Older Exams Flashcards
- According to USPTO rules and procedure, which of the following can be overcome by an
affidavit under 37 CFR 1.131?
(A) A rejection properly based on statutory double patenting.
(B) A rejection properly made under 35 U.S.C. § 102(d) based on a foreign patent
granted in a non-WTO country.
(C) A rejection properly made under 35 U.S.C. § 102(a) based on a journal article
dated one month prior to the effective filing date of the U.S. patent application.
Applicant has clearly admitted on the record during the prosecution of the
application that subject matter in the journal article relied on by the examiner is
prior art.
(D) A rejection properly made under 35 U.S.C. § 102(b) based on a U.S. patent that
issued 18 months before the effective filing date of the application. The patent
discloses, but does not claim, the invention.
(E) None of the above.
- ANSWER: (E) is the correct answer. MPEP § 715. (A) is incorrect because an affidavit
under 37 CFR 1.131 is not appropriate where the reference is a prior U.S. patent to the same
entity, claiming the same invention. MPEP § 715. (B) and (D) are each incorrect because an
affidavit under 37 CFR 1.131 is not appropriate where the reference is a statutory bar under 35
U.S.C. § 102(d) as in (B) or a statutory bar under 35 U.S.C. § 102(b) as in (D). MPEP § 715.
(C) is incorrect because an affidavit under 37 CFR 1.131 is not appropriate where applicant has
clearly admitted on the record that subject matter relied on in the reference is prior art. MPEP
§ 715.
- Where a reference relied upon in a 35 U.S.C. § 103 rejection qualifies as prior art only
under 35 U.S.C. § 102(f), or (g), which of the following represents the most comprehensive
answer in accord with proper USPTO practice and procedure as to the action an applicant should
take to overcome the rejection?
(A) Present proof that the subject matter relied upon and the claimed invention are
currently commonly owned.
(B) Present proof that the subject matter relied upon and the claimed invention were
commonly owned at the time the later invention was made.
(C) Present proof that the subject matter relied upon and the claimed invention were
subject to an obligation to assign to the same person at the time the later invention
was made.
(D) (A) and (B).
(E) (C) and (D).
All answers are accepted, however, look for changed answer choice with B&C.
- Able and Baker conceived an improved gas grille for cookouts. Using elements A, B, C,
D, E and F found in their backyards, as well as elements G, H, I, J, K, L, M and N purchased at a
local hardware store, they successfully constructed and used a gas grille conforming to their
concept. The grille includes subcombination of elements K, L and M conceived by Able, and
subcombination C, D, F, G and M conceived by Baker. Able and Baker conceived their
respective subcombinations separately and at different times. Able and Baker retain you to
prepare and file a patent application for them. You are considering whether and what can be
claimed in one patent application. Which of the following is true?
(A) For Able and Baker to properly execute an oath or declaration under 37 CFR 1.63
in a patent application claiming not only the grille, but also the two
subcombinations, Able and Baker must be joint inventors of the grille, and each
of the two subcombinations.
(B) A characteristic of U.S. patent law that is generally shared by other countries is
that the applicant for a patent must be the inventor.
(C) If Able and Baker execute an oath or declaration under 37 CFR 1.63 as joint
inventors and file an application claiming the grille (a combination of elements A,
B, C, D, E, F, G, H, I, J, K, L, M and N), the existence of the claim to the grille is
evidence of their joint inventorship of the individual elements.
(D) Able and Baker may properly execute an oath or declaration under 37 CFR 1.63
as joint inventors and file an application containing claims to the grille (a
combination of elements A, B, C, D, E, F, G, H, I, J, K, L, M and N), claims to
the subcombination conceived by Able, and claims to the subcombination
conceived by Baker.
(E) Able and Baker could not properly claim the combination unless they successfully
and personally reduced the grille to practice.
ANSWER: D
§ 2137.01, “Inventorship,” and see Kimberly-Clark Corp. v. Procter & Gamble Distributing, 23
USPQ2d 1921, 1925 – 26 (Fed. Cir. 1992); and Moler v. Purdy, 131 USPQ 276, 279 (Bd. Pat.
Inter. 1960). (A) is not correct. MPEP § 2137.01 (Requirements for Joint Inventorship) and see
Kimberly-Clark Corp. v. Procter & Gamble Distributing, 23 USPQ2d 1921, 1925 – 26 (Fed. Cir.
1992); and Moler v. Purdy, 131 USPQ 276, 279 (Bd. Pat. Inter. 1960). (B) is not correct. 35
U.S.C. §§ 101, 115; MPEP § 2137.01. (C) is not correct. MPEP § 2137.01. The inventor of an
element, per se, and the inventor of a combination using that element may differ. See In re
DeBaun, 214 USPQ 933, 936 (CCPA 1982); and In re Facius, 161 USPQ 294, 301 (CCPA
1969). (E) is not correct. There is no provision in the Patent Statute requiring the invention to
be reduced to practice in order to file a patent application claiming the invention. Further, see
MPEP § 2137.01; and see In re DeBaun, 214 USPQ 933, 936 (CCPA 1982).
AIA changes Answer B (need not be an inventor).
- In which of the following final Office action rejections is the finality of the Office action
rejection proper?
(A) The final Office action rejection is in a second Office action and uses newly cited
art under 35 U.S.C. § 102(b) to reject unamended claims that were objected to but
not rejected in a first Office action.
(B) The final Office action rejection is in a first Office action in a continuation- in-part
application where at least one claim includes subject matter not present in the
parent application.
(C) The final Office action rejection is in a first Office action in a continuing
application, all claims are drawn to the same inve ntion claimed in the parent
application, and the claims would have been properly finally rejected on the
grounds and art of record in the next Office action if they had been entered in the
parent application.
(D) The final Office action rejection is in a first Office action in a substitute
application that contains material that was presented after final rejection in an
earlier application but was denied entry because the issue of new matter was
raised.
(E) None of the above.
- ANSWER: (C) is the correct answer. MPEP § 706.07(b). (A) is incorrect because a final
rejection is not proper on a second action if it includes a rejection on newly cited art other than
information submitted in an information disclo sure statement under 37 CFR 1.97(c). MPEP
§ 706.07(a). (B) is incorrect because it is improper to make final a first Office action in a
continuation- in-part application where any claim includes subject matter not present in the parent
application. MPEP § 706.07(b). (D) is incorrect because it is improper to make final a first
Office action in a substitute application where that application contains material, which was
presented in the earlier application after final rejection, or closing of prosecution but was denied
entry because the issue of new matter was raised. MPEP § 706.07(b). (E) is incorrect because
(C) is correct.
- In connection with the utility of an invention described in a patent application, which of
the following conforms to proper USPTO practice and procedure?
(A) A deficiency under 35 U.S.C. § 101 also creates a deficiency under 35 U.S.C.
§ 112, first paragraph.
(B) To overcome a rejection under 35 U.S.C. § 101, it must be shown that the claimed
device is capable of achieving a useful result on all occasions and under all
conditions.
(C) A claimed invention is properly rejected under 35 U.S.C. § 101 as lacking utility
if the particular embodiment disclosed in the patent lacks perfection or performs
crudely.
(D) To overcome a rejection under 35 U.S.C. § 101, it is essential to show that the
claimed invention accomplishes all its intended functions.
(E) A claimed invention lacks utility if it is not commercially successful.
- ANSWER: The most correct answer is (A). As stated in MPEP § 2107.01 (IV). A
deficiency under 35 U.S.C. § 101 also creates a deficiency under 35 U.S.C. § 112, first
paragraph. See In re Brana, 51 F.3d 1560, 34 USPQ2d 1436 (Fed. Cir. 1995); In re Jolles, 628
F.2d 1322, 1326 n.10, 206 USPQ 885, 889 n.11 (CCPA 1980); In re Fouche, 439 F.2d 1237,
1243, 169 USPQ 429, 434 (CCPA 1971) (“If such compositions are in fact useless, appellant’s
specification cannot have taught how to use them.”). (B) is not correct. MPEP § 2107 (II), and
see Brooktree Corp. v. Advanced Micro Devices, Inc., 977 F.2d 1555, 1571, 24 USPQ2d 1401,
1412 (Fed. Cir. 1992); and E.I. du Pont De Nemours and Co. v. Berkley and Co., 620 F.2d 1247,
1260 n.17, 205 USPQ 1, 10 n.17 (8th Cir. 1980). (C), (D) and (E) are not correct. MPEP § 2107
(II), and see E.I. du Pont De Nemours and Co. v. Berkley and Co., 620 F.2d 1247, 1260 n.17,
205 USPQ 1, 10 n.17 (8th Cir. 1980).
- On December 31, 1998, Sam Practitioner files a notice of appeal in a patent application
assigned to ABC Corp. after the examiner has rejected all of the claims on prior art. Within two
months he sends in his appeal brief and three months after the examiner’s answer is filed the case
is sent to the Board of Patent Appeals and Interferences (Board). Subsequently, while reading
the Official Gazette Sam notices that a patent issued to XYZ Corp. on October 26, 1999,
contains claims which read on an unclaimed embodiment in the ABC application, which is an
invention that is not within the scope of the invention claimed in the ABC application. The ABC
application was filed one month after the issuance of the XYZ patent. Upon learning of the XYZ
patent, ABC Corp. wants to provoke an interference by adding additional claims to its
application relating to the previously unclaimed embodiment. It is October 18, 2000 and Sam
comes to you for advice. Which of the following is the best and correct course of action?
(A) Since the ABC application is at the Board of Patent Appeals and Interferences
already, Sam need only request that the case be transferred to the Interference part
of the Board where an interference can be declared between the ABC application
and the XYZ patent.
(B) Sam should file an amendment adding the claims copied from the XYZ patent and
the Board is required to enter the amendment.
(C) Sam should promptly file an amendment containing the claims copied from the
XYZ patent and request entry. If the Board declines to enter the amendment, Sam
should file a separate, continuation application no later than October 26, 2000,
containing the claims copied from the XYZ patent as well as claims previously
appealed, and then, to avoid the rendering of a decision of the Board, he should
promptly inform the clerk of the Board in writing that they have decided to refile
and abandon the application containing an appeal waiting a decision.
(D) Sam should file an amendment containing the claims copied from the XYZ patent
and ask that the interference between the ABC application and the XYZ patent be
considered while the case is at the Board.
(E) Sam should wait until the appeal is decided before filing an amendment to
incorporate claims copied from the XYZ patent and to provoke an interference.
There is no benefit to filing new claims since only allowable claims will be
considered during an interference.
- ANSWER: (C). 35 U.S.C. § 135(b) requires that the claim be made in the ABC patent
within one year of the issuance of the XYZ patent. MPEP § 1211.01 states that there is no
obligation resting on the Board to consider new or amended claims submitted while the case is
on appeal. MPEP § 1210 states that when an application is refiled, the Board should be promptly
notified. Failure to notify the Board may result in the Board’s refusing an otherwise proper
request to vacate its decision. See also MPEP § 2307.03. (E) is incorrect as 35 U.S.C. § 135(b)
requires the claim to be made within one year. (D) is incorrect because the Board may refuse the
amendment and because the claims have not yet been determined to be allowable. Note that the
XYZ patent was filed before the ABC application and is therefore prior art under 35 U.S.C. §
102(e). See MPEP § 2306 and 2307.02. (A) is incorrect because the claims are not in the
application, no interference could be declared and such a “transfer” is not feasible. (B) is
incorrect because the Board is not required to enter the amendment and Sam may forfeit his
opportunity to present the claims within one year if he does not act promptly (as in answer (C)).
- Which of the following statements regarding a proper prior art reference is true?
(A) Canceled matter in the application file of a U.S. patent is a prior art reference as
of the filing date under 35 U.S.C. 102(e).
(B) Where a patent refers to and relies on the disclosure of a copending subsequently
abandoned application, such disclosure is not available as a reference.
(C) Where the reference patent claims the benefit of an earlier filed, copending but
subsequently abandoned application which discloses subject matter in common
with the patent, and the abandoned application has an enabling disclosure for the
common subject matter and the claimed matter in the reference patent, the
effective date of the reference patent as to the common subject matter is the filing
date of the reference patent.
(D) Matter canceled from the application file wrapper of a U.S. patent may be used as
prior art as of the patent date.
(E) All foreign patents are available as prior art as of the date they are translated into
English.
- ANSWER: (D). 35 U.S.C. § 102(a). As explained in MPEP § 901.01, the “matter canceled
from the application file wrapper of a U.S. patent may be used as prior art as of the patent date in
that it then constitutes prior public knowledge under 35 U.S.C. 102(a), In re Lund,376 F.2d 982,
153 USPQ 625 (CCPA 1967). See also MPEP § § 2127 and § 2136.02.” (A) is incorrect. 35
U.S.C. § 102(e). As stated in MPEP § 901.01, “Canceled matter in the application file of a U.S.
patent is not a proper reference as of the filing date under 35 U.S.C. 102(e), see Ex parte Stalego,
154 USPQ 52, 53 (Bd. App. 1966).” (B) is incorrect. As stated in MPEP § 901.02, “In re
Heritage, 182 F.2d 639, 86 USPQ 160 (CCPA 1950), holds that where a patent refers to and
relies on the disclosure of a copending abandoned application, such disclosure is available as a
reference. See also In re Lund, 376 F.2d 982, 153 USPQ 625 (CCPA 1967).” (C) is incorrect.
As MPEP § 901.02 indicates, where the reference patent claims the benefit of a copending but
abandoned application which discloses subject matter in common with the patent, and the
abandoned application has an enabling disclosure of the common subject matter and claimed
matter in the reference patent, the effective date of the reference as to the common subject matter
is the filing date of the abandoned application. In re Switzer, 77 USPQ 1, 612 O.G. 11 (CCPA
1948); Ex parte Peterson, 63 USPQ 99 (Bd. App. 1944); and Ex parte Clifford,49 USPQ 152
(Bd. App. 1940).” (E) is incorrect. As stated in MPEP § 901.05, “In general, a foreign patent,
the contents of its application, or segments of its content should not be cited as a reference until
its date of patenting or publication can be confirmed by an examiner’s review of a copy of the
document.”
44(Variation). Which of the following statements best correctly describes current PTO practice and
procedure?
(A) Where a patent discloses subject matter being claimed in an application
undergoing examination, if the patent’s designation of inventorship differs from
that of the application, then the patent’s designation of inventorship does not raise
a presumption of inventorship regarding the subject matter disclosed but not
claimed in the patent so as to justify a rejection under 35 U.S.C. § 102(f).
(B) The fact that a claim recites various components, all of which can be
argumentatively assumed to be old, provides a proper basis for a rejection under
35 U.S.C. § 102(f).
(C) A person can be an inventor without having contributed to the conception of the
invention.
(D) In arriving at conception, an inventor may not consider and adopt ideas and
materials derived from other sources such as an employee or hired consultant.
(E) It is essential for the inventor to be personally involved in reducing the invention
to actual practice.
- ANSWER: (A) is the most correct answer. See MPEP § 2137, p.2100-89. (B) is incorrect.
The mere fact that the claim recites components, all of which can be argumentatively assumed to
be old, does not provide a basis for rejection under 35 U.S.C. § 102(f). Ex parte Billottet, 192
USPQ 413, 415 (Bd. App. 1976); MPEP§ 2137. (C) is incorrect. One must contribute to the
conception to be an inventor. In re Hardee, 223 USPQ 1122, 1123 (Comm’r Pat. 1984). Unless
a person contributes to the conception of the invention, the person cannot be an inventor. Fiers
v. Revel, 984 F.2d 1164, 1168, 25 USPQ2d 1601, 1604-05 (Fed. Cir. 1993); MPEP § 2137.01
(section styled “An Inventor Must Contribute To The Conception of the Invention”). (D) is
incorrect. An inventor may consider and adopt suggestions from many sources. Morse v.
Porter, 155 USPQ 280, 283 (Bd. Pat. Inter. 1965); New England Braiding Co. v. A.W. Cheterton
Co., 970 F.2d. 878, 883, 23 USPQ2d 1622, 1626 (Fed. Cir. 1992); MPEP § 2137.01 (section
styled “As Long As The Inventor Maintains Intellectual Domination Over Making The
Invention, Ideas, Suggestions, And Materials May Be Adopted From Others”). (E) is incorrect.
In re DeBaun, 687 F.2d 459, 463, 214 USPQ 933, 936 (CCPA 1982) (“there is no requirement
that the inventor be the one to reduce the invention to practice so long as the reduction to practice
was done on his behalf”); MPEP § 2137.01 (section styled “The Inventor Is Not Required To
Reduce The Invention To Practice).
- Mr. Roberts, an American citizen touring a vineyard, saw a unique grape-squeezing
machine in France. The machine was highly efficient, and produced excellent wine. The
vineyard owner was not hiding the machine. It was out of public view and was the only one of
its kind. The vineyard owner had built it himself several years earlier, and no drawing or
technical description of the machine was ever made. The vineyard made only local sales of its
wines. Using his photographic memory, Roberts went back to his hotel and made technical
drawings of what he had seen. Upon his return to the United States, Roberts promptly prepared
and filed a patent application directed to the machine. Which of the following statements is
correct?
(A) Roberts may not obtain a patent on the machine because it was known by others
before Mr. Roberts made technical drawings of the machine.
(B) Roberts may not obtain a patent on the machine because wine made by the
machine had been sold more than a year before Roberts’ application filing date.
(C) Roberts is entitled to a patent because a goal of the patent system is public
disclosure of technical advances, and the machine would not have been disclosed
to the public without Roberts’ efforts.
(D) Roberts may not obtain a patent on the machine because the vineyard owner was
not hiding the machine and therefore the machine was in public use more than a
year before Roberts’ application filing date.
(E) Statements (A), (B), (C) and (D) are each incorrect.
- ANSWER: (E). Roberts is not entitled to a patent because he did not himself invent the
subject matter sought to be patented. 35 U.S.C. § 102(f). Therefore, statement (C) cannot be
correct. Statement (A) is incorrect because, although the machine was known by others, it was
not known by others in this country as required under 35 U.S.C. § 102(a). Similarly, statements
(B) and (D) are incorrect because, even if there was a sale or public use more than a year before
Roberts’ filing date, it was not “in this country” as required by 35 U.S.C. § 102(b).
19 (Variant). Which of the following is true?
(A) A final decision by a United States District Court finding a patent to be invalid
will have no binding effect during reexamination since the PTO may still find the
claims of the patent to be valid.
(B) A final decision by a United States District Court finding a patent to be valid will
have no binding effect during reexamination since the PTO may still find the
claims of the patent to be invalid.
(C) Once the Court of Appeals for the Federal Circuit determines that the claims of a
patent are valid, the USPTO may not find such claims invalid based upon newly
discovered art.
(D) If a patentee fails to disclose prior art to the PTO during regular prosecution, the
only way that a patentee can disclose later discovered prior art to the PTO after
issuance is by filing a request for reexamination.
(E) Once a patent claim is found valid during a District Court Proceeding then the
patent claims are entitled to a higher standard of patentability and the presumption
of validity can only be rebutted by clear and convincing evidence in a concurrent
or later reexamination proceeding.
- ANSWER: (B) is the most correct answer. As to (A) and (B) see MPEP 2286, page 2200-
97, stating, “[t]he issuance of a final district court decision upholding validity during a
reexamination also will have no binding effect on the examination of the reexamination.” Thus,
(A) is incorrect because a final holding of invalidity is binding on the PTO. As to (C), the PTO
may discover new art and find claims unpatentable as that art would raise a substantial new
question. MPEP §§ 2216 and 2286. As to (D), the patentee could file a prior art statement under
35 U.S.C. § 301, or disclose prior art in reissue application if the original patent (through error
without deceptive intent) is defective or claims more or less than should be claimed. As to (E),
preponderance of evidence standard does not change in reexamination proceedings. MPEP 2286.
- Which of the following statements is true regarding a product-by-process claim?
(A) Product-by-process claims cannot vary in scope from each other.
(B) Product-by-process claims may only be used in chemical cases.
(C) A lesser burden of proof may be required to make out a case of prima facie obviousness for product-by-process claims than is required to make out a prima facie case of obviousness when the product is claimed in the conventional fashion.
(D) It is proper to use product-by-process claims only when the process is patentable.
(E) It is proper to use product-by-process claims only when the product is incapable of description in the conventional fashion.
- ANSWER: (C). MPEP § 2113, page 2100-51, citing In re Fessman, 489 F.2d 742, 744, 180 USPQ 324, 326 (CCPA 1974). (A) and (E) are incorrect because “[t]he fact that it is necessary for an applicant to describe his product in product-by-process terms does not prevent him from presenting claims of varying scope.” MPEP § 2173.05(p), item (I). (D) is incorrect even if it is not necessary to describe the product in product-by-process form. (D) is incorrect because “determination of patentability is based on the product itself. The patentability of a product does not depend on its method of production. If the product in the product-by-process claim is the same as or obvious from a product of the prior art, the claim is unpatentable even thought the prior art was made by a different process.” MPEP § 2113, [p.2100-51]. (B) is incorrect. “A claim to a device, apparatus, claim, or composition of matter may contain a reference to the process in which it is intended to be used…so long as it is clear that the claim is directed to the product and not the process.” MPEP § 2173.05(p), item (I) [p.2100-174].
- A non-final Office action contains, among other things, a restriction requirement between
two groups of claims, (Group 1 and Group 2). Which of the following, if included in a timely
reply under 37 C.F.R. § 1.111, preserves applicant’s right to petition the Commissioner to review
the restriction requirement?
I. Applicant’s entire reply to the restriction requirement is: “The examiner erred in
distinguishing between Group 1 and Group 2, and therefore the restriction
requirement is respectfully traversed and no election is being made, in order that
applicant’s right to petition the Commissioner to review the restriction
requirement is preserved.”
II. Applicant’s entire reply to the restriction requirement is: “Applicant elects
Group 1 and respectfully traverses the restriction requirement, because the
examiner erred in requiring a restriction between Group 1 and Group 2.”
III. Applicant’s reply distinctly points out detailed reasons why applicant believes the
examiner erred in requiring a restriction between Group 1 and Group 2, and
additionally sets forth, “Applicant therefore respectfully traverses the restriction
requirement and no election is being made, in order that applicant’s right to
petition the Commissioner to review the restriction requirement is preserved.”
IV. Applicant’s reply distinctly points out detailed reasons why applicant believes the
examiner erred in requiring a restriction between Group 1 and Group 2, and
additionally sets forth, “Applicant therefore respectfully traverses the restriction
requirement and elects Group 2.
(A) I.
(B) II.
(C) III.
(D) IV.
(E) None of the above.
- ANSWER: (D). 37 C.F.R. § 1.111(b); MPEP §§ 818.03(a)-(c). (I) is incorrect since the
traversal does not distinctly point out the supposed errors in the examiner’s action, and no
election is made. 37 C.F.R. § 1.143. (II) is incorrect since the traversal does not distinctly point
out the supposed errors in the examiner’s action. (III) is incorrect since no election is made. (E)
is incorrect because (D) is correct.
- Mario Lepieux was a member of a Canadian national hockey team touring Europe. While traveling through Germany (a WTO member country) in December 1998, Mario conceived of an aerodynamic design for a hockey helmet that offered players improved protection while reducing air resistance during skating. Upon Mario’s return to Canada (a NAFTA country), he enlisted his brothers Luigi and Pepe Lepieux to help him market the product under the tradename “Wing Cap.” On February 1, 1999, without Mario’s knowledge or permission, Luigi anonymously published a promotional article written by Mario and fully disclosing how the Wing Cap was made and used. The promotional article was published in Moose Jaw Monthly, a regional Canadian magazine that is not distributed in the United States. The Wing Cap was first reduced to practice on March 17, 1999. A United States patent application properly naming Mario as the sole inventor was filed September 17, 1999. That application has now been rejected as being anticipated by the Moose Jaw Monthly article.
- Which of the following statements is most correct?
(A) The promotional article cannot be used as prior art because the Wing Cap had not been reduced to practice at the time the article appeared in the regional Canadian magazine.
(B) The regional Canadian magazine article is not prima facie prior art because it was published without Mario’s knowledge or permission.
(C) The regional Canadian magazine article is not prima facie prior art because it appeared in a regional Canadian publication and does not evidence knowledge or use in the United States.
(D) The promotional article in the regional Canadian magazine constituted an offer to sell that operates as an absolute bar against Mario’s patent application.
(E) Mario, as the inventor, can overcome the rejection by filing an affidavit under 37 C.F.R. § 1.132 establishing that he is the inventor, and the article describes his work.
- Which of the following statements is most correct?
(A) In a priority contest against another inventor, Mario can rely on his activities in Canada in establishing a date of invention.
(B) In a priority contest against another inventor, Mario can rely on his activities in Germany in establishing a date of invention.
(C) Mario can rely on his activities in Canada in establishing a date of invention prior to publication of the regional Canadian magazine article.
(D) (A) and (C).
(E) (A), (B), and (C).
- ANSWER: (E). MPEP § 716.10. There is no requirement that a publication describe something that has actually been reduced to practice before the publication can act as a prior art reference. Thus, statement (A) is not correct. With regard to statement (B), there is no requirement under 35 U.S.C. § 102 that a publication be made with an inventor’s knowledge or permission before it constitutes prior art. Statement (C) is incorrect at least because the Wing Cap was “described in a printed publication in…a foreign country” (35 U.S.C. § 102(a)) before Mario’s filing date and is therefore presumptive prior art. (D) is incorrect because even if the promotional article constituted an offer to sell, it was not in this country and was made less than a year prior to Mario’s filing date. 35 U.S.C. § 102(b).
- ANSWER: (E). Mario may rely on activities in both Germany (a WTO member country) and Canada (a NAFTA country) in establishing a date of invention prior to publication of the Moose Jaw Monthly article or in establishing priority. 35 U.S.C. § 104; see also MPEP § 715.01(c).
- On August 7, 1997, practitioner Costello filed a patent application identifying Laurel,
Abbot, and Hardy as inventors. Each named inventor assigned his patent rights to Burns just
prior to the application being filed. Laurel and Abbot, alone, jointly invented the subject matter
of independent claim 1 in the application. Hardy contributed to inventing the subject matter of
claim 2. Claim 2 properly depends upon claim 1. The examiner rejected claim 1 and claim 2
under 35 U.S.C. § 102(a) as anticipated by a journal article by Allen, dated July 9, 1997. Laurel,
Abbot, and Hardy are readily available to provide evidence in support of and sign an antedating
affidavit under 37 C.F.R. § 1.131 showing reduction to practice of the subject matter of claims 1
and 2 prior to July 9, 1997. Which of the following may properly make an affidavit under 37
C.F.R. § 1.131 to overcome the rejection of claims 1 and 2.?
(A) Laurel and Abbot.
(B) Laurel, Abbot, and Hardy.
(C) Laurel, Hardy and Burns.
(D) Burns only.
(E) None of the above.
- ANSWER: (B). MPEP 715.04. (A) is incorrect since it cannot be shown that less than all
the inventors invented the subject matter of claim 2. (C) and (D) are incorrect since the assignee
can make an affidavit under 37 C.F.R. § 1.131, only when it is not possible to produce the
affidavit of the inventor. The facts indicate that all inventors were readily available produce the
affidavit. (E) is incorrect since (B) is correct.
17 (Variants). Smith invented a laminate. In a patent application, Smith most broadly disclosed the laminate as comprising a transparent protective layer in continuous, direct contact with a light-sensitive layer without any intermediate layer between the transparent protective layer and the light-sensitive layer. The prior art published two years before the effective filing date of Smith’s application included a laminate containing a transparent protective layer and a light-sensitive layer held together by an intermediate adhesive layer. Which would be rejected as anticipated?
(A) 1. A laminate comprising a transparent protective layer and a light-sensitive layer.
(B) 1. A laminate comprising a transparent protective layer and a light-sensitive layer which is in contiguous and direct contact with the transparent protective layer.
(C) 1. A laminate comprising a transparent protective layer and a light-sensitive layer, but not including an adhesive layer.
(D) 1. A laminate consisting of a transparent protective layer and a light-sensitive layer
(E) 1. A laminate consisting of a transparent protective layer and a light-sensitive layer which is in continuous and direct contact with the transparent protective layer.
ANSWER: A
