April 02 AM Flashcards
- The following facts apply: Claims 1 and 2, fully disclosed and supported in the specification of a patent application having an effective filing date of March 15, 2000, for sole inventor Ted, state the following:
Claim 1. An apparatus intended to be used for aerating water in a fish tank, comprising: (i) an oxygen source connected to a tube, and (ii) a valve connected to the tube.
Claim 2. An apparatus as in claim 1, further comprising an oxygen sensor connected to the valve.
Which of the following, if relied on by an examiner in a rejection of claim 2, can be a statutory bar under 35 USC 102 of claim 2?
A A U.S. patent to John, issued February 2, 1999, that discloses and claims an apparatus intended to be used for aerating ice cream, having an oxygen source connected to a tube, a valve connected to the tube, and a battery coupled to the oxygen source.
B A U.S. patent to John, issued April 6, 1999, that discloses and claims an apparatus intended to be used for aerating water in a fish tank, having an oxygen source connected to a tube, a valve connected to the tube, and an oxygen sensor connected to the tube.
C A U.S. patent to Ned, issued February 9, 1999, that discloses, but does not claim, an apparatus intended to be used for aerating ice cream, having an oxygen source connected to a tube, a valve connected to the tube, an oxygen sensor connected to the valve, and a battery coupled to the oxygen source.
D A foreign patent to Ted issued April 12, 2000, on an application filed on March 12, 1997. The foreign patent discloses and claims an apparatus intended to be used for aerating water in a fish tank, having an oxygen source connected to a tube, a valve connected to the tube, and an oxygen sensor connected to the tube.
E None of the above.
Correct Answer(s): C Related MPEP Chapter(s): MPEP 2100 - Patentability Answer Reasoning:ANSWER: (C) is the correct answer. 35 U.S.C. § 102(b). MPEP § 2111.02 provides that the preamble generally is not accorded patentable weight where it merely recites the intended use of a structure. (A) is incorrect because it does not disclose an oxygen sensor. (B) is incorrect because the patent is not more than one year prior to the date of the Ted's application. (D) is incorrect because the Japanese patent application issued after the date of Ted's application. 35 U.S.C. § 102(d). (E) is incorrect because (C) is correct.
- A product-by-process claim is properly rejected over a reference under 35 USC 102. Which of the following statements is incorrect?
A There is no anticipation unless each of the process steps recited in the claim is disclosed or inherent in the applied reference.
B If the applied reference reasonably indicates that a product disclosed therein is the same or substantially the same as the claimed product, the burden shifts to the applicant to provide evidence to the contrary.
C The rejection cannot be overcome by evidence of unexpected results.
D The rejection can be overcome by evidence that the product in the reference does not necessarily or inherently possess a characteristic of the applicant’s claimed product.
E An affidavit or declaration under 37 CFR 1.131 cannot overcome a proper rejection under pre-AIA 35 USC 102(b) over a reference.
Correct Answer(s): A Related MPEP Chapter(s): MPEP 2100 - Patentability Answer Reasoning:ANSWER: (A) is the most correct answer. The patentability of a product-by-process claim is determined based on the product itself, not on the process of making it. See In re Thorpe, 777 F.2d 695, 697, 227 USPQ 964, 966 (Fed. Cir. 1985), and MPEP § 2113. (B) and (D) are not proper choices because when evidence indicates that the applicant's product and that of the prior art are identical or substantially identical, the burden shifts to the applicant to overcome the rejection by providing evidence that the prior art product does not necessarily or inherently possess a relied-upon characteristic of the applicant's claimed product. See In re Fitzgerald, 619 F.2d 67, 70, 205 USPQ 594, 596 (CCPA 1980); In re Best, 562 F.2d 1252, 1255, 195 USPQ 430, 433-34 (CCPA 1977), and MPEP § 2112. (C) is not the proper choice because evidence of unexpected results is not relevant to anticipation. See In re Malagari, 499 F.2d 1297, 1302, 182 USPQ 549, 553 (CCPA 1974), and MPEP § 711.03(c). (E) is not the proper choice because a rejection under 35 U.S.C. § 102(b) is a statutory bar to patentability, and 37 C.F.R. § 1.131(a)(2) states that § 131 cannot be used to establish prior invention when the rejection is based upon a statutory bar.
- Xavier files a complete first reply exactly 2 months after the mailing date of a final Office action which sets a 3 month shortened statutory period for reply. An Examiner’s Amendment is necessary for the purpose of placing the application in condition for allowance. Which of the following statements is true?
A If the Examiner’s Amendment is mailed exactly 5 months after Xavier’s reply, the application will be allowed.
B The Examiner’s Amendment must be made within the 3 month shortened statutory period of the final Office action to avoid abandonment of the application.
C If the Examiner’s Amendment is made exactly 4 months after Xavier’s reply, the application will be allowed.
D The Examiner’s Amendment may be made at any time within 6 months of Xavier’s reply to avoid abandonment.
E Abandonment of the application will be avoided if Xavier accompanies his reply with a request for extension of time accompanied by the proper fee and the Examiner’s Amendment is made within 6 months of Xavier’s reply.
Correct Answer(s): C Related MPEP Chapter(s): MPEP 700 - Examination of Applications Answer Reasoning:ANSWER: (C) is correct and (B) is wrong because MPEP § 706.07(f), part (H), states, "Where a complete first reply to a final Office action has been filed within 2 months of the final Office action, an examiner's amendment to place the application in condition for allowance may be made without the payment of extension fees even if the examiner's amendment is made more than 3 months from the date of the final Office action." (A), (D) and (E) are wrong because MPEP § 706.07(f), part (H), states, "Note that an examiner's amendment may not be made more than 6 months from the date of the final Office action, as the application would be abandoned at that point by operation of law." In (A), when an examiner's amendment is mailed exactly 5 months after Xavier's reply, the examiner's amendment would be made more than 6 months after the Office action.
- The following statements relate to “multiple dependent claims.” Which statement is not in accord with proper USPTO practice and procedure?
A A multiple dependent claim contains all the limitations of all the alternative claims to which it refers.
B A multiple dependent claim contains in any one embodiment only those limitations of the particular claim referred to for the embodiment under consideration.
C A multiple dependent claim must be considered in the same manner as a plurality of single dependent claims.
D Restriction may be required between the embodiments of a multiple dependent claim.
E The limitations or elements of each claim incorporated by reference into a multiple dependent claim must be considered separately.
Correct Answer(s):
A
Related MPEP Chapter(s):
MPEP 600 - Parts, Form, and Content of Application
Answer Reasoning:ANSWER: (A) is the most correct answer. The answer is inconsistent with 35 U.S.C. § 112 and MPEP § 608.01(n), subpart I.B.4. (B), (C), and (E) are wrong answers because they are consistent with 35 U.S.C. § 112 and MPEP § 608.01(n), subpart I.B.4. (D) is wrong because it is consistent with MPEP § 608.01(n), subpart I. C.
- Which of the following statements relevant to a third party submission in a published patent application filed before 9/16/12 accords with proper USPTO practice and procedure?
A A submission of patents by a member of the public must be made within 2 months of the date of publication of the application.
B A submission of patents by a member of the public must be made prior to the mailing of a Notice of Allowance.
C A submission of patents by a member of the public must be made within 2 months of the date of publication of the application or prior to the mailing of a Notice of Allowance, whichever is later.
D A submission of patents by a member of the public must be made within 2 months of the date of publication of the application or prior to the mailing of a Notice of Allowance, whichever is earlier.
E Any submission not filed within the period set forth in the patent rules will be accepted provided it is accompanied by the processing fee set forth in 37 CFR 1.17(i).
Related MPEP Chapter(s):
MPEP 600 - Parts, Form, and Content of Application
Answer Reasoning:ANSWER: (D) is correct. 37 C.F.R. §1.99(e). (D) is correct because 37 C.F.R. § 1.99(e) provides, “A submission under this section must be filed within two months from the date of publication of the application (§ 1.215(a)) or prior to the mailing of a notice of allowance (§ 1.311), whichever is earlier.” Therefore, answer (D) is correct and answers (A), (B), and (C) are incorrect. (E) is wrong because 37 C.F.R. § 1.99(e) recites, “A submission by a member of the public to a pending published application that does not comply with the requirements of this section will be returned or discarded.”
