Question:
When is information material to patentability according to the duty to disclose?
Answer:
Information is material to patentability when it is not cumulative to information already of record or being made of record in the application, and

* (1) It establishes, by itself or in combination with other information, a prima facie case of unpatentability of a claim; or
* (2) It refutes, or is inconsistent with, a position the applicant takes in:

* (i) Opposing an argument of unpatentability relied on by the Office, or
* (ii) Asserting an argument of patentability.



Chapter Details:
The answer to this question can be found in chapter 2000 of the MPEP. This chapter covers Duty of Disclosure.
The answer is from the 9th Edition, Revision 01.2024, Published November 2024. Depending on future changes to the MPEP, the question and answer may or may not be applicable in later Editions or revisions.
Section Summary:
This question and answer comes from section 2001.05 of the MPEP.  The following is a brief summary of section 2001.05.
2001.05 Materiality Under 37 CFR 1.56(b)
If information is not material, there is no duty to disclose the information to the Office. The Office believes that most applicants will wish to submit the information, however, even though they may not be required to do so, to strengthen the patent and avoid the risks of an incorrect judgment on their part on materiality.

Question:
What are two of the requirements for an English language translation of a non-English language foreign application?
Answer:
If an English language translation of a non-English language foreign application is required:

* 1) the translation must be that of the certified copy (of the foreign application as filed) and
* 2) it must be filed together with a statement that the translation of the certified copy is accurate.

Chapter Details:
The answer to this question can be found in chapter 200 of the MPEP. This chapter covers Types and Status of Application; Benefit and Priority Claims.
The answer is from the 9th Edition, Revision 01.2024, Published November 2024. Depending on future changes to the MPEP, the question and answer may or may not be applicable in later Editions or revisions.
Section Summary:
This question and answer comes from section 214 of the MPEP.  The following is a brief summary of section 214.
214 Formal Requirements of Claim for Foreign Priority
This section covers the time for filing a priority claim and unintentionally delayed priority claims.

Question:
List three examples of the kinds of information, in addition to prior art documents, that can be relied on in a protest.
Answer:
The following are examples of the kinds of information, in addition to prior art documents, which can be relied on in a protest:

* (A) Information demonstrating that the invention was publicly known or used by others and is barred from patenting under 35 U.S.C. 102(a)(1)and/or 103 or pre-AIA 35 U.S.C. 102(a) and/or 103.
* (B) Information that the invention was in public use or on sale and is barred from patenting under 35 U.S.C. 102(a)(1)or pre-AIA 35 U.S.C. 102(b).
* (C) Information that the inventor “has abandoned the invention” or “did not himself invent the subject matter sought to be patented”
* (D) Information relating to inventorship under pre-AIA 35 U.S.C. 102(g).
* (E) Information relating to compliance with 35 U.S.C. 112.
* (F) Any other information demonstrating that the application lacks compliance with the statutory requirements for patentability.
* (G) Information indicating “fraud” or “violation of the duty of disclosure” may be the subject of a protest. Protests raising fraud or other inequitable conduct issues will be entered in the application file, generally without comment on those issues.

Chapter Details:
The answer to this question can be found in chapter 1900 of the MPEP. This chapter covers Protest.
The answer is from the 9th Edition, Revision 01.2024, Published November 2024. Depending on future changes to the MPEP, the question and answer may or may not be applicable in later Editions or revisions.
Section Summary:
This question and answer comes from section 1901.02 of the MPEP.  The following is a brief summary of section 1901.02.
1901.02 Information Which Can Be Relied on in Protest
Any information which, in the protestor’s opinion, would make the grant of a patent improper can be relied on in a protest.

Question:
When should relevant documentation submitted to a regulatory review body be submitted for the Office for review?
Answer:
Where relevant documentation is submitted to a regulatory review body, such as the U.S. Food & Drug Administration (FDA), and is material to any pending patent application or reexamination proceeding, such documentation should be submitted for Office review.
While the considerations made by the FDA for approving clinical trials are different from those made by the USPTO in determining whether a claim is patentable, submissions, particularly any assertion that is made which is contradictory to assertions made to the examiner, may be material to ongoing patent proceedings.
Chapter Details:
The answer to this question can be found in chapter 2000 of the MPEP. This chapter covers Duty of Disclosure.
The answer is from the 9th Edition, Revision 07.2022, Published February 2023. Depending on future changes to the MPEP, the question and answer may or may not be applicable in later Editions or revisions.
Section Summary:
This question and answer comes from section 2001.06(e) of the MPEP.  The following is a brief summary of section 2001.06(e).
2001.06(e) Information Relating to Regulatory Review
Where relevant documentation is submitted to a regulatory review body, such as the U.S. Food & Drug Administration (FDA), and is material to any pending patent application or reexamination proceeding, such documentation should be submitted for Office review. While the considerations made by the FDA for approving clinical trials are different from those made by the USPTO in determining whether a claim is patentable, submissions, particularly any assertion that is made which is contradictory to assertions made to the examiner, may be material to ongoing patent proceedings.

Question:
Under what circumstances will the international and search fees be refunded?
Answer:
The international and search fees will be refunded if no international filing date is accorded or if the application is withdrawn before transmittal of the record copy to the International Bureau.
The search fee will be refunded if the application is withdrawn before the search copy is transmitted to the International Searching Authority. The transmittal fee will not be refunded.
According to 37 CFR 1.446(e), the handling fee will be refunded if the Demand is withdrawn before the Demand has been sent by the International Preliminary Examining Authority to the International Bureau.
Refund of the supplemental search fee will be made if the applicant is successful in a protest to a holding of lack of unity of invention.
The supplemental search fee must be paid and be accompanied by (1) a protest and (2) a request for refund of the supplemental search fee.
If the receiving Office and International Searching Authority are not the same Office, any request for refund of the search fee made after the search copy has been transmitted to the International Searching Authority must be directed to the International Searching Authority and not to the receiving Office.
Chapter Details:
The answer to this question can be found in chapter 1800 of the MPEP. This chapter covers Patent Cooperation Treaty.
The answer is from the 9th Edition, Revision 07.2022, Published February 2023. Depending on future changes to the MPEP, the question and answer may or may not be applicable in later Editions or revisions.
Section Summary:
This question and answer comes from section 1827.01 of the MPEP.  The following is a brief summary of section 1827.01.
1827.01 Refund of International Application Fees
The search fee will be refunded if no international filing date is accorded or if the application is withdrawn before the search copy is transmitted to the International Searching Authority. The transmittal fee will not be refunded.
The handling fee will be refunded if the Demand is withdrawn before the Demand has been sent by the International Preliminary Examining Authority to the International Bureau.
Refund of the supplemental search fee will be made if the applicant is successful in a protest to a holding of lack of unity of invention.

Question:
Which two types of assignee(s) may conduct either the prosecution of a national application for patent or a reexamination proceeding?
Answer:
The assignee(s) who may conduct either the prosecution of a national application for patent or a reexamination proceeding are:

* (1) A single assignee. An assignee of the entire right, title and interest in the application or patent being reexamined who is of record, or
* (2) Partial assignee(s) together or with inventor(s). All partial assignees, or all partial assignees and inventors who have not assigned their right, title and interest in the application or patent being reexamined, who together own the entire right, title and interest in the application or patent being reexamined. A partial assignee is any assignee of record having less than the entire right, title and interest in the application or patent being reexamined.

Chapter Details:
The answer to this question can be found in chapter 400 of the MPEP. This chapter covers Representative of Applicant or Owner.
The answer is from the 9th Edition, Revision 07.2022, Published February 2023. Depending on future changes to the MPEP, the question and answer may or may not be applicable in later Editions or revisions.
Section Summary:
This question and answer comes from section 402.07 of the MPEP.  The following is a brief summary of section 402.07.
402.07 Assignee Revocation of Power of Attorney of Applicant and Appointment of New Power of Attorney
In applications filed on or after September 16, 2012, any power of attorney must be signed by the applicant or patent owner. In applications filed before September 16, 2012, the assignee of record of the entire interest can revoke the power of attorney of the applicant unless an “irrevocable” right to prosecute the application had been given as in some government owned applications.

Question:
If additional defects or errors are corrected in the reissue after the filing of the reissue oath or declaration, is a supplemental reissue oath or declaration required?
Answer:
For applications filed on or after September 16, 2012, if additional defects or errors are corrected in the reissue after the filing of the reissue oath or declaration, a supplemental reissue oath or declaration is not required.
However, where all errors previously identified in the reissue oath/declaration are no longer being relied upon as the basis for reissue, the applicant must explicitly identify on the record an error being relied upon as the basis for reissue (e.g., in the remarks accompanying an amendment). Identification of the error must be conspicuous and clear, and must comply with 35 U.S.C. 251.
If the reissue application was filed before September 16, 2012 and the amendment corrects an “error” under 35 U.S.C. 251, then a supplemental oath or declaration will be required. The examiner should telephone applicant and request the supplemental oath or declaration, which must be filed before the application can be counted as an allowance.
Chapter Details:
The answer to this question can be found in chapter 1400 of the MPEP. This chapter covers Correction of Patents.
The answer is from the 9th Edition, Revision 07.2022, Published February 2023. Depending on future changes to the MPEP, the question and answer may or may not be applicable in later Editions or revisions.
Section Summary:
This question and answer comes from section 1455 of the MPEP.  The following is a brief summary of section 1455.
1455 Allowance and Issue
This section covers allowance and issue including changes to the original patent and claim numbering. Renumbering of the original patent claims is never permitted. In addition, at least one claim of an allowable reissue application must be designated for printing in the Official Gazette.
This section also discusses parent application data on the bibliographic data sheet of the original patent file and examiner’s amendments and it briefly touches on reissue oaths or declarations.

Question:
Is a provisional application that is relied upon for priority in a U.S. patent and is abandoned available through the Patent Center?
Answer:
Yes, a provisional application that is relied upon for priority in a U.S. patent and is abandoned may be available through the Patent Center.
Generally though, provisional applications are not published and are generally preserved in confidence, as with any other unpublished application. Therefore, access to or copies of all or part of a provisional application are customarily only made available to the public under limited circumstances.
Chapter Details:
The answer to this question can be found in chapter 100 of the MPEP. This chapter covers Secrecy, Access, National Security, and Foreign Filing.
The answer is from the 9th Edition, Revision 07.2022, Published February 2023. Depending on future changes to the MPEP, the question and answer may or may not be applicable in later Editions or revisions.
Section Summary:
This question and answer comes from section 103 of the MPEP.  The following is a brief summary of section 103.
103 Right of Public to Inspect Patent Files and Some Application Files
37 C.F.R. 1.11 discusses the rights the public has to inspect files (such as patents and certain types of applications). This section outlines the exact documents accessible to the public. It includes a brief discussion on accessing image file wrapper (IFW) applications, access to published U.S. patent applications, unpublished abandoned and pending applications that are identified, and access where part of an application is incorporated by reference in a U.S. patent application publication or a U.S. patent.
In addition, this section covers petitions for access by third parties, access where a patent relies on the filing date of an earlier but still pending application, access to provisional applications, access to applications involved in interferences or trials through the Patent Trial and Appeal Board, defensive publications, reissue applications, and requests for reexamination.

Question:
Does the new ground of rejection raised by the Board in an appeal reopen prosecution?
Answer:
The new ground of rejection raised by the Board does not reopen prosecution except as to that subject matter to which the new rejection was applied. If the Board’s decision in which the rejection was made includes an affirmance of the examiner’s rejection, the basis of the affirmed rejection is not open to further prosecution.
If the appellant elects to proceed before the examiner with regard to the new rejection, the Board’s affirmance of the examiner’s rejection will be treated as nonfinal for purposes of seeking judicial review, and no request for reconsideration of the affirmance need be filed at that time.
Chapter Details:
The answer to this question can be found in chapter 1200 of the MPEP. This chapter covers Appeal.
The answer is from the 9th Edition, Revision 07.2022, Published February 2023. Depending on future changes to the MPEP, the question and answer may or may not be applicable in later Editions or revisions.
Section Summary:
This question and answer comes from section 1214.01 of the MPEP.  The following is a brief summary of section 1214.01.
1214.01 Procedure Following New Ground of Rejection by Board
This section covers the procedure following a new ground of rejection by the Board. When the Board designates a new ground of rejection under 37 CFR 41.50(b), the appellant, as to each claim so rejected, has the option of reopening prosecution before the examiner by submitting an appropriate amendment and/or new evidence; or requesting rehearing before the Board.
The application will be remanded to the examiner for reconsideration if the appellant submits “an appropriate amendment” of the claims rejected by the Board, “or new evidence relating to the claims so rejected, or both.” Further details on the submission of an amendment or new evidence are detailed in this section.

Question:
Name two items the Technology Center will verify when a Request for Continuing Examination is initially processed.
Answer:
An RCE will be initially processed by the Technology Center (TC) assigned the application. Technical support personnel in the TC will verify that:

* (A) the application is a utility or plant application (i.e., not a design application);
* (B) the application was filed on or after June 8, 1995;
* (C) prosecution in the application is closed (e.g., the last Office action is a final rejection, notice of allowance, or an Office action under Ex parte Quayle), or the application is under appeal);
* (D) the RCE was filed before the payment of the issue fee or, if not, a petition under 37 CFR 1.313 to withdraw the application from issue was filed and granted;
* (E) the application was pending (i.e., not patented or abandoned) when the RCE was filed;
* (F) the RCE was accompanied by the proper fee(s) including the RCE fee;
* (G) the RCE included a submission as required by 37 CFR 1.114; and
* (H) if the application is a national stage application, a compliant inventor’s oath or declaration for each inventor was submitted prior to or with the RCE.

Chapter Details:
The answer to this question can be found in chapter 700 of the MPEP. This chapter covers Examination of Applications.
The answer is from the 9th Edition, Revision 07.2022, Published February 2023. Depending on future changes to the MPEP, the question and answer may or may not be applicable in later Editions or revisions.
Section Summary:
This question and answer comes from section 706.07(h) of the MPEP.  The following is a brief summary of section 706.07(h).
706.07(h) Request for Continued Examination (RCE) Practice
Filing a request for continued examination (RCE) provides a means for the applicant to continue with the prosecution of his or her application if prosecution becomes closed. Choosing an RCE is an alternative to filing a continuing application under 37 C.F.R. 1.53(b) or a CPA under 37 C.F.R. 1.53(d). This section covers RCE practice in detail.

Question:
What non-exhaustive factors may be considered to determine whether to accept a petition after the 2-month period?
Answer:
The following non-exhaustive factors may be considered to determine whether to accept a petition after the 2-month period:

* (1) Petitioner engaged in significant, constructive efforts with the examiner to resolve the issue outside of the petitions process
* (2) The examiner agreed, on the written record, to perform an action that would resolve the issue, but failed to do so
* (3) A showing of extenuating circumstances, such as delay caused by health, pandemic, natural disaster, etc.

Chapter Details:
The answer to this question can be found in chapter 1000 of the MPEP. This chapter covers Matters Decided by Various U.S. Patent and Trademark Office Officials.
The answer is from the 9th Edition, Revision 07.2022, Published February 2023. Depending on future changes to the MPEP, the question and answer may or may not be applicable in later Editions or revisions.
Section Summary:
This question and answer comes from section 1002 of the MPEP.  The following is a brief summary of section 1002.
1002 Petitions to the Director of the USPTO
This section references 37 C.F.R. 1.181 petitions to the Director of the USPTO. It also provides a brief overview of petitions to the Director. For instance, the mere filing of a petition will not stay the period for replying to an examiner’s action, nor act as a stay of other proceedings. The applicant will need to file the petition and any reply within the time to reply or successfully file an extension of time.

Question:
What are the reasons for insisting upon a restriction?
Answer:
Every requirement to restrict has two aspects:

* (A) the reasons (as distinguished from the mere statement of conclusion) why each inventionas claimed is either independent or distinct from the other(s); and
* (B) the reasons why there would be a serious search and/or examination burden on the examiner if restriction is not required, i.e., the reasons for insisting upon restriction therebetween as set forth in the following sections.

Chapter Details:
The answer to this question can be found in chapter 800 of the MPEP. This chapter covers Restriction in Applications Filed Under 35 U.S.C. 111; Double Patenting.
The answer is from the 9th Edition, Revision 07.2022, Published February 2023. Depending on future changes to the MPEP, the question and answer may or may not be applicable in later Editions or revisions.
Section Summary:
This question and answer comes from section 808 of the MPEP.  The following is a brief summary of section 808.
808 Reasons for Insisting Upon Restriction
Every requirement to restrict has two aspects: (A) the reasons (as distinguished from the mere statement of conclusion) why each invention as claimed is either independent or distinct from the other(s); and (B) the reasons why there would be a serious search and/or examination burden on the examiner if restriction is not required, i.e., the reasons for insisting upon restriction therebetween as set forth in the following sections.

Question:
What information should also be submitted for each patent on which a maintenance fee or surcharge is paid?
Answer:
The following information should also be submitted for each patent on which a maintenance fee or surcharge is paid:

* (A) the fee year (i.e., 3 1/2, 7 1/2, or 11 1/2 year fee);
* (B) the amount of the maintenance fee and any surcharge being submitted;
* (C) any assigned customer number; and
* (D) whether entity status is being changed or claimed with the payment.

Chapter Details:
The answer to this question can be found in chapter 2500 of the MPEP. This chapter covers Maintenance Fees.
The answer is from the 9th Edition, Revision 07.2022, Published February 2023. Depending on future changes to the MPEP, the question and answer may or may not be applicable in later Editions or revisions.
Section Summary:
This question and answer comes from section 2515 of the MPEP.  The following is a brief summary of section 2515.
2515 Information Required for Submission of Maintenance Fee Payment
This section establishes the guidelines for the submission of maintenance fees. It covers who may pay the fees and the identification required with the maintenance fee payment.

Question:
What applications count for the filing limits for the purposes of establishing micro entity status under the “gross income” basis?
Answer:
For purposes of establishing micro entity status under the “gross income” basis, the application filing limit includes:

* (i) previously filed U.S. nonprovisional applications (e.g., utility, design, plant, continuation, and divisional applications),
* (ii) previously filed U.S. reissue applications,
* (iii) previously filed U.S. national stage applications under the Patent Cooperation Treaty (PCT), and
* (iv) previously filed international design applications under the Hague agreement that designate the U.S.

All such applications naming the inventor or a joint inventor are counted toward the application filing limit, whether the applications were filed before, on, or after March 19, 2013.
Chapter Details:
The answer to this question can be found in chapter 500 of the MPEP. This chapter covers Receipt and Handling of Mail and Papers.
The answer is from the 9th Edition, Revision 07.2022, Published February 2023. Depending on future changes to the MPEP, the question and answer may or may not be applicable in later Editions or revisions.
Section Summary:
This question and answer comes from section 509.04(a) of the MPEP.  The following is a brief summary of section 509.04(a).
509.04(a) Gross Income Basis for Micro Entity Status
This section discusses the basis of gross income for micro entity status. The requirements including gross income limits on applicants and inventors as well as gross income limits on parties with an ‘ownership interest’ are covered.

Question:
List two pieces of information that should be placed on the first page of a protest.
Answer:
Each protest should be clearly identified as a “PROTEST UNDER 37 CFR 1.291.” It is also important that any protest against a pending application specifically identify the application to which the protest is directed with the identification being as complete as possible. If possible, the following information should be placed on the first page of the protest:

* (A) Name of inventor(s)
* (B) Name of applicant(s).
* (C) Application number.
* (D) Filing date of application.
* (E) Title of invention.
* (F) Art unit number (if known).
* (G) Name of examiner to whom the application is assigned (if known).

Chapter Details:
The answer to this question can be found in chapter 1900 of the MPEP. This chapter covers Protest.
The answer is from the 9th Edition, Revision 07.2022, Published February 2023. Depending on future changes to the MPEP, the question and answer may or may not be applicable in later Editions or revisions.
Section Summary:
This question and answer comes from section 1901.03 of the MPEP.  The following is a brief summary of section 1901.03.
1901.03 How Protest Is Submitted
A protest must be submitted in writing, must specifically identify the application to which the protest is directed by application number or serial number and filing date, and must include an information list of all documents, portions of documents, or other information submitted; a concise explanation of the relevance of each listed item; an English language translation of any non-English language document or other information identified in the information list; and be accompanied by a copy of each item in the information list except for U.S. patents and U.S. patent application publications.

Question:
Name at least two items that must be submitted when adding a “Sequence Listing” after the application filing date.
Answer:
Adding a “Sequence Listing” after the application filing date involves the submission of:

* (1) a “Sequence Listing” either as a PDF image file, on physical sheets of paper, or as an ASCII plain text file submitted via the USPTO patent electronic filing system or on read-only optical disc(s),
* (2) a request that the amendment be made by either incorporation by reference in the case of ASCII plain text files or inserting text into the specification in the case of PDF image files or physical sheets of paper,
* (3) a statement that indicate the basis for the amendment in the application, as originally filed,
* (4) a statement that the “Sequence Listing” includes no new matter,
* (5) a new or substitute CRF when the submission is a PDF image file or on physical sheets of paper, and
* (6) a statement that the sequence information contained in the CRF is the same as the sequence information contained in the added “Sequence Listing” when the submission is a PDF image file or on physical sheets of paper.

Chapter Details:
The answer to this question can be found in chapter 2400 of the MPEP. This chapter covers Biotechnology.
The answer is from the 9th Edition, Revision 07.2022, Published February 2023. Depending on future changes to the MPEP, the question and answer may or may not be applicable in later Editions or revisions.
Section Summary:
This question and answer comes from section 2426 of the MPEP.  The following is a brief summary of section 2426.
2426 Amendments to Add or Replace a “Sequence Listing” and CRF Copy Thereof Subject to WIPO ST. 25
This section discusses how to use amendments to add or replace a sequence listing. 37 CFR 1.825 sets forth the procedures for adding or replacing the “Sequence Listing” and the CRF thereof.

Question:
Where a restriction (including an election of species) requirement was made in an application and applicant permitted the elected invention to issue as a patent without filing a divisional application on the non-elected invention(s) or on non-claimed subject matter distinct from the elected invention, can the non-elected invention(s) and non-claimed, distinct subject matter be recovered by filing a reissue application?
Answer:
Where a restriction (including an election of species) requirement was made in an application and applicant permitted the elected invention to issue as a patent without filing a divisional application on the non-elected invention(s) or on non-claimed subject matter distinct from the elected invention, the non-elected invention(s) and non-claimed, distinct subject matter cannot be recovered by filing a reissue application.
Chapter Details:
The answer to this question can be found in chapter 800 of the MPEP. This chapter covers Restriction in Applications Filed Under 35 U.S.C. 111; Double Patenting.
The answer is from the 9th Edition, Revision 07.2022, Published February 2023. Depending on future changes to the MPEP, the question and answer may or may not be applicable in later Editions or revisions.
Section Summary:
This question and answer comes from section 803.05 of the MPEP.  The following is a brief summary of section 803.05.
803.05   Reissue Application Practice
Restriction practice relating to reissue applications is governed by 37 CFR 1.176(b) which specifies that restriction may only be required between the invention(s) of the original patent claims and previously unclaimed invention(s) set forth in new claims added in the reissue application. The claims of the original patent must not be restricted as being directed to two or more independent and distinct inventions and must be examined together.

Question:
What type of Demand will prevent an international application designating the U.S. to enter the national stage via the U.S. Designated Office?
Answer:
An international application designating the U.S. will enter the national stage via the U.S. Designated Office unless a Demand electing the U.S. is filed under PCT Article 31 whereupon entry will be via the U.S. Elected Office.
When entering the U.S. national stage following either Chapter I or Chapter II, the applicant has the right to amend the application within the time limit of one month from commencement.
Chapter Details:
The answer to this question can be found in chapter 1800 of the MPEP. This chapter covers Patent Cooperation Treaty.
The answer is from the 9th Edition, Revision 07.2022, Published February 2023. Depending on future changes to the MPEP, the question and answer may or may not be applicable in later Editions or revisions.
Section Summary:
This question and answer comes from section 1893.01(a) of the MPEP.  The following is a brief summary of section 1893.01(a).
1893.01(a) Entry via the U.S. Designated or Elected Office
An international application designating the U.S. will enter the national stage via the U.S. Designated Office unless a Demand electing the U.S. is filed under PCT Article 31 whereupon entry will be via the U.S. Elected Office.

Question:
What are the factual inquiries related to obviousness that the Court enunciates?
Answer:
Obviousness is a question of law based on underlying factual inquiries. The factual inquiries enunciated by the Court are as follows:

* (A) Determining the scope and content of the prior art;
* (B) Ascertaining the differences between the claimed invention and the prior art; and
* (C) Resolving the level of ordinary skill in the pertinent art.

Chapter Details:
The answer to this question can be found in chapter 2100 of the MPEP. This chapter covers Patentability.
The answer is from the 9th Edition, Revision 07.2022, Published February 2023. Depending on future changes to the MPEP, the question and answer may or may not be applicable in later Editions or revisions.
Section Summary:
This question and answer comes from section 2141 of the MPEP.  The following is a brief summary of section 2141.
2141 Examination Guidelines for Determining Obviousness Under 35 U.S.C. 103
This section covers examination guidelines for determining obviousness under 35 U.S.C. 103. The use of common sense does not require a “specific hint or suggestion in a particular reference,” only a reasoned explanation that avoids conclusory generalizations.
The KSR decision is discussed in detail. The Supreme Court in KSR reaffirmed the familiar framework for determining obviousness as set forth in Graham v. John Deere Co., but stated that the Federal Circuit had erred by applying the teaching-suggestion-motivation (TSM) test in an overly rigid and formalistic way. In KSR, the Supreme Court particularly emphasized “the need for caution in granting a patent based on the combination of elements found in the prior art,” and discussed circumstances in which a patent might be determined to be obvious.
The basic factual inquiries of Graham v. John Deere Co. are also discussed. The Graham factors, including secondary considerations when present, are the controlling inquiries in any obviousness analysis. The factual inquiries enunciated by the Court are as follows:

* Determining the scope and content of the prior art; and
* Ascertaining the differences between the claimed invention and the prior art; and
* Resolving the level of ordinary skill in the pertinent art.

This section also covers rationales to support rejections under 35 U.S.C. 103, the applicant’s reply, and consideration of applicant’s rebuttal evidence.

Question:
What are the three types of designs the language “new, original and ornamental design for an article of manufacture” has been interpreted by the case law to include?
Answer:
The language “new, original and ornamental design for an article of manufacture” has been interpreted by the case law to include at least three kinds of designs:

* (A) a design for an ornament, impression, print, or picture applied to or embodied in an article of manufacture (surface indicia);
* (B) a design for the shape or configuration of an article of manufacture; and
* (C) a combination of the first two categories.

Chapter Details:
The answer to this question can be found in chapter 1500 of the MPEP. This chapter covers Design Patents.
The answer is from the 9th Edition, Revision 07.2022, Published February 2023. Depending on future changes to the MPEP, the question and answer may or may not be applicable in later Editions or revisions.
Section Summary:
This question and answer comes from section 1504.01 of the MPEP.  The following is a brief summary of section 1504.01.
1504.01 Statutory Subject Matter for Designs
This section covers statutory subject matter for designs. It goes over the three types of designs that are patentable. A picture alone is not patentable.