Examination Guidance and Training Materials

Best Practices in Examination
Improving Clarity and Reasoning in Office Actions Training	Responding to Legal Arguments Part I: Understanding Case Law and the Federal Court System [Computer Based Training] [posted January 3, 2017] Part II: How to Evaluate and Analyze Legal Arguments Based on Case Law [posted September 11, 2017] Part II Legal Analysis Writing Workshop Slides - with Talking Points (April 2017) Part II Legal Analysis Writing Worksheet - Blank Worksheet (April 2017) Part II Legal Analysis Writing Worksheet - Answer Key (April 2017) Part III: Writing a Persuasive Reply to Attorney Arguments (January 2019) Reasons for Allowance (2016)
Interview Practice	Interview Practice Training (2015) and Training Summary Effective Interview Practice (2012) Interview Best Practices (2011) Interview Practice Training Summary (2009)
Awareness Workshop	Best Practices in Compact Prosecution (2009)
35 U.S.C. 101
Subject matter eligibility	Subject Matter Eligibility Guidance, Examples, and Training
35 U.S.C. 102 & 103
35 U.S.C. 102 & 103	Part I - Proper Anticipation Rejections: Reminders from Recent Case Law (Spring 2018) Part II - Clear Obviousness Rejections: Important Lessons from Outdry v. Geox (Summer 2018) Part III - Combined 102 & 103 Workshop Training (Summer/Fall 2018)
Obviousness, KSR	Examination Guidelines and Training Materials in view of KSR Int’l Co. v. Teleflex Inc. (through 2010 update)
35 U.S.C. 112
	Examining Computer-Implemented Functional Claim Limitations for Compliance with 35 U.S.C. 112 Computer-Based Training (CBT) [posted 3/28/2019] PowerPoint [posted 3/27/2019]
35 U.S.C. 112(a)	Examining Claims for Compliance with 35 U.S.C. 112(a): Overview and Part I - Written Description = Focus on Electrical/Mechanical and Computer/Software-related Claims Computer Based Training (CBT) [posted 08/17/2015] PowerPoint of the CBT [posted 08/17/2015] Written Description Workshop Examining Claims for Compliance with 35 U.S.C. 112(a): Part II - Enablement = Focus on Electrical/Mechanical and Computer/Software-related Claims Computer Based Training (CBT) [posted 10/15/2015] PowerPoint of the CBT [posted 10/07/2015] Antibody Decisions and Their Compliance with the Written Description Requirement PowerPoint of the CBT [posted 10/07/2015] Please note that the following Written Description Training Materials, Revision 1, March 25, 2008, include examples that now require further analysis for subject matter eligibility under 35 U.S.C. 101 in view of recent changes in the law. A new version will be prepared to reflect changes in the law since 2008, including any required clarifications due to developments in the law relating to 35 U.S.C. 112. The next revision will be posted as soon as it is available. [ARCHIVED] Written Description Guidelines Training Materials (2008) [PDF]
35 U.S.C. 112(b)	Enhancing Clarity By Ensuring That Claims are Definite Under 35 U.S.C. 112(b) PowerPoint [PPT] [posted May 20, 2016] Functional Language Workshop: Claim Interpretation And Definiteness Under 35 U.S.C. 112(b) [posted September 8, 2016] PowerPoint [PPT] Hands-On Examples: Hypothetical Background and Claim Set Example 1: Ultrasonic Surgical Shears Example 2: Laundry Detergent Example 3: Computerized Color Editing Functional Language Worksheet Blank for use in workshop Blank with supporting reference information Answer Keys Example 1: Worksheet Answer Key Example 2: Worksheet Answer Key Example 3: Worksheet Answer Key
35 U.S.C. 112(f) – “Means-plus-function” limitations	Addressing 35 U.S.C. § 112(F) or "Means-plus-Function" Limitations in an Office Action using New Form Paragraphs Computer Based Training [CBT] [posted March 27, 2018] Sample Office Action (for use with the CBT) [PDF] [posted March 27, 2018] PDF of CBT [PDF] [posted March 27, 2018] Instructor-Led Training: Application of New Form Paragraphs for Addressing Issues Related to § 112(f) or Means-plus-Function" Limitations [PPT] [posted March 27, 2018] Background and Claims: Chemical (Laundry Detergent) [PDF] [posted March 27, 2018] Electrical (Computerized Color Editing System) [PDF] [posted March 27, 2018] Mechanical (Ultrasonic Surgical Shears) [PDF] [posted March 27, 2018] Office Actions: Chemical (Laundry Detergent) [PDF] [posted March 27, 2018] Electrical (Computerized Color Editing System) [PDF] [posted March 27, 2018] Mechanical (Ultrasonic Surgical Shears) [PDF] [posted March 27, 2018] The public is invited to submit comments on the training to: TrainingComments112f@uspto.gov
Supplemental, ¶1, ¶2, ¶4, ¶6	Supplementary Examination Guidelines for Determining Compliance With 35 U.S.C. 112 and for Treatment of Related Issues in Patent Applications (signed January 21, 2011) 35 U.S.C. § 112 Supplementary Examination Guidelines [PPT] (slide set prepared from guidelines signed January 21, 2011) Training Examples [posted May 20, 2011]
Designs
Supplemental, 35 U.S.C. 171	Supplemental Guidance for Examination of Design Patent Applications Related to Computer-Generated Electronic Images, Including Computer-Generated Icons and Graphical User Interfaces [PDF] [published November 17, 2023] Correction [PDF] [published January 29, 2024] Correctly formatted Examples 2, 4, and 5 from Section (V) of the supplemental guidance [PDF] [posted January 30, 2024]
Design Patent Examiner Materials and Resources	Design patent examiner materials and resources
Restriction Practice
U.S. Restriction Practice	U.S. Restriction Practice Computer Based Training (CBT) [Posted December 9, 2019] PowerPoint of the CBT [posted December 9, 2019]
Unity of Invention	Unity of Invention Computer Based Training (CBT) [Posted December 9, 2019] PowerPoint of the CBT [posted December 9, 2019]
Claim Interpretation
	Claim Interpretation Instructor-led Interactive Module [html] [posted May 14, 2019] PowerPoint of the Module [PPT] [posted May 14, 2019] Examining Functional Claim Limitations: Focus on Computer/Software-related Claims Computer Based Training [CBT] [posted June 30, 2015] PowerPoint of the CBT [PPT] [posted June 30, 2015] Broadest Reasonable Interpretation (BRI) and the Plain Meaning of Claim Terms Computer Based Training [CBT] [posted March 3, 2015] PowerPoint of the CBT [PPT] [posted March 3, 2015]
America Invents Act
First Inventor To File (FITF)	First-Inventor-to-File Training Plan for USPTO Examiners [PDF] First-Inventor-to-File Statutory Framework Chart [PDF] Overview CBT (March 2013) (46 min) Video \| Slides [PDF] Overview Follow-On Video (March 2013) (27 min) Video \| Slides [PDF] FITF Definitions (June 2013) (14 min) Video \| Slides [PDF] \| Handout [PDF] Comprehensive Examiner Training Slides (Summer 2013) Video \| Slides [PDF] AIA FITF Indicator Training (Fall 2013) Video \| Slides [PDF] FITF Evidentiary Declarations (Winter 2014) Video l Slides [PDF] Interference Searches in AIA (FITF) Applications (2015) [PDF]
non-FITF AIA Regulations	non-FITF Regulations Training (Summer 2013) [PDF]
Patent Trial and Appeal Board
Rules of Practice	Rules of Practice Before the BPAI in Ex Parte Appeals (2012)

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