October 03 AM Flashcards
- Assuming that a rejection has been properly made final, which of the following statements is not in accordance with the patent laws, rules and procedures as related in the MPEP?
A An objection and requirement to delete new matter from the specification is subject to supervisory review by petition under 37 CFR 1.181.
B A rejection of claims for lack of support by the specification (new matter) is reviewable by appeal to the Board of Patent Appeals and Interferences.
C If both the claims and the specification contain the same new matter, and there has been both a rejection and objection by the primary examiner, the new matter issue should be decided by petition, and is not appealable.
D If both the claims and the specification contain the same new matter, and there has been both a rejection and objection by the examiner, the new matter issue is appealable, and should not be decided by petition.
E None of the above.
Correct Answer(s): C Related MPEP Chapter(s): MPEP 2100 - Patentability Answer Reasoning:ANSWER: (C) is the most correct answer. MPEP § 2163.06, under the heading "Review Of New Matter Objections And Rejections," states "A rejection of claims is reviewable by the Board of Patent Appeals and Interferences, whereas an objection and requirement to delete new matter is subject to supervisory review by petition under 37 CFR 1.181. If both the claims and specification contain new matter either directly or indirectly, and there has been both a rejection and objection by the examiner, the issue becomes appealable and should not be decided by petition." Answer (C) is not accord with the USPTO rules and the procedures set forth in the MPEP. (A), (B) and (D) are incorrect. They are in accord with proper USPTO procedure. See MPEP § 2163.06, under the heading "Review Of New Matter Objections And Rejections." (E) is not correct because (C) is correct. MPEP § 2163.06.
- A claim in a pending patent application stands rejected under 35 USC 103(a) as being obvious over Kim in view of Lance. The Kim and Lance references are both U.S. Patents issued on respective applications filed before the date of the application in question. In the rejection, the primary examiner asserted that no determination of the level of ordinary skill in the art was necessary because the subject matter of the application and of Kim and Lance were so easily understandable; and that the Kim reference relates to the applicant’s endeavor. The examiner properly found motive in Kim and Lance for combining the references, but the motive would produce a benefit different from that offered by applicant’s invention. Neither reference teaches or suggests the ambiguous limitation. In the rejection under 36 USC 103(a), the examiner did not address an ambiguous limitation in the claim. However, the examiner separately rejected under 35 USC 112, second paragraph as indefinite due to the ambiguity. According to the patent laws, rules and procedures as related in the MPEP, which of the following arguments, if true, would overcome the rejection?
A The examiner asserted that because the subject matter of the application and of Kim and Lance were so easily understandable, a factual determination of the level of skill in the art was unnecessary.
B The Kim reference is nonanalogous art because, although it relates to the field of the applicant’s endeavor, it is not pertinent to the particular problem with which the applicant was concerned.
C The reason given by the examiner to combine Kim and Lance is to obtain a benefit different from that offered by the applicant’s invention.
D Neither the Kim nor Lance references teaches or suggests the ambiguous claimed limitation that the examiner separately rejected as indefinite.
E All of the above.
Correct Answer(s): A B C D E Related MPEP Chapter(s): MPEP 100 - Secrecy, Access, National Security, and Foreign Filing MPEP 2700 - Patent Terms and Extensions Answer Reasoning:CREDIT GIVEN FOR ALL ANSWERS. (A) would be the most likely answer in view of KSR.
- 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 patent law, rules and procedures as related by 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 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).
Correct Answer(s): B Related MPEP Chapter(s): MPEP 700 - Examination of Applications Answer Reasoning:ANSWER: (B) is the most correct answer. MPEP § 713.01, under the heading "Scheduling And Conducting An Interview," states "[a]n 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.
- 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 the patent laws, rules and procedures as related 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.
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. Id. (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.
5. In accordance with the patent laws, rules and procedures as related in the MPEP, which of the following does not constitute prior art upon which a primary examiner could properly rely upon in making an obviousness rejection under 35 USC 103? A A U.S. patent in the applicant's field of endeavor which was issued two years before the filing date of applicant's patent application. B A non-patent printed publication in a field unrelated to the applicant's field of endeavor but relevant to the particular problem with which the inventor-applicant was concerned, which was published the day after the filing date of applicant's application. C A printed publication published more than 1 year before the filing date of applicant's patent application, which publication comes from a field outside the applicant's field of endeavor but concerns the same problem with which the applicant-inventor was concerned. D A printed publication in the applicant's field of endeavor published 3 years before the filing date of applicant's patent application. E A U.S. patent which issued more than 1 year before the filing date of applicant's patent application, which the Office placed in a different class than the applicant's patent application, but which concerns the same problem with which the applicant-inventor was concerned, and which shows the same structure and function as in the applicant’s patent application.
Correct Answer(s):
B
Related MPEP Chapter(s):
MPEP 2100 - Patentability
Answer Reasoning:ANSWER: (B) is the most correct answer. MPEP § 2141.01. Quoting from Panduit Corp. v. Dennison Mfg. Co., 810 F.2d 1561, 1568, 1 USPQ2d 1593, 1597 (Fed. Cir.), cert. denied, 481 U.S. 1052 (1987), MPEP 2141.01, under the heading "Prior Art Available Under 35 U.S.C. 102 Is Available Under 35 U.S.C. 103," states "'[b]efore answering Graham's 'content' inquiry, it must be known whether a patent or publication is in the prior art under 35 U.S.C. § 102.' Subject matter that is prior art under 35 U.S.C. § 102 can be used to support a rejection under section 103. Ex parte Andresen, 212 USPQ 100, 102 (Bd. Pat. App. & Inter. 1981) ('it appears to us that the commentator [of 35 U.S.C.A.] and the [congressional] committee viewed section 103 as including all of the various bars to a patent as set forth in section 102.')." Because the printed publication in (B) was not published until after the filing date of the patent application, it does not constitute prior art. (A) is incorrect because the patent pre-dates the application, therefore qualifying as prior art, and comes from the same field as the application, therefore qualifying as analogous. (C) is incorrect because the printed publication pre-dates the application, therefore qualifying as prior art, and concerns the same particular problem sought to be solved in the patent application, therefore qualifying as analogous. (D) is incorrect because the printed publication pre-dates the application, therefore qualifying as prior art, and comes from the same field as the application, therefore qualifying as analogous. (E) is incorrect because the patent issued before the application, therefore qualifying as prior art, and concerns the same particular problem sought to be solved in the patent application, therefore qualifying as analogous. The USPTO classification in a different class does not render the patent non-analogous. See MPEP § 2141.01(a) ("While Patent Office classification of references . . . are some evidence of 'nonanalogy' or 'analogy' respectively, the court has found 'the similarities and differences in structure and function of the inventions to carry far greater weight.'").- In an Exparte reexamination proceeding a non-final Office action dated November 8, 2001 set a shortened statutory period of 2 months to reply. The patent owner, represented by a registered practitioner, filed a response on March 7, 2002, which included an amendment of the claims. No request for an extension of time was received. As of May 8, 2002, which of the following actions would be in accord with the patent laws, rules and procedures as related in the MPEP?
A The registered practitioner should file a request and fee for an extension of time of two months.
B The registered practitioner should file a petition for revival of a terminated reexamination proceeding showing the delay was unavoidable or unintentional, and the appropriate petition fee for entry of late papers.
C The primary examiner responsible for the reexamination should mail a Notice of Allowance and grant a new patent. The patent owner’s failure to timely respond to the outstanding Office action does not affect the allowability of the claims in the patent.
D The examiner should provide an Office action based upon the claims in existence prior to the patent owner’s late amendment, and mail a Final Office action.
E The registered practitioner should request an extension of time of four months, and file a Notice of Appeal.
Correct Answer(s):
B
Related MPEP Chapter(s):
MPEP 2200 - Citation of Prior Art and Ex Parte Reexamination of Patents
Answer Reasoning:ANSWER: (B) is the most correct answer. 37 CFR § 1.137; and MPEP § 2268. The patent owner will need to file a petition for entry of late papers in order to have their response entered, considered and acted upon. According to MPEP 2268, “[p]ursuant to 37 CFR 1.550(d), an ex parte reexamination proceeding is terminated if the patent owner fails to file a timely and appropriate response to any Office . . . An ex parte reexamination proceeding terminated under 37 CFR 1.550(d) can be revived if the delay in response by the patent . . . was unavoidable in accordance with 37 CFR 1.137(a), or unintentional in accordance with 37 CFR 1.137(b).” (A) is not the most correct answer. In a reexamination proceeding, requests for extensions of time must be filed on or before the day on which action by the patent owner is due pursuant to 37 CFR § 1.550(c). See MPEP § 2265. (C) is incorrect. (C) is inconsistent with MPEP § 2266, which states that if the patent owner fails to file a timely response to any Office action, the reexamination proceeding will be terminated, and after the proceeding is terminated, the Commissioner will proceed to issue a reexamination certificate. There is no provision for issuing a notice of allowance in a reexamination proceeding. Further, (C) is incorrect inasmuch as the examiner should not mail a Notice of Allowance and grant a new patent. (D) is not the most correct answer. In a reexamination proceeding where patent owner fails to file a timely and appropriate response to any Office action, the reexamination proceeding will be terminated via issuance of the Notice of Intent to Issue Reexamination Certificate. See MPEP § 2266. (E) is not the most correct answer. In a reexamination proceeding, requests for extensions of time must be filed on or before the day on which action by the patent owner is due pursuant to 37 C.F.R. § 1.550(c).
- On January 2, 2001, a registered practitioner filed a patent application with the USPTO for inventor Bloc. The application includes a specification and a single claim to the invention which reads as follows:
- Compound Y.
In the specification, Bloc explains that compound Y is an intermediate in the chemical manufacture of synthetic Z. With respect to synthetic Z, the specification discloses its structural formula and further states that synthetic Z is modeled on the natural form of Z to give it the same therapeutic ability to alleviate pain. The specification goes on to state that synthetic Z is also a cure for cancer. On June 2, 2001, the practitioner received an Office action from the primary examiner rejecting the claim. The claim is rejected under 35 U.S.C. 101 as being inoperative; that is, the synthetic Z does not operate to produce a cure for cancer (i.e., incredible utility). Bloc believes he is entitled to a patent to his compound Y. In accordance with the patent laws, rules and procedures as related in the MPEP, how best should the practitioner reply to the rejection of the claim?
A Advise Bloc that he should give up because a cure for cancer is indeed incredible and is unproven.
B File a reply arguing that a cure for cancer is not incredible and he can prove it if given the chance.
C File a reply arguing that whether or not a cure for cancer is incredible is superfluous since Bloc has disclosed another utility - alleviating pain, which is not incredible.
D File a reply arguing that the claim is directed to compound Y, not synthetic Z.
E File a reply arguing that synthetic Z is modeled on the natural form of Z.
Correct Answer(s):
C
Related MPEP Chapter(s):
MPEP 2100 - Patentability
Answer Reasoning:ANSWER: (C) is the best answer. MPEP §§ 2107.01 and 2107.02. MPEP § 2107.01, under the heading "Therapeutic or Pharmacological Utility," cites In re Chilowsky, 229 F.2d 457, 461-2, 108 USPQ 321, 325 (CCPA 1956); In re Gazave, 379 F.2d 973, 978, 154 USPQ 92, 96 (CCPA 1967); and Nelson v. Bowler, 626 F.2d 853, 856, 206 USPQ 881, 883 (CCPA 1980) as taking the position that "[i]nventions asserted to have utility in the treatment of human or animal disorders are subject to the same legal requirements for utility as inventions in any other field of technology." MPEP § 2107.02, under the heading "The Claimed Invention Is The Focus Of The Utility Requirement," states ". . . regardless of the category of invention that is claimed (e.g., product or process), an applicant need only make one credible assertion of specific utility for the claimed invention to satisfy 35 U.S.C. 101 and 35 U.S.C. 112; additional statements of utility, even if not "credible," do not render the claimed invention lacking in utility. See, e.g., . . . In re Gottlieb, 328 F.2d 1016, 1019, 140 USPQ 665, 668 (CCPA 1964) ('Having found that the antibiotic is useful for some purpose, it becomes unnecessary to decide whether it is in fact useful for the other purposes 'indicated' in the specification as possibly useful.')." The issue is whether Mr. Bloc has disclosed a specific utility for the claimed compound Y sufficient to satisfy the practical utility requirement of 35 U.S.C § 101. According to the set of facts, we know that compound Y is an intermediate in the chemical manufacture of synthetic Z. We are given two utilities for synthetic Z: 1) alleviating pain, a utility it shares with the natural form of Z; and, 2) curing cancer. The examiner focuses on the disclosure that synthetic Z is a cure for cancer. Even if one were to agree that synthetic Z's ability to cure cancer amounts to an incredible utility, a claim to the intermediate compound Y would not run afoul of the utility requirement of 35 U.S.C. § 101 where another substantial, credible and specific utility is alternatively demonstrated. Here, the specification discloses that synthetic Z, like the natural form of Z, alleviates pain. The alleviation of pain is another substantial, credible and specific utility and serves to give compound Y an alternative utility to that of being used to make a cancer-curing substance. An applicant need not show that all disclosed utilities are credible. An applicant need only show that one of the disclosed utilities is in fact credible. In re Gottlieb, supra. The establishment of a credible, substantial and specific utility renders the disclosure of an additional incredible utility superfluous, and therefore ultimately irrelevant. Accordingly, Mr. Bloc's best course of action is to make the argument that he has disclosed another substantial, credible, and specific utility, notwithstanding the disclosure of curing cancer. (A) is not the most correct answer. The advice could prevent him from getting a patent to which he may be entitled. (B) is not the most correct answer. A cure for cancer is ostensibly incredible. It is hardly a response to the examiner's rejection to ask for the chance to prove one can cure cancer. (D) is not the most correct answer. While it is true that the utility requirement is addressed to the claimed invention, which here is compound Y not synthetic Z, it is not enough to respond by repeating what the invention is but, rather, to show that the invention has indeed a substantial, credible, and specific utility. Whatever is claimed as the invention, it must comply with the utility requirement of 35 U.S.C. § 101. Here the examiner states that the claim does not comply, as evidenced by the incredible utility of the final product. It is Mr. Bloc's responsibility to then show that compound Y does comply with 35 U.S.C. § 101 by showing that its end product has a substantial, credible, and specific utility. (E) is not the most correct answer. Noting that synthetic Z is modeled on natural Z does not go far enough in establishing a substantial, credible and specific utility for compound Y. It is synthetic Z's therapeutic ability to alleviate pain which establishes the necessary alternative utility.- 35 USC 102(d) pre-AIA establishes four conditions which, if all are present, establish a bar against the granting of a patent in this country. In accordance with the patent laws, rules and procedures as related in the MPEP, which of the following is not one of the four conditions established by 35 USC 102(d)?
A The foreign application must be filed more than 12 months before the effective U.S. filing date.
B The foreign application must have been filed by the same applicant as in the United States or by his or her legal representatives or assigns.
C The foreign patent or inventor’s certificate must be actually granted before the U.S. filing date.
D The foreign patent or inventor’s certificate must be actually granted and published before the U.S. filing date.
E The same invention must be involved.
Correct Answer(s): D Related MPEP Chapter(s): MPEP 2100 - Patentability Answer Reasoning:ANSWER: (D) is the most correct answer. As set forth in MPEP § 2135, under the heading "General Requirements of 35 U.S.C. 102(d)," states "(C) The foreign patent or inventor's certificate must be actually granted (e.g., by sealing of the papers in Great Britain) before the U.S. filing date. It need not be published." Answer (A) is incorrect because it is one of the four conditions established by 35 U.S.C. § 102(d). MPEP § 2135, under the heading "General Requirements of 35 U.S.C. 102(d)," states "(A) The foreign application must be filed more than 12 months before the effective U.S. filing date...." Answer (B) is incorrect because it is one of the four conditions established by 35 U.S.C. § 102(d). MPEP § 2135, under the heading "General Requirements of 35 U.S.C. 102(d)," states "(B) The foreign application must have been filed by the same applicant as in the United States or by his or her legal representatives or assigns." Answer (C) is incorrect because it is one of the four conditions established by 35 U.S.C. § 102(d). MPEP § 2135, under the heading "General Requirements of 35 U.S.C. 102(d)," states "(C) The foreign patent or inventor's certificate must be actually granted (e.g., by sealing of the papers in Great Britain) before the U.S. filing date. It need not be published." Answer (E) is incorrect because it is one of the four conditions established by 35 U.S.C. § 102(d). MPEP § 2135, under the heading "General Requirement of 35 U.S.C. 102(d)" states "(D) The same invention must be involved." See also MPEP § 2135.01(IV).
- Smith’s first invention is a new method of fabricating a semiconductor capacitor in a dynamic random access memory (DRAM) cell. Smith filed a first patent application on December 13, 2001 disclosing and claiming the first invention. Smith’s later, second invention, is an improved semiconductor capacitor in a DRAM cell and a method of making it. Smith filed a second application on December 16, 2002, claiming the benefit of the filing date of the copending first application. The second application contains claims 1-20, and a specification that provides support for the claimed subject matter in compliance with 35 USC 112, first paragraph. In the second application, claims 1-10 are drawn to Smith’s first invention, and claims 11-20 are drawn to Smith’s second invention. The primary examiner found a non-patent printed publication authored by Jones published on February 4, 2002. The article discloses the both of Smith’s inventions. Which of the following courses of action by the examiner would be in accord with the patent laws, rules and procedures as related in the MPEP?
A The examiner can reject claims 1-20 in the second application using the article because the publication date of the article is earlier than the filing date of the second application.
B The examiner cannot reject any of the claims in the second application using the article because the second application claims the benefit of the filing date of the first application.
C The examiner can reject claims 1-20 in the second application using the article because the second application is not entitled to the benefit of the filing date of the first application since the second application was filed more than one year from the filing date of the first application.
D The examiner can reject claims 1-10, but cannot reject claims 11-20 in the second application because the first application did not disclose the improved capacitor set forth in claims 11-20.
E The examiner cannot reject claims 1-10, but can reject claims 11-20 in the second application because the first application did not disclose an improved capacitor set forth in claims 11-20.
Correct Answer(s):
E
Related MPEP Chapter(s):
MPEP 200 - Types, Cross-Noting, and Status of Application
Answer Reasoning:ANSWER: The most correct answer is (E). See MPEP § 201.11, under the heading “VI. When Not Entitled To Benefit Earlier Of Filing Date, “ states “[a]ny claim in a continuation-in-part application which is directed solely to subject matter adequately disclosed under 35 U.S.C. 112 in the parent nonprovisional application is entitled to the benefit of the filing date of the parent nonprovisional application. However, if a claim in a continuation-in-part application recites a feature which was not disclosed or adequately supported by a proper disclosure under 35 U.S.C. 112 in the parent nonprovisional application, but which was first introduced or adequately supported in the continuation-in-part application such a claim is entitled only to the filing date of the continuation-in-part application. See In re Chu, 66. F.3d 292, 36 USPQ2d 1089 (Fed. Cir. 1995) and Transco Products, Inc. v. Performance Contracting Inc., 38 F.3d 551, 32 USPQ2d 1077 (Fed. Cir. 1994).” Accordingly, claims 1-10 are entitled to the benefit of the filing date of the first application, but claims 11-20 are not entitled to the benefit of the filing date of the first application because claims 11-20 recite an improved capacitor, which was not disclosed in the first application. Claims 1-10 have an effective filing date earlier than the publication date of the article. Claims 11-20 have a filing date later than the publication date of the article. For 35 U.S.C. 102(a) to apply, the reference must have a publication date earlier in time than the effective filing date of the application. See MPEP 706.02(a), paragraph “III. 35 U.S.C. 102(a).” Thus, answers (A)-(D) are incorrect.
- In accordance with the patent laws, rules and procedures as related in the MPEP, definiteness of claim language under 35 U.S.C. 112, second paragraph must be analyzed, not in a vacuum, but in light of:
A The content of the particular application disclosure.
B The teachings of the prior art.
C The claim interpretation that would be given by one possessing the ordinary level of skill in the pertinent art at the time the invention was made.
D The claim interpretation that would be given by one possessing expert skill in the pertinent art at the time the invention was made.
E (A), (B) and (C).
Correct Answer(s): E Related MPEP Chapter(s): MPEP 2100 - Patentability Answer Reasoning:ANSWER: (E) is the most correct answer. As set forth in MPEP § 2173.02, "[d]efiniteness of claim language must be analyzed, not in a vacuum, but in light of: (A) The content of the particular application disclosure; (B) The teachings of the prior art; and (C) The claim interpretation that would be given by one possessing the ordinary level of skill in the pertinent art at the time the invention was made." Answers (A), (B) and (C) each identify criteria to be analyzed in considering whether claim language is definite, therefore answer (E) which includes each of these answers is the most correct answer. Answer (D) is incorrect since it does not include criteria (C).
- Application A was filed after November 29, 2000. Reference X and application A were commonly owned at the time the invention of application A was made. In accordance with the patent laws, rules and procedures as related in the MPEP the prior art exclusion of 35 USC 103(c) can be properly invoked to obviate which of the following rejections?
A A rejection under 35 USC 102(e) based on reference X, if reference X is prior art only under 35 USC 102(e).
B A double patenting rejection based on reference X, if reference X is available as prior art only under 35 USC 102(e).
C A rejection under 35 USC 103(a) based on reference X, if references X is available as prior art only under 35 USC 102(e).
D (B) and (C).
E All of the above.
Correct Answer(s): C Related MPEP Chapter(s): MPEP 700 - Examination of Applications Answer Reasoning:ANSWER: The correct answer is (C). See MPEP § 706.02(l) et seq. In accordance with proper USPTO policy and procedure, the prior art exclusion of 35 U.S.C. § 103(c) can only be invoked when the reference only qualifies as prior art under 35 U.S.C. § 102(f), 35 U.S.C. § 102(g), or 35 USC 102(e) for applications filed on or after November 29, 1999, the application and the reference were commonly owned, or subject to an assignment to the same person, at the time the invention was made, and the reference was used in an obviousness rejection under 35 U.S.C. § 103(a). Answer (A) is incorrect. The prior art exclusion in 35 U.S.C. § 103(c) cannot obviate rejections made under 35 U.S.C. § 102(e). See MPEP 706.02(l)(1). Answer (B) is incorrect. The prior art exclusion in 35 U.S.C. § 103(c) cannot obviate double patenting rejections. See MPEP §§ 706.02(l)(1) and (l)(3).
- 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 patent laws, rules and procedures as related 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 coinventor.
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.
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 C FR § 1.19.
- In accordance with the patent laws, rules and procedures as related in the MPEP, which of the following fees may not be reduced by 50 percent for “small entities”?
A The basic filing fee for a design patent application.
B The fee for a disclaimer.
C The fee for a petition for an extension of time.
D The fee for recording a document affecting title.
E The maintenance fee due at 3 years and six months after grant.
Correct Answer(s): D Related MPEP Chapter(s): MPEP 300 - Ownership and Assignment Answer Reasoning:ANSWER: (D) is the most correct answer. 35 U.S.C. § 41(h); MPEP §§ 302.06; 509.02. 35 U.S.C. § 41(h) specifies that the fees "charged under subsection (a) or (b) shall be reduced by 50 percent with respect to their application to any small business concern as defined under section 3 of the Small Business Act, and to any independent inventor or nonprofit organization as defined in regulations issued by the Director." Since the fee for a document affecting title is charged pursuant to 35 U.S.C. § 41(d)(1), it not subsection (a) or (b), and it is not entitled to a small entity discount. See also MPEP 509.02, which states, "[o]ther fees, established under section 41 (c) or (d) of Title 35, United States Code, are not reduced for small entities since such a reduction is not permitted or authorized by Public Law 97-247. Fees which are not reduced include . . . miscellaneous fees and charges, 37 CFR 1.21." Fees for recording documents affecting title are set under 37 CFR § 1.21(h). See MPEP § 302.06. (A) is entitled to a small entity discount because it is a fee charged pursuant to 35 U.S.C. 41(a)(3)(A). (B) is entitled to a small entity discount because it is charged pursuant to 35 U.S.C. 41(a)(5). (C) is entitled to a small entity discount because it is charged pursuant to 35 U.S.C. 41(a)(8). (E) is entitled to a small entity discount because it is charged pursuant to 35 U.S.C. 41(b)(1).
- The specification of a patent application contains limited disclosure of using antisense technology in regulating three particular genes in E. coli cells. The specification contains three examples, each applying antisense technology to regulating one of the three particular genes in E. coli cells. Despite the limited disclosure, the specification states that the “the practices of this invention are generally applicable with respect to any organism containing genetic material capable of being expressed such as bacteria, yeast, and other cellular organisms.” All of the original claims in the application are broadly directed to the application of antisense technology to any cell. No claim is directed to applying antisense technology to regulating any of the three particular genes in E. coli cells. The claims are rejected under 35 USC 112, first paragraph, for lack of enablement. In support of the rejection, a publication is cited that correctly notes antisense technology is highly unpredictable, requiring experimentation to ascertain whether the technology works in each type of cell. The publication cites the inventor’s own articles (published after the application was filed) that include examples of the inventor’s own failures to control the expressions of other genes in E. coli and other types of cells. In accordance with the patent laws, rules and procedures as related in the MPEP, the rejection is:
A appropriate because the claims are not commensurate in scope with the breadth of enablement inasmuch as the working examples in the application are narrow compared to the wide breadth of the claims, the unpredictability of the technology, the high quantity of experimentation needed to practice the technology in cells other than E. coli.
B appropriate because the claims are not commensurate in scope with the breadth of the enablement inasmuch no information is provided proving the technology is safe when applied to animal consumption.
C inappropriate because the claims are commensurate in scope with the breadth of enablement inasmuch as the specification discloses that the “the practices of this invention are generally applicable with respect to any organism containing genetic material capable of being expressed.”
D inappropriate because the claims are commensurate in scope with the breadth of enablement inasmuch as the claims are original, and therefore are self-supporting.
E inappropriate because the claims are commensurate in scope with the breadth of the enablement inasmuch as the inventor is not required to theorize or explain why the failures reported in the article occurred.
Correct Answer(s): A Related MPEP Chapter(s): MPEP 2100 - Patentability Answer Reasoning:ANSWER: (A) is the most correct answer. 35 U.S.C. § 112, first paragraph; MPEP §§ 2164.01 and 2164.06(b). MPEP § 2164.01 states "[t]he standard for determining whether the specification meets the enablement requirement was cast in the Supreme Court decision of Mineral Separation v. Hyde, 242 U.S. 261, 270 (1916) which postured the question: is the experimentation needed to practice the invention undue or unreasonable? That standard is still the one to be applied. In re Wands , 858 F.2d 731, 737, 8 USPQ2d 1400, 1404 (Fed. Cir. 1988). Accordingly, even though the statute does not use the term 'undue experimentation,' it has been interpreted to require that the claimed invention be enabled so that any person skilled in the art can make and use the invention without undue experimentation." See also the discussion of Enzo Biochem, Inc. v. Calgene, Inc., 52 USPQ2d 1129 (Fed. Cir. 1999) in MPEP § 2164.06(b).
(B) is incorrect. MPEP § 2107.01, under the heading “III. Therapeutic Or Pharmacological Utility,” states “[t]he Federal Circuit has reiterated that therapeutic utility sufficient under the patent laws is not to be confused with the requirements of the FDA with regard to safety and efficacy of drugs to marketed in the United States. . . In re Brana, 51 F.3d 1560, 34 USPQ2d 1436 (Fed. Cir. 1995). Accordingly, Office personnel should not construe 35 U.S.C. 101, under the logic of ‘practical’ utility or otherwise, to require that an applicant demonstrate that a therapeutic agent based on a claimed invention is a safe or fully effective drug for humans.” (C) is incorrect. 35 U.S.C. § 112, first paragraph; MPEP § 2107.02. MPEP § 2107.02, under the heading “When Is An Asserted Utility Not Credible,” states “Rejections under 35 U.S.C. 101 have been rarely sustained by federal courts. Generally speaking, in these rare cases, the 35 .U.S.C. 101 rejection was sustained . . . because . . .[applicant] asserted a utility that . . . was wholly inconsistent with contemporary knowledge in the art. In re Gazave, 379 F.2d 973, 978, 154 USPQ 92, 96 (CCPA 1967).” The disclosure in (C) is inconsistent with published information. (D) is incorrect. MPEP § 2107.01 under the heading “Relationship Between 35 .U.S.C. 112, First Paragraph, and 35 U.S.C. 101,” quotes In re Ziegler, 992 F.2d 1197, 12001201, 26 USPQ2d 1600, 1603 (Fed. Cir. 1993) as stating “The how to use prong of section 112 incorporates as a matter of law the requirement of 35 U.S.C. 101 that the specification disclose as a matter of fact a practical utility for the invention. … If the application fails as a matter of fact to satisfy 35 U.S.C. § 101, then the application also fails as a matter of law to enable one of ordinary skill in the art to use the invention under 35 U.S.C. § 112.” Enablement for the claims in a utility application is found in the specification preceding the claims, as opposed to being in the claims. The claims do not provide their own enablement. 35 U.S.C. § 112, first paragraph.
(E) is incorrect. MPEP 2107.01 states that the examiner “must treat as true a statement of fact made by an applicant in relation to an asserted utility, unless countervailing evidence can be provided that shows that one of ordinary skill in the art would have a legitimate basis to doubt the credibility of such a statement.” Inasmuch as countervailing evidence has been produced, the lack of necessity to theorize or explain the failures does not alleviate the inventor from complying with 35 U.S.C. § 112, first paragraph to provide an enabling disclosure that is commensurate in scope with the claims.
- A utility application filed in May 2001 has been prosecuted through a second action final rejection. In the final rejection some claims were allowed and other claims were finally rejected. Which of the following accords with the patent laws, rules and the procedures as related in the MPEP for a proper reply to a second action final rejection in the utility application?
A An amendment canceling all rejected claims and complying with 37 CFR 1.116.
B Only a Notice of Appeal.
C The appropriate fee for a request for continued examination (RCE).
D A continued prosecution application (CPA) under 37 CFR 1.53(d).
E All of the above.
Correct Answer(s): A Related MPEP Chapter(s): MPEP 700 - Examination of Applications Answer Reasoning:ANSWER: (A) is the most correct answer. The filing of an amendment complying with 37 CFR § 1.116 is a proper reply under 37 CFR § 1.113 to a final rejection. See MPEP § 714.13, under the heading "Entry Not A Matter of Right," which states, in pertinent part , "A reply under 37 CFR 1.113 is limited to: (A) an amendment complying with 37 CFR 1.116." (B) is not the most correct answer because the Notice of Appeal must be accompanied by the appeal fee required by 37 CFR § 1.17(b). (C) is not the most correct answer because the RCE must be accompanied by a submission (i.e., an amendment that meets the reply requirement of 37 CFR § 1.111). (D) is not the correct answer because CPA practice does not apply to utility or plant applications if the prior application has a filing date on or after May 29, 2000. See MPEP § 706.07(h), paragraphs I and IV. (E) is not the correct answer since (A) is a proper reply.
- Tribell files a patent application for her aroma therapy kit on November 29, 1999, which issues as a patent on August 7, 2001. She tries to market her kit but all of her prospects are concerned that her patent claims are not sufficiently broad. On September 5, 2001, Tribell asks a registered practitioner for advice on what to do to improve her ability to market her aroma therapy kit. At the consultation the practitioner learns that in the original patent application, Tribell had a number of claims which were subjected to a restriction requirement, but were nonelected and withdrawn from further consideration. The practitioner also determines that the claims in the patent obtained by Tribell were narrower than the broader invention disclosed in the specification, and the cited references may not preclude patentability of the broader invention. Which of the following is the best course of action to pursue in accordance with the patent laws, rules and procedures as related in the MPEP?
A Tribell should file a reissue application under 35 USC 251 within two years of the issuance of the patent, broadening the scope of the claims of the issued patent.
B Tribell should file a reissue application under 35 USC 251 any time during the period of enforceability of the patent to broaden the scope of the claims of the issued patent, and then file a divisional reissue application of the first reissue application on the nonelected claims that were subjected to a restriction requirement in the nonprovisional application which issued as a patent.
C Tribell should simultaneously file two separate reissue applications under 35 USC 251, one including an amendment of broadening the claims in the original patent, and the other including the nonelected claims that were subjected to a restriction requirement in the nonprovisional application which issued as a patent.
D Tribell should immediately file a divisional application under 37 CFR 1.53(b) including the nonelected claims that were subjected to a restriction requirement in the original application.
E Tribell should immediately file a reissue application under 35 USC 251, including the nonelected claims that were subjected to a restriction requirement in the original application.
Correct Answer(s): A Related MPEP Chapter(s): MPEP 1400 - Correction of Patents Answer Reasoning:ANSWER: (A) is the most correct answer. 35 U.S.C. § 251, MPEP § 1402 (fifth paragraph). MPEP § 1402 states that one of the "most common bases for filing a reissue application [is] (A) the claims are too narrow or too broad." The claims may be broadened in a reissue application filed by the inventor within two years from the patent issue date. (B) is incorrect since the 4th paragraph of 35 U.S.C. § 251 states that no reissued patent shall be granted enlarging the scope of the clams of the original patent unless applied for within two years from the grant of the original patent. (C) and (E) are incorrect. MPEP § 1402, sixteenth paragraph. An applicant's failure to timely file a divisional application while the original application is still pending is not considered to be an error correctable via reissue. See In re Orita, 550 F.2d 1277, 1280, 193 USPQ 145, 148 (CCPA 1977). (D) is incorrect. MPEP § 201.06. In order to claim benefit under 35 U.S.C. § 120 to a parent application, a divisional application must be filed while the parent patent application is still pending.
- Inventor files an application containing the following original Claim 1:
- A widget comprising element A, and element B.
In a first Office action on the merits, a primary examiner rejects claim 1 under 35 USC 103 as being obvious over reference X. Reference X explicitly discloses a widget having element A, but it does not disclose element B. The examiner, however, takes official notice of the fact that element B is commonly associated with element A in the art and on that basis concludes that it would have been obvious to provide element B in the reference X widget. In reply to the Office action, the registered practitioner representing the applicant makes no amendments, but instead requests reconsideration of the rejection by demanding that examiner show proof that element B is commonly associated with element A in the art. Which of the following actions, if taken by the examiner in the next Office action would be in accord with the patent laws, rules and procedures as related in the MPEP?
I. Vacate the rejection and allow the claim.
II. Cite a reference that teaches element B is commonly associated with element A in the art and make the rejection final.
III. Deny entry of applicant's request for reconsideration on the ground that it is not responsive to the rejection and allow applicant time to submit a responsive amendment. A I and II only. B II only. C II and III only. D I, II, and III. E I and III only.
Correct Answer(s):
A
Related MPEP Chapter(s):
MPEP 2100 - Patentability
Answer Reasoning:ANSWER: (A) is the most correct answer. MPEP § 2144.03 provides that when an applicant seasonably traverses an officially noticed fact, the examiner may cite a reference teaching the noticed fact and make the next action final. Here, applicant did seasonably traverse the noticed fact by demanding proof in response to the rejection. II is therefore an appropriate action by the examiner. I is also an appropriate action because the examiner should vacate a rejection based on official notice if no support for the noticed fact can be found in response to a challenge by the applicant. See In re Ahlert, 424 F.2d 1088, 1091 (C.C.P.A. 1970) ("[a]ssertions of technical facts in areas of esoteric technology must always be supported by citation to some reference work" and "[a]llegations concerning specific "knowledge" of the prior art, which might be peculiar to a particular art should also be supported"). (B) is incorrect because (A) is correct. (C), (D), and (E) are incorrect because action III is improper. An applicant is entitled to respond to a rejection by requesting reconsideration, with or without amending the application. 37 CFR § 1.111(a)(1). Applicant is also required to timely challenge a noticed fact in order to preserve the issue for appeal. MPEP § 2144.03.- In accordance with the patent laws, rules and procedures as related in the MPEP, which of the following statements regarding operability or enablement of a prior art reference is the most correct?
A The level of disclosure required for a reference to be enabling prior art is no less if the reference is a United States patent than if it is a foreign patent.
B A reference is not presumed to be operable merely because it expressly anticipates or makes obvious all limitations of an applicant’s claimed apparatus.
C A non-enabling reference may not qualify as prior art for the purpose of determining anticipation or obviousness of the claimed invention.
D A reference does not provide an enabling disclosure merely by showing that the public was in possession of the claimed invention before the date of the applicant’s invention.
E All of the above are correct.
Correct Answer(s): A Related MPEP Chapter(s): MPEP 2100 - Patentability Answer Reasoning:ANSWER: (A) is the most correct answer. MPEP § 2121, under the heading "What Constitutes An 'Enabling Disclosure' Does Not Depend On The Type Of Prior Art The Disclosure Is Contained In," states, in reliance upon In re Moreton, 288 F.2d 708, 711, 129 USPQ 227, 230 (CCPA 1961): "The level of disclosure required within a reference to make it an 'enabling disclosure' is the same no matter what type of prior art is at issue.... There is no basis in the statute (35 U.S.C. 102 or 103) for discriminating either in favor of or against prior art references on the basis of nationality." Answer (B) is incorrect. MPEP § 2121, under the heading "Prior Art Is Presumed To Be Operable/Enabling," states that "[w]hen the reference relied on expressly anticipates or makes obvious all of the elements of the claimed invention, the reference is presumed to be operable." Answer (C) is incorrect. MPEP § 2121.01, under the heading "35 U.S.C. 103 Rejections And Use Of Inoperative Prior Art," quotes Symbol Technologies Inc. v. Opticon Inc., 935 F.2d 1569, 1578, 19 USPQ2d 1241, 1247 (Fed. Cir. 1991) as stating that "a non-enabling reference may qualify as prior art for the purpose of determining obviousness under 35 U.S.C. 103." Answer (D) is incorrect. MPEP § 2121.01 states that "[a] reference contains an 'enabling disclosure' if the public was in possession of the claimed invention before the date of invention." Answer (E) is incorrect because answers (B), (C) and (D) are incorrect.
- In accordance with patent laws, rules and procedures as related in the MPEP, a rejection under 35 USC 102 can be overcome by demonstrating:
A the reference is nonanalogous art.
B the reference teaches away from the claimed invention.
C the reference disparages the claimed invention.
D (A), (B) and (C).
E None of the above.
Correct Answer(s): E Related MPEP Chapter(s): MPEP 2100 - Patentability Answer Reasoning:ANSWER: (E) is the most correct answer. As set forth in MPEP § 2131.05, "'Arguments that the alleged anticipatory prior art is 'nonanalogous art' or 'teaches away from the invention' or is not recognized as solving the problem solved by the claimed invention, [are] not 'germane' to a rejection under section 102.' Twin Disc, Inc. v. United States, 231 USPQ 417, 424 (Cl.Ct.1986) (quoting In re Self, 671 F.2d 1344, 213 USPQ 1, 7 (CCPA 1982)). A reference is no less anticipatory if, after disclosing the invention, the reference then disparages it. The question whether a reference 'teaches away' from the invention is inapplicable to an anticipation analysis. Celeritas Technologies Ltd. v. Rockwell International Corp., 150 F.3d 1354, 1361, 47 USPQ2d 1516, 1522-23 (Fed.Cir.1999)." Therefore, answers (A) through (D) are incorrect. See also MPEP § 706.02(b) as to ways to overcome a rejection under 35 U.S.C. § 102.
- On January 3, 2003, a registered practitioner filed a continuation application that includes a benefit claim to a prior-filed application. The practitioner simultaneously filed in the prior-filed application an express abandonment in favor of a continuing application. The prior application contained five drawing figures described in the specification. However, the continuation application contains only four of the five drawing figures. The specification of the continuation application did not include a complete description of the missing drawing figure. A postcard from the USPTO, listing the contents of the continuation application, contains a note that only four drawing figures were received. The practitioner inadvertently omitted one of the drawing figures mentioned in the specification when he filed the continuation application. The missing drawing figure shows a claimed feature of the invention. On February 10, 2003, the practitioner received a Notice of Omitted Item(s) properly according a filing date of January 3, 2003 for the continuation application without the missing drawing figure and notifying the applicant that the drawing is missing. Which of the following procedures for filing the missing drawing would comply with the patent laws, rules and procedures as related in the MPEP for according the continuation application a January 3, 2003 filing date with the five drawing figures that were present in the application?
A The practitioner files the missing drawing figure in response to the Notice of Omitted Item(s) within the time period set forth in the notice.
B The practitioner files the missing drawing figure and an amendment to the specification to add a complete description of the missing drawing figure in response to the Notice of Omitted Item(s) within the time period set forth in the notice.
C The practitioner files an amendment to cancel the description of the missing drawing figure from the specification of the continuation application.
D If the continuation application as originally filed includes an incorporation by reference of the prior-filed application to which the benefit is claimed, the practitioner can file the missing drawing figure any time prior to the first Office action.
E The practitioner files the missing drawing figure accompanied by a petition under 37 CFR 1.53(e) with the petition fee set forth in 37 CFR 1.17(h) only alleging that the drawing figure indicated as omitted was in fact deposited with the USPTO with the application papers.
Correct Answer(s):
D
Related MPEP Chapter(s):
MPEP 200 - Types, Cross-Noting, and Status of Application
Answer Reasoning:ANSWER: (D) is the most correct answer. MPEP § 201.06(c), under the heading “INCORPORATION BY REFERENCE”, subheading “B. Application Entitled to a Filing Date,” states that “[i]f the application as originally filed includes a proper incorporation by reference of the prior application(s), an omitted specification page(s) and/or drawing figure(s) identified in a “Notice of Omitted Item(s)” may be added by amendment provided the omitted item(s) contains only subject matter in common with such prior application(s). In such case applicant need not respond to the “Notice of Omitted Item(s).” Applicant should submit the amendment adding the omitted material prior to the first Office action to avoid delays in the prosecution of the application.” (A) and (B) are incorrect because the application filing date will be the date of the filing of the missing drawing figure. See MPEP § 601.01(g). Furthermore, a priority claim under 35 U.S.C. § 120 in a continuation or divisional application does not amount to an incorporation by reference of the application to which priority is claimed. See MPEP § 201.06(c). (C) is incorrect. The continuation application will not be accorded with a filing date of January 3, 2003 with the missing drawing figure. (E) is incorrect because a petition under 37 CFR § 1.53(e) will not be granted if the missing drawing figure is inadvertently omitted by the applicant and not in fact deposited with the USPTO with the application papers.
