714.21
`
`714.22
`-714.24
`714.25
`715
`
`715.01
`
`715.01(a)
`
`715.01(b)
`
`715.01(c)
`
`715.01(d)
`
`Discourtesy of Applicant or Attorney
`Swearing Behind a Reference —
`Affidavit or Declaration Under 37 CFR
`1.131(a)
`37 CFR 1.131(a) Affidavits Versus
`37 CFR 1.132 Affidavits
`Reference Is a Joint Patent or
`Published Application to
`Applicant and Another
`Reference and Application Have
`Common Assignee
`Reference Is Publication of
`Applicant’s Own Invention
`Activities Applied Against the
`Claims
`How Much of the Claimed Invention
`Must Be Shown, Including the
`General Rule as to Generic Claims
`Genus-Species, Practice Relative to
`Cases Where Predictability Is in
`Question
`Who May Make Affidavit or
`Declaration Under 37 CFR 1.131(a);
`Formal Requirements of Affidavits
`and Declarations
`U.S. Patent or Application Publication
`Claiming Same Invention
`[Reserved]
`Facts and Documentary Evidence
`Diligence
`Interference Testimony
`Sometimes Used
`Acts Relied Upon Must Have
`Been Carried Out in This Country
`or a NAFTA or WTO Member
`Country
`Disposition of Exhibits
`Decided by Primary Examiner
`Timely Presentation
`Review of Affidavit or Declaration
`for Evidence of Prior Public Use or
`Sale or Failure to Disclose Best Mode
`
`715.02
`
`715.03
`
`715.04
`
`715.05
`
`715.06
`715.07
`715.07(a)
`715.07(b)
`
`715.07(c)
`
`715.07(d)
`715.08
`715.09
`715.10
`
`IPR2017-00041
`Bayer Ex. 2008
`
`

`
`EXAMINATION OF APPLICATIONS
`
`716
`
`716.01
`716.01(a)
`
`716.01(b)
`
`716.01(c)
`
`716.01(d)
`716.02
`716.02(a)
`
`716.02(b)
`716.02(c)
`
`716.02(d)
`
`716.02(e)
`
`716.02(f)
`716.02(g)
`716.03
`716.03(a)
`
`716.03(b)
`
`716.04
`716.05
`716.06
`716.07
`716.08
`
`716.09
`716.10
`
`717
`
`717.01
`
`717.01(a)
`
`717.01(a)(1)
`
`
`717.01(b)
`
`
`Affidavits or Declarations Traversing
`Rejections, 37 CFR 1.132
`Generally Applicable Criteria
`Objective Evidence of
`Nonobviousness
`Nexus Requirement and Evidence
`of Nonobviousness
`Probative Value of Objective
`Evidence
`Weighing Objective Evidence
`Allegations of Unexpected Results
`Evidence Must Show Unexpected
`Results
`Burden on Applicant
`Weighing Evidence of Expected
`and Unexpected Results
`Unexpected Results
`Commensurate in Scope With
`Claimed Invention
`Comparison With Closest Prior
`Art
`Advantages Disclosed or Inherent
`Declaration or Affidavit Form
`Commercial Success
`Commercial Success
`Commensurate in Scope With
`Claimed Invention
`Commercial Success Derived
`From Claimed Invention
`Long-Felt Need and Failure of Others
`Skepticism of Experts
`Copying
`Inoperability of References
`Utility and Operability of Applicant’s
`Disclosure
`Sufficiency of Disclosure
`Attribution Affidavit or Declaration
`to Overcome Rejection Under
`Pre-AIA 35 U.S.C. 102 or 103
`Prior Art Exceptions under AIA 35
`U.S.C. 102(b)(1) and (2)
`Affidavit or Declaration Under 37
`CFR 1.130
`Declarations or Affidavits under
`37 CFR 1.130(a) – Attribution
`Evaluation of Declarations or
`Affidavits under 37 CFR
`1.130(a)
`Declarations or Affidavits under
`37 CFR 1.130(b) – Prior Public
`Disclosure
`
`717.01(b)(1)
`
`
`717.01(b)(2)
`
`
`717.01(c)
`
`
`717.01(d)
`
`717.01(e)
`
`717.01(f)
`
`717.02
`
`717.02(a)
`
`717.02(b)
`
`
`717.02(c)
`
`
`717.02(d)
`
`
`718
`
`719
`719.01
`719.02
`719.03
`719.04
`719.05
`720
`721-723
`724
`
`724.01
`
`Evaluation of Declarations or
`Affidavits under 37 CFR
`1.130(b)
`Determining if the Subject
`Matter of the Intervening
`Disclosure is the Same as the
`Subject Matter of the
`Inventor–Originated Prior
`Public Disclosure
`Who May Make Affidavit or
`Declaration; Formal
`Requirements of Affidavits and
`Declarations
`U.S. Patent or Application
`Publication Claiming Same
`Invention
`Passed Upon (or Decided by) by
`Primary Examiner
`Seasonable (or Timely)
`Presentation
`Prior Art Exception for Commonly
`Owned or Joint Research Agreement
`Subject Matter under AIA 35 U.S.C.
`102(b)(2)(C)
`Invoking the Prior Art Exception
`under 35 U.S.C. 102(b)(2)(C)
`Evaluating Whether the Prior Art
`Exception under AIA 35 U.S.C.
`102(b)(2)(C) is Properly Invoked
`Examination Procedure With
`Respect to the Prior Art
`Exception under AIA 35 U.S.C.
`102(b)(2)(C)
`Form Paragraphs With Respect
`to the Prior Art Exception under
`AIA 35 U.S.C. 102(b)(2)(C)
`Affidavit or Declaration to Disqualify
`Commonly Owned Patent as Prior Art,
`37 CFR 1.131(c)
`File Wrapper
`Papers in Image File Wrapper
`Residence of Inventor Changed
`Classification During Examination
`Index of Claims
`Field of Search
`Public Use Proceedings
`[Reserved]
`Trade Secret, Proprietary, and
`Protective Order Materials
`Completeness of the Patent File
`Wrapper
`
`700-5
`
`Rev. 07.2015, November 2015
`
`IPR2017-00041
`Bayer Ex. 2008
`
`

`
`§ 701
`
`MANUAL OF PATENT EXAMINING PROCEDURE
`
`724.02
`
`724.03
`
`724.04
`
`724.04(a)
`
`724.04(b)
`
`724.04(c)
`
`724.05
`
`724.06
`
`Method of Submitting Trade Secret,
`Proprietary, and/or Protective Order
`Materials
`Types of Trade Secret, Proprietary,
`and/or Protective Order Materials
`Submitted Under MPEP § 724.02
`Office Treatment and Handling of
`Materials Submitted Under MPEP §
`724.02
`Materials Submitted in an
`Application Covered by 35
`U.S.C. 122
`Materials Submitted in Reissue
`Applications Open to the Public
`Under 37 CFR 1.11(b)
`Materials Submitted in
`Reexamination File Open to the
`Public Under 37 CFR 1.11(d)
`Petition To Expunge Information or
`Copy of Papers in Application File
`Handling of Petitions To Expunge
`Information or Copy of Papers in
`Application File
`
`701 Statutory Authority for Examination
`[R-07.2015]
`
`35 U.S.C. 131 Examination of application.
`
`The Director shall cause an examination to be made of the
`application and the alleged new invention; and if on such
`examination it appears that the applicant is entitled to a patent
`under the law, the Director shall issue a patent therefor.
`
`The main conditions precedent to the grant of a
`patent to an applicant are set forth in 35 U.S.C. 101,
`102, 103, and 112.
`
`35 U.S.C. 101 Inventions patentable.
`
`Whoever invents or discovers any new and useful process,
`machine, manufacture, or composition of matter, or any new
`and useful improvement thereof, may obtain a patent therefor,
`subject to the conditions and requirements of this title.
`
`Form paragraph 7.04.01 copies 35 U.S.C. 101. See
`MPEP § 706.03(a).
`
`35 U.S.C. 100 Definitions.
`
` [Editor Note: 35 U.S.C. 100(e)-(j) as set forth below are only
`applicable to patent applications and patents subject to the first
`inventor to file provisions of the AIA ( 35 U.S.C. 100 (note)). See
`pre-AIA 35 U.S.C. 100(e) for paragraph (e) as applicable to
`
`patent applications and patents not subject to the first inventor
`to file provisions of the AIA.]
`
`When used in this title unless the context otherwise indicates -
`
`(a) The term “invention” means invention or discovery.
`
`(b) The term “process” means process, art, or method, and
`includes a new use of a known process, machine, manufacture,
`composition of matter, or material.
`
`(c) The terms “United States” and “this country” mean the
`United States of America, its territories and possessions.
`
`(d) The word “patentee” includes not only the patentee to
`whom the patent was issued but also the successors in title to
`the patentee.
`
`(e) The term “third-party requester” means a person
`requesting ex parte reexamination under section 302 who is not
`the patent owner.
`
`(f) The term "inventor" means the individual or, if a joint
`invention, the individuals collectively who invented or
`discovered the subject matter of the invention.
`
`(g) The terms "joint inventor" and "coinventor" mean any
`1 of the individuals who invented or discovered the subject
`matter of a joint invention.
`
`(h) The term "joint research agreement" means a written
`contract, grant, or cooperative agreement entered into by 2 or
`more persons or entities for the performance of experimental,
`developmental, or research work in the field of the claimed
`invention.
`
`(i)
`
`(1) The term "effective filing date" for a claimed
`invention in a patent or application for patent means—
`
`(A) if subparagraph (B) does not apply, the actual
`filing date of the patent or the application for the patent
`containing a claim to the invention; or
`
`(B) the filing date of the earliest application for
`which the patent or application is entitled, as to such invention,
`to a right of priority under section 119, 365(a), or 365(b) or to
`the benefit of an earlier filing date under section
`120, 121,
`365(c), or 386(c).
`
`(2) The effective filing date for a claimed invention in
`an application for reissue or reissued patent shall be determined
`by deeming the claim to the invention to have been contained
`in the patent for which reissue was sought.
`
`(j) The term "claimed invention" means the subject matter
`defined by a claim in a patent or an application for a patent.
`Pre-AIA 35 U.S.C. 100 Definitions.
`
` [Editor Note: Pre-AIA 35 U.S.C. 100(e) as set forth below is
`not applicable to any patent application subject to the first
`inventor to file provisions of the AIA (see 35 U.S.C. 100 (note)).
`For an application or patent subject to the first inventor to file
`provisions of the AIA, see 35 U.S.C. 100.]
`
`Rev. 07.2015, November 2015
`
`700-6
`
`IPR2017-00041
`Bayer Ex. 2008
`
`

`
`EXAMINATION OF APPLICATIONS
`
`§ 702
`
`When used in this title unless the context otherwise indicates -
`
`*****
`
`(e) The term “third-party requester” means a person
`requesting ex parte reexamination under section 302 or inter
`partes reexamination under section 311 who is not the patent
`owner.
`
`702 Requisites of the Application [R-07.2015]
`
`The Office of Patent Application Processing (OPAP)
`reviews application papers to determine whether a
`new application is entitled to a filing date. Note that
`as a result of the Patent Law Treaties Implementation
`Act of 2012 (PLTIA), Public Law 112-211,
`December 18, 2012, and
`specifically,
`the
`amendments to the patent laws to implement the
`provisions of the Patent Law Treaty (PLT) in title
`II of the PLTIA, the filing date requirements for
`applications filed on or after December 18, 2013 are
`different from the filing date requirements for
`applications filed prior to December 18, 2013.
`Except for design applications, the filing date for
`nonprovisional applications
`filed on or after
`December 18, 2013 is the date on which a
`specification, with or without claims, is received in
`the Office. See MPEP § 601.01(a) for additional
`information. Similarly, provisional applications filed
`on or after December 18, 2013 may receive a filing
`date even if the application is filed without drawings.
`See MPEP § 601.01(b) for additional information.
`The filing date for a design application, except for
`a continued prosecution application (CPA) under 37
`CFR 1.53(d), is the date on which the specification
`as required by 35 U.S.C. 112, including at least one
`claim, and any required drawings are received in the
`Office. See MPEP § 601.01(a). Also, for applications
`filed on or after December 18, 2013, an application
`(other than an application for a design patent) is not
`required to include any drawings to be entitled to a
`filing date. It should be noted, however, 35 U.S.C.
`111(a)(2) continues to require the application to
`include a drawing as prescribed by 35 U.S.C. 113,
`which requires a drawing where necessary for the
`understanding of the subject matter sought to be
`patented. Therefore, any drawings necessary for the
`understanding of the invention should be submitted
`with the application on filing.
`
`If the subject matter of the application admits of
`illustration by a drawing to facilitate understanding
`
`of the invention, including where a drawing is
`necessary for the understanding of the invention, the
`Office will continue the practice of requiring a
`drawing. See MPEP § 608.02, subsection IV. As
`discussed in MPEP § 608.02, this requirement prior
`to examination should continue to be extremely rare
`and limited to the situation in which no examination
`can be performed due to the lack of an illustration
`of the invention.
`
`In addition, as provided in 35 U.S.C. 111(c), a
`nonprovisional application filed under 35 U.S.C.
`111(a) on or after December 18, 2013 may be filed
`by a reference to a previously filed application
`(foreign,
`international,
`provisional,
`or
`nonprovisional) indicating that the specification and
`any drawings of the application are replaced by the
`reference to the previously filed application. See
`MPEP § 601.01(a), subsection III.
`
`The minimal formal requirements resulting from the
`implementation of the PLTIA and PLT should not
`be viewed as prescribing a best practice for the
`preparation and filing of a patent application. The
`preparation of claims to any claimed invention for
`which patent protection is desired and the inclusion
`of such claims with the application on filing will
`help ensure that the application satisfies the
`disclosure requirements of 35 U.S.C. 112(a) for any
`such claimed invention. Similarly, while the absence
`of any drawing on the filing of an application no
`longer raises a question as to whether the application
`is entitled to a filing date, the preparation of
`drawings for a provisional or nonprovisional
`application is prudent where a drawing is necessary
`for the understanding of the subject matter sought
`to be patented, and inclusion of such drawing(s) with
`the application on filing will help ensure that the
`requirements of 35 U.S.C. 113 are satisfied for any
`such claimed invention.
`
`If an application (other than an application for a
`design patent) is filed on or after December 18, 2013,
`without any claims, OPAP will issue a notice giving
`the applicant a time period within which to submit
`at least one claim in order to avoid abandonment.
`An application will not be placed on an examiner’s
`docket unless and until the application includes a
`specification including at least one claim.
`
`700-7
`
`Rev. 07.2015, November 2015
`
`IPR2017-00041
`Bayer Ex. 2008
`
`

`
`§ 702.01
`
`MANUAL OF PATENT EXAMINING PROCEDURE
`
`For applications filed under pre-PLT (AIA) 35
`U.S.C. 111 prior to December 18, 2013, a filing date
`is assigned to a nonprovisional application as of the
`date a specification containing a description and
`claim and any necessary drawings are filed in the
`U.S. Patent and Trademark Office (Office). See
`pre-PLT (AIA) 37 CFR 1.53(b).
`
`Once OPAP determines that the application is
`entitled to a filing date, OPAP then determines
`whether the application as filed is complete, e.g.,
`includes the required fees, the inventor’s oath or
`declaration, and all pages of the specification and
`drawings. If the papers filed are not entitled to a
`filing date, OPAP will send a “Notice of Incomplete
`Application” informing applicant of the deficiencies;
`if the application is entitled to a filing date but it is
`not complete, an OPAP notice (e.g., a “Notice of
`Omitted Item(s)”) will be sent indicating that the
`application papers so deposited have been accorded
`a filing date and indicating what papers must be filed
`to complete the application.
`
`The examiner should be careful to see that the
`application
`is complete when
`taken up for
`examination. If, for example, pages of
`the
`specification or drawings are missing, the examiner
`should determine whether the application is entitled
`to the filing date assigned, and what action should
`be taken. See MPEP §§ 601.01(d) and 601.01(g) for
`guidance.
`
`702.01 Obviously Informal Cases [R-07.2015]
`
`When an application is taken up for examination and
`it is then discovered to be impractical to give a
`complete action on the merits because of an informal
`or insufficient disclosure, the following procedure
`may be followed:
`
`(A) A reasonable search should be made of the
`invention so far as it can be understood from the
`disclosure, objects of invention and claims and any
`apparently pertinent art cited. In the rare case in
`which the disclosure is so incomprehensible as to
`preclude a reasonable search, the Office action
`should clearly inform applicant that no search was
`made;
`(B) Any form that lists informalities and any
`additional formal requirements to be made should
`
`be included in the first Office action (see MPEP §
`707.07(a));
`(C) A requirement should be made that the
`specification be revised to conform to idiomatic
`English and United States patent practice;
`(D) The claims should be rejected as failing to
`define the invention in the manner required by
`35 U.S.C. 112 if they are informal. A blanket
`rejection is usually sufficient.
`
`The examiner should attempt to point out the points
`of informality in the specification and claims. The
`burden is on the applicant to revise the application
`to render it in proper form for a complete
`examination.
`
`If a number of obviously informal claims are filed
`in an application, such claims should be treated as
`being a single claim for fee and examination
`purposes.
`
`It is to applicant’s advantage to file the application
`with an adequate disclosure and with claims which
`conform to the U.S. Patent and Trademark Office
`usages and requirements. This should be done
`whenever possible. If, however, due to the pressure
`of a Convention deadline or other reasons, this is
`not possible, applicants are urged to submit
` promptly, preferably within 3 months after filing, a
`preliminary amendment which corrects the obvious
`informalities. The informalities should be corrected
`to the extent that the disclosure is readily understood
`and the claims to be initially examined are in proper
`form, particularly as to dependency, and otherwise
`clearly define the invention. “New matter” must be
`excluded from these amendments since preliminary
`amendments filed after the filing date of the
`application do not enjoy original disclosure status.
`See MPEP § 608.04(b).
`
`Whenever, upon examination, it is found that the
`terms or phrases or modes of characterization used
`to describe the invention are not sufficiently
`consonant with the art to which the invention
`pertains, or with which it is most nearly connected,
`to enable the examiner to make the examination
`specified in 37 CFR 1.104, the examiner should
`make a reasonable search of the invention so far as
`it can be understood from the disclosure. The action
`of the examiner may be limited to a citation of what
`
`Rev. 07.2015, November 2015
`
`700-8
`
`IPR2017-00041
`Bayer Ex. 2008
`
`

`
`EXAMINATION OF APPLICATIONS
`
`§ 704.01
`
`appears to be the most pertinent prior art found and
`a request that applicant correlate the terminology of
`the specification with art-accepted terminology
`before further action is made.
`
`A shortened statutory period for reply to this action is set to
`expire TWO MONTHS from the mailing date of this letter.
`
`Examiner Note:
`
`1. Use this form paragraph when a search cannot be made.
`
`Use form paragraph 7.01 where the terminology is
`such that a proper search cannot be made.
`
`2. In bracket 1, indicate the page numbers and features which
`are not understood.
`
`¶ 7.01 Use of Unconventional Terminology, Cannot Be
`Examined
`
`A preliminary examination of this application reveals that it
`includes terminology which is so different from that which is
`generally accepted in the art to which this invention pertains
`that a proper search of the prior art cannot be made. For example:
`[1]
`
`Applicant is required to provide a clarification of these matters
`or correlation with art-accepted terminology so that a proper
`comparison with the prior art can be made. Applicant should be
`careful not to introduce any new matter into the disclosure (i.e.,
`matter which is not supported by the disclosure as originally
`filed).
`
`A shortened statutory period for reply to this action is set to
`expire TWO MONTHS from the mailing date of this letter.
`
`Examiner Note:
`
`1. Use this or form paragraph 7.02 when a proper search
`cannot be made. However, see MPEP § 702.01 which requires
`a reasonable search.
`
`2. In bracket 1, fill in an appropriate indication of the
`terminology, properties, units of data, etc. that are the problem
`as well as the pages of the specification involved.
`
`3. For the procedure to be followed when the drawing is not
`acceptable, see MPEP §§ 608.02(a) and 608.02(b).
`
`Use form paragraph 7.02 where the application is
`so incomprehensible that a reasonable search cannot
`be made.
`
`3. See form paragraphs 6.28 and 6.30 for improper idiomatic
`English.
`
`4. Use form paragraphs 7.31.01 – 7.31.04, as appropriate, for
`a rejection of claims (when necessary) based on the deficiencies
`set forth in this form paragraph.
`
`For the procedure to be followed when the drawing
`is not acceptable, see MPEP §§ 608.02(a) and
`608.02(b).
`
`703 [Reserved]
`
`704 Search and Requirements for
`Information [R-08.2012]
`
`704.01 Search [R-08.2012]
`
`After reading the specification and claims, the
`examiner searches the prior art. The subject of
`searching is more fully treated in MPEP Chapter
`900. See especially MPEP §§ 904 through 904.03.
`The invention should be thoroughly understood
`before a search is undertaken. However, informal
`cases, or those which can only be imperfectly
`understood when they come up for action in their
`regular turn are also given a search, in order to avoid
`piecemeal prosecution.
`
`¶ 7.02 Disclosure Is Incomprehensible
`
`PREVIOUS EXAMINER’S SEARCH
`
`The disclosure is objected to under 37 CFR 1.71, as being so
`incomprehensible as to preclude a reasonable search of the prior
`art by the examiner. For example, the following items are not
`understood: [1]
`
`Applicant is required to submit an amendment which clarifies
`the disclosure so that the examiner may make a proper
`comparison of the invention with the prior art.
`
`Applicant should be careful not to introduce any new matter
`into the disclosure ( i.e., matter which is not supported by the
`disclosure as originally filed).
`
`When an examiner is assigned to act on an
`application which has received one or more actions
`by some other examiner, full faith and credit should
`be given to the search and action of the previous
`examiner unless there is a clear error in the previous
`action or knowledge of other prior art. In general the
`second examiner should not take an entirely new
`approach to the application or attempt to reorient the
`point of view of the previous examiner, or make a
`
`70