Missed Practice Problems Flashcards
Choose from among the following utility claims and identify the claim which is not indefinite.
(a) A device as described in col. 1, line 46 - 64 of the specification.
(b)A method of painting an article, comprising:
providing the article;
spraying said article with paint;
and allowing said article to dry.
(c) The ornamental design for a device as shown and described.
(d) The ornamental design for a device, the improvement comprising: a non-stick coating provided on a cooking surface.
(e) None of the above.
(b)A method of painting an article, comprising:
providing the article;
spraying said article with paint;
and allowing said article to dry.
Reasoning: Method claims are under utility patents.
Which of the following statements is not false?
(a) Claims in a patent application cannot be rejected when the disclosure fails to adequately disclose the invention.
(b) A claim cannot be rejected for failing to interconnect elements of the invention, when it is clear to one of ordinary skill where the elements would go.
(c) A claim can be rejected for including improper connection, even if undue experimentation is not required to perform the invention.
(d) A claim can be rejected as being vague and indefinite when all of the words and phrases can be found and defined in the supporting specification, if the examiner believes more definite words could have been used in the field.
(e) C and D.
(c) A claim can be rejected for including improper connection, even if undue experimentation is not required to perform the invention.
Reasoning: You can reject a claim for being improperly connected. Everything has to connect back to the spec.
In an After Final amendment amendments are made which place the case in condition for allowance. Because this amendment will place the case in condition for allowance:
(a) The remarks do not have to request reconsideration.
(b) The remarks do not have to show why the amendments were not earlier presented.
(c) No remarks are necessary.
(d) The remarks must address each and every objection and rejection of the examiner.
(e) The remarks must address each and every objection and rejection of the examiner and request reconsideration.
(e) The remarks must address each and every objection and rejection of the examiner and request reconsideration.
Reasoning: Remarks are always necessary and and address every objection.
If the broad generic claim in an application includes an inoperative species of the invention___________________
(a) The claim is properly rejected under 35 USC 112(a).
(b) The claim is properly rejected under 35 USC 112(b).
(c) The claim cannot be rejected as long as other operable species of the invention are also within the scope of the claim.
(d) The claim will not be rejected as long as the inoperable species does not correspond to the best mode or a preferred embodiment of the invention.
(e) A and B.
(c) The claim cannot be rejected as long as other operable species of the invention are also within the scope of the claim.
Reasoning: Every generic claim has inoperative species. As long as one operative species is within the scope, it is fine.
The application as filed includes the following series of claims.
- A radio transmitter, comprising:
a transistor
a resistor electrically connected to said transistor, and
a switch electrically connected to said resistor and a power source, for switching said radio on and off.
- A radio as in claim 1, further comprising:
a loudspeaker
- A loudspeaker as in claim 1 or 2, wherein:
said loudspeaker has a rating of 20 watts.
- A radio as in any one of the preceding claims, wherein:
said power source is a battery
A British reference discloses a radio having a micro-processor having all of the functions of the components recited in the claims, and has a publication date more than one year prior to the filing date of the application. From among the filed claims, choose the claims which are in an acceptable format.
(a) Claim 2.
(b) Claim 3.
(c) Claim 4.
(d) All of the claims.
(e) Claim 1.
(e) Claim 1.
Reasoning: The only good claim is claim 1 because it is complete. Claim 2 isn’t good because it isn’t connected to the radio. It is just sitting there on the table. Claim 3 has the preamble “loudspeaker” when that isn’t the subject of claim 1 or 2, making the preamble bad. Claim 4 is a multiple dependent claim linked to bad claims, making it unacceptable.
Claim 1 in the application is directed to an apparatus. Claim 2 is directed to the same apparatus and further defines the apparatus. Claim 3 is directed to a method of using the apparatus set forth in claims 1 and 2. Claim 4 is an independent method claim directed to a method of using the apparatus. A rejection/objection of these claims would be:
(a) Claim 3 is rejected under 35 USC 112(b), for being in improper multiple dependent form.
(b) Claim 3 is objected to as being in improper multiple dependent form and is rejected under 35 USC 112(b), as being indefinite for mixing claim types.
(c) Claim 4 is rejected under 35 USC 112(b), for mixing claims types in an application.
(d) All of the claims are rejected under 112(a), as lacking antecedent in the specification.
(e) B and C.
(b) Claim 3 is objected to as being in improper multiple dependent form and is rejected under 35 USC 112(b), as being indefinite for mixing claim types.
Reasoning: Claim 3 says “claims 1 and 2” when it should say “claims 1 or 2”. Additionally, claim 3 is a method claim while the others are directed towards an apparatus, which can’t be done.
An application is filed describing a series of species of the invention in the specification. A generic claim covering the various species is the only claim in the application. The claim is rejected under 35 USC 103 based on the broadest reasonable interpretation of the claim in light of the Abstract of the Disclosure. In response to this rejection a proper argument would be:
(a) Seek reconsideration on the basis that the Abstract may not be used as a basis to determine the scope of the claim in question.
(b)Amend the generic claim to avoid the prior art.
(c)File an Affidavit under 37 CFR 1.132 showing unexpected results regarding several of the species of the invention also falling within the scope of the claim.
(d) File an Affidavit under 1.131 swearing behind the reference in question.
(e) Cancel the Abstract and submit a rewritten Abstract which excludes the rejected subject matter.
(b)Amend the generic claim to avoid the prior art.
Reasoning: Can rely on abstract for prior art.
Your client comes into your office with an ashen face following receipt of the patent you obtained for her. The claims barely leave out an important disclosed but sadly unclaimed invention because of inartful narrowness in the claims. That very invention has been copied by her ex-husband’s company and is being sold widely. You quickly explain the basis for filing a correction to the patent. You make five statements. Which, if any, are incorrect?
(a) She can file either an ex parte reexamination or reissue at this early date to fix the claims. A reexam is better since the claims are already being infringed.
(b) She can file a reissue to broaden the claims to include subject matter given up to avoid prior art, but she must act quickly to file within two years of the issue date.
(c) She can file a reissue, but not an ex parte reexamination, and she must act within two years to file the reissue application.
(d) A certificate of correction is not possible to correct the defect in this patent.
(e) A and B.
(e) A and B.
Reasoning: She can only file a reissue, not an ex-parte reexam. Can’t ever recover broaden claims using stuff given up
The application is filed in a foreign language and later translated into English with an appropriate certification. To your horror, the application is not enabling with respect to one of the two inventions falling within the scope of the only generic claim in the application. Your client’s invention is being actively copied by the United States Government at a missile test facility in Kansas. Prior art disclosing the identical invention published in Missile Weekly by Werner von Rocket between the priority date and the U. S. filing date of your application. Your client insists the application must issue quickly.
(a) You advise your client the application is fatally defective and should be abandoned.
(b) Since the prior art is identical, you advise your client to abandon the application.
(c) You cancel the claims, including those to the non-enabled invention, through amendment.
(d) You cancel the generic claim and submit a new claim directed to the enabled version of the invention.
(e) You file a CIP adding the enabling disclosure previously left out to enable the invention as to the scope of the generic claim.
(d) You cancel the generic claim and submit a new claim directed to the enabled version of the invention.
Reasoning: Don’t just give up. See what you can claim, and claim it. A CIP adds things and it doesn’t help with the prior-art.
The invention is to a method of cleaning a surface of a crystal prior to etching the surface. The cleaning method requires first placing the crystal in an evacuated chamber, exposing the crystal to a pure inert gas at a temperature above 500 degrees Celcius, and thereafter allowing the crystal to cool and removing the crystal from the chamber.
The prior art discloses a method of cleaning a crystal which includes the steps of placing the crystal in a pressure vessel containing a pure inert gas, heating the vessel to a temperature of not less than 500 degrees Celcius, and rapidly quenching the crystal in an ammonia solution which is sprayed under pressure into the pressure vessel. A patentable claim to the method would be:
(a) A method of cleaning a crystal prior to etching, comprising the steps of: placing the crystal into a vessel containing a pure inert gas, heating said crystal and gas to a temperature above 500 degrees Celcius, and thereafter, quenching said crystal.
(b) A method of cleaning a crystal wherein said crystal is placed into an evacuated chamber and is exposed to an inert gas at a temperature above 500 degrees Celcius and then allowed to cool whereupon the crystal is removed from the chamber and is etched.
(c) A method of preparing a crystal for etching wherein the evacuated chamber surrounds the crystal and an inert gas is placed into the chamber at a temperature of more than 500 degrees and cooling is then allowed to occur and the crystal is etched.
(d) A method of cleaning a crystal, comprising the steps of: placing said crystal into an evacuated chamber, exposing said crystal to a pure inert gas at a temperature above 500 degrees Celcius, allowing said crystal to cool, and, removing said crystal from said chamber.
(e) An apparatus for cleaning a crystal comprising: an evacuated chamber, a source of inert gas, a heater, and a quenching spray device connected to said chamber.
(d) A method of cleaning a crystal, comprising the steps of: placing said crystal into an evacuated chamber, exposing said crystal to a pure inert gas at a temperature above 500 degrees Celcius, allowing said crystal to cool, and, removing said crystal from said chamber.
Reasoning: Need the verbs to be in -ing form. This answer matches the verbs in the prompt.
The invention is an assembled CD holder which includes a cover member hingedly connected to a backing member. Inside the cover and backing member, the CD holder includes a snap connected to the inside surface of the cover member which retains the outer rim edge of the CD which is to be placed inside. The prior art is a conventional CD holder which includes a cover member hingedly connected to a backing member. Inside the CD cover, in the space between the cover and the backing member, is a snap which retains the CD by gripping the inner rim of the through passage in the center of the CD. You are asked to write the claims for the invented CD cover for your friend the computer wiz, and you write the following claims. Which, if any, are not indefinite.
(a) A CD holder comprising: a cover member, a backing member connected to said cover member, and a snap member inside said cover and backing member which retains an outer edge of a CD which is inserted into the CD cover.
(b) A combination CD holder, comprising a cover member hingedly connected to a backing member, and a snap adapted to retain said CD by retaining an outer rim edge of said CD.
(c) A CD holder comprising: snap means for holding an outer rim edge of a CD, said snap means attached inside a space, defined between a cover member which is hingedly connected to a backing member, to an inwardly directed surface of said cover member.
(d) A CD adapted for placement into a holder that snaps to its outer rim.
(e) A CD holder consisting of a cover member hingedly connected to a backing member and having therein a snap member attached thereto which retains an outer edge of a CD.
(c) A CD holder comprising: snap means for holding an outer rim edge of a CD, said snap means attached inside a space, defined between a cover member which is hingedly connected to a backing member, to an inwardly directed surface of said cover member.
Reasoning: (b) is bad because it isn’t connected. In (d) it is unsure where the snap is connected.
Your client has discovered in a remote part of the South American jungle a plant called planti cokius which has remarkable curative properties when the plant is chopped, cooked, and combined with equal parts of Jack Daniels brand 100 proof sour mash whiskey. Your client claims it can cure most anything but has not performed any tests which would not result in undue experimentation to discover the dosage. Instead, your client seems to drink up most of the experiments, but is in a remarkable state of health. While discussing the invention at your office, your client becomes disoriented and tips over the earthen jug containing the mixture, and it spills onto what you thought to be a long dead office plant. The plant is revived within minutes and blossoms. You commence writing the application and include the description of the mixture as having remarkable curative properties, and also its use as a fertilizer. You write the following claims, some of which will not succeed at the Patent Office, but you want your client to be happy so that she will sign the oath and leave your office. Which claims will not be cancelled by your preliminary amendment because you know the Patent Office needs at least one claim to examine?
A) A curative mixture for treating human ailments, comprising: chopped, cooked planti cokius mixed with equal parts Tennessee whiskey.
B) A fertilizer prepared according to the following process: chopping and cooking planti cokius and mixing the chopped and cooked plant with whiskey.
C) A fertilizer mixture comprising: chopped and cooked planti cokius mixed in equal parts with Jack Daniels Old No. 7 Sour Mash 100 Proof Tennessee Whiskey.
D) A method of reviving a house plant, comprising: adding a predetermined amount of a combination of chopped and cooked planti cokius mixed with equal parts 100 proof whiskey, to the soil of said plant, allowing said plant to revive and blossom.
E) All of the above.
C) A fertilizer mixture comprising: chopped and cooked planti cokius mixed in equal parts with Jack Daniels Old No. 7 Sour Mash 100 Proof Tennessee Whiskey.
Reasoning: Claiming a fertilizer mixture mixed 50/50. A and B don’t include the specific whiskey. D doesn’t have information about the pre-determined amount.
To comply with 112, 1st paragraph, support requirements in the specification, the applicant cannot leave out any except one of the following:
A) At least one successful example of applying the invention for its stated utility so that undue experimentation is not required to prove utility by another in the field.
B) The best mode of practicing the invention known to the inventor at the time of filing the application.
C) A written description of sufficient adequacy to enable one of skill in the art to practice the invention.
D) A written description sufficient to make and use the invention.
E) The best mode of the invention known to co-workers of the inventor who had made this best mode known to the inventor who thought it over and agreed it was better than what he had come up with on his own.
A) At least one successful example of applying the invention for its stated utility so that undue experimentation is not required to prove utility by another in the field.
Reasoning: Best mode known to inventor has to be there, including those known to the co-workers. Can leave out a successful example, it can be prophetic.
Independently of each other, Bert and Ernie invented the same rubberized, floating toy in the United States. A U.S. Patent was granted to Bert on February 18, 2012 on an application filed on April 12, 2010, claiming the toy. On April 10, 2012, Ernie filed a patent application in the USPTO claiming the same toy. There is no common assignee. Under which of the following provisions of 35 U.S.C. 102 is the U.S. patent to Bert prior art with regard to the toy claimed by Ernie?
A) 35 U.S.C. 102(a)
B) 35 U.S.C. 102(b)
C) 35 U.S.C. 102(e)
D) A and C
E) A, B, and C
D) A and C
Reasoning: The AIA went into effect March 16, 2013. Bert’s patent will be examined under pre-AIA.
Independently of each other, Oscar and Felix invented identical ergonomic golf clubs in the United States. Oscar filed his patent application in the U.S. on April 12, 2012, and a patent issued on March 12, 2013. On April 10, 2013, Felix filed his patent application in the USPTO claiming golf clubs identical to those claimed in Oscar’s patent. There is no common assignee. Under which of the following provisions of 35 U.S.C. 102 is the U.S. patent to Oscar prior art with regard to the golf club claimed by Felix?
A) 35 U.S.C. 102(a)
B) 35 U.S.C. 102(b)
C) 35 U.S.C. 102(e)
D) A and C
E) A, B, and C
A) 35 U.S.C. 102(a)
Reasoning: The patent is filed after the AIA effective date, and so the issue will come from a 102(a)(1) issue.
Which of the following references could be used by an examiner to appropriately reject claims in a patent application filed by Jonathan Williamson under 35 U.S.C. 102(a)(2)? Assume Williamson conceived of his invention on March 1, 2013, and filed a patent application fully disclosing the invention on October 1, 2013.
A)
An article in Science Daily describing the invention in detail, which was authored by Williamson and published on August 1, 2013.
B)
An article in Scientific American describing the invention in detail, which was authored by Williamson and his colleague Carter Thomas and published on September 15, 2013.
C)
An Irish patent application publication that lists Williamson as the inventor and which published on November 1, 2013, and with the Irish filing date relied upon to support a priority claim for a PCT application that published.
D)
A published PCT claiming priority to a French patent application that lists Williamson and Carter Thomas as inventors, which was filed on June 1, 2012.
E)
None of the above.
D) A published PCT claiming priority to a French patent application that lists Williamson and Carter Thomas as inventors, which was filed on June 1, 2012.
Reasoning: 102(a)(2) relates to filing dates. AIA 35 U.S.C. 102(a)(2) states: “A person shall be entitled to a patent unless— the claimed invention was described in a patent issued under section 151, or in an application for patent published or deemed published under section 122(b), in which the patent or application, as the case may be, names another inventor and was effectively filed before the effective filing date of the claimed invention.”
The key to getting this question right is to know what 102(a)(2) captures as prior art. By the explicit terms of this section of the statute, 102(a)(2) captures prior-filed U.S. patent applications, as well as prior-filed patent applications that are deemed published, provided however that they must name “another inventor.”
We can rule out (A) and (B) because these relate to publications. (C) can be ruled out because the only inventor is Williamson, who is also the inventor on the U.S. patent application in question. (D) lists Williamson and Thomas as co-inventors, which satisfies the “another inventor” requirement of 102(a)(2). The French filing date will be considered a prior art date because it was relied upon in a published PCT application. Notice that the fact that the French patent application will not publish until after Williamson’s U.S. filing date does not matter since it is the French application date that creates the problem.
The key here is to notice that, if there is any difference in inventive entity between the application under examination on the one hand and either a prior art U.S. patent, U.S. patent application publication or WIPO-published PCT application, the U.S. patent, U.S. patent application publication, or WIPO-published PCT application satisfies the “names another inventor” requirement of AIA 35 U.S.C. 102(a)(2). Thus, in the case of joint inventors, only one inventor needs to be different for the inventive entities to be different.
In which of the following circumstances would it not be possible for an applicant who filed on December 1, 2013, to rely on a Rule 1.130 affidavit to take advantage of the exceptions of 102(b)(1)?
A)
The inventor publicly disclosed the subject matter in question via a slide presentation at a scientific meeting on January 15, 2013, while the intervening disclosure of the subject matter was made in a journal article on September 1, 2013.
B)
The party making the intervening disclosure learned of the subject matter in question after attending a lecture given by the inventor on October 1, 2012, and subsequently published an article detailing the inventor’s invention on December 15, 2012.
C)
The party making the intervening disclosure learned of the subject matter in question after attending a lecture given by the inventor on April 1, 2013, and subsequently published an article detailing the inventor’s invention on November 15, 2013.
D)
The party making the intervening disclosure learned of the subject matter in question after seeing a draft of an academic article provided to him for purpose of peer review. The draft was circulated on May 1, 2013, and an article was subsequently published detailing the inventor’s invention as described in the draft article on November 30, 2013.
E)
None of the above.
B) The party making the intervening disclosure learned of the subject matter in question after attending a lecture given by the inventor on October 1, 2012, and subsequently published an article detailing the inventor’s invention on December 15, 2012.
Reasoning: In (A), (C) and (D), the initial disclosure occurred within one year of filing the patent application. In (B), however, the initial disclosure happened some 14 months prior to the filing of the patent application on December 1, 2013. Thus, the applicant could not rely on a Rule 1.130 affidavit. The applicant would not be able to remove their own disclosure of October 1, 2013.
Michael Arthur is the inventor of a cordless jump rope. Essentially, the invention is a jump-rope simulator incorporating rotatable, counterbalancing weights within a handle and marketed to those individuals who really like to jump rope but who lack the physical prowess necessary to actually jump the rope. Arthur, who is very proud of his invention, writes up a description of the invention together with several drawings and shows them to various individuals at his health club, all of whom like the invention. The first such disclosure occurred on June 15, 2013. One fellow by the name of Bradley Brady likes it so much that he decides to file a patent application on the cordless jump rope, which occurs on November 15, 2013. Arthur subsequently files a patent application on December 15, 2013. The application filed by Brady fully discloses the Arthur invention. The application filed by Arthur includes 20 claims, 3 of which are in independent format. The claims filed by Arthur are quite different compared to the claims submitted by Brady.
Will it be possible for Arthur to overcome a rejection by a patent examiner based on the Brady application?
A)
Yes. Arthur can submit a Rule 1.130 affidavit.
B)
Yes. Arthur can submit a Rule 1.131 affidavit.
C)
Yes. Arthur can submit a Rule 1.132 affidavit.
D)
Yes, but Arthur will be required to file a petition to institute a derivation proceeding under AIA 35 U.S. C. 135.
E)
No, Arthur will not be able to remove the reference under the AIA first-to-file rules.
A) Yes. Arthur can submit a Rule 1.130 affidavit.
Reasoning: The issue is removing the prior art, not showing derivation, SINCE the claims are different. Derivations are about claims that are the same or similar.
Spencer Kelly is the inventor of an attachment to a shotgun barrel, which modifies the pattern of the shot released from the shotgun shell when it is fired. Kelly, who is very proud of his invention, writes up a description of the invention together with several drawings and shows them to various individuals at his gun club, all of whom like the invention. The first such disclosure occurred on August 22, 2013. One fellow by the name of Alex Lexington likes it so much that he decides to file a patent application on the shotgun barrel attachment, which occurs on October 22, 2013. Kelly subsequently files a patent application on January 1, 2014. The application filed by Lexington fully discloses the Kelly invention. The application filed by Kelly includes 25 claims, 5 of which are in independent format. Claims 1 – 5 filed by Kelly are identical to claims submitted by Lexington, Claims 6 – 10 filed by Kelly are substantially similar to the claims filed by Lexington, and Claims 11 – 25 are quite different when compared with any claims filed by Lexington.
Will it be possible for Kelly to overcome a rejection by a patent examiner based on the Lexington application?
A)
Yes. Kelly can submit a Rule 1.130 affidavit to overcome any rejection of claims 1 – 25.
B)
Yes. Kelly can submit a Rule 1.130 affidavit to overcome any rejection of claims 11 – 25.
C)
Yes. Kelly can submit a Rule 1.131 affidavit.
D)
Yes. Kelly can submit a Rule 1.132 affidavit.
E)
Yes, but Kelly will be required to file a petition to institute a derivation proceeding under AIA 35 U.S. C. 135.
B) Yes. Kelly can submit a Rule 1.130 affidavit to overcome any rejection of claims 11 – 25.
Reasoning: If he wants claims 1-10, he will have to file a derivation proceeding since they are substantially similar.
Under the AIA, disclosures made one year or less before the effective filing date of a claimed invention may not be prior art. Which disclosures potentially qualify for this grace period and can be removed as prior art?
I. Printed publications.
II. Issued patents.
III. Public use.
IV. Offers for sale.
A) I and II.
B) III and IV.
C) I, II and IV
D) I, III and IV.
E) I, II, III and IV.
E) I, II, III and IV.
Reasoning: (E) is correct. AIA 35 U.S.C. 102(a)(1) says: “A person shall be entitled to a patent unless— (1) the claimed invention was patented, described in a printed publication, or in public use, on sale, or otherwise available to the public before the effective filing date of the claimed invention….”
The Office’s interpretation of AIA 35 U.S.C. 102(a)(1) is that the AIA grace period extends to all of the documents and activities enumerated in AIA 35 U.S.C. 102(a)(1) that would otherwise defeat patentability. This interpretation avoids the very odd potential result that the applicant who had made his invention accessible to the public for up to a year before filing an application could still obtain a patent, but the inventor who merely used his invention one day before he filed an application could not obtain a patent.
Which of the following are required in order to obtain a filing date of a nonprovisional patent application at the United States Patent and Trademark Office?
A) At least one claim.
B) A specification describing the invention.
C) A drawing if necessary to understand the invention.
D) A, B and C.
E) B and C.
B) A specification describing the invention.
Reasoning: After PLTIA was enacted, all you need is a spec to get a filing date.
AIA 35 U.S.C. 102(a)(2) provides that a person is not entitled to a patent if the claimed invention was described in a U.S. patent, a published U.S. patent application, or an application for patent “deemed published” prior to the effective filing date of the claimed invention. Which of the following would be considered “deemed published” within the meaning of 102(a)(2)?
A) A World Intellectual Property Organization (WIPO) publication of a Patent Cooperation Treaty (PCT) international application that designates the U.S.
B) A World Intellectual Property Organization (WIPO) publication of a Patent Cooperation Treaty (PCT) international application that designates the United States, but only if subsequent to publication, the application enters the national stage in the U.S.
C) A World Intellectual Property Organization (WIPO) publication of a Patent Cooperation Treaty (PCT) international application that designates the United States, but only if the application publishes in English.
D) A World Intellectual Property Organization (WIPO) publication of a Patent Cooperation Treaty (PCT) international application that designates the U.S, but only if the application matures into an issued U.S. patent.
E) None of the above.
A) A World Intellectual Property Organization (WIPO) publication of a Patent Cooperation Treaty (PCT) international application that designates the U.S.
Reasoning: 35 U.S.C. 122(b). A World Intellectual Property Organization (WIPO) publication of a Patent Cooperation Treaty (PCT) international application that designates the United States is an application for patent deemed published under 35 U.S.C. 122(b) for purposes of AIA 35 U.S.C. 102(a)(2). Thus, under the AIA, WIPO publications of PCT applications that designate the United States are treated as U.S. patent application publications for prior art purposes, regardless of the international filing date, whether they are published in English, or whether the PCT international application enters the national stage in the United States. Accordingly, a U.S. patent, a U.S. patent application publication, or a WIPO publication of a PCT application (WIPO published application) that designates the United States, that names another inventor and was effectively filed before the effective filing date of the claimed invention, is prior art under AIA 35 U.S.C. 102(a)(2).
Jocelyn Carter is the inventor of a unique and highly concealable spy camera, which incorporates facial recognition modules. Carter files a nonprovisional patent application on April 2, 2012. The nonprovisional patent application does not contain any additional disclosure, but is filed with 21 claims, 4 of which are independent claims. On March 14, 2013, a Continuation-in-Part (CIP) is filed, further disclosing a previously undisclosed computer-implemented filtering system for sorting the recognized faces. On March 17, 2013, a continuation of the April 2, 2012, nonprovisional patent application is filed.
Which of the following accurately states which law these applications will be examined under?
I. The April 2, 2012, nonprovisional patent application will be reviewed with the examiner applying pre-AIA.
II. The March 14, 2013, CIP will be reviewed with the examiner applying pre-AIA.
III. The March 17, 2013, Continuation will be reviewed with the examiner applying AIA.
A) I
B) II
C) I and II
D) I and III
E) I, II and III
C) I and II
Reasoning: The nonprovisional application was filed before the March 16, 2013 AIA date. The CIP was filed pre-AIA as well. A continuation is reviewed based on the date of it’s parent application, which is pre-AIA.
Stanley Thaddeus Wojciehowicz is the inventor of an improved, combination coffeemaker/motion detector, which is useful for making better than mediocre coffee and doubles as a home security system. He first files a patent application in Poland on February 28, 2012. Subsequently, he files a patent application in the U.S. on February 27, 2013, which claims the benefit of his Polish filing date. The Polish application publishes on August 28, 2013, and the U.S. patent application publishes on August 29, 2013. The Polish patent is granted on March 14, 2014, and the U.S. patent is granted on October 22, 2014.
On November 1, 2014, Carl Levitt files an application claiming a combination coffeemaker/motion detector with integrated radio.
Which of the follow dates is the earliest date the Wojociehowicz disclosure will be prior art to Levitt?
A) February 28, 2012.
B) February 27, 2013.
C) August 28, 2013.
D) March 14, 2014.
E) October 22, 2014
A) February 28, 2012.
Reasoning: Foreign filing date will become a prior art date IF it is used in a PCT, US patent that publishes, or a US patent that issues.
Arnold Horshack is the inventor of a new and improved turkey call, which he conceived and reduced to practice on January 30, 2012. The device creates the most obnoxious sound, which approximates a wheezing hyena. Field studies show that turkeys appear to be drawn to the noise out of curiosity, or perhaps pity for what sounds like a dying animal. Horshack files a patent application in Canada on April 1, 2012, and on May 1, 2012, he files a U.S. patent application claiming priority to his Canadian filing date. For financial reasons, the U.S. application is expressly abandoned on July 1, 2012. The Canadian application publishes on October 1, 2013.
Freddie Washington files a U.S. nonprovisional patent application on November 1, 2013, which relates to a turkey call that approximates a wheezing coyote.
Which of the following would be the earliest date the Horshack disclosure could be used as prior art against Washington?
A) January 12, 2012.
B) April 1, 2012.
C) May 1, 2012.
D) July 1, 2012.
E) October 1, 2013.
E) October 1, 2013.
Reasoning: The US patent application was expressly abandoned, which means that it won’t be published. That leaves only the Canada application which publishes October 1, 2013. Since the foreign application isn’t used for priority, the publication date is the only date that matters for prior art.
Sebastian Wilcox files a nonprovisional patent application on December 17, 2013. The application filed contains a specification sufficient to satisfy 35 U.S.C. 112(a), but does not include any claims. In due course, the Patent Office sends a Notice of Incomplete Application, indicating that a filing date has not been awarded. What should Wilcox do?
A) Notify the Patent Office that pursuant to the Patent Law Treaty Implementation Act of 2012, a claim is no longer required at the time of filing in order to have a filing date awarded. Specifically request that a filing date of December 17, 2013, be awarded.
B) Petition the Commissioner to award a filing date in light of the Patent Law Treaty Implementation Act of 2012.
C) Convert the nonprovisional patent application into a provisional patent application because provisional patent applications do not require claims.
D) Submit one or more claims in a Preliminary Amendment together with a request to retroactively grant December 17, 2013, as the official filing date.
E) It is too late to do anything to fix this and salvage December 17, 2013 as a filing date. therefore, Wilcox should file a substitute application as soon as possible.
C) Convert the nonprovisional patent application into a provisional patent application because provisional patent applications do not require claims.
Reasoning: It is true that the Patent Law Treaties Implementation Act of 2012 (“PLT”) changes the law with respect to obtaining a filing date. Specifically, a claim is no longer required in order to have a filing date awarded. However, the provisions of the PLT that make it unnecessary to have a claim in order to obtain a filing date apply only to applications filed on or after December 18, 2013. Thus, A and B are wrong.
For a non-provisional application filed on or after March 16, 2013, that claims priority to a foreign application, the applicant is not required to provide any “transition application” statement if the non-provisional application claims only subject matter disclosed in a foreign application filed prior to March 16, 2013
T/F
T
Under pre-AIA law, the effective filing date of a claimed invention is determined on a claim-by-claim basis and not an application-by-application basis, The principle that different claims in the same application may be entitled to different effective filing dates with respect to the prior art remains unchanged by the AIA.
T/F
T
The determination of whether pre-AIA 35 U.S.C. 102 and 103 or AIA 35 U.S.C. 102 and 103 apply is made on a claim-by-claim basis.
T/F
F
Under the AIA there still remains a public use exception to public use under AIA 102(a)
T/F
F
A U.S. application is filed with method claims 1-5 and apparatus claims 6-10. In a first action all the claims are rejected and arguments are presented in a timely response. A Final Rejection is then mailed, and the response filed is refused entry. A continuation is filed before the parent is abandoned and a Final Rejection is then mailed in the continuation. A CIP is filed before its parent is abandoned and includes new disclosure constituting new matter and claims 11-13 directed to that new disclosure. Claims 11-13 :
A) Are entitled to an effective filing date as of the filing date of the CIP because they are not supported by either of the earlier applications.
B) Are entitled to an effective filing date as of the filing date of the parent of the CIP.
C) Are entitled to an effective filing date as of the grandparent of the CIP.
D) Are improper because they are based upon new matter.
E) Must be cancelled.
A) Are entitled to an effective filing date as of the filing date of the CIP because they are not supported by either of the earlier applications.
Reasoning: The CIP includes a new disclosure, therefore the claims are directed towards that new disclosure and are not supported by the earlier applications and can’t use them for priority. They can only be used for priority if the disclosures in the applications support the claims.
A CIP can be filed under 37 CFR 1.53(d) with a preliminary amendment adding the new matter to the original disclosure.
T/F
F
A freshly executed oath must be filed in every continuation within sixty days of filing.
T/F
F
A new assignment is required only if a continuation is filed under Rule 53(b).
T/F
F
The examiner cannot make a first action in a continuation “Final” even if it is the same as the last action in the parent.
T/F
F
The application of question 1 was eventually finally rejected by the examiner. A continuation application was filed and the parent was subsequently abandoned. A proper claim for foreign priority was made in the parent application. Which of the following statements is true?
A) Priority has been lost and cannot be claimed in the continuation.
B) Priority needs to be claimed in the continuation application.
C) A claim for priority in the continuation must be accompanied by a translation of the Thai application.
D) A reissue application should be filed in order to claim the priority in the parent application.
E) None of the above is true.
B) Priority needs to be claimed in the continuation application.
Reasoning:
MPEP 201.07 - The inventorship in the continuation application must include at least one inventor named in the prior-filed application, and the continuation application must also claim the benefit of the prior-filed application under 35 U.S.C. 120, 121, 365(c), or 386(c). See 37 CFR 1.78, especially paragraphs (d) and (e), and MPEP § 211 et seq. for additional requirements and more information regarding entitlement to the benefit of the filing date of a prior-filed copending application.
In a continuation application, the examiner objects to the oath filed in the parent application as stale because it was signed more than three months before the U.S. filing date. The most appropriate response would be:
A) Abandon the continuation application.
B) File a new oath.
C) Point out that a stale oath no longer must be replaced.
D) Ignore the examiner’s objection.
E) File another continuation with a proper oath.
C) Point out that a stale oath no longer must be replaced.
Reasoning: MPEP 602.03 - The Office does not check the date of execution of
the oath or declaration and will not require a newly
executed oath or declaration based on an oath or
declaration being stale (i.e., when the date of
execution is more than three months prior to the
filing date of the application) or where the date of
execution has been omitted. However, applicants
are reminded that they have a continuing duty of
disclosure under 37 CFR 1.56.
A provisional application was filed on June 1, 2012 relating to an improved golf club. The drawings fully illustrate the exterior appearance of the club. The clubs were first sold in the United States on June 23, 2011. Today, August 27, 2012, your client contacts you and tells you she wants to obtain design patent protection on the club. Your advice would be:
A) No protection can be obtained because it is barred by 102(b).
B) A design patent can be filed and claim benefit of the provisional filing date.
C) Designs on golf clubs are not patentable subject matter.
D) File a utility application claiming benefit of the filing date of the provisional and file a design application as a divisional of the Utility application.
E) Do nothing.
A) No protection can be obtained because it is barred by 102(b).
Reasoning: Design applications can’t claim priority from provisional applications. I originally choose D because I thought that would be a way to get around it. This is what I thought why:
MPEP 201.06 - A design application may be considered to be a divisional of a utility application (but not of a provisional application), and is entitled to the filing date thereof if the drawings of the earlier filed utility application show the same article as that in the design application sufficiently to comply with 35 U.S.C. 112(a). However, such a divisional design application may only be filed under the procedure set forth in 37 CFR 1.53(b), and not under 37 CFR 1.53(d). See MPEP § 1504.20
However, the design has to be disclosed in the utility application.
A Final Rejection was mailed on February 21, 2013 setting a three month period for response. Your client asks you to arrange an interview with the examiner during July. Which of the following is true.
A) An interview is not permitted.
B) Your client can attend the interview.
C) No demonstrations can be shown to the examiner during the interview.
D) If agreement is reached during the interview, no written response to the Final Rejection need be filed.
E) An extension of time must be obtained before the interview can be held.
B) Your client can attend the interview.
Reasoning: I thought it was E initially. However, in 713.09, it says “Interviews may be held after the expiration of the
shortened statutory period and prior to the maximum
permitted statutory period of 6 months without an
extension of time. See MPEP § 706.07(f).”
A PCT application was filed on October 23, 1996 in the USPTO by an American citizen living in Paris claiming priority from a French application filed October 24, 1995. The PCT application designated the U.S. On March 22, 1997 a translation of the application is furnished to the USPTO to enter the national stage and the national fee was paid. An Oath was submitted on April 3, 1997. If the U.S. patent issues, assuming no additional patent term is awarded and all maintenance fees are paid, it will expire on ______ and its date as prior art under 102(e) will be__________ :
A) October 24, 2015 and March 22, 1997.
B) October 23, 2016 and March 22, 1997.
C) October 23, 2016 and April 3, 1997.
D) March 22, 2017 and April 3, 1997.
E) April 3, 2017 and April 3, 1997.
C) October 23, 2016 and April 3, 1997.
Reasoning: The patent term is 20 years from filing. The filing date of the PCT is the date it enters the national stage.
A defensive publication is prior art as of its filing date.
T/F
F
Reasoning: It is prior art as of its publication date
The pre-AIA 102(e) date for a U.S. patent issuing from a PCT application entering the National Stage in the U.S. is always the date that the oath or declaration, the fee and the copy of the international application and translation into English are received.
T/F
F
Reasoning: Depends if it is filed before or after 11-29-00. If after, then the international application just has to indicate the US, then it has a pre-AIA 102(e) date as of it’s filing date.
An abandoned application establishes that the invention disclosed in that application has been abandoned and is not prior art under pre-AIA 102(g).
T/F
F
Reasoning: Can still be prior art
The critical date for a foreign patent under pre-AIA 102(d) is the date it becomes enforceable.
T/F
T
Reasoning: 2135.01
If performance of the claimed method involves an application of a law of nature, which of the following are not among the factors for determining whether the method claim embodies merely an unpatentable abstract idea?
A) Whether the claim generically recites an effect of the law of nature or claims every mode of accomplishing that effect.
B) Whether the claimed method recites an application of a law of nature solely involving subjective determinations.
C) The extent to which the application imposes meaningful limits on the execution of the claimed method steps.
D) Whether one of ordinary skill in the art would understand the claimed method incorporating the law of nature to be obvious.
E) All of the above.
D) Whether one of ordinary skill in the art would understand the claimed method incorporating the law of nature to be obvious.
Reasoning: Don’t overthink it and look for particularities. A-C deal with 101 considerations while D deals with obviousness, which is a 103 consideration.
If a general concept is involved in executing the steps of the method, this can be a clue that the claim is drawn to an abstract idea. Where a general concept is present, which of the following factors are relevant to determine whether the claim embodies merely an unpatentable abstract idea?’1.The extent to which use of the concept, as expressed in the method, would preempt its use in other fields.’2.The extent to which the claim is so sweeping as to cover both known and unknown uses of the concept.’3.The extent to which the claim would effectively cover all possible solutions to a particular problem.
A) Statement 1
B) Statement 2
C) Statements 1 and 2
D) Statements 2 and 3
E) Statements 1, 2 and 3
E) Statements 1, 2 and 3
Reasoning: The use of the concept can’t preempt its use in other fields. If the claim covers all known and unknown uses of the concept, then it is abstract. Lastly, if the claim covers all possible solutions, then it is just a statement of the problem.
When considering whether a method claim embodies an unpatentable abstract idea, which of the following would tend to weigh in favor of patent elibigility?”1.A particular machine or apparatus is incorporated into the claimed method.”2.A machine or apparatus is an object on which the method operates.”3.The recited machine or apparatus contributes nominally to the execution of the claimed method.
A) Statement 1
B) Statement 2
C) Statement 3
D) Statement 1 and 2
E) Statement 1 and 3
A) Statement 1
Reasoning: If a particular machine or apparatus is incorporated into the claimed method, this weighs in favor of patent eligibility in that there is “significantly more” than the method alone. This is particularly true when the method steps are specifically tied to the machine or apparatus. Factors weighing against eligibility are: (1) No recitation of a machine or transformation (either express or inherent). (2) Insufficient recitation of a machine or transformation. (3) Involvement of machine or transformation with the steps is merely nominally, insignificantly, or tangentially related to the performance of the steps. (4) Machine is generically recited such that it covers any machine capable of performing the claimed step(s). (5) Machine is merely an object on which the method operates. (6) Transformation involves only a change in position or location of an article. (7) The claim would monopolize a natural force or patent a scientific fact; e.g., by claiming every mode of producing an effect of that law of nature. (8) A law of nature is applied in a merely subjective determination. (9) A law of nature is merely nominally, insignificantly, or tangentially related to the performance of the steps. (10) The claim is a mere statement of a general concept. (11) Use of the concept, as expressed in the method, would effectively grant a monopoly over the concept. (12) Both known and unknown uses of the concept are covered, and can be performed through any existing or future-devised machinery, or even without any apparatus. (13) The claim only states a problem to be solved. (14) The general concept is disembodied. (15) The mechanism(s) by which the steps are implemented is subjective or imperceptible.
Found in 2106.05(b)
The time period to reply to a notice that a response is bona fide but incomplete cannot be extended.
T/F
F
Reasoning: 37 CFR 1.135(c), 1.136
(c) When reply by the applicant is a bona fide
attempt to advance the application to final action, and is substantially a complete reply to the non-final Office action, but consideration of some matter or compliance with some requirement has been inadvertently omitted, applicant may be given a new time period for reply under § 1.134 to supply the
omission.
A Petition for Access is no longer required to obtain access to the file of a pending application, which has been incorporated by reference into an U.S. patent.
T/F
F
Reasoning: A copy of the application doesn’t require a petition, but access does. 37 CFR 1.14(c)(1)(i)
A patent issuing from a CPA will only indicate the application number and filing date of the prior parent application.
T/F
T
Reasoning: 37 CFR 1.53(d)
37 CFR 1.53(d) pertains to the filing requirements for a Continued Prosecution Application (CPA). According to this regulation, a CPA is considered a continuation of the prior application. Therefore, a patent issuing from a CPA would carry the same application number and filing date as the prior parent application.
In accordance with patent laws, rules and procedures, an invention is most likely non-obvious in which of the following circumstances?
A) The prior art contains no teaching, suggestion or motivation to combine the references cited by the patent examiner.
B) The prior art teaches away from the claimed combination and the combination yields more than predictable results.
C) One of ordinary skill in the art would have been motivated to combine known elements in a novel arrangement.
D) The prior art combined by the patent examiner is tangentially related to the problem that the inventor was trying to solve.
E) It was obvious to try a finite set of combinations, but at the outset it was not apparent which combination would be useful.
B) The prior art teaches away from the claimed combination and the combination yields more than predictable results.
Reasoning: I chose A originally, but A is just a lack of teaching, while B is a teaching away from the combination, which is a stronger argument.
Examiners will apply §112(f) to a claim limitation that meets which of the following conditions:
1.The claim limitation uses the phrase “means for” or “step for” or a non-structural term that further includes a structural modifier.
2.The phrase “means for” or “step for” or the non-structural term recited in the claim is modified by functional language.
- The phrase “means for” or “step for” or the non-structural term recited in the claim is not modified by sufficient structure, material, or acts for achieving the specified function.
A) Statement 1
B) Statement 2
C) Statement 3
D) Statements 2 and 3
E) Statement 1, 2 and 3
D) Statements 2 and 3
Reasoning: Statement 1 is not correct. When “means for” or “step for” is used in conjunction with further discussion of structure, §112(f) is not invoked. For example, although a non-structural term like ˜mechanism’’ standing alone may invoke §112(f) when coupled with a function, it will not invoke §112(f) when it is preceded by a structural modifier (e.g., ˜detent mechanism’’).
Look in MPEP 2181 page 496.
A process claim containing the term “computer” should:
A) Not be construed as limited to a computer having a specific set of characteristics and capabilities, unless the term is modified by other claim terms or clearly defined in the specification to be different from its common meaning.
B) Be given the broadest reasonable interpretation possible and should include devices such as a calculator.
C) Ordinarily not be considered sufficient to satisfy the machine-or-transformation test.
D) Not be rejected to under §112(a) for lack of written description because the term has a well established meaning.
E) None of the above.
A) Not be construed as limited to a computer having a specific set of characteristics and capabilities, unless the term is modified by other claim terms or clearly defined in the specification to be different from its common meaning.
Reasoning: In In re Paulsen, the claims, directed to a portable computer, were rejected as anticipated under §102 by a reference that disclosed a calculator, because the term ˜computer’’ was given the broadest reasonable interpretation consistent with the specification to include a calculator, and a calculator was considered to be a particular type of computer by those of ordinary skill in the art. Answer B is incorrect because you simply cannot give the broadest reasonable interpretation without reference to what the specification includes; otherwise you would be giving more claim scope than the written description supports. Answer C is incorrect because the inclusion of a “computer” does ordinarily satisfy the machine-or-transformation test, particularly when the process steps are indicated to be performed on a computer. Answer D is incorrect; the term “computer” does not have a well-defined meaning, and does frequently include far more than what the generally understood term encompasses.
Computer is a wide term.
You filed an international application under the Patent Cooperation Treaty (PCT) for a client on July 5, 2016. The application claimed priority from a prior Brazilian application filed August 30, 2015. The international application designated the European Patent Office, South Africa and the United States. A demand for international preliminary examination, electing all eligible states, was filed on February 1, 2017. Which of the following would be the last day on which the basic national fee to entry into the United States can be paid?
A) January 5, 2019.
B) March 5, 2018.
C) March 5, 2017.
D) February 28, 2018.
E) None of the above.
D) February 28, 2018.
Reasoning: An applicant seeking entry into the US National phase via PCT has to pay the national fee no later than 30 months from the earliest priority date being asserted. Here, the priority being asserted is August 30, 2015. When 30 months are added to that date, you obtain the last day of February, 2018. Don’t even consider that the year in question might have been a leap year (and so the perfect answer would be February 29, 2019). Unless specifically told otherwise on the Exam, the year in question is NOT a leap year, and February has 28 days.
Moreover, this is an example that you may not get the “right” answer among the choices; you’re looking for the “best” answer. February 28 is clearly the best answer here, even if it’s not “right.”
Which of the following is not required to obtain an international filing date for an application filed under the Patent Cooperation Treaty (PCT);
A) A claim
B) A specification.
C) The designation of at least one PCT contracting state.
D) The name of the inventor.
E) An indication that the application is intended to be a PCT application.
D) The name of the inventor.
Reasoning: MPEP 1810
An international application designating the United States and other countries was filed in London at the U.K. Receiving Office on September 3, 1994, claiming priority from a French application filed June 23, 1994. A demand for international preliminary examination was properly made on October 14, 1995. The basic national fee to enter the U.S. was submitted to the USPTO on December 12, 1996, one year after the International Application was published in English. On March 12, 1997, in response to a Notice of Missing Parts a translation of the international application and a declaration of the inventors were submitted. The declaration was objected to by the Examiner because it did not indicate the residence address of one of the three inventors in an Ex parte Quayle action dated April 14, 1997, setting a two month period for response. A new declaration was submitted together with a request for reconsideration on May 5, 1997. The application issued as a U.S. patent on July 23, 1998. What is the effective date of the patent under 35 USC 102(e):
A) July 23, 1998.
B) December 12, 1995.
C) March 12, 1997.
D) September 3, 1994.
E) May 5, 1997.
C) March 12, 1997.
Reasoning: Since this PCT was filed before 11/29/00, the 102(e) date for a later-issuing US patent is the day the filing requirements (under 371, a.k.a. the FOoT rule) were complete. Here, the day the last of these (fee, oath, translation) arrived was March 12, 1997. The later objection to the declaration does not move that date.
Which of the following is not a requirement for filing an international application in the U.S. Receiving Office:
A) At least one applicant must be a U.S. national or legal resident.
B) The application must be in English.
C) The application must designate at least one PCT contracting state.
D) The filing fee must be submitted.
E) A request for treatment as an international application must be included.
D) The filing fee must be submitted.
Reasoning:
On April 3, 2014 you filed an international (PCT) application in the U.S. receiving Office for one of your clients. At the time your client was short of funds and decided to designate only the “Asian Tiger” countries of Malaysia, Indonesia, China and Korea. However, last week a company located in New Zealand approached your client indicating they would license any patent rights, which existed in New Zealand. On April 1, 2015, your client calls, seeking protection in New Zealand. What would be your advice?
A) Nothing. No additional countries need to be designated.
B) A Request for Additional Designations can now be filed together with the surcharge for late designation.
C) File another PCT application this time designating New Zealand.
D) File a continuation of the PCT application together with a new designation including New Zealand.
E) Abandon the PCT application and file a replacement with the expanded designation.
A) Nothing. No additional countries need to be designated.
Reasoning: All member countries of WIPO are automatically designated in any PCT applications filed after 1/1/04. Hence, they are all already designated.
Today, August 23, 2018 Jane Roe asks you to advise her regarding her patent, which issued on March 13, 2017. The patent is directed to a method of playing chess that she conceived and reduced to practice in December of 2013 while vacationing in Quebec, Canada. The application was filed in the United States on May 2, 2015. Since January of this year, Jane has been in negotiation with Chess Is Us (CIS), the leading manufacture of chess sets to license her invention exclusively. CIS told her today that their patent attorney has advised them that all the claims of her patent contain unnecessary limitations, and that accordingly the patent has very little value to them. Which of the following is true:
A) Either Jane or CIS may file a Request for a Reexamination with new claims deleting the unnecessary limitations.
B) Only Jane may file a Request for a Reexamination with broadened claims.
C) Any Request for Reexamination submitting new claims must be filed before March 13, 2019.
D) Claiming less than Jane had a right to claim in her patent may be the basis of a reissue.
E) A reexamination may only be filed under 37 CFR 1.53(b).
D) Claiming less than Jane had a right to claim in her patent may be the basis of a reissue.
Reasoning: Broadening claims can only be filed in a reissue, not a reexamination. That removes A and B as answers. There is no deadline for a reexamination, only a reissue, so C is out. Reexaminations are filed under 37 CFR 1.510. That removes E as an answer.
A claim in your client’s patent application has been rejected on obviousness grounds. To overcome this rejection, your client may do any of the following except:
A) Amend the claim to include limitations not taught in the prior art.
B) Argue that the combination of references would not create a reasonable expectation of success.
C) Argue that obvious to try is an inappropriate standard to apply for a rejection under 35 U.S.C. 103.
D) Argue that the claimed invention shows unexpectedly strong advantages over the prior art.
E) Argue that evidence of commercial success is pertinent where a nexus between the success of the product and the claimed invention has been demonstrated.
C) Argue that obvious to try is an inappropriate standard to apply for a rejection under 35 U.S.C. 103.
Reasoning: “Obvious to try” is a valid standard to apply. MPEP 2141 page 263
Which of the following statements is most in accordance with patent laws, practice and procedures relative to analogous art?
1.When determining whether a reference in a different field of endeavor may be used to support a case of obviousness, it is necessary to consider the problem to be solved.
2.Analogous art is not limited to references in the field of endeavor of the invention, but also includes references that would have been recognized by those of ordinary skill in the art as useful for applicant’s purpose.
3.Prior art is not considered analogous merely because it would have been recognized by one of ordinary skill in the art as useful for the applicant’s purpose, but instead must have some “critical nexus” with the claimed invention.
A) Statement 1
B) Statement 2
C) Statement 3
D) Statement 1 and 2
E) Statement 1 and 3
D) Statement 1 and 2
Reasoning: See teaching points for In re ICON Health & Fitness and Agrizap, Inc. v. Woodstream Corp. Statement 3 contradicts the teaching point from Agrizap.
Which of the following statements accurately defines when “obvious to try” is erroneously equated with obviousness under 35 U.S.C. 103?
1.When what would have been “obvious to try” would have been to vary all parameters or try each of numerous possible choices until one possibly arrived at a successful result, where the prior art gave either no indication of which parameters were critical or no direction as to which of many possible choices is likely to be successful.
2.When what was “obvious to try” was to explore a new technology or general approach that seemed to be a promising field of experimentation, where the prior art gave only general guidance as to the particular form of the claimed invention or how to achieve it.
3.Where what is “obvious to try” is determined by merely throwing metaphorical darts at a board filled with combinations of prior art possibilities to find the requisite elements and limitations that together combine to yield the claimed invention.
A) Statement 1
B) Statement 2
C) Statement 3
D) Statement 1 and 3
E) Statements 1, 2 and 3.
E) Statements 1, 2 and 3.
Reasoning: In re Kubin specifically cites In re O’Farrell for statements 1 and 2. The Federal Circuit in summarizing statement 1 explains that “In such circumstances, where a defendant merely throws metaphorical darts at a board filled with combinatorial prior art possibilities, courts should not succumb to hindsight claims of obviousness.” Thus, statement 3 is also a correct articulation as well. Presumably, the throwing of darts at the board equates with not having any particular direction within the prior art, requiring the examiner to merely pick and choose based on the absence of reason or logic.
You file a patent application on behalf of your new client claiming a new and improved compound to treat memory loss. The patent examiner rejects the claims submitted to the compound on obviousness grounds, citing the Greg reference which discloses over 1 million compounds potentially useful for treating memory loss and additionally citing the Marsha reference which identified Compound Y as being among 20 compounds that seem to have the most positive therapeutic value for treatment of memory loss. The examiner explains in the rejection that Compound Y is the closest known compound to the claimed compound and that the claimed compound would have been obvious to one of skill in the art in view of Compound Y. Your client explains to you that Compound Y is indeed known to significantly enhance memory, but also is known to cause loss of bowel and bladder control in upwards of 40% of those individuals who were administered the compound. Which of the following arguments would not help you to convince the examiner that the obviousness rejection should be withdrawn?
A) Compound Y would not be selected by one of ordinary skill in the art for experimentation due to the undesirable negative side effects.
B) Given the negative side effects of Compound Y, it would have been logical to assume that those compounds structurally similar to Compound Y would not prove suitable.
C) With over 1 million compounds known to be useful for treating memory loss, one of skill in the art would not attempt to select Compound Y for further research.
D) Compound Y was one of only 20 compounds identified in the prior art to have the most positive therapeutic value for treating memory loss and, therefore, the prior art as a whole would not suggest to one of skill in the art that it would be obvious to try Compound Y over the other 19 compounds.
E) All of the above would be helpful arguments to make.
D) Compound Y was one of only 20 compounds identified in the prior art to have the most positive therapeutic value for treating memory loss and, therefore, the prior art as a whole would not suggest to one of skill in the art that it would be obvious to try Compound Y over the other 19 compounds.
Reasoning: The “obvious to try” reasoning for a obviousness rejection is a valid argument by the examiner.
With respect to obviousness, which of the following are true?
1.In cases involving new chemical compounds, it is necessary to identify some reason that would have led a chemist to modify a known compound in a particular manner to establish prima facie obviousness of a new claimed compound.
2.If a patent examiner makes a prima facie showing of obviousness, the applicant may rebut based on unexpected results by demonstrating that the claimed invention exhibits some superior property or advantage that a person of ordinary skill in the relevant art would have found surprising or unexpected.
3.In order to demonstrate that a claimed invention is obvious, a patent examiner can demonstrate how one of ordinary skill in the art would be able to retrace the steps of the applicant in order to achieve the claimed invention.
A) Statement 1
B) Statement 2
C) Statement 3
D) Statements 1 and 2
E) Statements 1, 2 and 3.
On September 23, 2016 a U.S. patent application was filed directed to a screwdriver. On January 8, 2017 a claim for priority was made and a certified copy filed of a Canadian application filed October 21, 2015. A continuation was filed in June of 2017 under 37 CFR 1.53(b) and the parent abandoned shortly thereafter. No claim for priority was made in the continuation, which issued as a U.S. patent on January 13, 2018. Which of the following statements is true:
A) The failure to claim priority in the continuation can only be corrected by filing a reissue application.
B) The failure to claim priority in the continuation application can be corrected by obtaining a Certificate of Correction and also filing a Grantable Petition and fee for Late Assertion of Priority.
C) The failure to claim priority cannot be corrected and the priority is lost.
D) There is no need to claim priority in the Continuation since priority was claimed in the parent.
E) None of the above is true.
B) The failure to claim priority in the continuation application can be corrected by obtaining a Certificate of Correction and also filing a Grantable Petition and fee for Late Assertion of Priority.
Reasoning: 216.01
Your client MegaGiant has discovered a patent, owned by its competitor GigaCorp, that MegaGiant feels may be infringed by MegaGiant’s new lawn mower. MegaGiant has learned as well that the lawn mower described in the patent was on sale in the United States by GigaCorp more than one year before the earliest effective filing date of the patent. MegaGiant is seeking your advice. Your advice is:
A) A Request for Reexamination can be filed based upon the prior sale.
B) All the claims of the patent are invalid under 35 USC 102(a)(2).
C) All the claims of the patent are invalid under 35 USC 102(a)(1).
D) If a Request for Reexamination is brought based upon a prior patent or publication, the PTO may also consider the prior sale.
E) MegaGiant may petition the PTO to reissue the patent.
C) All the claims of the patent are invalid under 35 USC 102(a)(1).
Reasoning: Don’t overthink it.
