April 03 AM Exam Flashcards
1
Q
- In accordance with the USPTO rules and the procedures set forth in the MPEP, which of the following statements is most correct?
A The same evidence sufficient to establish a constructive reduction to practice is necessarily also sufficient to establish actual reduction to practice.
B Proof of constructive reduction to practice does not require sufficient disclosure to satisfy the “how to use” and “how to make” requirements of 35 USC 112, first paragraph.
C A process is reduced to actual practice when it is successfully performed.
D The diligence of 35 USC 102(g) requires an inventor to drop all other work and concentrate on the particular invention.
E The diligence of 35 USC 102(g) does not impose on a registered practitioner any need for diligence in preparing and filing a patent application inasmuch as such the practitioner’s acts do not inure to the benefit of the inventor.
A
Correct Answer(s): C Related MPEP Chapter(s): MPEP 2100 - Patentability Answer Reasoning:ANSWER: (C) is the most correct. Corona v. Dovan 273 U.S. 692, 1928 CD 252 (1928); MPEP § 2138.05 under the heading "Requirements To Establish Actual Reduction To Practice." (A) is incorrect. MPEP § 2138.05, under the heading "Requirements To Establish Actual Reduction To Practice." The same evidence sufficient to establish a constructive reduction to practice is not necessarily sufficient to establish actual reduction to practice, which requires a showing of the invention in a physical or tangible form containing every element of the count. Wetmore v. Quick, 536 F.2d 937, 942 190 USPQ 223 227 (CCPA 1976). (B) is incorrect. MPEP § 2138.05, under the heading "Constructive Reduction To Practice Requires Compliance With 35 U.S.C. 112, First Paragraph." Kawai v. Metlesics, 489 F.2d 880, 886, 178 USPQ 158, 163 (CCPA 1973). (D) is incorrect. Keizer v. Bradley, 270 F.2d 396, 397, 123 USPQ 215, 216 (CCPA 1959) (the diligence of 35 U.S.C. § 102(g) does not require "an inventor or his attorney to drop all other work and concentrate on the particular invention involved"); MPEP § 2138.06. (E) is incorrect. The diligence of a practitioner in preparing and filing an application inures to the benefit of the inventor. See MPEP § 2138.06, under the heading "Diligence Required In Preparing And Filing Patent Application." Haskell v. Coleburne, 671 F.2d 1362, 213 USPQ 192,195 (CCPA 1982) (six days to execute and file application was acceptable).
2
Q
- A registered practitioner filed in the USPTO a client’s utility patent application on December 30, 2002. The application was filed with a request for nonpublication, certifying that the invention disclosed in the U.S. application has not and will not be the subject of an application in another country, or under a multilateral international agreement, that requires eighteen month publication. Subsequently, the client files an application in Japan on the invention and some recent improvements to the invention. The improvements are not disclosed or supported in the utility application. Japan is a country that requires eighteen month publication. Two months after filing the application in Japan, and before filing any other papers in the USPTO, the client remembers that a nonpublication request was filed and informs the practitioner about the application that was filed in Japan. Which of the following courses of action is in accordance with the USPTO rules and the procedures set forth in the MPEP?
A The application is abandoned because the practitioner did not rescind the nonpublication request and provide notice of foreign filing within 45 days of having filed the application in Japan. The applicant must now file a petition and fee to revive under 37 CFR 1.137(b).
B The application is abandoned because the applicant did not rescind the nonpublication request before filing the application in Japan. The applicant must now file a petition and fee to revive under 37 CFR 1.137(b).
C The applicant should file an amendment to the specification of the U.S. application, adding the recent improvements to the disclosure in the specification.
D The application is abandoned because the applicant did not rescind the nonpublication request by notifying the Office under 37 CFR 1.213(c) within the appropriate time. The applicant must now file a petition and fee to revive under 37 CFR 1.137(b).
E The applicant could today notify the USPTO of the foreign filing. It is not necessary to file a petition and fee to revive for the application to continue to be examined in the USPTO.
A
Correct Answer(s):
A
Related MPEP Chapter(s):
MPEP 900 - Prior Art, Classification, and Search
Answer Reasoning:ANSWER: (A) and (D) are accepted as the correct answers. Regarding answer (A), see 35 U.S.C. § 122(b)(2)(B)(iii); 37 CFR § 1.213; MPEP § 901.03 for information on nonpublication requests. See 37 CFR § 1.137(f); MPEP § 711.03(c), under the heading “3. Abandonment for Failure to Notify the Office of a Foreign Filing After Submission of a Non-Publication Request.” (D) was also accepted because the statement characterizes the status of the application as being abandoned, though the application has not necessarily attained abandoned status. The course of action postulated in (D) is a proper reply if the application was abandoned. Accordingly, (D) was accepted as a correct answer under these circumstances. (B) is incorrect. The notice of foreign filing can be filed as late as 45 days after the foreign filing before the U.S. application becomes abandoned. (C) is incorrect. See MPEP § 608.04(a). The improvements would constitute new matter and new matter cannot be added to the disclosure of an application after the filing date of the application. (E) is not correct. The applicant was required to provide notice of foreign filing within 45 days of filing in Japan, and two months have passed. As a result, a petition to revive under 37 CFR § 1.137(b) is required for examination to continue. Also see 37 CFR § 1.137(f).
3
Q
- Registered practitioner Rick drafted a patent application for inventor Sam. The application was filed in the USPTO on May 15, 2000, with a power of attorney appointing Rick. On March 15, 2001, Sam filed a revocation of the power of attorney to Rick, and a new power of attorney appointing registered practitioner Dave. In a non-final Office action dated September 12, 2001, the examiner included a requirement for information, requiring Dave to submit a copy of any non-patent literature, published application, or patent that was used to draft the application. Which of the following, if timely submitted by Dave in reply to the requirement for information, will be accepted as a complete reply to the requirement for information?
A A statement by Dave that the information required to be submitted is unknown and is not readily available to Dave.
B A statement by Dave that the requirement for information is improper because it was included in a non-final Office action.
C A statement by Dave that the requirement for information is improper because Dave is not an individual identified under 37 CFR 1.56(c).
D A statement by Dave that the requirement for information is improper because information used to draft a patent application may not be required unless the examiner identifies the existence of a relevant database known by Sam that could be searched for a particular aspect of the invention.
E None of the above.
A
Correct Answer(s): A Related MPEP Chapter(s): MPEP 700 - Examination of Applications Answer Reasoning:ANSWER: (A) is the correct answer. See 37 CFR § 1.105(a)(3); MPEP § 704.12(b). MPEP § 704.12(b) states "A reply stating that the information required to be submitted is unknown and/or is not readily available to the party or parties from which it was requested will generally be sufficient unless, for example, it is clear the applicant did not understand the requirement, or the reply was ambiguous and a more specific answer is possible." The given facts do not state that the applicant did not understand the requirement, or the reply was ambiguous and a more specific answer is possible. (B) is incorrect because the requirement for information may be included in an Office action, or sent separately. 37 CFR § 1.105(b). (C) is incorrect because 37 CFR § 1.56(c) includes each attorney or agent who prepares or prosecutes the application. 37 CFR § 1.56(c)(2). (D) is incorrect because information used to draft a patent application may be required and there is no support for (D) in 37 CFR § 1.105. (E) is incorrect because (A) is correct.
4
Q
- In accordance with the USPTO rules and the procedures set forth in the MPEP, which of the following presents a Markush group in accordance with proper PTO practice and procedure?
A R is selected from the group consisting of A, B, C, or D.
B R is selected from the group consisting of A, B, C, and D.
C R is selected from the group comprising A, B, C, and D.
D R is selected from the group comprising A, B, C or D.
E R is A, B, C, and D.
A
Correct Answer(s): B Related MPEP Chapter(s): MPEP 2100 - Patentability Answer Reasoning:ANSWER: (B) is the most correct answer. See MPEP § 2173.05(h). A Markush group is an acceptable form of alternative expression provided the introductory phrase "consisting of," and the conjunctive "and" are used. (A) and (D) are incorrect because the conjunctive "or" is used. (C) and (D) are incorrect because the introductory phrase "comprising" is used. (E) is incorrect because R must simultaneous be A, B, C, and D, as opposed to being a single member of the group, i.e., no language provides for the selection of one of the members of the group of A, B, C, and D. MPEP § 2173.05(h).
5
Q
- In accordance with the USPTO rules and the procedures set forth in the MPEP, which of the following may not be filed by facsimile transmission?
A A request for continued examination under 37 CFR 1.114 along with a submission.
B A continued prosecution application under 37 CFR 1.53(d).
C An amendment in reply to a non-final Office action.
D The filing of a provisional patent application specification and drawing for the purpose of obtaining an application filing date.
E (B) and (D).
A
Correct Answer(s):
D
Related MPEP Chapter(s):
MPEP 500 - Receipt and Handling of Mail and Papers
Answer Reasoning:ANSWER: (D) is the most correct answer. 37 CFR § 1.6(d)(3); MPEP § 502.01. MPEP § 501.01, under the heading “Correspondence Relative To Patents And Patent Applications Where Filing By Facsimile Transmission Is Not Permitted,” identifies among the correspondence not permitted to be filed by facsimile transmission “(B) A national patent application specification and drawing (provisional or nonprovisional) or other correspondence for the purpose of obtaining an application filing date, other than a continued prosecution application filed under 37 CFR 1.53(d) “ (A), (B) and (C) are incorrect. See 37 CFR § 1.6(d)(3); MPEP §§ 201.06(d), 502.01, 706.07(h) and 714. A request for continued examination (RCE) under 37 CFR § 1.114, which is not a new application, a continued prosecution application (CPA) under 37 CFR § 1.53(d) and an amendment in reply to a non-final Office action may be filed by facsimile transmission.
6
Q
- According to the USPTO rules and the procedures set forth in the MPEP, in which of the following situations would the finality of an Office action rejection be improper?
I. The final Office action rejection is in a first Office action in a substitute application that contains material which was presented in the earlier application after final rejection but was denied entry because the issue of new matter was raised.
II. The final Office action rejection is in a first Office action in a continuing application, all claims are drawn to the same invention claimed in the earlier application, and the claims would have been properly finally rejected on the grounds and art of record in the next Office action if they had been entered in the earlier application.
III. The final Office action rejection is in a first Office action in a continuation-in-part application where at least one claim includes subject matter not present in the earlier application. A I B II C III D I and III E II and III
A
Correct Answer(s): D Related MPEP Chapter(s): MPEP 700 - Examination of Applications Answer Reasoning:ANSWER: (D) is the correct answer. MPEP § 706.07(b). In both I and III the finality is improper. MPEP § 706.07(b). Therefore (A) and (C) are incorrect. In II the finality is proper. MPEP § 706.07(b). Therefore (B) and (E) are incorrect.
7
Q
- In accordance with the USPTO rules and the procedures set forth in the MPEP, which of the following is true?
A In rejecting claims the examiner may rely upon facts within his own personal knowledge, unless the examiner qualifies as an expert within the art, in which case he is precluded from doing so, since only evidence of one of ordinary skill in the art is permitted.
B If an applicant desires to claim subject matter in a reissue which was the same subject matter waived in the statutory invention registration of another, the applicant is precluded by the waiver from doing so, even though the applicant was not named in the statutory invention registration.
C If an applicant, knowing that the subject matter claimed in his patent application was on sale in Michigan and sales activity is a statutory bar under pre-AIA 35 USC 102(b) to the claims in his application, nevertheless withholds the information from the patent examiner examining the application, and obtains a patent including the claims in question, the applicant may remove any issue of inequitable conduct by filing a request for reexamination based on the sales activity.
D An applicant for a patent may overcome a statutory bar under pre-AIA 35 USC 102(b) based on a patent claiming the same invention by acquiring the rights to the patent pursuant to an assignment and then asserting the assignee’s right to determine priority of invention pursuant to 37 CFR 1.602.
E None of the above.
A
Correct Answer(s): E Related MPEP Chapter(s): MPEP 700 - Examination of Applications Answer Reasoning:ANSWER: (E) is the most correct answer. (A) is incorrect since facts within the knowledge of the examiner may be used whether or not the examiner qualifies as an expert. 37 CFR § 1.104(c)(3). (B) is incorrect since the waiver is only effective against those named in the statutory registration. (C) is incorrect since on sale activities is not proper subject matter for reexamination, and inequitable conduct cannot be resolved or absolved by reexamination. (D) is not correct since a statutory bar cannot be overcome by acquiring the patent.
8
Q
- Following a restriction requirement and election, a registered practitioner received a first Office action dated Friday, December 1, 2000. The primary examiner indicated that claims 1 to 10 were rejected and claims 11 to 20 were withdrawn from consideration. The first Office action set a 3 month shortened statutory period for reply. On February 28, 2001, the practitioner properly filed an express abandonment in the application and at the same time filed a request for continuing application. In a non-final Office action dated May 1, 2001 in the continuing application, the examiner indicated in that claims 1 to 20, all of the pending claims, are rejected. The practitioner filed a notice of appeal on Monday, July 2, 2001. In accordance with USPTO rules and procedures set forth in the MPEP, which of the following most accurately describes the propriety of the practitioner’s reply to the May 1st Office action?
A The notice of appeal is not a proper response because the claims of the continuing application have not been finally rejected.
B The notice of appeal is not a proper reply because all of the claims in the continuing application have not been twice rejected.
C The filing of a notice of appeal is not a proper reply because not all the claims in the continuing application have been twice rejected.
D A notice of appeal is never a proper response to a non-final rejection.
E The reply is proper.
A
Correct Answer(s): E Related MPEP Chapter(s): MPEP 1200 - Appeal Answer Reasoning:ANSWER: (E) is the most correct answer. MPEP § 1205, under the heading "Appeal By Patent Applicant," states that "[a] notice of appeal may be filed after any of the claims has been twice rejected, regardless of whether the claim(s) has/have been finally rejected. The limitation of 'twice or finally...rejected' does not have to be related to a particular application. For example, if any claim was rejected in a parent application, and the claim is again rejected in a continuing application, then applicant will be entitled to file an appeal in the continuing application, even if the claim was rejected only once in the continuing application." (A), (B), (C), and (D) are not the most correct answer because a notice of appeal can be filed in a continuing application where at least one of the rejected claims was twice rejected, and one of the rejections may occur in the parent application.
9
Q
- Which of the following is not in accordance with the provisions of the USPTO rules and the procedures set forth in the MPEP?
A Where joint inventors are named, the examiner should not inquire of the patent applicant concerning the inventors and the invention dates for the subject matter of the various claims until it becomes necessary to do so in order to properly examine the application.
B Under 35 USC 119(a), the foreign priority benefit may be claimed to any foreign application that names a U.S. inventor as long as the U.S. named inventor was the inventor of the foreign application invention and 35 USC 119(a)-(d) requirements are met.
C Where two or more foreign applications are combined in a single U.S. application, to take advantage of the changes to 35 USC 103 or 35 USC 116, the U.S. application may claim benefit under 35 USC 119(a) to each of the foreign applications provided all the requirements of 35 USC 119(a)-(d) are met.
D One of the conditions for benefit under 35 USC 119(a) is that the foreign application must be for the same or a nonobvious improvement of the invention described in the United States application.
E If a foreign application for which priority is being claimed under 35 USC 119 is filed in a country which does not afford similar privileges in the case of applications filed in the United States or to citizens of the United States and the foreign country is not a WTO member country, any claim for the foreign priority thereto by a U.S. application will not be effective.
A
Correct Answer(s):
D
Related MPEP Chapter(s):
MPEP 600 - Parts, Form, and Content of Application
Answer Reasoning:ANSWER: (D) is the best answer as the inventions must be the same in the foreign and U.S. applications. 35 U.S.C. § 119(a). As to (A) through (C), see MPEP § 605.07. As to (E), see 35 U.S.C. § 119, which provides that the previously filed application must have been filed in a country that affords similar privileges in the case of applications filed in the United States or to citizens of the United States or in a WTO member country.
10
Q
- A registered practitioner filed a patent application naming Sam as the sole inventor without an executed declaration under 37 CFR 1.63. The USPTO mailed a Notice to File Missing Parts dated January 3, 2000. The Notice to File Missing Parts set a two-month period for reply. Which of the following statements is in accordance with proper USPTO rules and the procedure set forth in the MPEP?
I. Submit an appropriate reply to the Notice to File Missing Parts by filing, on August 3, 2000, a declaration under 37 CFR 1.63 executed by Sam, accompanied by a petition under 37 CFR 1.136(a) for an extension of five months, and the fee set forth in 37 CFR 1.17(a).
II. In no situation can any extension requested by the practitioner carry the date on which a reply is due to the Notice to File Missing Parts beyond Monday, July 3, 2000.
III. An appropriate reply by the practitioner to the Notice to File Missing Parts is to file, on August 3, 2000 a declaration under 37 CFR 1.63 executed by Sam, accompanied by a petition under 37 CFR 1.136(b). A I B II C III D I and III E None of the above.
A
Correct Answer(s): A Related MPEP Chapter(s): MPEP 700 - Examination of Applications Answer Reasoning:ANSWER: (A) is the most correct answer. MPEP § 710.02(d), last paragraph, and 37 CFR § 1.136(a). (B) is incorrect because a Notice to File Missing Parts of an Application is not identified on the Notice as a statutory period subject to 35 U.S.C. § 133. (C) and (D) are incorrect because the provisions of 37 CFR § 1.136(a) are available. (E) is incorrect because (A) is correct.
11
Q
- In accordance with the USPTO rules and procedures set forth in the MPEP, a Certificate of Correction effectuates correction of an issued patent where:
A Through error and without deceptive intent, there is a failure to make reference to a prior copending application according to 37 CFR 1.78, and the failure does not otherwise affect what is claimed, but the prior copending application is referenced in the record of the application, and a petition under 37 CFR 1.324 and appropriate fees were filed.
B Through error and without deceptive intent, a preferred embodiment that materially affects the scope of the patent was omitted in the original disclosure in the filed application, and a petition under 37 CFR 1.324 and appropriate fees were filed.
C Through error and without deceptive intent, a prior copending application is incorrectly referenced in the application, the incorrect reference does not otherwise affect the claimed subject matter, and the prior copending application is correctly identified elsewhere in the application file, and a petition under 37 CFR 1.324 and appropriate fees were filed.
D Through error and without deceptive intent, an inventor’s name is omitted from an issued patent, a petition under 37 CFR 1.324 and appropriate fees were filed, and the petition was granted.
E (A), (C) and (D).
A
Correct Answer(s): E Related MPEP Chapter(s): MPEP 1400 - Correction of Patents Answer Reasoning:ANSWER: (E) is the most correct answer. (A) and (C) can be corrected by a certificate of Correction. MPEP § 1481. (D) can be corrected by a Certificate of Correction. 37 CFR § 1.324; MPEP § 1481. (B) is incorrect. Such a mistake, which affects the scope and meaning of the claims in a patent, is not considered to be of the "minor" character required for issuance of a Certificate of Correction. MPEP § 1481.
12
Q
- The Potter patent application was filed on June 6, 2002, claiming subject matter invented by Potter. The Potter application properly claims priority to a German application filed on June 6, 2001. A first Office action contains a rejection of all the claims of the application under 35 USC 103(a) based on a U.S. patent application publication to Smith in view of a U.S. patent to Jones. A registered practitioner prosecuting the Potter application ascertains that the relevant subject matter in Smith’s published application and Potter’s claimed invention were, at the time Potter’s invention was made, owned by ABC Company or subject to an obligation of assignment to ABC Company. The practitioner also observes that the Smith patent application was filed on April 10, 2001 and that the patent application was published on December 5, 2002. Smith and Potter do not claim the same patentable invention. To overcome the rejection without amending the claims, which of the following timely replies would comply with the USPTO rules and the procedures set forth in the MPEP to be an effective reply for overcoming the rejection?
A A reply that only contains arguments that Smith fails to teach all the elements in the only independent claim, and which specifically points out the claimed element that Smith lacks.
B A reply that properly states that the invention of the Potter application and the Smith application were commonly owned by ABC Company at the time of the invention of the Potter application.
C A reply that consists of an affidavit or declaration under 37 CFR 1.132 stating that the affiant has never seen the invention in the Potter application before.
D A reply that consists of an affidavit or declaration under 37 CFR 1.131 properly proving invention of the claimed subject matter of Potter application only prior to June 6, 2001.
E A reply that consists of a proper terminal disclaimer and affidavit or declaration under 37 CFR 1.130.
A
Correct Answer(s): B Related MPEP Chapter(s): MPEP 700 - Examination of Applications Answer Reasoning:ANSWER: (B) is the most correct answer. See 35 U.S.C. § 103(a); MPEP §§ 706.02(l)(1) and 2145. The prior art exception in 35 U.S.C. § 103(c) is applicable because the Smith reference is only prior art under 35 U.S.C. § 102(e), (f), or (g), was applied in a rejection under 35 U.S.C. § 103(a), and was commonly owned at the time Potter made the invention claimed by Potter. See MPEP § 706.02(l)(1). Answer (A) is not a correct answer in that one cannot show nonobviousness by attacking the references individually where the rejections are based on a combination of references. See MPEP § 2145. Answer (C) is not a correct answer. An affirmation that the affiant has never seen the invention before is not relevant to the issue of nonobviousness of the claimed subject matter. See MPEP 716. Answer (D) is not a correct answer. Invention must be proved prior to the effective filing date of Smith, which is April 10, 2001. See MPEP § 715. Answer (E) is not a correct answer. A terminal disclaimer and affidavit or declaration under 37 CFR § 1.130 are not proper because the Potter application and the Smith reference are not claiming the same patentable invention. See MPEP § 706.02(k).
13
Q
- In accordance with the USPTO rules and the procedures set forth in the MPEP, impermissible recapture in an application exists ________________________
A if the limitation now being added in the present reissue was originally presented/argued/stated in the original application to make the claims allowable over a rejection or objection made in the original application.
B if the limitation now being omitted or broadened in the present continuation was originally presented/argued/stated in a parent application to make the claims allowable over a rejection or objection made in the parent application.
C if the limitation now being omitted or broadened in the present reissue was originally presented/argued/stated in the original application to make the claims allowable over a rejection or objection made in the original application.
D if the limitation now being omitted or broadened in the present reissue was being broadened for the first time more than two years after the issuance of the original patent.
E None of the above.
A
Correct Answer(s): C Related MPEP Chapter(s): MPEP 1400 - Correction of Patents Answer Reasoning:ANSWER: (C) is the most correct. See MPEP § 1412.02, Recapture. As to (A), recapture occurs when the claim is broadened. Adding a limitation would narrow the claim. As to (B), recapture does not apply to continuations. As to (D), the two-year date relates to broadening reissue applications, not to the issue of recapture. 35 U.S.C. 251 prescribes a 2-year limit for filing applications for broadening reissues: "No reissue patent shall be granted enlarging the scope of the original patent unless applied for within two years from the grant of the original patent." (E) is incorrect because a (C) is correct.
14
Q
- With the exception that under 37 CFR 1.53 an application for patent may be assigned a filing date without payment of the basic filing fee, USPTO fees and charges payable to the USPTO requesting any action by the Office for which a fee or charge is payable, are required to be paid, in accordance with the MPEP and USPTO rules and procedure:
A in advance, that is, at the time of requesting any action.
B upon written notice from the USPTO.
C within 20 days of requesting any action.
D by the end of the fiscal year.
E there are no fees.
A
Correct Answer(s):
A
Related MPEP Chapter(s):
MPEP 500 - Receipt and Handling of Mail and Papers
Answer Reasoning:ANSWER: (A) is the most correct answer. See 37 CFR § 1.22(a); MPEP § 509. Answers (B) through (E) have no factual basis or foundation in the MPEP.
15
Q
- In which of the following final Office action rejections is the finality of the Office action rejection in accordance with the USPTO rules and the procedures set forth in the MPEP?
A The final Office action rejection is in a second Office action and uses newly cited art under pre-AIA 35 USC 102(b) to reject unamended claims that were objected to but not rejected in a first Office action.
B The final Office action rejection is in a first Office action in a continuation-in-part application where at least one claim includes subject matter not present in the parent application.
C The final Office action rejection is in a first Office action in a continuing application, all claims are drawn to the same invention claimed in the parent application, and the claims would have been properly finally rejected on the grounds and art of record in the next Office action if they had been entered in the parent application.
D The final Office action rejection is in a first Office action in a substitute application that contains material that was presented after final rejection in an earlier application but was denied entry because the issue of new matter was raised.
E None of the above.
A
Correct Answer(s): C Related MPEP Chapter(s): MPEP 700 - Examination of Applications Answer Reasoning:ANSWER: (C) is the most correct answer. See MPEP § 706.07(b). (A) is incorrect because a final rejection is not proper on a second action if it includes a rejection on newly cited art other than information submitted in an information disclosure statement under 37 CFR 1.97(c). MPEP § 706.07(a). (B) is incorrect because it is improper to make final a first Office action in a continuation-in-part application where any claim includes subject matter not present in the parent application. MPEP § 706.07(b). (D) is incorrect because it is improper to make final a first Office action in a substitute application where that application contains material, which was presented in the earlier application after final rejection, or closing of prosecution but was denied entry because the issue of new matter was raised. MPEP § 706.07(b). (E) is incorrect because (C) is correct.
16
Q
- In accordance with the USPTO rules and the procedures set forth in the MPEP, for a nonprovisional application to receive a filing date in the USPTO under 37 CFR 1.53(b), all of the following must be filed except:
A The basic filing fee required by 37 CFR 1.16(a).
B A specification as prescribed by the first paragraph of 35 USC 112.
C A description pursuant to 37 CFR 1.71.
D At least one claim pursuant to 37 CFR 1.75.
E Any drawing required by 37 CFR 1.81(a).
A
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. See 35 U.S.C. § 111; 37 CFR § 1.53; MPEP § 601.01. As provided in MPEP § 601.01(a), the filing fee for an application filed under 37 CFR 1.53(b) can be submitted after the filing date. Answers (B), (C), (D) and (E) are incorrect. See 37 CFR § 53(b); MPEP § 601.01. 37 CFR § 1.53(b) provides that a filing date is granted on the date on which a specification as prescribed by 35 U.S.C. § 112 containing a description pursuant to 37 CFR § 1.71 and at least one claim pursuant to 37 CFR § 1.75, and any drawing required by 37 CFR § 1.81(a) are filed in the Office. Thus, (B), (C), (D) and (E) are needed to obtain a filing date.
17
Q
- In accordance with the USPTO rules and the procedures set forth in the MPEP, which of the following is true?
A A claim to a process omitting a step in a disclosed process, where the step is disclosed in the specification to be essential to the invention, may not be properly rejected under 35 USC 112, first paragraph, for lack of enablement where the specification provides an enabling disclosure only for the process which includes the essential step.
B Failure to disclose the best mode must rise to the level of active concealment or grossly inequitable conduct in order to support a rejection under 35 USC 112, first paragraph.
C A claim failing to interrelate essential elements of the invention, as defined by the applicant in the specification, where the interrelation is critical to the invention may be properly rejected under 35 USC 112, second paragraph, for failure to properly point out and distinctly claim the invention.
D Where the best mode contemplated by the inventor at the time of filing the application is not disclosed, a proposed amendment adding a specific mode of practicing the invention would not be new matter.
E The best mode requirement is the same as the enablement requirement of the first paragraph of 35 USC 112.
A
Correct Answer(s): C Related MPEP Chapter(s): MPEP 2100 - Patentability Answer Reasoning:ANSWER: (C) is the most correct answer. As stated in MPEP § 2172.01, "a claim which fails to interrelate essential elements of the invention as defined by applicant(s) in the specification may be rejected under 35 U.S.C. 112, second paragraph, for failure to point out and distinctly claim the invention. See In re Venezia, 530 F.2d 956, 189 USPQ 149 (CCPA 1976); In re Collier, 397 F.2d 1003, 158 USPQ 266 (CCPA 1968)." (A) is incorrect. As stated in MPEP § 2172.01, "A claim which omits matter disclosed to be essential to the invention as described in the specification or in other statements of record may be rejected under 35 U.S.C. § 112, first paragraph, as not enabling. In re Mayhew, 527 F.2d 1229, 188 USPQ 356 (CCPA 1976)"; MPEP § 2164.08(c). (B) is incorrect. As stated in MPEP § 2165, "Failure to disclose the best mode need not rise to the level of active concealment or grossly inequitable conduct in order to support a rejection or invalidate a patent. Where an inventor knows of a specific material that will make possible the successful reproduction of the effects claimed by the patent, but does not disclose it, speaking instead in terms of broad categories, the best mode requirement has not been satisfied. Union Carbide Corp. v. Borg - Warner, 550 F.2d 555, 193 USPQ 1 (6th Cir. 1977)." (D) is incorrect. MPEP § 2165.01, under the heading "Defect In Best Mode Cannot Be Cured By New Matter," indicates that if there is no disclosure of the best mode contemplated by the inventor at the time the application is filed, such a defect cannot be cured by submitting an amendment seeking to put into the specification something required to be there when the patent application was originally filed. In re Hay, 534 F.2d 917, 189 USPQ 790 (CCPA 1976). Any proposed amendment of this type should be treated as new matter. MPEP § 2165.01. (E) is incorrect. As stated in MPEP § 2165.02, "The best mode requirement is a separate and distinct requirement from the enablement requirement of the first paragraph of 35 U.S.C. § 112. In re Newton, 414 F.2d 1400, 163 USPQ 34 (CCPA 1969).
18
Q
- In accordance with the USPTO rules and the procedures set forth in the MPEP, which of the following statements is true?
A Where sole patent applicant Able claims his invention in a Jepson-type claim, and the specification discloses that the subject matter of the preamble was invented by Baker before applicant’s invention, the preamble is properly treated as prior art.
B Where the sole patent applicant Able claims his invention in a Jepson-type claim, and the specification makes it clear that the claimed invention is an improvement on Able’s own prior invention, which Able discovered less than one year before the filing date of the application, the preamble in the claim is properly treated as prior art.
C Where the sole patent applicant Able claims his invention in a Jepson-type claim, and the specification makes it clear that the claimed invention is an improvement on an invention that Able discovered and publicly used and commercially sold by Able in Texas for several years before the filing date of the application, the preamble in the claim cannot properly be treated as prior art.
D Where the sole applicant, Baker, states that something is prior art, the statement can be taken as being admitted prior art only if corroborated by objective evidence proffered by Baker, or found by the examiner.
E No claim, including a Jepson-type claim, carries with it an implied admission that the elements in the preamble are old in the art.
A
Correct Answer(s): A Related MPEP Chapter(s): MPEP 2100 - Patentability Answer Reasoning:ANSWER: (A) is true, and thus the most correct answer. As stated in MPEP § 2129, and see In re Fout, 675 F.2d 297, 300-01, 213 USPQ 532,535-36 (CCPA 1982). (B) is not true, and thus not correct. MPEP § 2129, and see Reading & Bates Construction Co. v. Baker Energy Resources Corp., 748 F.2d 645, 650, 223 USPQ 1168, 1172 (Fed. Cir. 1984). (C) is not true, and thus not correct because the admitted foundational discovery is a statutory bar. See the reasons discussed for answer (B). (D) is not true, and is thus incorrect. MPEP § 2129, and see In re Nomiya, 184 USPQ 607, 610 (CCPA 1975) (figures in the application labeled "prior art" held to be an admission that what was pictured was prior art relative to applicant's invention.). (E) is not true. MPEP § 2129; and see In re Ehrreich, 590 F.2d 902, 909 - 910, 200 USPQ 504, 510 (CCPA 1979); Sjolund v. Musland, 847 F.2d 1573, 1577, 6 USPQ2d 2020, 2023 (Fed. Cir. 1988); Pentec, Inc. v. Graphic Controls Corp., 776 F.2d 309, 315, 227 USPQ 766, 770 (Fed. Cir. 1985); and Reading & Bates Construction Co. v. Baker Energy Resources Corp., 748 F.2d 645, 650, 223 USPQ 1168, 1172 (Fed. Cir. 1984).
19
Q
- Which of the following requests by the registered practitioner of record for an interview with an examiner concerning an application will be granted in accordance with proper USPTO rules and procedure?
A A request for an interview in a substitute application prior to the first Office action, for the examiner and attorney of record to meet in the practitioner’s office without the authority of the Commissioner.
B A request for an interview in a continued prosecution application prior to the first Office action, to be held in the examiner’s office.
C A request for an interview in a non-continuing and non-substitute application, prior to the first Office action to be held in the examiner’s office.
D All of the above.
E None of the above.
A
Correct Answer(s): B Related MPEP Chapter(s): MPEP 700 - Examination of Applications Answer Reasoning:ANSWER: (B) is the most correct answer. 37 CFR § 1.133; MPEP § 713.02. As stated in MPEP § 713.02, "[a] request for an interview prior to the first Office action is ordinarily granted in continuing or substitute applications. A request for an interview in all other applications before the first action is untimely and will not be acknowledged if written, or granted if oral. 37 CFR 1.133(a)." (A) is incorrect because interview will not be permitted off Office premises without the authority of the Commissioner. 37 CFR § 1.133(a)(1). (C) is incorrect because an interview for the discussion of the patentability of a pending application will not occur before the first Office action, unless the application is a continuing or substitute application. 37 CFR § 1.133(a)(2). (D) is incorrect because (A) and (C) are incorrect. (E) is incorrect because (B) is correct.
20
Q
- During his summer vacation to the mountains, Eric discovered and isolated a microorganism which secretes a novel compound. Eric purified and tested the compound in tumor-containing control mice and found that the tumors disappeared after one week; whereas tumor-containing mice which did not receive the compound died. Eric was very excited about his results and so he did a few additional experiments to characterize the microorganism and the compound which it was secreting. Eric determined that the microorganism was an S. spectaculus, and that the secreted compound was so unlike any other compounds that Eric named it spectaculysem. Eric told his friend Sam about his discovery, who urged him to apply for a U.S. patent on the microorganism and the secreted product. Eric did so, but to his amazement, a primary examiner rejected all the claims to his inventions. Which of the following, if made by the examiner, would be a proper rejection in accordance with USPTO rules and procedures set forth in the MPEP?
A The examiner’s rejection of the claims to the microorganism under 35 USC 101 as being unpatentable because microorganisms are living matter and living matter is non-statutory subject matter.
B The examiner’s rejection of the claims to the compound under 35 USC 101 as having no credible utility because Eric has only tested the compound in mice and curing mice of cancer has no “real world” value. The examiner also states that Eric must demonstrate that the compound works in humans in order to show that it has a patentable utility.
C The examiner’s rejection of the claims to the compound under 35 USC 103, stating that it would have been obvious to one of ordinary skill in the art to test the by product of a newly-discovered microorganism for therapeutic uses.
D The examiner’s rejection of the claims to the microorganism under 35 USC 102/103 over a reference which teaches an S. spectaculus microorganism stating that Eric’s claimed microorganism is the same as, or substantially the same as, the microorganism descr
E None of the above.
A
Correct Answer(s): D Related MPEP Chapter(s): MPEP 2100 - Patentability Answer Reasoning:ANSWER: (D) is the most correct answer. See MPEP §§ 2112.01 and 2131. MPEP § 2112.01, under the heading "Product and Apparatus Claims - When the Structure Recited in the Reference is Substantially Identical to that of the Claims, Claimed Properties or Functions are Presumed to be Inherent" states that "[w]here the claimed and prior art products are identical or substantially identical in structure or composition, or are produced by identical or substantially identical processes, a prima facie case of either anticipation or obviousness has been established. In re Best, 562 F.2d 1252, 1255, 195 USPQ 430, 433 (CCPA 1977)." Here, the claimed microorganism and the prior art microorganism appear to be the identical. (A) is an incorrect choice. MPEP § 2105, under the heading "Patentable Subject Matter - Living Subject Matter," states "...the question of whether or not an invention embraces living matter is irrelevant to the issue of patentability." The Supreme Court has held that biological materials such as microorganisms, and non-human animals, is patentable subject matter, provided it is made by man. Here, Eric's isolation and purification the microorganism from its natural state (environment) makes it a product of human ingenuity, as opposed to a product of nature. Diamond v. Chakrabarty, 447 U.S. 303, 206 USPQ 193 (1980). (B) is an incorrect choice. MPEP § 2107.01, under the heading "III. Therapeutic or Pharmacological Utility," states that the "courts have found utility for therapeutic invention despite the fact that an applicant is at a very early stage in the development of a pharmaceutical product or therapeutic regimen based on a claimed pharmacological or bioactive compound or composition." See, Cross v. Iizuka, 753 F.2d 1040, 1051, 224 USPQ 739, 747-48 (Fed. Cir. 1985). See also, In re Brana, 51 F.3d 1560, 34 USPQ2d 1436 (Fed. Cir. 1995). Citing Brana, MPEP § 2107.01 states, "Accordingly, Office personnel should not construe 35 USC 101, under the logic of 'practical' utility or otherwise, to require that an applicant demonstrate that a therapeutic agent based on a claimed invention is a safe or fully effective drug for humans." See also, MPEP § 2107.03, under the heading "Special Considerations for Asserted Therapeutic or Pharmacological Utilities, I. A Reasonable Correlation Between the Evidence and the Asserted Utility is Sufficient," which states "As a general matter, evidence of pharmacological or other biological activity of a compound will be relevant to an asserted therapeutic use if there is a reasonable correlation between the activity in question and the asserted utility. Cross v. Iizuka, 753 F.2d 1040, 224 USPQ 739 (Fed. Cir. 1985); In re Jolles, 628 F.2d 1322, 206 USPQ 885 (CCPA 1980); Nelson v. Bowler, 626 F.2d 853, 206 F.2d 881 (CCPA 1981). An applicant can establish this reasonable correlation by relying on statistically relevant data documenting the activity of a compound or composition, arguments or reasoning, documentary evidence (e.g., articles in scientific journals), or any combination thereof. The applicant does not have to prove that a correlation exists between a particular activity and an asserted therapeutic use of a compound as a matter of statistical certainty, nor does he or she have to provide actual evidence of success in treating humans where such utility is asserted. Instead, as the courts have repeatedly held, all that is required is a reasonable correlation between the activity and the asserted use." Since mice are routinely used to test anti-cancer drugs for their tumoricidal activity, it is reasonable to assume that the compound, spectaculysem, may be useful as a therapeutic agent. (C) is an incorrect choice. MPEP § 2145, under the subheading "X. Arguing Improper Rationales for Combining References. A. Impermissible Hindsight." If, as acknowledged by the examiner, a novel microorganism has been discovered, then any product which it makes could not have been anticipated by, or obvious over, the prior art. The examiner's rejection is based purely on hindsight derived from his or her reading of the applicant's specification.
