April 03 PM Exam Flashcards
1
Q
- Harriet filed a nonprovisional patent application in the USPTO containing a written assertion of small entity status. Based upon the USPTO rules and the procedures set forth in the MPEP, which of the following statements is correct?
A If Harriet files a related, continuing application wherein small entity status is appropriate and desired, it will not be necessary to specifically establish assertion of such status in the continuing application.
B If Harriet files a related, reissue application wherein small entity status is appropriate and desired, it will be necessary to specifically establish assertion of such status in the reissue application.
C If Harriet files a related, divisional application under 37 CFR 1.53, wherein small entity status is appropriate and desired, it will not be necessary to specifically establish assertion of such status in the divisional application.
D If Harriet refiles her application as a continued prosecution application under 37 CFR 1.53(d), wherein small entity status is appropriate and desired, it will not be necessary to specifically establish assertion of such status in the continued prosecution application.
E If Harriet subsequently assigns her rights to another party for whom small entity status is appropriate and desired, it will be necessary to specifically re-establish assertion of such status.
A
Correct Answer(s):
B
Related MPEP Chapter(s):
MPEP 200 - Types, Cross-Noting, and Status of Application
Answer Reasoning:ANSWER: (B) is correct and (A), (C) and (D) are wrong. 37 CFR § 1.27(c)(4) (“The refiling of an application under § 1.53 as a continuation, divisional, or continuation-in-part application, including a continued prosecution application under § 1.53(d), or the filing of a reissue application, requires a new assertion as to continued entitlement to small entity status for the continuing or reissue application.”). (E) is also wrong. 37 CFR § 1.27(e)(1) (“Where an assignment of rights…to other parties who are small entities occurs subsequent to an assertion of small entity status, a second assertion is not required.”)
2
Q
- A U.S. patent application discloses a first embodiment of an invention, a composition made of known materials in equal amounts by weight of A, B, and C. The application discloses a second embodiment of the invention comprising equal amounts by weight of A, B, and C, and an effective amount of D, a known material, to reduce excess moisture from the composition. The application also discloses a third embodiment of the invention comprising equal amounts by weight of A, B, and C, and an effective amount of D to reduce the acidity of the composition. The application fully discloses guidelines for determining an effective amount of D to reduce excess moisture from the composition, and determining an effective amount of D to reduce the acidity of the composition. The application discloses that the amount of D needed to reduce excess moisture from the composition differs from the amount of D needed to reduce the acidity of the composition. Which of the following claims, if included in the application, provides a proper basis for a rejection under 35 USC 112, second paragraph in accordance with the USPTO rules and the procedures set forth in the MPEP?
A Claim 1. A composition comprising: equal amounts by weight of A, B, and C, and an effective amount of D to reduce the acidity of the composition.
B Claim 1. A composition comprising: equal amounts by weight of A, B, and C, and an effective amount of D.
C Claim 1. A composition comprising: equal amounts by weight of A, B, and C, and an effective amount of D to reduce excess moisture from the composition.
D Claim 1. A composition comprising: equal amounts by weight of A, B, and C.
E None of the above.
A
Correct Answer(s): B Related MPEP Chapter(s): MPEP 2100 - Patentability Answer Reasoning:ANSWER: (B) is the most correct answer. 35 U.S.C. § 112, second paragraph, and MPEP § 2173.05(c), under the heading "III. Effective Amount." The claim presented in (B) is improper as "an effective amount" has been held to be indefinite when the claim fails to state the function that is to be achieved and more than one effect can be implied from the specification. In re Fredericksen 213 F.2d 547, 102 USPQ 35 (CCPA 1954). It is unclear whether "an effective amount" in (B) is an effective amount to reduce acidity or an effective amount to reduce moisture. The claims presented in (A) and (C) find support in the disclosure, which provides guidelines for determining "an effective amount" for each of the claims in (A) and (C). See MPEP § 2173.05(c) under the heading "III. Effective Amount." The claim presented in (D) is not indefinite, given that A, B, and C are known materials as set forth in the question and the composition can be determined by the claim language. (E) is incorrect because (B) is correct.
3
Q
- In accordance with the USPTO rules and the procedures in the MPEP, in which of the following instances is the reference properly available as prior art under pre-AIA 35 USC 102(d)?
A A U.S. patent application is filed within the one year anniversary date of the filing date of the foreign application. The reference is the foreign application.
B The applicant files a foreign application, later timely files a U.S. application claiming priority based on the foreign application, and then files a continuation-in-part (CIP) application, and the claims in the CIP are not entitled to the filing date of the U.S. parent application. The foreign application issues as a patent before the filing date of the CIP application and is used to reject the claims directed to the added subject matter under 35 USC 102(d)/103. The reference is the foreign application.
C The applicant files a foreign application, and later timely files a U.S. application claiming priority based on the foreign application. The examined foreign application has been allowed by the examiner and has not been published before the U.S. applicat
D The reference is a defensive publication.
E All of the above.
A
Correct Answer(s): B Related MPEP Chapter(s): MPEP 2100 - Patentability Answer Reasoning:ANSWER: (B) is the most correct answer. See 35 U.S.C. § 102(d); MPEP § 2135.01, under the heading "A Continuation - In - Part Breaks The Chain Of Priority As To Foreign As Well As U.S. Parents." If an applicant files a foreign application, later files a U.S. application claiming priority based on the foreign application, and then files a continuation - in - part (CIP) application whose claims are not entitled to the filing date of the U.S. parent, the effective filing date of the CIP application is the filing date of the CIP. The applicant cannot obtain the benefit of either the U.S. parent or foreign application filing dates. In re van Langenhoven, 173 USPQ 426, 429 (CCPA 1972); Ex parte Appeal No. 242 - 47, 196 USPQ 828 (Bd. App. 1976). (A) is incorrect. 35 U.S.C. § 102(d). (C) is not correct. 35 U.S.C. § 102(d); MPEP § 2135.01, under the heading "An Allowed Application Can Be A 'Patent' For Purposes Of 35 U.S.C. 102(d) As Of The Date Published For Opposition Even Though It Has Not Yet Been Granted As A Patent," citing Ex parte Beik, 161 USPQ 795 (Bd. App. 1968). An application must issue into a patent before it can be applied in a 35 U.S.C. 102(d) rejection. Ex parte Fujishiro, 199 USPQ 36 (Bd. App. 1977). (D) is not correct. 35 U.S.C. § 102(d); MPEP § 2136, under the heading "Defensive Publications Are Not Prior Art As Of Their Filing Date," citing Ex parte Osmond, 191 USPQ 334 (Bd. App. 1973). (E) is not correct inasmuch as (A), (C) and (D) are not correct.
4
Q
- The Office mailed an Office action containing a proper final rejection dated July 8, 2002. The Office action did not set a period for reply. On January 7, 2003, in reply to the final rejection, a registered practitioner filed a request for continued examination under 37 CFR 1.114, a request for a suspension of action under 37 CFR 1.103(c) to suspend action for three months, and proper payment all required fees. No submission in reply to the outstanding Office action accompanied the request for continued examination. No other paper was submitted and no communication with the Office was held until after Midnight, January 8, 2003. Which of the following statements accords with the USPTO rules and the procedures set forth in the MPEP?
A If an appropriate reply is submitted within the three month period of suspension permitted under 37 CFR 1.103(c), the application will not be held abandoned.
B The application will not be held abandoned if an appropriate reply is submitted within the three month period of suspension and it is accompanied by a showing that the reply could not have been submitted within the period set in the final rejection. For example, the reply includes a showing based on an experiment that required 8 months to conduct.
C No reply will prevent the application from being held abandoned.
D If, on January 10, 2003, the primary examiner and applicant agree to an examiner’s amendment that places the application in condition for allowance and a notice of allowance is mailed within the three month period of suspension, application X will not be held abandoned.
E No other submission by applicant is necessary because application X is still pending. The examiner is required to act on the request for continued examination after expiration of the three month period of suspension.
A
Correct Answer(s): C Related MPEP Chapter(s): MPEP 700 - Examination of Applications Answer Reasoning:ANSWER: (C) is the most correct answer. As stated in MPEP § 709, under the heading "Request By The Applicant," subheading "Request for Suspension Under 37 CFR 1.103(b) or (c)," "The Office will not grant the requested suspension of action unless the following requirements are met: (A) the request must be filed with the filing of a CPA or an RCE...(1) if the request is filed with an RCE, the RCE must be in compliance with 37 CFR 1.114, i.e., the RCE must be accompanied by a submission and the fee set forth in 37 CFR 1.17(e). Note that the payment of the RCE filing fee may not be deferred and the request for suspension cannot substitute for the submission." The RCE was improper because no submission in reply to the outstanding Office action accompanied the RCE. Since the RCE was improper, the Office will not recognize the request for suspension. The time period set in the final rejection continues to run from the mail date of the Office action. Since the Office action did not set a period for reply, applicant has a maximum period of six months for reply. A reply was due on February 8, 2003. Since the RCE was improper and the Office did not recognize the request for suspension, the application became abandoned at Midnight of February 8, 2003. (A), (B) and (E) are not correct. As stated in MPEP § 706.07(h), under the heading "Submission Requirement," "If a reply to an Office action under 35 U.S.C. 132 is outstanding, the submission must meet the reply requirements of 37 CFR 1.111. See 37 CFR 1.114(c)." An RCE that is not accompanied by a submission is an improper RCE. As stated in MPEP § 706.07(h), under the heading "Initial Processing," subheading "Treatment of Improper RCE," "An improper RCE will not operate to toll the running of any time period set in the previous Office action for reply to avoid abandonment of the application." The period for filing a proper reply was six months inasmuch as no shortened statutory period for reply was set. A proper reply to the final rejection was not filed. Therefore, the application went abandoned for failure to file a proper reply to the final rejection. (D) is not correct. As set forth in MPEP § 706.07(f) under the heading "Examiner's Amendments," paragraph (H), "[a]n 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."
5
Q
- Which of the following practices or procedures may be properly employed in accordance with the USPTO rules and the procedures set forth in the MPEP to overcome a rejection properly based on pre-AIA 35 USC 102(a)?
A Perfecting a claim to priority under 35 USC 119(a)-(d) based on a foreign application having a foreign priority filing date that antedates the reference.
B Filing a declaration under 37 CFR 1.131 showing that the cited prior art antedates the invention.
C Filing a declaration under 37 CFR 1.132 showing that the reference invention is by “others.”
D Perfecting priority under 35 USC 119(e) or 120 by, in part, amending the declaration of the application to contain a specific reference to a prior application having a filing date prior to the reference.
E (A), (B) (C), and (D).
A
Correct Answer(s): A Related MPEP Chapter(s): MPEP 700 - Examination of Applications Answer Reasoning:ANSWER: (A) is the most correct answer. See MPEP § 706.02(b), under the heading "Overcoming a 35 U.S.C. § 102 Rejection Based on a Printed Publication or Patent." (B), and (C) are incorrect because they present showings that support the rejection. See MPEP § 706.02(b), supra. (D) are not correct because to perfect priority under 35 U.S.C. §§ 119(e) or 120 it is, inter alia, necessary to amend the specification of the application to contain a specific reference to a prior application having a filing date prior to the reference. See MPEP § 706.02(b), supra. Furthermore, the declaration is not to be amended. (E) is incorrect because (B), (C) and (D) are incorrect.
6
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.
7
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 An oath or declaration under 37 CFR 1.51(b)(2).
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 oath or declaration 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. 37 CFR § 1.53(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 § 1.71 and at least one claim pursuant to § 1.75, and any drawing required by § 1.81(a) are filed in the Office. Thus, (B), (C), (D) and (E) are needed to obtain a filing date.
8
Q
- A complete continuation application by the same inventors as those named in the prior application may be filed under 35 USC 111(a) using the procedures of 37 CFR 1.53(b) by providing, in accordance with the USPTO rules and the procedures set forth in the MPEP:
A A copy of the prior application, including a copy of the signed declaration in the prior application, as amended.
B A new and proper specification (including one or more claims), any necessary drawings, a copy of the signed declaration as filed in the prior application (the new specification, claim(s), and drawings do not contain any subject matter that would have been new matter in the prior application), and all required fees.
C A new specification and drawings and a newly executed declaration. The new specification and drawings may contain any subject matter that would have been new matter in the prior application.
D A new specification and drawings, and all required fees.
E (A), (B), (C) and (D).
A
Correct Answer(s):
B
Related MPEP Chapter(s):
MPEP 600 - Parts, Form, and Content of Application
Answer Reasoning:ANSWER: (B) is the most correct answer. See 37 CFR §§ 1.51(b), 1.53(b), and 1.63(d)(1)(iv); MPEP § 201.06(c), under the heading “Specification and Drawings,” and MPEP § 602.05(a). (A) is incorrect. As indicated by MPEP § 201.06(c), a continuation application may be filed under 35 U.S.C. § 111(a) by providing a copy of the prior application, including a copy of the signed declaration in the prior application, as filed. (C) is incorrect. As indicated by MPEP § 201.06(c), a continuation application may be filed under 35 U.S.C. § 111(a) by providing a new specification and drawings and a newly executed declaration provided the new specification and drawings do not contain any subject matter that would have been new matter in the prior application. (D) is incorrect. The oath or declaration is needed to name the same inventor in the continuation application. 37 CFR § 1.53(b); MPEP § 201.06(c). (E) is incorrect because (A), (C) and (D) are incorrect.
9
Q
- Inventors B and C are employed by Corporation D, which authorized registered practitioner E to prepare and file a patent application claiming subject matter invented by B and C. Inventor B signed the oath, an assignment to Corporation D, and a power of attorney authorizing practitioner E to prosecute the application. Inventor C refused to sign the oath and any assignment documents for the application. The employment contract between inventor C and Corporation D contains no language obligating C to assign any invention to Corporation D. A patent application was properly filed in the USPTO under 37 CFR 1.47 naming B and C as inventors, but without inventor C signing the oath. C has now started his own company competing with Corporation D producing a product with the invention in the application. Inventor B is a friend of inventor C and wants C to have continued access to the application. Which of the following statements is in accordance with the USPTO rules and the procedures set forth in the MPEP?
A Inventor C, who has not signed the oath or declaration, may revoke the power of attorney to practitioner E and appoint practitioner F to prosecute the application.
B Inventor C cannot be excluded from access t the application because inventor B has not agreed to exclude inventor C. In order to exclude a co-inventor from access to an application, all the remaining inventors must agree to exclude that co-inventor.
C Inasmuch as one of the named joint inventors has not assigned his or her rights to Corporation D, the corporation is not an assignee of the entire right and interest, and therefore cannot exclude inventor C from access to the application.
D An inventor who did not sign the oath or declaration filed in an application can always be excluded from access to an application.
E An assignee filing an application can control access to an application and exclude inventors who have not assigned their rights and other assignees from inspecting the application.
A
Correct Answer(s):
C
Related MPEP Chapter(s):
MPEP 100 - Secrecy, Access, National Security, and Foreign Filing
Answer Reasoning:ANSWER: (C) is the most correct answer. MPEP § 106 states: “[t]he assignee of record of the entire interest in an application may intervene in the prosecution of the application, appointing an attorney or agent of his or her own choice. See 37 CFR § 3.71. Such intervention, however, does not exclude the applicant from access to the application to see that it is being prosecuted properly, unless the assignee makes specific request to that effect.” (A), (B), (D), and (E) are incorrect. MPEP § 409.03(i) is directly contrary to answer (A), and provides that a non-signing inventor cannot revoke or give a power of attorney without agreement of all named inventors or the 37 CFR § 1.47(b) applicant. (B) is incorrect. MPEP § 106 does not empower an inventor who has assigned his or her rights to exclude a non-signing joint inventor from accessing an application in which the latter party is named as a joint inventor. (E) is incorrect. MPEP § 106. Corporation D, as an assignee of a part interest, cannot exclude the non-signing joint inventor from access to the application. See also, MPEP § 106.01, which states “While it is only the assignee of record of the entire interest who can intervene in the prosecution of an application or interference to the exclusion of the applicant, an assignee of a part interest or a licensee of exclusive right is entitled to inspect the application.” (D) is incorrect because MPEP § 409.03(i) states that a nonsigning inventor is entitled to inspect any papers in the application, and order copies at the price set forth in 37 CFR § 1.19.
10
Q
- In accordance with the USPTO rules and the procedures set forth in the MPEP, which of the following is true?
A There is no practical difference between an objection and rejection of a claim.
B If the form of the claim (as distinguished from its substance) is improper, an objection is made.
C An objection, if maintained by an examiner, is subject to review by the Board of Patent Appeals and Interferences.
D An example of a proper objection is where the claims are refused because they fail to comply with the second paragraph of 35 USC 112.
E An example of a proper rejection is a rejection of a dependent claim for being dependent on a claim that has been rejected only over prior art, where the dependent claim is otherwise allowable.
A
Correct Answer(s): B Related MPEP Chapter(s): MPEP 700 - Examination of Applications Answer Reasoning:ANSWER: (B) is the most correct answer. MPEP § 706.01. (A) and (C) are incorrect. As stated by MPEP § 706.01, "The practical difference between a rejection and an objection is that a rejection, involving the merits of the claim, is subject to review by the Board of Patent Appeals and Interferences, while an objection, if persisted, may be reviewed only by way of petition to the Commissioner." (D) is incorrect. MPEP § 706.03(d). (E) is incorrect. As stated in MPEP § 706.01, "If the form of the claim (as distinguished from its substance) is improper, an "objection" is made. An example of a matter of form as to which objection is made is dependency of a claim on a rejected claim, if the dependent claim is otherwise allowable. See MPEP § 608.01(n)."
11
Q
- A registered practitioner properly recorded an assignment document for application A identifying XYZ Company as the assignee. The document assigns to XYZ Company the “subject matter claimed in Application A.” A proper restriction requirement was made by a primary examiner in application A between two distinct inventions, and the practitioner elected to prosecute one of the inventions. Application A was prosecuted, and later became abandoned. Before the abandonment date of application A, the practitioner filed a complete application B as a proper divisional application of application A. Application B claimed the nonelected invention of Application A, and was published as a U.S. application publication. XYZ Company remains the assignee of application A. What must the practitioner do in accordance with the USPTO rules and the procedures set forth in the MPEP to ensure that XYZ Company is listed as the assignee on the face of any patent issuing from application B?
A File a proper assignment document in application B identifying XYZ Company as the assignee.
B File a proper assignment document in application B identifying XYZ Company as the assignee, and confirm that USPTO’s bibliographic data for application B identifies XYZ Company as the assignee by checking the filing receipt for application B, the U.S. application publication of application B, or the USPTO’s Patent Application Information Retrieval (PAIR) system data for application B, depending on when the practitioner filed the assignment document in application B.
C Confirm that XYZ Company is identified as the assignee on the U.S. application publication of application B.
D File a proper assignment document in application B identifying XYZ Company as the assignee, and confirm that XYZ Company is identified as the assignee on the U.S. application publication of application B.
E Upon allowance of application B, the practitioner must identify XYZ Company as the assignee in the appropriate space on the Issue Fee Transmittal form for specifying the assignee for application B.
A
Correct Answer(s): E Related MPEP Chapter(s): MPEP 300 - Ownership and Assignment Answer Reasoning:ANSWER: (E) is the most correct answer. See MPEP §§ 306 and 307. MPEP § 306 states, "In the case of a division or continuation application, a prior assignment recorded against the original application is applied to the division or continuation application because the assignment recorded against the original application gives the assignee rights to the subject matter common to both applications." MPEP § 307 states, "Irrespective of whether the assignee participates in the prosecution of the application, the patent issues to the assignee if so indicated on the Issue Fee Transmittal form PTOL-85B. Unless an assignee's name and address are identified in item 3 of the Issue Fee Transmittal form PTOL-85B, the patent will issue to the applicant. Assignment data printed on the patent will be based solely on the information so supplied." A new assignment document need not be recorded for a divisional or continuation application where the assignment recorded in the parent application remains the same. Accordingly, answers (A), (B) and (D) are incorrect. In addition, (A), (B) and (D) are incorrect because unless an assignee's name and address are identified in item 3 of PTOL-85B, the patent will issued to the application and the assignee information, even if recorded, will not appear on the patent. (C) is incorrect for the same reason. (B) is also incorrect. There is no connection between the filing receipt, PAIR or the patent application publication and the recorded assignment. Assignment data is reflected on the filing receipt, PAIR, or a patent application publication when applicant includes assignment information for purposes of publication of the application on the transmittal letter. Assignment data printed on the patent will be based solely on the information supplied on the Issue Fee Transmittal Form PTOL-85B. See MPEP §§ 1309 and 1481. Accordingly, answer (E) is correct and answer (C) is incorrect.
12
Q
- In accordance with the USPTO rules and the procedures set forth in the MPEP, which of the following is true?
A Interferences will generally be declared even when the applications involved are owned by the same assignee since only one patent may issue for any given invention.
B A senior party in an interference is necessarily the party who obtains the earliest actual filing date in the USPTO.
C Reexamination proceedings may not be merged with reissue applications since third parties are not permitted in reissue applications.
D After a reexamination proceeding is terminated and the certificate has issued, any member of the public may obtain a copy of the certificate by ordering a copy of the patent.
E None of the above.
A
Correct Answer(s):
D
Related MPEP Chapter(s):
MPEP 2200 - Citation of Prior Art and Ex Parte Reexamination of Patents
Answer Reasoning:ANSWER: (D) is the most correct answer. See MPEP § 2292. As to (A) see 37 CFR § Part 41. As to (B) see 37 CFR § Part 41, which provides that the senior party has earliest effective filing date. As to (C), see MPEP § 2285 regarding merger of reissues and reexamination proceedings. As to (E), (D) is true.
13
Q
- Prior to filing a patent application for a client, a registered practitioner determined that the client was entitled to claim small entity status under 37 CFR 1.27. The practitioner filed a patent application for the client on November 1, 2002 together with a claim for small entity status under 37 CFR 1.27. On December 2, 2002, a Notice to File Missing Parts was mailed setting a two month period for reply and requiring the basic filing fee and the surcharge under 37 CFR 1.16(e). The practitioner timely submitted the small entity fees for the basic filing fee and the surcharge as required in the Notice. Shortly thereafter, the practitioner discovered that on October 31, 2002, the day before the application was filed, the client, without advising the practitioner, had assigned all rights in the invention that is the subject of the application to an entity that would not qualify for small entity status under 37 CFR 1.27. In accordance with the USPTO rules and the procedures set forth in the MPEP, which of the following actions would be the best action for the practitioner to take?
A File a continuing application under 37 CFR 1.53(b) with the large entity filing fee and then file a letter of express abandonment under 37 CFR 1.138 in the original application after the continuing application has been accorded a filing date.
B Promptly file a notification of loss of small entity status under 37 CFR 1.27(g) and, thereafter, pay large entity fees whenever any subsequent fees are required.
C Wait until a Notice of Allowance is received and then timely submit the large entity issue fee along with a notification of loss of small entity status under 37 CFR 1.27(g).
D File a paper under 37 CFR 1.28(c) requesting that the good faith error in claiming small entity status be excused and complying with the separate submission and itemization requirements of 37 CFR 1.28(c) and including payment of the deficiency owed.
E Pay the difference between the large entity filing fee and small entity filing fee and the difference between the large entity surcharge and small entity surcharge within two months from the mail date of the Notice to File Missing Parts.
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. MPEP § 509.03, under the heading “Correcting Errors In Small Entity Status,” states “37 CFR 1.28(c) provides that if small entity status is established in good faith and the small entity fees are paid in good faith, and it is later discovered that such status as a small entity was established in error or through error the Office was not notified of a change of status, the error will be excused upon compliance with the separate submission and itemization requirements of 37 CFR 1.28(c)(1) and (c)(2), and the deficiency payment requirement of 37 CFR 1.28(c)(2).” (A), (B), (C), and (E) are not correct. Small entity status was not appropriate when the assertion of small entity status was filed with the application on November 1, 2002 and none of the actions recited in (A), (B), (C), and (E) would correct the error in claiming small entity status. The only mechanism for correcting a good faith error in claiming small entity status is by filing a request in compliance with 37 CFR § 1.28(c).
14
Q
- Mark Twine obtains a patent directed to a machine for manufacturing string. The patent contains a single claim (Claim 1) which recites six claim elements. The entire interest in Twine’s patent is assigned to the S. Clemens String Co., and Twine is available and willing to cooperate with S. Clemens String Co. to file a reissue application. A subsequent reissue application includes Claim 2, which is similar to original Claim 1. However, one of the elements recited in Claim 2 is broader than its counterpart element in the original claim. The remaining five elements are narrower than their respective counterpart elements in the original patent claim. Which of the following scenarios accords with the USPTO rules and the procedures set forth in the MPEP?
A The S. Clemens String Co. files the reissue application more than 2 years after the issue date of the original patent application.
B The S. Clemens String Co. files the reissue application less than 2 years after the issue date of the original patent but more than 2 years after original application filing date.
C Mark Twine files the reissue application less than 2 years after the issue date of the original patent but more than 2 years after original application filing date.
D Mark Twine files the reissue application more than 2 years after the issue date of the original patent.
E Mark Twine and the S. Clemens String Co. jointly file the reissue application more than 2 years after the issue date of the original patent.
A
Correct Answer(s): C Related MPEP Chapter(s): MPEP 1400 - Correction of Patents Answer Reasoning:ANSWER: (C) is the most correct answer. Answers (A), (D) and (E) are incorrect because a broadening reissue application must be filed within two years of issuance of the original patent. 35 U.S.C. § 251; MPEP § 1412.03. Answer (B) is incorrect because the assignee may not file a broadening reissue application. MPEP § 706.03(x).
15
Q
- Able conceived the invention claimed in a patent application. In conceiving the invention, Able used and adopted ideas and materials known in the art and invented by others. Ben, Able’s employee, reduced the invention to practice at Able’s request and totally pursuant to Able’s suggestions. Being unable to afford a patent practitioner’s fees to prepare and prosecute the application, Able convinced John to pay for the practitioner’s services in return for an interest in the invention. John did nothing more than provide the funds for the practitioner. Which of the following is in accordance with the USPTO rules and the procedures set forth in the MPEP?
A Able need not be the one to reduce the invention to practice so long as the reduction to practice occurred on his or her behalf. Able can be properly named as inventor in the application.
B To be named an inventor, it is not necessary for John to have contributed to the conception of the invention. Ben, not Able, can be named as inventor in the application.
C In conceiving the invention, Able may not consider and adopt ideas and materials derived from any sources, such as ideas of previous inventors. Able cannot be properly named as inventor in the application.
D John and Able may be properly named as joint inventors of the invention in the application.
E John, Ben, and Able may be properly named as joint inventors of the invention in the application.
A
Correct Answer(s): A Related MPEP Chapter(s): MPEP 2100 - Patentability Answer Reasoning:ANSWER: (A) is the most correct answer. See MPEP § 2137.01, under the heading "The Inventor Is Not Required To Reduce The Invention To Practice," citing In re DeBaun, 214 USPQ 933, 936 (CCPA 1982). (B) is not correct. MPEP § 2137.01, under the heading "An Inventor Must Contribute To The Conception Of The Invention," citing, Fiers v. Revel, 25 USPQ2d 1601, 1604 - 05 (Fed. Cir. 1993); and In re Hardee, 223 USPQ 1122, 1123 (Dep. Asst. Comm'r Pat. 1984). (C) is not correct. MPEP § 2137.01, under the heading "As Long As The Inventor Maintains Intellectual Domination Over Making The Invention, Ideas, Suggestions, And Materials May Be Adopted From Others," citing Morse v. Porter, 155 USPQ 280, 283 (Bd. Pat. Inter. 1965); and New England Braiding Co., Inc. v. A.W. Chesterton Co., 23 USPQ2d 1622, 1626 (Fed. Cir. 1992). (D) and (E) are not correct. 35 U.S.C. § 116; MPEP § 2137.01, under the heading "Requirements For Joint Inventorship."
16
Q
- Claim 1 of an application recites “[a]n article comprising: (a) a copper substrate; and (b) a electrically insulating layer on said substrate.” The specification defines the term “copper” as being elemental copper or copper alloys. In accordance with USPTO rules and procedures set forth in the MPEP, for purposes of searching and examining the claim, the examiner should interpret the term “copper” in the claim as reading on:
A Elemental copper only, based on the plain meaning of “copper.”
B Copper alloys only, based on the special definition in the specification.
C Elemental copper and copper alloys, based on the special definition in the specification.
D Any material that contains copper, including copper compounds.
E None of the above.
A
Correct Answer(s): C Related MPEP Chapter(s): MPEP 2100 - Patentability Answer Reasoning:ANSWER: (C) is the most correct answer. When the specification expressly provides a special definition for a term used in the claims, the term must be given that special meaning. See MPEP § 2111.01. (A) is incorrect because a term is given its plain meaning only when the specification does not provide a definition for the term. See MPEP § 2111.01 (B) is incorrect because the specification defines the term as being inclusive of elemental copper. See MPEP § 2111.01. (D) is incorrect because it does not take into account the definition of copper found in the specification. See MPEP § 2111.01.
17
Q
- Rolland files a pre-AIA U.S. patent application fourteen months after he perfects an invention in Europe. In accordance with the USPTO rules and the procedures set forth in the MPEP, which of the following would establish a statutory bar against the granting of a U.S. patent to Rolland?
A A foreign patent issued to Rolland 11 months prior to the filing date of Rolland’s U.S. patent application. The foreign patent was granted on an application that was filed 23 months prior to the effective filing date of Rolland’s U.S. patent application. The foreign patent application and the U.S. patent application claim the same invention.
B The invention was described in a printed publication in the United States, 11 months prior to the filing date of the U.S. patent application.
C The invention was in public use in the United States, less than one year prior to the filing date of the U.S. patent application.
D The invention was on sale in a foreign (NAFTA member) country, more than one year prior to the filing date of the U.S. patent application.
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 35 U.S.C. § 102 (d), and MPEP § 706.02(c). (A) is correct because the foreign patent establishes a bar under 35 U.S.C. §102(d). MPEP § 706.02(e). (B) is incorrect because the invention is not described in a printed publication more than one year prior to the date of the U.S. application. 35 U.S.C. § 102(b). (C) is incorrect because the invention is not in public use more than one year prior to the date of the U.S. application. MPEP § 2133. (D) is incorrect because the sale is not in the United States. 35 U.S.C. § 102(b); MPEP §§ 706.02(c) and 2133.03(d). (E) is incorrect because (A) is correct.
18
Q
- In accordance with the USPTO rules and the procedures set forth in the MPEP, in which of the following cases is the date of actual receipt by the USPTO not accorded as the application filing date?
A Provisional application filed without claims.
B Non-provisional application filed containing an error in inventorship.
C Non-provisional application filed which fails to identify the inventor(s).
D Non-provisional application with executed oath filed without any claim(s).
E Non-provisional application filed using a certificate of mailing in accordance with 37 CFR 1.8.
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. A non-provisional application filed without at least one claim is regarded as incomplete and will not be accorded a filing date. 35 U.S.C. § 111(a); 37 CFR § 1.53(b); MPEP § 506. (A) is wrong because the component parts of a provisional application necessary to obtain a filing date do not include claims. 35 U.S.C. § 111(b); 37 CFR § 1.53(c); MPEP § 506 under heading “Incomplete Provisional Applications.” (B) and (C) are wrong because “[a]n error in or failure to identify inventorship does not raise a filing date issue.” MPEP § 506.02. (E) is wrong. Under 37 CFR § 1.8(a)(2)(i)(A) no benefit is accorded to a certificate of mailing date. The effective date is the actual date of receipt, and not the certificate of mailing date.
19
Q
- In connection with the utility of an invention described in a patent application, which of the following conforms to the USPTO rules and the procedure set forth in the MPEP?
A A deficiency under 35 USC 101 also creates a deficiency under 35 USC 112, first paragraph.
B To overcome a rejection under 35 USC 101, it must be shown that the claimed device is capable of achieving a useful result on all occasions and under all conditions.
C A claimed invention is properly rejected under 35 USC 101 as lacking utility if the particular embodiment disclosed in the patent lacks perfection or performs crudely.
D To overcome a rejection under 35 USC 101, it is essential to show that the claimed invention accomplishes all its intended functions.
E A claimed invention lacks utility if it is not commercially successful.
A
Correct Answer(s):
A
Related MPEP Chapter(s):
MPEP 2100 - Patentability
Answer Reasoning:ANSWER: (A) is the most correct answer. As stated in MPEP § 2107.01 under the heading "IV. Relationship Between 35 U.S.C. 112, First Paragraph, And 35 U.S.C. 101," "A deficiency under 35 U.S.C. § 101 also creates a deficiency under 35 U.S.C. § 112, first paragraph. See In re Brana, 51 F.3d 1560, 34 USPQ2d 1436 (Fed. Cir. 1995); In re Jolles, 628 F.2d 1322, 1326 n.10, 206 USPQ 885, 889 n.11 (CCPA 1980); In re Fouche, 439 F.2d 1237, 1243, 169 USPQ 429, 434 (CCPA 1971) ('If such compositions are in fact useless, appellant's specification cannot have taught how to use them.')." (B) is not correct. MPEP § 2107, under the heading "II. Examination Guidelines For The Utility Requirement," and see Brooktree Corp. v. Advanced Micro Devices, Inc., 977 F.2d 1555, 1571, 24 USPQ2d 1401, 1412 (Fed. Cir. 1992); and E.I. du Pont De Nemours and Co. v. Berkley and Co., 620 F.2d 1247, 1260 n.17, 205 USPQ 1, 10 n.17 (8th Cir. 1980). (C), (D) and (E) are not correct. MPEP § 2107, under the heading "II. Examination Guidelines For The Utility Requirement," and see E.I. du Pont De Nemours and Co. v. Berkley and Co., 620 F.2d 1247, 1260 n.17, 205 USPQ 1, 10 n.17 (8th Cir. 1980).
20
Q
- Inventor Joe is anxious to get a patent with the broadest claim coverage possible for the invention. Joe retained a registered practitioner, Jane, to obtain the advantage of legal counsel in obtaining broad protection. Jane filed a patent application for the invention. The inventor heard that, although patent prosecution is conducted in writing, it is possible to get interviews with examiners. Joe believes an interview might hasten the grant of a patent by providing the examiner a better understanding of the true novelty of the invention. Which of the following are consistent with the USPTO rules and the procedures set forth in the MPEP regarding usage of interviews?
A Prior to the first Office action being mailed the inventor calls the examiner to whom the application is docketed to offer help in understanding the specification.
B After receiving the first Office action Jane calls the examiner for an interview for the purpose of clarifying the structure and operation of the invention as claimed and disclosed, because the examiner’s analysis regarding patentability in the rejection is novel and suggests that the examiner is interpreting the claimed invention in a manner very different from the inventor’s intent.
C Jane has Larry, a registered practitioner in the Washington D.C. area, who is more familiar with interview practice to call the examiner. Jane gives Larry a copy of the first Office action, which suggests that the primary examiner’s analysis is incorrect, and offers to explain why. Jane instructs Larry that because Larry is unfamiliar with the inventor, Larry should not agree to possible ways in which the claims could be modified, or at least indicate to the examiner that Jane would have to approve of any such agreement.
D Jane calls the primary examiner after receiving the final rejection, demanding that the examiner withdraw the finality of the final action. When the examiner states that the final rejection is proper, Jane demands an interview as a matter of right to explain the arguments.
E (B) and (D).
A
Correct Answer(s): B Related MPEP Chapter(s): MPEP 700 - Examination of Applications Answer Reasoning:ANSWER: (B) is the most correct answer. See MPEP § 713.01. An interview should be had only when the nature of the case is such that the interview could serve to develop and clarify specific issues and lead to a mutual understanding between the examiner and the applicant, and thereby advance the prosecution of the application. (A) is incorrect. 37 CFR § 1.133(a)(2); MPEP § 713.02. Section 713.02 states that although "[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)." (C) is incorrect. MPEP § 713.03. Larry is only sounding out the examiner and has no authority to commit Joe to any agreement reached with the examiner. (D) is incorrect. MPEP § 713.09. Jane has no right to an interview following the final rejection. Although such an interview may be granted if the examiner is convinced that disposal or clarification for appeal may be accomplished with only nominal further consideration, interviews merely to restate arguments of record or to discuss new limitations which would require more than nominal reconsideration or new search should be denied. (E) is incorrect because D is incorrect.
