practice Flashcards
- General Oglethorpe Asgardian has had a decorated military history. One day, he stumbles upon a concept relating to the innovative use of a blunt striking device, which can be used both as a weapon, to enable flight and to summon rain. He files a non-provisional patent application at the USPTO, which is summarily rejected by the patent examiner. The examiner did not find any prior art that is identical to the claimed invention, but rejected the claimed invention over an ordinary hammer in combination with an airplane and an obscure device used in Native American ceremonial rituals, saying that it would be obvious to attempt to combine the references to achieve the Asgardian striking device. Which of the following arguments would not be helpful if made by Asgardian?
A The prior art does not identify a starting reference that would allow one of skill in that art to both identify the problem to be solved and a path to a solution that would likely result in the solution achieved.
B The examiner has not articulated any reason why the prior art would be combined by one of skill in the art, but rather has merely reached that conclusion.
C The combination of elements that make up the striking device produce unexpected results.
D An obvious-to-try rationale is specifically prohibited by the last sentence of 35 U.S.C. 103(a), which prohibits consideration of how the invention was made.
E The combination of elements that make up the claimed invention is accomplished through new methods that provide unpredicted results.
D
This question asks which argument would not be helpful. The only one that would not help is (D) because, as a result of the Supreme Court’s decision in KSR v. Teleflex, an “obvious to try” rejection can appropriately be used by a patent examiner when there is a finite number of possible solutions.
With respect to (A), the failure to identify a starting point can lead to a finding that the invention is non-obvious.
With respect to (B), the key to supporting any rejection under 35 U.S.C. 103 is the clear articulation of the reason(s) why the claimed invention would have been obvious. The Supreme Court in KSR noted that the analysis supporting a rejection under 35 U.S.C. 103 should be made explicit.
With respect to (C) and (E), exemplary rationales that may support a conclusion of obviousness include: (1) combining prior art elements according to known methods to yield predictable results; and (2) use of known technique to improve similar devices (methods, or products) in the same way.
- You represent Damian Washington in an ex parte appeal before the Patent Trial and Appeals Board. In the decision, which issued November 18, 2013, the Board has reversed the examiner’s final rejection of all of the applicant’s claims, but has included a new ground of rejection pursuant to 35 U.S.C. 103, again rejecting all of the applicant’s claims. You responded to the decision on January 17, 2014, by submitting an amendment to all the claims and arguing that the claims, as so amended, are unobvious over the prior art. The examiner once again finally rejects the claims, stating that the amendments made do not overcome the Board’s new rejections. Which of the following courses of action would be the most appropriate action to take on behalf of the client?
A Prepare and file a Notice of Appeal to the Board, followed by a timely Appeal Brief and payment of any required fees.
B Request that the Board again assume jurisdiction of the application so that the basis of the new rejection may again be reviewed in view of the amendment and the examiner’s reasons for not allowing the claims as amended.
C File an amendment that adds previously unconsidered but disclosed subject matter and argue that the new amendments place the case in condition for allowance and specifically request reconsideration.
D File a Reply Brief with the Board directed to the new points of argument raised by the examiner.
E None of the above. The appeal went abandoned for failure to timely reopen prosecution.
First, the Board may reject one or more claims citing a new ground of rejection. But a new ground of rejection cannot be considered final for judicial review. When the Board enters such a non-final decision, the appellant, within two months from the date of the decision, must either reopen prosecution or request rehearing before the Board. If neither option is pursued, the appeal will be terminated. In this case, you opted to reopen prosecution, which you did timely, therefore, (E) is incorrect.
Further, where the examiner rejects the claims for the reason cited in the Board’s new ground of rejection, the rejection should be made final. That means that the applicant can now appeal to the Board. In these circumstances, when a final rejection of the claims has been made by the examiner, it is a mistake to believe that the Board will again review the rejection by virtue of the previous appeal. After such a final rejection, an applicant who desires further review of the matter by the Board must file a new appeal to the Board. Such an appeal from the subsequent rejection by the examiner will be an entirely new appeal involving a different ground than the previous appeal, which means that it will be necessary to file a new notice of appeal, appeal brief, and payment of appropriate fees. Thus, (A) is correct and (B) is incorrect.
(C) is incorrect because, at this stage, the application is once again after final rejection and amending claims to add previously unconsidered limitations, even if present in the original disclosure, is not something the applicant can do as a matter of right.
(D) is incorrect because it assumes that the Board has retained jurisdiction of the previous appeal, which is not the case.
- Today is January 7, 2014. It is 6pm Pacific Time as you sit in your office contemplating what you must do on an important matter for a new client. A patent application was filed in Germany on January 7, 2013. The German filing included a specification, claims and drawings. Your client tells you that he absolutely wants you to file a U.S. patent application claiming the benefit of the German filing date, but despite your continued and repeated warnings over the last several months, the client has not provided you with an English translation of the German application because he has been tied up with other business. Your client is now gone away on vacation for two weeks and is unreachable. Given these facts, which is the best course of action to choose?
A File a copy of the German application.
B File a copy of the German specification.
C You must obtain and file an English translation of the application.
D You must obtain and file an English translation of the specification.
E You do not need to do anything at this point because priority can be claimed up to 14 months after the filing of the German application.
A
You can file an application in a foreign language to obtain a filing date. You would then have to file an English translation in response to a Notice of Missing Parts.
With respect to (B), while it is now possible to file an application without claims or drawings in order to obtain a filing date, the USPTO has specifically cautioned against doing this and has said that, while this is possible, it is still best practice to file a complete application.
- Under which of the following conditions, if any, may the USPTO suspend or exclude an individual from further practice before the USPTO?
A The Director may only suspend or exclude an individual from practice before the USPTO if the practitioner has had a hearing and been given the opportunity to be heard in a proceeding conducted by the USPTO.
B The Director may, without notice, at his/her discretion and at any time, suspend an individual from practice before the USPTO.
C The Director has the authority to place a practitioner on interim suspension if the practitioner has been convicted of any crime in a court of the United States.
D The Director has the authority to place a practitioner on interim suspension if the practitioner has been convicted of a serious crime in a court of the United States.
E None of the above.
D
11. William and Fran are employees of ACME. They work together on a project and jointly invented an improved electrode for a battery. William and Fran turn their work over to their supervisor, Alex. Alex discusses the invention with William and Fran and then turns the project over to Mary, who is patent counsel for ACME. Without reviewing the project details, Mary turns the file over to an associate, Albert, who is a newly minted patent practitioner. Albert prepares a draft application, which Mary reviews and files on December 5, 2013. On March 18, 2014, Alex stumbles across an article that relates to William and Fran’s invention. Alex notifies Albert. Alex and Albert believe that at least some of the claims filed are unpatentable as a result of this article. Albert notifies Mary, who reaches the same conclusion. Given these facts, who has a duty to bring the article to the attention of the Office? A William and Fran B William, Fran, Alex, Mary and Albert C Mary and Albert D Alex and Albert E Mary, Albert and Alex
C
The rule is that everyone substantively involved in the prosecution of the patent application owes the Patent Office a duty.
William and Fran did not know about the article.
Rule 56(d) allows those who are not the attorney, agent or inventor to satisfy the duty to disclose by notifying the agent, attorney or inventor. Since Alex notified Albert, he successfully discharged his duty to disclose.
14. On September 15, 2011, you file an application on behalf of your client. Because you are a new patent practitioner without many clients, you do not have a deposit account and instead, as a matter of routine practice, you pay as you make filings. Ultimately, the examiner mails a final rejection in the application, dated October 1, 2013. The action sets a three-month shortened statutory period for a response. An amendment was filed on February 18, 2014, in response to the final rejection. The amendment included a petition and fee for a two-month extension of time. On March 10, 2014, an Advisory Action was mailed indicating that the amendment had been considered, but was not deemed to have placed the application in condition for allowance. On March 11, 2014, a Notice of Appeal was filed. On April 21, 2014, it was noted that a petition and fee for a third month extension of time had not been filed with the Notice of Appeal. On April 22, 2014, a petition and fee for an extension of time for the third month was filed. On which of the following dates, if any, would the filing of an Appeal Brief be considered timely? A May 10, 2014 B May 11, 2014 C June 20, 2014 D June 21, 2014 E None of the above
E
The first thing to notice here is that the question explains that you do not have a deposit account. This means that there can be no general authorization in the application on file because the USPTO does not accept a general authorization to charge fees to a credit card. Therefore, if you needed an extension at any time, you needed to file a request for the extension and pay for the necessary extension (i.e., with no general authorization to charge a deposit account, there is no implicit request for extensions of time).
When you filed the Notice of Appeal on March 11, 2014, you needed to also file a request for a three-month extension together with the appropriate fee, which did not happen. The six-month statutory period to take action ran through April 1, 2014. The application went abandoned on April 2, 2014. Therefore, your attempt on April 22, 2014, to pay the fee and request a three-month extension was too late; the application was already abandoned. Clearly, you did not intend the application to go abandoned; thus you would be able to revive this application as having been unintentionally abandoned. But that is not what the questions asks.
- You are a registered patent practitioner who prosecuted an original U.S. patent application for a foreign client. A U.S. patent has now been granted. The U.S. application included a proper claim for priority of the first-filed foreign patent application. When you received the patent, you noticed that the front page of the patent did not reflect a claim for priority. Upon review of the patent file, you discovered that even though a priority claim had been made, a certified copy of the foreign application had not been filed in the application. Which of the following would be the most appropriate advice to give to your client?
A A request for ex parte reexamination should be filed to correct this error.
B A certified copy of the foreign patent application should be sent to the USPTO with a request to place the certified copy into the patent file.
C A reissue application should be filed to correct this error.
D A petition should be filed with the Office of Petitions requesting that the certified copy of the foreign patent application be placed in the USPTO file.
E A certificate of correction should be sought to correct this error
A reissue application can be filed to correct an error in a patent. There must be at least one error in the patent to provide grounds for reissue of the patent. If there is no error in the patent, the patent will not be reissued. The most common bases for filing a reissue application are: (1) the claims are too narrow or too broad; (2) the disclosure contains inaccuracies; (3) applicant failed to or incorrectly claimed foreign priority; and (4) applicant failed to make reference to or incorrectly made reference to prior copending applications. In this situation, a claim for foreign priority was made, but it was not made correctly. In order to properly claim foreign priority, a certified copy of the foreign application must be provided to the Office, unless it has been previously submitted. In the question, you are told that this application is an “original U.S. patent application,” which means that it could not have previously been submitted to the Office. Therefore, it must be submitted in this application to make the proper claim for foreign priority.
(A) is incorrect because ex parte reexamination is for a substantial new question of patentability relating to one or more claims; it is not used to fix an incorrectly made priority claim.
(B) is incorrect because merely sending in a certified copy at this point will not act as a proper perfection of foreign priority, not to mention the Office will not simply add something like this to a patent file without following the proper procedures.
(D) is incorrect because a petition to add the certified copy to the file will not result in foreign priority being properly claimed, and again the Office will not simply add something like this after the close of prosecution.
(E) is incorrect because a certificate of correction is made to fix clerical or administrative errors. Those that picked (E) may have done so because a certificate of correction can be obtained in some scenarios to have a late, but properly made, claim of foreign priority noted in the patent grant prior to issuance. In this case, the patent has already been granted; therefore, reissue is the only way to fix the defective priority claim.
22.
On March 21, 2013, you file a patent application on behalf of your client, a small company. The application contains 2 claims. Claim 1 is to a cleaning solution wherein the primary ingredient is uric acid. Claim 2 is to a cleaning solution wherein uric acid and lemons are the primary ingredients. You received an Office action dated August 19, 2014, wherein all the claims were rejected. You provide your client with a copy of the Office action. Today, August 27, 2014, the President of the client company calls you and informs you, for the first time, that what makes the cleaning solution so effective and popular with consumers is that they use lemons from citrus trees located only in Seminole County. He further explains the company wants to keep the fact that the lemons come from Seminole County a trade secret. He further informs you that they have tested lemons from all over and for reasons he can’t understand (he is not himself a chemist), there is something, in his words, “peculiarly unique about the cleansing and freshening power of those Seminole lemons.” Other lemons in combination with uric acid work, but not nearly as well. He finally tells you that the company has known of the peculiar and advantageous properties of the Seminole lemons since at least January 2013.
You do believe that the claims as filed can be amended to overcome the examiner’s rejections by adding a limitation that relates to the presence of sulfuric acid in trace quantities, which is disclosed in the originally filed specification. What advice should you give?
A Advise that the application should be abandoned because the best mode has not been disclosed, which hopelessly compromises the application.
B Advise that there is no longer a need to disclose the best mode, which means that the amendments you envision can be submitted and a patent obtained.
C Failure to disclose the best mode is no longer grounds to invalidate claims already obtained, but best mode is still required to be disclosed to satisfy 35 U.S.C. 112(a). Therefore, it would violate your ethical obligations to proceed with this application.
D Cancel claim 2 and make the amendments to Claim 1 you believe will overcome the examiner’s rejections and ask for reconsideration.
E Amend claims 1 and 2 to add sulfuric acid in trace quantities to overcome the examiner’s rejections and ask for reconsideration.
D
It is true that, since the passage of the AIA, the lack of best mode is no longer an acceptable reason to find a patent claim to be invalid. It is also true that 35 U.S.C. 112(a) still requires best mode to be disclosed. But best mode is not a concept that exists in a vacuum. 35 U.S.C. 112(a) requires the disclosure of the best mode of the claimed invention. In Claim 1, there is no mention of lemons whatsoever. As such, the fact that, in one embodiment of the invention, the cleaning solution uses lemons, and specifically Seminole County, Florida, lemons, is irrelevant. With respect to Claim 2, however, you have included lemons and you have not disclosed that the preferred lemons come from Seminole County, Florida. We know you have not disclosed this fact in the specification because the question tells us that on the August 27 call your client tells you this for the first time. This also means that you have not engaged in any kind of ethical violation by seeking claims you know you are not entitled to receive, but it also means that you cannot ethically proceed to attempt to obtain Claim 2.
(A) is incorrect because there is no need to abandon the entire application. Claim 1 is still viable.
(B) is incorrect because the best mode still must be disclosed.
(C) is incorrect, although it is close. The first two statements are correct, but it would not be unethical to proceed with Claim 1.
(E) is incorrect because you cannot proceed with Claim 2 now that you know that the Claim should be rejected under 35 U.S.C. 112(a) for failure to disclose the best mode. Although not implicated in the question, notice that, when you do amend, you always must ask for reconsideration.
