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704.11(a) Examples of Information Reasonably Required - 700 Examination of Applications


704.11(a) Examples of Information Reasonably Required

37 CFR 1.105(a)(1)(i)-(vii) lists 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.

(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 (b)).

(N) Comments on information of record which raises a question of whether applicant derived the invention from another under 35 U.S.C. 102(f).

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