April 03 PM Flashcards
1
Q
- In accordance with the USPTO rules and the procedures of the MPEP, which of the following is true?
A If after the filing of a reissue application no errors in the original patent are found, a reissue patent will be granted on the reissue application noting no change, and the original patent will be returned to the applicant.
B In order to add matter not previously found in the patent, a continuation-in-part reissue application must be filed.
C In a reissue application, additions and deletions to the original patent should be made by underlining and bracketing, respectively, except for changes made in prior Certificates of Correction and disclaimer(s) of claims under 37 CFR 1.321(a).
D A dependent claim may be broadened in a reissue application only in the first two years of the enforceable life of the patent.
E (A), (B), and (C).
A
Correct Answer(s): C Related MPEP Chapter(s): MPEP 1400 - Correction of Patents Answer Reasoning:ANSWER: (C) is the most correct answer. See MPEP § 1411.01. As to (A) see MPEP § 1402. A reissue patent is not granted. As to (B), new matter may not be entered in a reissue. As to (D) see MPEP § 1412.03. Since (A), and (B) are incorrect, (E) is incorrect.
2
Q
- The claims in a patent application having been twice or finally rejected, the applicant files a timely Notice of Appeal on January 2, 2003. In accordance with USPTO rules and procedures set forth in the MPEP, which of the following situations should the USPTO not notify the applicant that the Appeal Brief is defective and allow him an opportunity to correct the deficiency?
A The Appeal Brief is filed on July 10, 2003, without a request for extension of time under 37 CFR 1.136.
B The Appeal Brief is submitted unsigned.
C The Appeal Brief states that the claims do not stand or fall together, and presents argument as to why the claims are separately patentable, but the primary examiner does not agree with the applicant’s argument.
D The Appeal Brief does not state whether the claims stand or fall together, but presents arguments why the claims subject to the same rejection are separately patentable.
E The Appeal Brief does not address one of the grounds of rejection stated by the primary examiner.
A
Correct Answer(s):
C
Related MPEP Chapter(s):
MPEP 1200 - Appeal
Answer Reasoning:ANSWER: (C) is the most correct answer. See MPEP § 1206, specifically the Examiner Note for Form Paragraph 12.69.01 ("This form paragraph should be used only when no supporting reasons are presented in the brief."). If the examiner disagrees with the reasons given, the reason for disagreement should be addressed in the Examiner's Answer. As discussed at MPEP § 1208, in the Examiner Note 2 for Form Paragraph 12.55.01 "If the brief includes a statement that a grouping of claims does not stand or fall together but does not provide reasons, as set forth in 37 CFR 1.192(c)(7), [the examiner is to] notify appellant of the non-compliance using form paragraphs 12.69, 12.69.01 and 12.78." As discussed at MPEP § 1208, in the Examiner Note for Form Paragraph 12.55.02, if the examiner disagrees with appellant's statement in the brief that certain claims do not stand or fall together, the examiner explains in the examiner's answer why the claim grouping listed in the brief is not agreed with and why, if appropriate, e.g., the claims as listed by the appellant are not separately patentable. Answer (A) is incorrect. See MPEP § 1206, Form paragraph 12.17. The Appeal Brief was filed less than seven months after the Notice of Appeal was filed. The applicant should be notified of the deficiency and provided an opportunity to request a five-month extension of time. Answer (B) is incorrect. See MPEP § 1206, Form paragraph 12.12. Answer (D) is incorrect. Where the applicant omits the statement required by 37 CFR § Part 41 yet presents arguments in the argument section of the brief, the applicant should be notified of the noncompliance and given time to correct the deficiency. See 37 CFR § Part 41; and MPEP § 1206, under the heading "Appeal Brief Content," subheading "7. Grouping of Claims," wherein it states, "Where, however, the appellant (A) omits the statement required by 37 CFR Part 41 yet presents arguments in the argument section of the brief...the appellant should be notified of the noncompliance as per 37 CFR Part 41. Ex parte Schier, 21 USPQ2d 1016 (Bd. Pat. App. & Int. 1991); Ex parte Ohsumi, 21 USPQ2d 1020 (Bd. Pat. App. & Int. 1991)." See also MPEP § 1206, under the heading "Review of Brief By Examiner," wherein it states that "if a brief is filed which does not comply with all the requirements of Part 41, the appellant will be notified of the reasons for noncompliance. Appellant will be given the longest of any of the following time periods to correct the defect(s): (A) 1 month or 30 days from the mailing of the notification of non-compliance, whichever is longer; (B) within the time period for reply to the action from which appeal has been taken; or (C) within 2 months from the date of the notice of appeal under 37 CFR 1.191." Answer (E) is incorrect. MPEP § 1206, under the heading "Appeal Brief Content," states "Where an appeal brief fails to address any ground of rejection, appellant shall be notified by the examiner that he or she must correct the defect by filing a brief in compliance with 37 CFR Part 41."
3
Q
- In accordance with USPTO rules and the procedures set forth in the MPEP, an amendment filed with or after a notice of appeal under, but before jurisdiction has passed to the Board of Patent Appeals and Interferences, should be entered by the primary examiner where the amendment:
A requests unofficial consideration by the examiner.
B is less than six pages long.
C removes issues from appeal.
D presents more specific claims, because it is believed that they may have a better chance of being allowable even though the claims do not adopt the examiner’s suggestions.
E introduces new issues, allowing the examiner to rethink his position.
A
Correct Answer(s): C Related MPEP Chapter(s): MPEP 1200 - Appeal Answer Reasoning:ANSWER: (C) is the most correct answer. See 37 CFR § 1.116; MPEP § 1207, first paragraph. Answers (A), (B), and (D) are purely fictional. With respect to answer (E), see MPEP § 1207, first paragraph. Question should reference 37 CFR Part 41.
4
Q
- Evidence that a claim may not comply with the second paragraph of 35 USC 112 occurs in accordance with the USPTO rules and the procedure set forth in the MPEP where:
A Remarks filed by applicant in a reply or brief regarding the scope of the invention differ and do not correspond in scope with the claim.
B There is a lack of agreement between the language in the claims and the language set forth in the specification.
C The scope of the claimed subject matter is narrowed during pendency of the application by deleting the originally much broader claims, and presenting claims to only the preferred embodiment within the originally much broader claims.
D Claims in a continuation application are directed to originally disclosed subject matter (in the parent and continuation applications) which applicants did not regard as part of their invention when the parent application was filed.
E All of the above.
A
Correct Answer(s): A Related MPEP Chapter(s): MPEP 2100 - Patentability Answer Reasoning:ANSWER: (A) is the most correct answer. In accordance with MPEP § 2172, under the heading "II. Evidence To The Contrary," states that evidence that shows a claim does not correspond in scope with that which applicant regards as applicant's invention may be found, for example, in contentions or admissions contained in briefs or remarks filed by applicant. In re Prater, 415 F.2d 1393, 162 USPQ 541 (CCPA 1969). (B) is incorrect. MPEP § 2172, under the heading "II. Evidence To The Contrary," states, "As noted in In re Ehrreich, 590 F.2d 902, 200 USPQ 504 (CCPA 1979) agreement, or lack thereof, between the claims and the specification is properly considered only with respect to 35 U.S.C. 112, first paragraph; it is irrelevant to compliance with the second paragraph of that section." (C) is incorrect. MPEP § 2172, under the heading "III. Shift In Claims Permitted," indicates that the second paragraph of 35 U.S.C. § 112 does not prohibit applicants from changing what they regard as their invention during the pendency of the application. In re Saunders, 444 F.2d 599, 170 USPQ 213 (CCPA 1971) (Applicant was permitted to claim and submit comparative evidence with respect to claimed subject matter which originally was only the preferred embodiment within much broader claims (directed to a method). (D) is incorrect. MPEP § 2172, under the heading "III. Shift In Claims Permitted," indicates that the fact that claims in a continuation application were directed to originally disclosed subject matter which applicants had not regarded as part of their invention when the parent application was filed was held not to prevent the continuation application from receiving benefits of the filing date of the parent application under 35 U.S.C. § 120. In re Brower, 433 F.2d 813, 167 USPQ 684 (CCPA 1970). (E) is incorrect because (B), (C), and (D) are incorrect.
5
Q
- John, unaware of the existence of Jane’s U.S. patent, which issued on Tuesday, July 11, 2000, files a patent application on Friday, January 11, 2001. John’s application and Jane’s patent are not commonly owned. On Thursday, July 11, 2001, in reply to an Office action rejecting all of his claims, John files an amendment canceling all of his claims and adding claims setting forth, for the first time, “substantially the same subject matter” as is claimed in Jane’s patent. The examiner rejects John’s claims on the basis of 35 USC 135(b). Which of the following statements accords with the USPTO rules and the procedures set forth in the MPEP?
A The rejection is improper because 35 USC 135(b) relates to interferences.
B The rejection is proper because 35 USC 135(b) is not limited to inter partes proceedings, but may be used as a basis for ex parte rejections.
C Since John’s claims would interfere with Jane’s unexpired patent, the proper procedure is for the examiner to declare an interference rather than to reject John’s claims.
D The rejection is proper merely by reason of the fact that John’s claims are broad enough to cover the patent claims.
E The rejection is improper inasmuch as John is claiming “substantially the same subject matter” as is claimed in the patent.
A
Correct Answer(s):
B
Related MPEP Chapter(s):
MPEP 700 - Examination of Applications
Answer Reasoning:ANSWER: (B) is the most correct answer, and (A) and (C) are wrong. MPEP § 715.05 states "[i]f the patent is claiming the same invention as the application and its issue date is one year or more prior to the presentation of claims to that invention in the application, a rejection of the claims of the application under 35 U.S.C. § 135(b) should be made. See In re McGrew, 120 F.3d 1236, 1238, 43 USPQ2d 1632, 1635 (Fed.Cir. 1997) (holding that application of 35 U.S.C. § 135(b) is not limited to inter partes interference proceedings, but may be used as a basis for ex parte rejections.)". (D) is wrong. See MPEP § 2307 ("The fact that the application claim may be broad enough to cover the patent claim is not sufficient. In re Frey, 182 F.2d 184, 86 USPQ 99 (CCPA 1950)"). (E) is also wrong. See MPEP § 2307 ("If the claim presented or identified as corresponding to the proposed count was added to the application by an amendment filed more than one year after issuance of the patent...then under the provisions of 35 U.S.C. § 135(b), an interference will not be declared unless at least one of the claims which were in the application...prior to expiration of the one-year period was for 'substantially the same subject matter' as at least one of the claims of the patent.").
6
Q
- In accordance with the USPTO rules and the procedures set forth in the MPEP, which of the following statements regarding a proper prior art reference is true?
A Canceled matter in the application file of a U.S. patent is a prior art reference as of the filing date under pre-AIA 35 USC 102(e).
B Where a patent refers to and relies on the disclosure of a copending subsequently abandoned application, such disclosure is not available as a reference.
C Where the reference patent claims the benefit of an earlier filed, copending but subsequently abandoned application which discloses subject matter in common with the patent, and the abandoned application has an enabling disclosure for the common subject matter and the claimed matter in the reference patent, the effective date of the reference patent as to the common subject matter is the filing date of the reference patent.
D Matter canceled from the application file wrapper of a U.S. patent may be used as prior art as of the patent date.
E All foreign patents are available as prior art as of the date they are translated into English.
A
Correct Answer(s):
D
Related MPEP Chapter(s):
MPEP 900 - Prior Art, Classification, and Search
Answer Reasoning:ANSWER: (D) is the most correct answer. See 35 U.S.C. § 102(a). As explained in MPEP § 901.01, the “matter canceled from the application file wrapper of a U.S. patent may be used as prior art as of the patent date in that it then constitutes prior public knowledge under 35 U.S.C. 102(a), In re Lund, 376 F.2d 982, 153 USPQ 625 (CCPA 1967). See also MPEP 2127 and 2136.02.” (A) is incorrect. 35 U.S.C. § 102(e). As stated in MPEP § 901.01, “Canceled matter in the application file of a U.S. patent is not a proper reference as of the filing date under 35 U.S.C. 102(e), see Ex parte Stalego, 154 USPQ 52, 53 (Bd. App. 1966).” (B) is incorrect. As stated in MPEP § 901.02, “In re Heritage, 182 F.2d 639, 86 USPQ 160 (CCPA 1950), holds that where a patent refers to and relies on the disclosure of a copending abandoned application, such disclosure is available as a reference. See also In re Lund, 376 F.2d 982, 153 USPQ 625 (CCPA 1967).” (C) is incorrect. As MPEP § 901.02 indicates, where the reference patent claims the benefit of a copending but abandoned application which discloses subject matter in common with the patent, and the abandoned application has an enabling disclosure of the common subject matter and claimed matter in the reference patent, the effective date of the reference as to the common subject matter is the filing date of the abandoned application. In re Switzer, 77 USPQ 1, 612 O.G. 11 (CCPA 1948); Ex parte Peterson, 63 USPQ 99 (Bd. App. 1944); and Ex parte Clifford, 49 USPQ 152 (Bd. App. 1940).” (E) is incorrect. As stated in MPEP § 901.05, “In general, a foreign patent, the contents of its application, or segments of its content should not be cited as a reference until its date of patenting or publication can be confirmed by an examiner’s review of a copy of the document.”
