Question Bank 2017-2019

Question 1

You are a registered patent agent with an office in Buffalo, New York. On January 13, 2008, Murphy, a resident of Japan, came to your office for purpose of obtaining a U.S. patent on her invention. She tells you that she first conceived her invention at her home in Ontario on December 18, 2006, and that she reduced it to practice on January 10, 2007, at her home. On January 13, 2008, Murphy provided you with a detailed written description fully disclosing her invention. You diligently proceeded to prepare the application. You filed the application in the PTO on February 12, 2008.

Consider the situation presented below in light of the facts presented above and determine which paragraph of 35 U.S.C. § 102, if any, would prevent Murphy from obtaining a U.S. patent. Murphy’s invention is described and claimed in a Canadian Gebrauchsmuster petty patent granted on February 11, 2008, based on an application filed by Murphy on February 2, 2007. The Canadian Gebrauchsmuster patent was published on February 14, 2008.

A) 35 U.S.C. § 102(b).
B) 35 U.S.C. § 102(c).
C) 35 U.S.C. § 102(d).
D) 35 U.S.C. § 102(e).
E) None of the above.

Answer 1

ANSWER: (C) is the correct answer. A Canadian Gebrauchmuster petty patent is usable in a 3 5 U.S.C. § 102(d) rejection. MPEP § 2135.0 1, subsection III. The foreign patent was granted prior to Murphy’s U.S. filing date. MPEP § 2135.01, subsection 111, (E). Thus, Murphy’s Canadian application was filed more than 12 months prior to her U.S. filing date for the same invention and was granted before the U.S. filing date. (A), (B), and (D) are incorrect. 35 U.S.C. §§ 102(b), (c), and (e). (E) is incorrect because (C) is correct.

Question 2

A is a registered U.S. practitioner. He has just received for immediate filing a Bagel-making Chine, method, and product application. Upon review of the Canadian language application, A notes that no dough recipe is included nor any suggestions about what dough might be possible for use in such a Chine. He has to file the application today. A files the application in Canadian without an oath or fee. That evening, sitting at home, A is reading a recipe for Bagels and notices a U.S. patent number associated with the recipe. He gets online at the US PTO and files a preliminary amendment using EFS, adding the Bagel recipe to the prior-filed Canadian language application.

The preliminary amendment:

A) Will be objected to as New Matter.
B) Will be added to the disclosure of the original application.
C) Will not be considered because it is not in Canadian.
D) Will not be considered.
E) Will be considered as a part of the original disclosure if the amendment is referenced in a later-filed oath.

Answer 2

Answer: E. A preliminary amendment will be considered as a part of the original disclosure if it arrives on the same day as the rest of the application and is referenced in the first-filed oath.

Question 3

On April 3, 2007, B discovered a process for making a new composition by heating an aqueous mixture of a resin and a metal salt. B filed a patent application on July 28, 2007, which issued as a patent on January l9, 2009. The patent claims were directed only to the process for making the composition. B’s patent discloses, but does not claim, the composition. On September 19, 2008, X discovered that B’s composition could be made by a different process comprising the steps of reacting a resin, a metal oxide, and an acid in a nitrogen atmosphere. On January 11, 2009, X filed an application in the PTO which claims the composition and his method of making the composition. All work by B and X was done in this country. X’s work is independent of and not derived from B. X and B have never been employed by the same employer. The examiner rejected X’s composition claims over B’s patent under 35 U.S.C. § 102.

The rejection is:

A) improper because B discloses a process which is different from the process used by X to make the composition.

B) proper because B’s composition was known by others in this country before the invention thereof by X.

C) improper because X filed his application before B’s patent issued.

D) proper because B discloses, but does not claim the composition, and has an earlier filing date than X.

E) (B) and (D).

Answer 3

ANSWER: (D) is the correct answer, 35 U.S.C. § 102(e). (B) is not correct because “known or used” implies knowledge that is publicly accessible. B’s composition was not publicly known. “The statutory language ‘known or used by others in this country’ (35 U.S.C. § 102(a)), means knowledge or use which is accessible to the public.” MPEP § 2132, subsection 1. [p.2100-66] citing Carelia v. Starlight Archery, 804 F.2d 135, 231 USPQ 644 (Fed. Cir. 1986). There are no given facts showing that B’s patent application was accessible to
the public, 35 U.S.C. § 122, or that she disclosed her invention to the public before her patent issued. (A) is incorrect. Inasmuch as B’s patent is not being used to reject X’s claimed process, the difference in their processes does not show any impropriety in the rejection. (C) is incorrect. 35 U.S.C. § 102(e). (E) is incorrect because (E) is incorrect.

Question 4

Which of the following is not required in order for a foreign application that has matured into a foreign patent will qualify as a reference under pre-AIA 35 U.S.C. § 102(d)?

A) The foreign application must be filed more than 12 months before the effective filing date of the United States application.

B) The foreign and United States applications must be filed by the same applicant, his or her legal representatives or assigns.

C) The foreign application must have actually issued as a patent or inventor’s certificate before the filing of an application in the United States. It need not be published but the patent rights granted must be enforceable.

D) The foreign application must have actually been published before the filing of an application in the United States, but the patent rights granted need not be enforceable

E) The same invention must be involved.

Answer 4

ANSWER: (D). 35 U.S.C. § 102(d). The foreign application need not be published, but the patent rights granted must be enforceable. MPEP § 706.02(e). (A), (B), (C), and (E) are required by 35 U.S.C. § 102(d).

Question 5

Your Japanese client, Z, came to you on August 11, 2010 with a valuable invention for pulping timber. Z informed you it had been successfully using the invention commercially for the past fourteen months deep in the Japanese forests. The invention has not been used anywhere else by Z, and the pulped timber from the Z operations has not left Japan. At least one competitor, another Japanese company, lawfully observed the invention in operation during its first month of use with no restriction as to confidentiality or disclosure. Z filed a Japanese patent application prior to commercial use of the invention, but (in an effort to hold down expenses) chose not file a corresponding application in the United States. The Japanese patent application remains pending. Z just learned that two months ago its competitor began using the invention commercially in the United States. The invention was never disclosed or used in the United States prior to two months ago. Z would like for you seek a United States patent on the invention to block the competitor from continued use of the invention.

Which of the following would be reasonable advice from you to Z?

A) Since Japan is a NAFTA country, Z is precluded from getting a United States patent because the Japanese application was filed more than twelve months ago and the invention was in public use more than one year prior to any possible United States filing date for an Z patent application.

B) Z should promptly file an application in the United States claiming the benefit of the filing date of the Japanese application and should fully disclose the Japanese commercial activities, the observation of the invention in Japan by Z’s competitor, and the competitor’s commercial activities in the United States.

C) Z should promptly file an application in the United States without claiming the benefit of the filing date of the Japanese application and should fully disclose the Japanese commercial activities, the observation of the invention in Japan by Z’s competitor, and the competitor’s commercial activities in the United States.

D) Z should abandon the pending Japanese application to avoid the possibility the Japanese application could be used as prior art against a United States patent application, and then file a patent application in the United States.

E) Since Z’s activities concerning the invention all took place in Japan, the competitor’s commercial use in the United States prior to any possible United States filing date for an Z patent application precludes Z from obtaining a United States
patent.

Answer 5

ANSWER: The best answer is (C). With regard to Statement (A), public use in Japan is not a statutory bar under 35 U.S.C. § 102(b) regardless of whether Japan is a NAFTA country. MPEP § 706.02(c). Thus, although Z cannot claim priority to the Japanese application under 35 U.S.C. § 119, their commercial activity is not a bar. Statement (B) is incorrect because Z cannot rely on the Japanese application for priority. 35 U. S.C. § 119. Under the given facts, the Japanese application would not be prior art against a U.S. application regardless of whether the Japanese application was abandoned. Thus, (D) is not reasonable advice. Under 35 U.S.C. § 104, Z can rely on Japanese activities to establish a date of invention prior to the competitor’s commercial use in the United States. Statement (E) is therefore not reasonable advice.

Question 6

A patent application filed in the USPTO contains the following three original claims, including product by process Claim 3:

Claim 1. A method for making a Coaxial cable comprising the steps of A, B and C.

Claim 2. The method of claim 1, further characterized by the step of D.

Claim 3. The Coaxial cable as in any one of the preceding claims.

In the first Office action, the examiner objects to Claim 3 as being an improper dependent claim and requires cancellation of the claim. Following proper USPTO practices and procedures, which of the following replies best overcomes the examiner’s objection and provides the client with the broadest range of patent protection?

A) Cancel Claim 3. Add Claim 4, which reads: “A Coaxial cable made by a process comprising the steps of A, B and C.” Add Claim 5, which reads: “An Coaxial cable made by a process comprising the steps of A, B, C and D.”

B) Amend Claim 3 to read: “The Coaxial cable as made by the process set forth in claims 1-2.”

C) Cancel Claim 3.

D) Cancel Claim 3 and add Claim 4, which reads: “A Coaxial cable made by a process comprising the steps of A, B and C.”

E) Cancel Claim 3 and add Claim 4, which reads: “A Coaxial cable made by a process comprising the steps of A, B, C and D.”

Answer 6

(A) is the most correct answer. The cancellation of Claim 3 overcomes the examiner’s objection. The addition of Claims 4 and 5 provide the client with patent protection in product by process format for the cable by both methods of manufacture. Thus, if Claim 4 is invalid, Claim 5 may remain valid. Answer (B) is incorrect because it is an improper multiple dependent claim. 35 U.S.C. § 112 5; 37 CFR 1.75(c); MPEP § 608.01 (n), part (I)(B)(1). Answer (C) alone is incorrect because, even though canceling the claim will overcome the rejection, it will also leave the application without a claim to the Coaxial cable made using the processes set forth in either Claim 1 or Claim 2. Answer (D) alone is not the most correct answer because even though canceling Claim 3 will overcome the rejection and provides protection for the Coaxil cable made by the process comprising the steps A, B and C, it will also leave the application without a claim to the Coaxial cable made using the processes comprising the steps of A, B, C, and D. Answer (E) alone is not the most correct answer because even though canceling Claim 3 will overcome the rejection and provides protection for the Coaxil cable made by the process comprising the steps A, B, C, and D, it will also leave the application without a claim to the Coaxil cable made using the processes comprising the steps of A, B, and C.

Question 7

You, a patent practitioner, receive a final rejection from the examiner allowing claims 2, 3, and 5 and rejecting claims 1 and 4. Which of the proposed responses below would be entered by the examiner as the applicant’s matter of right?

A) An amendment canceling claims 1 and 2 and adding a new claim 6.

B) An amendment canceling claim 4 only.

C) An amendment canceling claims 1 and 4 and adding new claims 6 and 7.

D) An amendment amending claim 4 and canceling claim 1.

E) An amendment canceling claims 1 and 4 and amending claims 2 and 3.

Answer 7

ANSWER: (B). (B) clearly reduces issues for appeal by canceling a claim, and is the most correct answer in accordance with MPEP 714.13, and 37 CFR § 1.116. Choices (A), (C), (D), and (E) are wrong. By adding at least one new claim, or by amending one or more claims, (A), (C), (D), and (E) require more than a cursory review by the examiner, and they do not necessarily reduce the issues for appeal. Thus, such amendment are not entitled to be entered. See 37 CFR § 1.116; MPEP
714.12, 714.13.

Question 8

A non-final Office action was mailed in a pending patent application on Friday, November 12, 2009. The examiner set a three month shortened statutory period for reply. The practitioner petitioned for a one-month extension of time on Monday, February 14, 2010 and paid the appropriate one-month extension fee. An amendment responsive to the Office action was filed Tuesday, March 14, 2010. Each independent claim in the application was revised and two dependent claims were cancelled. No claim was added by the amendment. In the Remarks portion of the amendment, the practitioner express his belief that no fees are required by the amendment, but nevertheless gave authorization to charge any fees to the practitioner’s account, nn-nnnn, if any fees are necessary, including fees for any required extension of time. A duplicate copy of the amendment was filed. No fees were submitted with the amendment.

Assuming nn-nnnn is a valid deposit account, which of the following statements is true?

A) The amendment should be entered with no fees charged to practitioner’s deposit account.

B) The amendment should be entered, but the fee for a second month extension of time should be charged to the practitioner’s deposit account.

C) The amendment should not be entered because it is untimely.

D) The request to charge any required fees, including fees for any necessary extension of time, is ineffective because it was not made in a separate paper.

E) Statements (C) and (D) are true.

Answer 8

ANSWER: (B). The petition for extension of time filed February 14, 2010 provided applicant with a one-month extension of time from the original due date, February 12, 2010 (not from the date the petition was filed). See MPEP § 710.01(a). Thus, the extended due date was Sunday, March 12, which means a reply was due by Monday, March 13. Since an additional extension of time is needed, (A) is incorrect. Under the provisions of 37 C.F.R. § 1. 136(a)(3), applicant’s statement is treated as a constructive petition for extension of time. MPEP § 710.02(e). (C) is incorrect because applicant’s statement in the Remarks portion of the amendment acted as a constructive petition for extension of time and, therefore, the amendment is timely. There is no need for the petition to appear in a separate paper, so (D) is not correct. (E) is incorrect because (C) and (D) are both incorrect.

Question 9

In the course of prosecuting a patent application, you receive a final rejection wherein the examiner has set a 3 month shortened statutory period for reply. You file an initial reply with a Certificate of Mailing in accordance with 37 C.F.R. § 1.8 within 2 months of the final rejection mail date. The examiner responds with an Advisory Action having a mail date before the end of the 3 month shortened statutory period.

In accordance with proper PTO practice and procedure, the fee for an extension of time for applicant to take subsequent appropriate action in the PTO is calculated from:

A) the mail date of the Advisory Action.
B) the date your reply is received by the PTO.
C) the date your reply is mailed with a Certificate of Mailing in accordance with 37 C.F.R. § 1.8.
D) the mail date, of the Final Rejection.
E) the date the shortened statutory period expires.

Answer 9

(E) is correct and (A), (B), (C), and (D) are wrong because MPEP § 710.02(e), right column of page 700-83, recites, “If applicant initially replies within 2 months from the date of mailing of a final rejection and the examiner mails an advisory action before the end of 3 months from the date of mailing of the final rejection, the shortened statutory period will expire at the end of 3 months from the date of mailing of the final rejection. In such a case, any extension fee would then be calculated from the end of the 3-month period.”

Question 10

Z, located in Japan, has developed some
Sushi technology that it believes requires “worldwide” patent protection. As a result, a Japanese Patent Application is filed on an invention conceived on April 1, 2005, and reduced to practice April 12, 2005, in a secret underground sushi research facility. The Canadian filing is given a filing date of May 1, 2005 by the Japanese Patent Office. About 11 months later, Y, a Japanese citizen, is in the U.S. doing beer commercials and showing off the Z product. The product is very popular. Y decides to file a PCT in the Japanese Patent Office and, to start the ball rolling, calls the “home office”.

In order to preserve priority, the PCT must be filed in the Japanese Patent Office no later than:

A) Friday, April 29, 2006
B) Saturday, April 30, 2006
C) Monday, May 2, 2006
D) Friday, October 30, 2006
E) None

Answer 10

(C) is correct. The 1 year priority period falls on a weekend. Z can file on the Monday following the anniversary and be okay as to the Canadian Priority filing filed May 1, 2006.

Question 11

Z, located in Japan, has developed some Sushi technology that it believes requires “worldwide” patent protection. As a result, a Japanese Patent Application is filed on an invention conceived on April 1, 2005, and reduced to practice April 12, 2005, in a secret underground sushi research facility. The Canadian filing is given a filing date of May 1, 2005 by the Japanese Patent Office. About 11 months later, Y, a Japanese citizen, is in the U.S. doing beer commercials and showing off the Z product. The product is very popular. Y decides to file a PCT in the Japanese Patent Office and, to start the ball rolling, calls the “home office”.

In order to preserve priority, the PCT must be filed in the Japanese Patent Office no later than:

A) Friday, April 29, 2006
B) Saturday, April 30, 2006
C) Monday, May 2, 2006
D) Friday, October 30, 2006
E) None

Answer 11

(C) is correct. The 1 year priority period falls on a weekend. Z can file on the Monday following the anniversary and be okay as to the Canadian Priority filing filed May 1, 2006.

Question 12

In a non-provisional utility patent application filed January 12, 1999, the examiner sends Applicant a final Office action dated February 14, 2001, rejecting claim 1 under 35 U.S.C § 102(a), and objecting as to the form of claims 2 through 10. The examiner sets a three- month shortened statutory period for reply.

According to USPTO rules and procedure, which of the following by Applicant ensures that the application does not go abandoned on Wednesday, August 15, 2001?

A) Mailing to the USPTO, using a certificate of mailing under 37 CFR 1.8, dated August 14, 2001, a petition and fee for an extension of three months, a request for a continued prosecution application, and the fee for a request for a continued prosecution application. The foregoing is received by the USPTO on August 17, 2001.

B) Mailing to the USPTO, using a certificate of mailing under 37 CFR 1.8, dated August 14, 2001, a petition and fee for an extension of three months, a request for continued examination with a submission that meets the reply requirements of 37 CFR 1.111, and the fee for a request for continued examination. The foregoing is received by the USPTO on August 17, 2001.

C) Mailing to the USPTO, using a certificate of mailing under 37 CFR 1.8, dated August 14, 2001, a petition and fee for an extension of three months. The foregoing is received by the USPTO on August 17, 2001. Also, telephoning the examiner on August 14, 2001 to discuss the rejections of claims in the final Office action, but without reaching an agreement with the examiner.

D) Mailing to the USPTO a petition and fee for an extension of three months, a request for continued examination with a reply that states, “Applicant requests
that objections as to form be held in abeyance until allowable subject matter is indicated, at which time Applicant will reply to the rejection of claim 1,” and the fee for a request for continued examination. The foregoing is received by the USPTO on August 14, 2001.

E) Each of items (A), (B), (C) and (D) would ensure that the application does not go abandoned on Wednesday, August 15, 2001.

Answer 12

(B) is the correct answer. 37 CFR 1.8, and 1.114, effective date August 16, 2000, “Request for Continued Examination Practice and Changes to Provisional Application Practice; Final Rule,” 65 FR 50092, 50096; MPEP § 706.07(h), paragraph I. (pg. 700-69) (8th Ed.). Prosecution in the application is closed because the last Office action is a final action. 37 CFR 1.114(b). In (B), the facts given indicate that the submission meets the reply requirements of 37 CFR 1.111. Thus, according to 37 CFR 1.114(d), the Office will withdraw the finality of the Office action and the submission in (B) will be entered and considered. 65 FR 50096, columns 2-3, state, “There are a number of additional differences between request for continued examination procedure set forth in this notice with the CPA procedure set forth in § 1.53(d) resulting from the fact that a CPA is the filing of a new application, whereas continued examination under § 1.114 merely continues the examination of the same application…(4) a request for continued examination under § 1.114 is entitled to the benefit of a certificate of mailing under § 1.8 (cf. 1.8(a)(2)(i)(A))….”; see also the comparison chart on pg. 700-78 to 700- 81 of MPEP § 707.07(h) (8 th Ed.).

Question 13

Which of the following, published before the effective filing date of an application, is not an enabling prior art reference when used as anticipatory prior art under 35 U.S.C. § 102

A) A picture of a chair in a magazine. The magazine is published monthly in England. The picture shows all of the structural features recited in the application claims, and how they are put together.

B) Disclosure in a magazine article of the compound claimed in the application wherein only the compound is claimed. The magazine is published monthly in the United States. The article discloses a manner of making the compound which differs from the manner disclosed in the application. No utility for the compound is disclosed in the article.

C) Disclosure in a magazine article of a liquid named “Rejuvinator Juice.” The magazine is published monthly in the United States. The article discloses that the liquid restores youth when ingested. The article does not disclose the composition or manner of making the liquid. The application has claims directed to a liquid composition which is described in the specification as restoring youth when ingested.

D) The drawings in a U.S. design patent disclose all the structural features recited in the claims of the application. The drawings also show how the features are combined.

E) Disclosure of a table in a magazine published in the United States. The disclosure, including a picture, describes and shows how A of the claimed features are united in the table.

Answer 13

ANSWER: (C) is the most correct answer. Although the article names a liquid composition and discloses a utility for it, even an incredible utility, the article is not enabling because it does not disclose the composition or manner of making the liquid. In re Hoeksema, 158 USPQ 596 (CCPA 1968); MPEP § 2121.02.

Question 14

In early 2007, X, a company based in Canada, developed a widget with increased reflective properties. X filed a patent application in the Canadian Patent Office on January 8, 2007, and filed a corresponding application in the USPTO on January 5, 2008. All research activities for the inventions disclosed and claimed in the U.S. and Canadian applications took place in Canada. The U.S. patent application contains five claims:

1. A widget comprising elements A and B.
2. A widget according to Claim I wherein the widget further includes element D.
3. A widget comprising elements A and C.
4. A widget according to Claim 3 wherein the widget further includes element E.
5. A widget comprising elements A, B, and C.

The Canadian application only supports claims 1, 2, and 5 of the U.S. application. During the course of prosecution of the U.S. application, the examiner properly rejected all of the claims under 35 U.S.C. § 102(e) as being anticipated by a U.S. patent assigned to Z. The Z patent was granted on October 6, 2008, on a U.S. application filed on June 15, 2007. The Z patent specifically describes, but does not claim, the widget in claims 1-5 of the U.S. application filed by X. The subject matter of the Z patent was reduced to practice in Monterey, California as of February 12, 2007.
Which of the following proposed arguments or actions would properly overcome the examiner’s § 102(e) rejection with respect to all the claims?

A) File an affidavit under 37 CFR § 1.132 swearing behind the claims of the Z patent by relying on the 2007 research activities of X in Canada.

B) File a claim for a right of priority based on the application filed in Canada along with a certified copy of the Canadian patent application and canceling Claims 3 and 4.

C) File a claim for a right of priority based on the application filed in Canada along with a certified copy of the Canadian patent application.

D) File an affidavit under 37 CFR § 1.132 swearing behind the February 12, 2007, reduction to practice date of the Z patent.

E) File a terminal disclaimer.

Answer 14

ANSWER: (B) is the most correct answer. MPEP §§ 706.02(b); 2136.05. (A) and (D) are incorrect because an affidavit under 3 7 CFR § 1. 132 is inappropriate in this situation. MPEP § 715.01. (C) Will not result in overcoming the rejection of claims 3 and 4 inasmuch as the disclosure of the Canadian patent application only supported claims 1, 2, and 5. (E) is not correct because a terminal disclaimer will not overcome a 35 U.S.C. § 102(e) rejection. MPEP § 2136.05.

Question 15

Assume that conception of applicant’s complex invention occurred prior to the date of the reference, but reduction to practice occurred after the date of the reference.

Which of the following is sufficient to overcome the reference in accordance with proper pre-AIA USPTO practice and procedure?

A) In a 37 CFR 1.131 affidavit or declaration, it is sufficient to allege that applicant or patent owner has been diligent.

B) In a 37 CFR 1.131 affidavit or declaration, it is sufficient to clearly establish conception of the invention prior to the effective date of the reference, and diligence from just prior to the effective date of the reference to actual reduction to practice. The presence of a lapse of time between the reduction to practice of an invention and the filing of an application thereon is not relevant.

C) In a 37 CFR 1.131 affidavit or declaration it is sufficient to clearly establish conception of the invention prior to the effective date of the reference. Diligence need not be considered.

D) In a 37 CFR 1.131 affidavit or declaration, it is sufficient to show conception and reduction to practice in any country.

E) In a 37 CFR 1.131 affidavit or declaration, it is always sufficient to prove actual reduction to practice for all mechanical inventions by showing plans for the construction of the claimed apparatus.

Answer 15

(B) is the most correct answer. MPEP § 715.07(a).

Question 16

B and C are named inventors on an international application that is filed in the USPTO Receiving Office, and designates the United States of America. C now indicates that he will not sign the Request for the international application. B wishes to proceed with the Request and seeks the advice of their patent agent.

Which of the following answers accords with the provisions of the Patent Cooperation Treaty?

A) B’s agent should sign the Request and accompany it with a statement indicating why it is believed that C refuses to proceed with the Request.

B) B should sign the request for himself and also sign on behalf of C.

C) B should sign the request and seek a court order to obtain C’s signature.

D) B should sign the Request and accompany it with a statement providing a satisfactory explanation for the lack of C’s signature.

E) B should sign the Request and B’s agent should sign on behalf of C, since he continues to represent C.

Answer 16

ANSWER: (D) is the correct answer because the advice is consistent with 37 C.F.R. § 1.425. (A), (B), (C), and (E) are wrong because the advice provided is not consistent with 37 C.F.R. § 1.425. MPEP § 1820, p. 1800-16.

Question 17

X files a U.S. patent application on June 13, 2005. On April 13, 2006 a continuation is filed and the parent abandoned. The examiner issues an Official Action setting a shortened three-month period to respond on October 14, 2007. A response was filed on January 23, 2008 together with a request for a one-month extension of time under 37 CFR 1.136(a). On February 12, 2008 a Final Rejection is mailed setting a shortened three-month period for response. A Notice of Appeal is filed on March 3, 2008.

When is the last day for filing an Appeal Brief using the maximum extension available under 37 CFR 1.136(a).

A) September 3, 2008.
B) November 12, 2008.
C) October 3, 2008.
D) November 3, 2008.
E) None of the above.

Answer 17

C) is correct. The deadline for filing an Appeal Brief is two months from the date that the Notice is filed. Thus the maximum extension is an additional 5 months.

Question 18

Which of the following would be a proper CPA filing?

A) The issue fee was paid before the CPA was filed.

B) The CPA was filed after the parent was abandoned.

C) The request for a CPA was filed by facsimile.

D) The request for a CPA was filed from California via facsimile with a Certificate of Transmission at 10:00 PM on the last day to take action in the parent.

E) None of the above.

Answer 18

The answer is (C).

Question 19

A Requirement for Information, under 37 CFR 1.105, sent by the PTO to an applicant may include:

A) Interrogatories seeking applicant’s factual knowledge.

B) Stipulations as to facts with which the applicant may agree or disagree.

C) Questions as to the intended meaning of claims limitations or terms.

D) The circumstances and facts surrounding the acts of invention and writing of the application being examined.

E) All of the above.

Answer 19

Answer: E. 37 CFR 1.105.

Question 20

In which of the following situations, considered independently of each other, is the original, new, or amended claim supported in the application as filed?

A) An amendment to the specification changing the definition of “holder” from “is a hook” to “is a hook, clasp, crimp, or tong” and no amendment is made of the claim, which uses
the term “holder.” The amendment is filed one month after the application was filed. There was no previous supporting disclosure in the specification of the holder being a clasp, crimp, or tong.

B) An amendment to the specification and claims changing the definition of “holder” from “is a hoov’ to “is a hook, clasp, crimp, or tong.” The amendment is filed one month after the application was filed. There was no previous supporting disclosure in the specification of the holder being a clasp, crimp, or tong.

C) Original claim I in the application refers to “a holder,” and original claim 2 depends from and refers to claim I stating, “said holder is a hook, clasp, crimp, or tong.” There is no disclosure in the specification preceding the claims in the application as filed for the holder to be a clasp, crimp, or tong.

D) An amendment is filed presenting a claim to an electrical insulating device, copied from a patent for the purpose of provoking an interference. The claim refers to “nonconductive plastic holder.” The application as filed contains a broad generic disclosure describing electrical insulating devices. The holder is described in the specification of the application as “conducting electricity.” There is no disclosure in the specification of the holder being “nonconductive.”

E) All of the above.

Answer 20

ANSWER (C). MPEP § 2163.03, item 1. Original claims constitute their own description In re Koller, 613 F.2d 819, 204 USPQ 702 (CCPA 1980). (A) and (B) are incorrect. As stated in MPEP § 2163.03, item 1, “An amendment to the specification (e.g., a change in the definition of a term used both in the specification and claim) may indirectly affect a claim even though no actual amendment is made to the claim.” There is no supporting disclosure in the original description of the invention for the holder to a clasp, crimp, or tong. (D) is incorrect. MPEP § 2163.03, item IV. A broad generic disclosure is not necessarily a sufficient written description of a specific embodiment, especially where the broad generic disclosure conflicts with the remainder of the disclosure. Fields v. Conover, 443 F.2d 1386, 170 USPQ 276 (CCPA 1970). (E) is not correct because (C) is correct.

Question 21

X discovered that a silver insert for a metal cutting tool may be bonded (with a far superior bond strength over other known methods of attachment) to a steel tool holder. X filed a patent application on his invention which contained the following two claims:

(1) A method of bonding a silver insert to a steel tool holder comprising the steps of providing a layer of polystick at the interface of the holder and insert, heating the holder, insert and polystick to a temperature of 250°F. and thereafter cooling the holder, insert, and polystick at a rate of between 12° and 13°F. per hour until a temperature of 120°F. is reached.

(2) A silver insert bonded to a steel holder by the method of claim 1.

The examiner rejected Claim 1 under 35 U.S.C. § 103 as being unpatentable over a U.S. patent to Y in view of a British patent to Z. The examiner rejected Claim 2 under 35 U.S.C. § 102(b) as being anticipated by the patent to Y. The patent to Y teaches that a silver insert is bonded to a steel tool holder by utilizing a layer of polystick at the interface of the insert and holder, but makes no mention of any particular temperatures. The patent to Z teaches that in a grinding tool, diamond chips may be “securely fastened” to a ceramic holder by applying a layer of polystick at the interface of the diamonds and holder, heating the holder, chips, and polystick to a temperature of 150°F. and thereafter “slowly” cooling the holder.

Which of the following, if any, if submitted with a reply to the Office action, would be most persuasive and most likely overcome the examiner’s rejection of Claim 2?

A) Evidence that a gear-cutting Chine which includes a silver insert bonded to a steel tool holder as set forth in Claim 1 is outselling all other such Chines by a two-to-one margin.

B) An affidavit by X that, in his opinion, the patent to Z is inoperative.

C) Evidence that heavy advertising resulted in increased sales of X’s invention.

D) An affidavit by X showing that there is a long felt need in the industry for X’s silver insert to a steel tool holder.

E) None of the above.

Answer 21

ANSWER: (E) is the correct answer. MPEP §§ 2131.04; 706.02(b). Claim 2 was rejected as being anticipated by the patent to Y. As set forth in MPEP § 706.02(b), a rejection based on 35 U.S.C. § 102(b) can be overcome by “(A) Persuasively arguing that the claims are patentably distinguishable from the prior art; or (B) Amending the claims to patentably distinguish over the prior art.” Evidence of secondary considerations is irrelevant to § 102 rejections and thus cannot overcome a rejection so based. MPEP § 2131.04, citing In re Wiggins, 488 F.2d 538, 543; 179 USPQ 421, 425 (CCPA 1973).

Question 22

B filed an application on a new barge on March 14, 2006. He conceived of the barge three weeks before the U.S. application was filed. In September of 2007 he decided to abandon the application in favor of a CIP which added certain improvements not disclosed in the first application. The improvements were conceived in August of 2007. Claims 1 and 2 in the CIP are supported by the disclosure of the first application while claim 3 is directed to the improvements. Today, August 26, 2008 you receive an Official Action from the PTO properly rejecting all the claims citing a U.S. patent to C, which was filed on March 4, 2007, and issued last week. C discloses but does not claim both the barge disclosed in B’s first application and the improvement set forth in claim 3.

The most appropriate action would be:

A) Allow the application to become abandoned since the rejection cannot be overcome.

B) File a response canceling claim 3, and arguing that claims 1 and 2 are patentable because they are supported by the disclosure of the first application.

C) File a response pointing out to the examiner that the effective filing date of the CIP is prior to the filing date of C.

D) File an amendment adding the limitations of claim 3 to claims 1 and 2.

E) Copy of claims of C and ask that interference be declared.

Answer 22

B) is correct. The earliest effective filing date of claim 3 is the filing date of the CIP and the earliest invention of the invention of claim 3 are both subsequent to the 102(e) date of the reference. The earliest effective filing date of claims 1 and 2 is prior to the 102(e) date of the reference.

Question 23

Which of the following statements concerning reliance by an examiner on common knowledge in the art, in a rejection under 35 U.S.C. § 103 is correct?

I. Applicant can traverse an examiner’s statement of common knowledge in the art, at any time during the prosecution of an application to properly rebut the statement.;
II. An examiner’s statement of common knowledge in the art is taken as admitted prior art, if applicant does not seasonably traverse the well known statement during examination.;
III. If applicant rebuts an examiner’s statement of common knowledge in the art in the next reply after the Office action in which the statement was made, the examiner can never provide a reference to support the statement of common knowledge in the next Office action and make the next Office action final.

A) I.
B) II.
C) III.
D) I. and II.
E) None of the above.

Answer 23

ANSWER: (B) is the correct answer. MPEP § 2144.03. I. is incorrect because an applicant must seasonably traverse the well-know statement or the object of the well-known statement is taken to be admitted prior art. In re Chevenard, 60 USPQ 239 (CCPA 1943). Therefore (A) and (D) are incorrect. III is incorrect because the action can potentially be made final. Therefore (C) is incorrect. (E) is incorrect because (B) is correct.

Question 24

A non- final Office action in a pending patent application was mailed on Friday, March 16, 2001. The patent examiner set a three month shortened statutory period for reply. The applicant petitioned for a one- month extension of time on Monday, June 18, 2001 and paid the appropriate one- month extension fee. An Amendment responsive to the Office action was filed Tuesday, July 17, 2001. In the Remarks portion of the Amendment, the applicant stated: “It is believed that no fees are required by the present Amendment. However, if any fees are necessary, including fees for any required extension of time, the Director of the United States Patent and Trademark Office is hereby authorized to charge any such fees to applicant’s deposit account number nn- nnnn. A duplicate copy of this paper is enclosed.” No fees were submitted with the Amendment. Assuming nn- nnnn is a valid deposit account with sufficient funds deposited, which of the following statements is true?

A) The Amendment should not be entered because it is untimely.

B) The Amendment should be entered with no fees charged to applicant’s deposit account.

C) The Amendment should be entered, but the fee for a second month extension of time should be charged to applicant’s deposit account.

D) The request to charge any required fees, including fees for any necessary extension of time, is ineffective because it was not made in a separate paper.

E) Statements (A) and (D) are true.

Answer 24

The most correct answer is (C). The petition for extension of time filed June 18, 2001 provided applicant with a one- month extension of time from the original due date, June 16, 2001 (not from the date the petition was filed). See MPEP § 710.01(a). Thus, the extended due date was Monday, July 16. Since an additional extension of time is needed, (B) is incorrect. Under the provisions of 37 CFR 1.136(a)(3), applicant’s statement is treated as a constructive petition for extension of time. MPEP § 710.02(e). (A) is incorrect because applicant’s statement in the Remarks portion of the Amendment acted as a constructive petition for extension of time and, therefore, the Amendment is timely. There is no need for the petition to appear in a separate paper, so (D) is not correct. (E) is incorrect because (A) and (D) are both incorrect.

Question 25

B files a Canadian patent application for a rejuvenating lotion in the Canadian Patent Office on January 10, 2000. On January 10, 2001, she files a PCT Chapter I Request in the EPO Receiving Office, in which she requests that the European Patent Office act as the International Searching Authority. In her PCT application, B claims priority to the
Canadian application, and indicates the U.S. as a designated state. B makes an appointment to meet with you on June 8, 2001, to discuss filing a patent application in the USPTO on the rejuvenating lotion, in which she wants to claim priority not only to the PCT application, but also the Canadian application. In preparing for your meeting with B, you realize that she has several options here, and so you prepare an analysis of the various options, which are detailed below. Before entering the U.S. national stage, B wishes to have an official international preliminary search report that indicates claims having the best chance of being patentable. Which of the following will achieve B’s objective in accordance with proper USPTO practice and procedure?

A) B should enter the national stage by filing an application under 35 U.S.C. § 371 on or before September 10, 2001.

B) B should file an application under 35 U.S.C. § 111(a) on or before September 10, 2001, claiming priority under 35 U.S.C. § 120 to the PCT application, and claiming priority under 35 U.S.C. § 119 to the Canadian application.

C) B should first file a PCT Chapter II Demand in the USPTO on or before August 10, 2001, and then file a provisional application under 35 U.S.C. § 111 on or before September 4, 2001.

D) B should first file a PCT Chapter II Demand in the USPTO on or before August 10, 2001, and then enter the national stage by filing an application under 35 U.S.C. § 371 on or before July 10, 2002.

E) All of the above.

Answer 25

(D). This answer is correct because it would be the best option, as it would give Ms. B the filing date of the PCT, specifically 1/10/01, as her U.S. filing date (for the purpose of determining whether information is prior art), it would give her a foreign priority date of 1/10/00, with no further need to provide the foreign priority document; it would also give her the full benefits of filing PCT applications, i.e., a search report and preliminary examination report on her invention(s) prior to filing a national application, so that she has an indication of which claims have the best chance of being determined to be patentable. (A) This answer is incorrect, as it would not give Belle B the benefit of a preliminary examination report for her international application, prior to filing the national application. (B) This answer is incorrect because the procedure would not achieve the objective of obtaining an international preliminary search report. It would give B a later U.S. filing date, the filing date of the national application, e.g., 9/10/01; the invention(s) would be subject to U.S. restriction practice; and the applicant would have to provide a certified copy of the foreign priority document. (C) This answer is incorrect, as a provisional application is not entitled to the right of priority of any other
application under 35 U.S.C. §§ 119 or 365(a), or to the benefit of an earlier filing date in the United States under 35 U.S.C. §§ 120, 121 or 365(c). (E) is not correct because (A), (B) and (C) are incorrect.

Question 26

The 102(e) date of an International Application (IA) published by an International Bureau (IB) which relies on a Japanese application filed June 1, 2000, and with a PCT filed June 1, 2001, and a published PCT (Japanese language) date of December 1, 2001, has a calculated 102(e) date against a US filed application of:

A) 1-Jun-00
B) 1-Jun-01
C) 1-Dec-01
D) Has no 102(e) date.
E) Cannot be determined from these facts.

Answer 26

D. The I.A. did not publish in English.

Question 27

An International Application (IA) was published by an International Bureau (IB), relying on a Japanese application filed June 1, 2000, and with a PCT filed June 1, 2001, and a published PCT (Japanese language) date of December 1, 2001. The US application that the published PCT is being asserted against was filed November 28, 2000. The calculated 102(e) date for the published PCT application is:

A) Has no 102(e) since it was not filed in the US.
B) 1-Jun-00
C) 1-Jun-01
D) 1-Dec-01
E) None

Answer 27

E. The I.A. did not publish in English.

Question 28

Claimed subject matter has been properly rejected under 35 U.S.C. § 103 over a combination of prior art references which render the claimed subject matter prima facie obvious.

Which of the following actions by a practitioner in accordance with proper PTO procedure is most likely to be sufficient to overcome the prima facie case of obviousness?

A) Filing a declaration under 3 7 CFR § 1. 132 containing evidence that the claimed subject matter possesses unexpected results, disclosed in the application, which are not described in the prior art, and arguing that the evidence rebuts the prima facie case.

B) Filing a reply arguing and giving your opinion that the claimed apparatus provides unexpectedly superior productivity.

C) Filing a declaration under 37 CFR § 1. 132 presenting evidence of superior properties for iron-containing compositions, disclosed in the application where the broad rejected claim is drawn to a “metal-containing” composition. The prior art reference discloses and describes an aluminum composition which satisfies the broad claim, and the practitioner argues that the evidence rebuts the prima facie case of obviousness.

D) Filing a declaration under 37 CFR § 1. 132 which demonstrates that a “metallic” apparatus of Claim I has superior properties to a plastic apparatus having all the structural limitations recited in the claim, and arguing that the evidence, which relies on properties disclosed in the application, rebuts the prima face case of obviousness, where Claim I was rejected under 35 U.S.C. § 103 over references disclosing metallic apparatuses, and the references made out a prima facie case of obviousness.

E) Filing a declaration under 37 CFR § 1. 132 demonstrating commercial success of a
telephone apparatus having a the structural limitations recited in the rejected claim except that the commercially successful apparatus is plastic and is disclosed in the application, whereas the rejected claim is limited to a “metallic” telephone apparatus, and arguing that the evidence rebuts the prima facie case of obviousness, where the claim was rejected under 35 U.S.C. § 103 over references disclosing metallic telephone apparatuses, and the references made out a prima facie case of obviousness.

Answer 28

ANSWER: (A) is the most correct answer. 35 U.S.C. § 103; MPEP § 2145; Graham v. John Deere Co.

Question 29

Which of the following is true?

A) In rejecting claims the examiner may rely upon facts within his own personal knowledge, unless the examiner qualifies as an expert within the art, in which case he is precluded from doing so, since only evidence of one of ordinary skill in the art is permitted.

B) If an applicant desires to claim subject matter in a reissue which was the same subject matter waived in the statutory invention registration of another, the
applicant is precluded by the waiver from doing so, even though the applicant was not named in the statutory invention registration.

C) If an applicant, knowing that the subject matter claimed in his patent application was on sale in Michigan and sales activity is a statutory bar under pre-AIA 35 U.S.C. § 102(b) to the claims in his application, nevertheless withholds the information from the patent examiner examining the application, and obtains a patent including the claims in
question, the applicant may remove any issue of
inequitable conduct by filing a request for reexamination based on the sales activity.

D) An applicant for a patent may overcome a statutory bar under pre-AIA 35 U.S.C. §102(b) based on a patent claiming the same invention by acquiring the rights to the patent pursuant to an assignment and then asserting the assignee’s right to determine priority of invention pursuant to 37 CFR 1.602.

E) None of the above.

Answer 29

The best answer is (E). (A) is incorrect since facts within the knowledge of the examiner may be used whether or not the examiner qualifies as an expert. 37 CFR1.104(c)(3). (B) is incorrect since the waiver is only effective against those named in the statutory registration. (C) is incorrect since on sale activities is not proper subject matter for reexamination, and inequitable conduct cannot be resolved or absolved by reexamination. (D) is not correct since a statutory bar cannot be overcome by acquiring the patent.

Question 30

An Official Action has been received in an application you are prosecuting and a piece of prior art relied on by the Examiner under pre-AIA 102(e) is a published US application which discloses but does not claim the applicant’s invention in the case you are prosecuting. The examiner has used the provisional filing date of the parent of the application of the published application as the pre-AIA 102(e) date of the published application.

In response to this rejection you can:

A) Point out the examiner’s error regarding 102(e) and refer him to the filing date of the actual application which was published, and not the date of the parent application or provisional of the parent application.

B) File an affidavit or declaration under Rule 131 and antedate the reference in question with your earlier date of invention.

C) Copy some claims from the published application and ask that an interference be declared.

D) Amend the claims to avoid the subject matter disclosed in the published application. E Abandon the application and file a substitute application with claims directed to the “method” as opposed to the “apparatus” currently claimed.

Answer 30

D. A pre-AIA 102(e) is something you’re stuck with unless the facts of the question suggest you have a prior date of invention you can reach for and use to swear behind the reference.

Question 31

Regarding amendments to the specification of an application or the claims in an application, which of the following is not true?

A) If an amendment signed by the applicant is received in an application in which there is a duly appointed registered patent attorney or agent, the amendment should be entered and acted upon.

B) Where, by amendment under 37 C.F.R. § 1.121(a), a dependent claim is rewritten to be in independent form, the subject matter from the prior independent claim is considered
to be “added” matter and should be underlined.

C) Any amendment using parentheses to indicate canceled matter in a claim rewritten under 37 C.F.R. 1. 12 1 (a) may be held nonresponsive.

D) Amendments to the original patent drawings in a reissue application are not permitted. Any change to the patent drawings must be by way of a new sheet of drawings with the amended figures identified as “amended” and with added figures identified as “new” for each sheet changed.

E) Amendment to the claims in a nonprovisional application, other than a reissue application may be made by specifying only the exact matter to be added or deleted, and the precise point where the deletion or insertion is to be made, where the change is limited to deletions and/or additions of no more than ten words in any one claim.

Answer 31

ANSWER: (E). Amendment in said manner is limited to Examiner’s amendments not applicant amendments. Thus, the answer is not true. (A) is true, and therefore an incorrect answer. MPEP § 714.01(d). (B) is true, and therefore an incorrect answer. MPEP § 714.22. (C) is true, and therefore an incorrect answer. 37 C.F.R. § 1.121(a); MPEP § 714.22. (D) is true, and therefore an incorrect answer. 3 7 C.F.R. § 1. 12 1 (b)(3)(i).

Question 32

In response to a final rejection dated February 4, 2007, with a three month shortened statutory period for response, you call the examiner in charge of the patent application to schedule a
first interview on July 3, 2007, to discuss further narrowing the scope of claim limitations.

Your request for an interview should be

A) denied because your request is after the expiration of the shortened statutory period for response

B) granted only if applicant pays the extension fee for the expired time.

C) granted.

D) denied because interviews are not permitted after the final Office action.

E) granted only if you have a proposed amendment and pay the extension fee.

Answer 32

(C). Interviews may be held without charge for an extension of time during the six month statutory period for responding to an Office action. MPEP 706.07(f). Choices (A), (B), and (E) are wrong because interviews may be held after the expiration of the shortened statutory period and prior to the maximum permitted statutory period of 6 months without charge for an extension of time. MPEP 713.09. (D) is wrong because interviews are permitted after final rejection in accordance with
MPEP 713.09.

Question 33

You are prosecuting an application for inventor X that receives a rejection under pre-AIA 35 U.S.C. § 102(b) based on a U.S. patent to Jones that discloses and claims the same invention.

Which of the following, if any, will overcome the rejection?

A) An affidavit or declaration showing that Jones is not the true inventor.

B) An affidavit or declaration showing commercial success of the X invention.

C) An affidavit or declaration containing an argument that the invention claimed in the X application provides synergistic results.

D) An affidavit or declaration swearing back of the Jones patent.

E) None of the above.

Answer 33

ANSWER: (E) 37 CFR §§ 131, and 1. 132; and MPEP § § 706.02(b), 715, and 716.

Question 34

Extensions of time under 37 CFR 1.136(a)

A) Are limited to four months.

B) Are not permitted to extend the deadline to file a Reply Brief.

C) Require a detailed explanation of the reasons supporting the Request.

D) Cannot be obtained during the prosecution of a reissue application.

E) Do not require a fee where it can be shown that the need for the extension is unavoidable.

Answer 34

The Correct Answer is B: 37 CFR 1.193(b)(1). Five-month extensions are now permitted. No detailed explanation, indeed no explanation, is required. Extensions under rule 1.136(a) are allowed in reissues, but not in reexamination. Whether or not the extension need is unavoidable doesn’t matter.

Question 35

As patent counsel for General Magnetic (GM), you filed a patent application in the PTO on January 2, 1998 naming Brown as inventor, with claims directed to a method of treating equine fever. A primary Examiner rejected the application as lacking utility and also “provisionally” rejected the application under 35 USC 102(e)/103 in view of a commonly assigned application filed December 29, 1995, naming Brown’s boss Cheryl Black as inventor. After discussing the matter with corporate counsel you filed a terminal disclaimer complying with applicable rules and disclaiming that part of the term of the Brown application which would extend beyond the expiration date of the commonly owned, copending Black application. The Black application was subsequently abandoned in favor of a CPA application on June 4, 1998. In the Brown application the examiner then withdrew the existing rejection and instead rejected all the claims as follows:

(1) All the claims are rejected under 35 USC § 102(e)/103 as obvious over the CPA application in view of the patent to Blue.
(2) All the claims are rejected under 35 USC § 102(e)/103 as obvious over another commonly owned patent to Black and Wilson in view of the patent to Blue.

The examiner noted that the Blue patent and the Brown application are neither commonly owned nor have common inventor, and that both the Black and Wilson patent and the CPA application contain, but do not claim, the subject matter of the abandoned Black application.

Which of the following would overcome the rejection:

A) File a reply arguing that the withdrawal of the double patenting rejection coupled with the filing of the terminal disclaimer preclude a subsequent 102(e)/103 rejection.

B) File an affidavit under 37 CFR 1.131 by Brown establishing that the invention was conceived in South Africa and reduced to practice there between August 2, 1995 and December 14th of that same year.

C) File a declaration under 37 CFR 1.132 by Brown stating that he conceived or invented the subject matter disclosed but not claimed in the Black and Wilson patent and in the Black patent and its CPA.

D) File a declaration under 37 CFR 130 to disqualify the commonly owned references as prior art.

E) File a CPA of the Brown application.

Answer 35

ANSWER: (C) is the correct answer because if Brown invented the subject matter disclosed, but not claimed, in the prior art references, then that subject matter was not invented by “another” as required by 102(e). MPEP 2132.01. Remember if Brown’s invention was not claimed in the prior art reference, then Brown cannot be named as an inventor in that prior art.

Question 36

A patent application includes the following incomplete Claim 1:

A shaving implement comprising:
(i) _________________________;
(ii) a shaving head arranged perpendicular to said handle and including a razor, said shaving head being connected to said handle at said first end;
(iii) a collapsible tube of shaving cream positioned in and substantially filling said dispensing chamber, said tube including a neck having a dispensing opening provided in proximity to said razor;
(iv) a removable dispensing chamber plug provided at said second end such that when said plug is removed said collapsible tube of shaving cream may be replaced; and
(v) a tube squeezing slide positioned within said channel and said dispensing chamber, said slide including opposed slots thereon, said slots being in sliding engagement with said longitudinal sides of said channel.

Which of the following, if included as paragraph (i) of Claim 1, properly completes the claim?

A) an elongated handle including a dispensing chamber and a channel formed in said handle, said channel being defined by longitudinal sides within said handle and communicating over substantially its entire length with said dispensing chamber;

B) an elongated handle having a first end, said handle including a chamber and a channel formed in said handle, said channel being defined by longitudinal sides within said handle and communicating over substantially its entire length with said chamber;

C) an elongated handle having a first end, said handle including a dispensing chamber and an elongated channel formed in said handle, and channel communicating over substantially its entire length with said chamber;

D) an elongated handle having a first end and a second end, said handle including a dispensing chamber and a channel having longitudinal sides formed in said handle and communicating over substantially its entire length with said dispensing chamber;

E) an elongated handle having a first end and a second end, said handle including a channel formed in said handle, said channel being defined by longitudinal sides within said handle and communicating over substantially its entire length with said chamber;

Answer 36

ANSWER: (D). Answer (A) does not provide proper antecedent basis for “said first end” in part (ii) of the claim and “said second end” in part (iv) of the claim. Answer (B) fails to provide proper antecedent basis for “said dispensing chamber” in part (iii) of the claim, and “said second end” in part (iv) of the claim. Answer (C) fails to provide proper antecedent basis for “said second end” in part (iv) of the claim and “said longitudinal sides of said channel” in part (v) of the claim. Answer (E) fails to provide proper antecedent basis for “said dispensing chamber” in part (iii) and subsequent parts of the claim.

Question 37

On April 4, 2007, practitioner P filed a patent application for inventor S claiming a laminate of several layers. The examiner rejected the claims in the application as being anticipated under 35 U.S.C. § 102(a) and 102(e) over a U.S. patent granted on February 11, 2007, to Jones which describes the laminate in the specification, and how to make the laminate. Jones did not claim the laminate, or derive the laminate from S. The patent was granted to Jones on an application filed on November 2. 2004. The claims in the Jones patent are directed to a substrate having a single layer. S first conceived his invention on July 4, 2005.

Which of the following would be (an) appropriate response(s) to overcome the rejection?

A) Amending the claim by adding limitations which are supported by the specification in S’s application. and are not disclosed or suggested by the Jones patent, request reconsideration, and clearly point out the patentable novelty of the amended claim presented over Jones.

B) Produce evidence of secondary considerations such as unexpected results or commercial success.

C) Argue that the claimed invention in the Jones patent is non-analogous art or teaches away from the invention.

D) Argue that the Jones patent is not evidence that the invention was known “by others,” as required by 35 U.S.C. § 102(a) since Jones is a single person, whereas “others” requires plural persons.

E) B and C.

Answer 37

ANSWER: (A). 35 U.S.C. § 103. (B) is wrong because evidence of secondary considerations cannot overcome a rejection under 35 U.S.C. § 102. In re Wiggins, 179 USPQ 421 (CCPA 1973); MPEP 2131.04. (C) is wrong because such arguments are “not Canadiane’ to a rejection under section 102.” Twin Disc, Inc. v U.S., 231 USPQ 417, 424 (Ct. Cl. 1986) (quoting In re Self, 213 USPQ 1, 7 (CCPA 1982)); MPEP 2131.05. (D) cannot overcome the rejection because “others” in 35 U.S.C. § 102 (a) refers to any entity which is different from the inventive entity, and the entity need only differ by one person to be “by others”. See In re Katz, 215 USPQ 14 (CCPA 1982); MPEP 2132. (E) is wrong because (B), (C), and (D) are wrong.

Question 38

You are drafting a patent application for your client’s widget invention. The application discloses a widget consisting essentially of, in series, an amplifier having a power output of 100 to 300 amps, preferably 250 amps, and a woofer having a wattage of 400 to 450 watts, preferably 425 watts. The application satisfies the requirements of 35 U.S.C. § 112, and does not disclose the widget having any power output or wattage outside the foregoing limits set forth in the specification.

The following independent claim will be Claim I in the application: A widget consisting essentially of an amplifier having a power output of 100 to 300 amps, and woofer having a wattage of 400 to 450 watts.

Which of the following claims would not be a proper dependent claim if presented as an original claim in the application when the application is filed in the PTO?

A) 2.–The widget of Claim I wherein the woofer has a wattage of 425 to 450 watts.

B) 2.–The widget of Claim I wherein the amplifier has a power output of 300 amps and the
woofer has a wattage between 430 and 450 watts.

C) 2.–The widget of Claim I wherein the amplifier has a power output of 250 amps.

D) 2.–The widget of Claim I wherein the woofer has a wattage of 425 watts.

E) 2.–The widget of Claim I wherein the amplifier has a power output of up to 300 amps.

Answer 38

ANSWER: (E). 35 U.S.C. §§ 112, fourth paragraph, and 251. The claim is not a proper dependent claim because it is broader than the claim from which it depends. The expression “up to 300 amps” would include 0 to 300 amps, which is outside the 100-300 amp range disclosed in the specification, and recited in Claim 1. (A) is a proper dependent claim because the wattage is within the range limitation set out in Claim 1. (B) is a proper dependent claim because the wattage and voltage are within the range limitations set out in Claim 1. (C) and (D) are proper dependent claims because the wattage and voltage are within the range limitations set out in Claim 1.

Question 39

Select from the following an answer which completes the following statement, such that the completed statement accords with proper USPTO practice and procedure pre-AIA: “When the reference in question is a noncommonly owned U.S. patent claiming the same invention as applicant, and its issue date is ____________________”

A) less than one year prior to the presentation of claims to that invention in the application being examined, applicant’s remedy, if any, is by way of requesting an interference.

B) exactly one year prior to the presentation of claims to that invention in the application being examined, applicant’s remedy, if any, is by way of requesting an interference.

C) more than one year prior to the presentation of claims to that invention in
the application being examined, applicant’s remedy, if any, is by way of
requesting an interference.

D) less than one year prior to the presentation of claims to that invention in
the application being examined, applicant’s remedy, if any, is by way of affidavit or declaration “swearing back” of reference.

E) less than one year prior to the presentation of claims to that invention in the application being examined, applicant’s remedy, if any, is by way of affidavit or declaration
traversing the ground of rejection.

Answer 39

(A) is the most correct answer, while (D) is not the most correct answer. See MPEP § 715.05, which , in pertinent part, states:
When the reference in question is a noncommonly owned U.S. patent claiming the same invention as applicant and its issue date is less than 1 year prior to the presentation of claims to that invention in the application being examined, applicant’s remedy, if any, must be by way of 37 C.F.R. § 1.608 instead of 37 C.F.R. § 1.131… . The reference patent can then be overcome only by way of interference. (B) and (C) are not the most correct answers. See MPEP § 715.05, which, in pertinent part, states: If the patent is claiming the same invention as the application and its issue date is 1 year or more prior to the presentation of claims to that invention in the application, a rejection of the claims of the application under 35 U.S.C. § 135(b) should be made. See In re McGrew, 120 F.3d 1236, 1238, 43 USPQ2d 1632, 1635 (Fed.Cir. 1997) (The court holding that application of 35 U.S.C. § 135(b) is not limited to inter partes interference proceedings, but may be used as a basis for ex parte rejections.). (E) is a wrong answer because an affidavit or declaration traversing a ground of rejection may be received only where the reference “substantially shows or describes but does not claim the same patentable invention.” 37 C.F.R. § 1.132.

Question 40

You filed a patent application for a client containing a claim to a composition wherein X is defined as follows: “X is a member selected from the group consisting of elements A, B, and C.” The claim is properly rejected under pre-AIA 35 U.S.C. § 102(b) as being anticipated by a reference describing the same composition invention wherein X is element A.

The rejection may be properly overcome by:

A) Amending the claim by canceling elements B and C because the reference is concerned only with element A.

B) Arguing that the reference is not relevant because it lacks elements B and C.

C) Amending the claim by canceling element A from the Markus group.

D) Amending the claim by changing “consisting of” to “consisting essentially of.” E Amending the claim to redefine X as “being a member selected from the group comprising elements A, B, and C.”

Answer 40

ANSWER: (C). 35 U.S.C. 102(b); and MPEP §§ 715.03, 2111.03, and 2173.05(h). Deletion of the anticipated element from the claim leaves an invention, which is no longer anticipated by the reference. (A), (D), and (E) are incorrect because despite the amendments, the claim remains anticipated since the claim is still directed to the invention described in the reference wherein X is element A. For example, in (D) and (E), element A would still be a member of the group and the claim would still be anticipated by the prior art. (B) is incorrect because the argument does not change the fact that the claim remains anticipated by the same invention described in the reference wherein X is element A. (E) is incorrect because 66comprising” cannot be used in a proper Markush group.

Question 41

On May 13, 1996, inventor A filed a patent application in the PTO claiming invention X. The invention was conceived in Montreal Japan on the 23rd of October 1994 and reduced to practice there two days later. A Japanese application directed to invention X was filed by inventor A on July 12, 1995. The Japanese application was abandoned on March 13, 1997. No priority has been claimed from the Japanese application. The Patent Examiner issued an Official Action where all the claims were properly rejected under 35 USC 102(a) and 102(e) as being anticipated by a patent to Z which discloses but does not claim invention X. The Z patent was filed in the United States Patent Office on May 23, 1995 and issued on January 13. 1996. Z is a proper continuation of an earlier abandoned application filed December 14, 1993.

Which of the following is/are appropriate response(s) which could overcome the rejections under 102(a) and 102(e) if timely filed?

A) Amend the claims to add limitations disclosed in the application as initially filed, but not disclosed or suggested in Z’s patent, and argue that the limitations patentably distinguish the claimed invention over the prior art.

B) File an antedating affidavit or declaration under 37 CFR 1.131 showing a reduction to practice in Japan on October 25, 1994.

C) File a claim for the right and benefit of priority and a certified copy of the abandoned Japanese application.

D) (A), (B), and (C).

E) (B) and (C).

Answer 41

A) is correct. Dates of invention in Japan can be established to
antedate a reference subsequent to December 8, 1993. Thus, the reduction to practice in Japan on October 25, 1994 can be the basis of overcoming the 102(a) rejection which is based upon the issue date of the Z patent. However, that date is subsequent to the 102(e) date of the Z patent, which is its earliest effective filing date. That earliest effective filing date is the filing date of its parent, which is December 14, 1993 so the 102(e) rejection cannot be overcome. Claiming priority from the Japanese filing likewise will remove the 102(a) rejection but not the 102 (e) rejection. The abandonment of the Japanese application does not preclude claiming priority.

Question 42

Stan, through a registered practitioner, files an application for a patent. During theprosecution of Stan’s patent, in an amendment, the practitioner admitted in his discussion as to “all the claims” of Stan’s application, that “the most pertinent available prior art known to the Applicants and their representatives is the Acme Patent, cited by the examiner.” Within one year after the patent issues, Stan comes to you and wants to file a reissue to broaden his claims, based on the fact that the Acme patent is not prior art. He has ample evidence to show that he conceived and reduced his invention to practice before the filing date of the Acme patent.

Which of the following is true?

A) Stan should file a reissue application accompanied by a declaration under 37 C.F.R. 1.131 to swear behind the date of the Acme reference. The statement by the registered practitioner, who formerly represented Stan, that the Acme patent was prior art constituted error without deceptive intent and may be corrected by reissue.

B) The explicit admission by the registered practitioner, who formerly represented Stan, that the Acme patent constituted prior art is binding on Stan in any later proceeding involving the patent.

C) The explicit admission by the registered practitioner, who formerly represented Stan, that the Acme patent constituted prior art is not binding on Stan in any later proceeding involving the patent.

D) Since the Acme patent was cited by the examiner and not by the registered practitioner, who formerly represented Stan, Stan can not be held accountable for the error. Moreover, the statement by the registered practitioner was directed to the pertinence of the prior art and not to the issue of whether the date of the Acme patent could be sworn behind. Accordingly, the statement has no binding effect.

E) (A) and (D).

Answer 42

(B) is the most correct answer. Admissions by applicant constitute prior art. As explained in Tyler Refrigeration v. Kysor Industrial Corp., 777 F.2d 687, 227 USPQ 845 (Fed. Cir. 1985), the Fed. Circuit found that the district court decided on two separate and independent grounds that the Aokage patent was such prior art. One basis was Tyler’s admission of the Aokage reference as prior art before the PTO during the prosecution of the ‘922 Subera patent. The court found that, in a wrap-up amendment, the Tyler attorney admitted in his discussion as to “all the claims” of the three Subera applications, that “the most pertinent available prior art known to the Applicants and their representatives is the Aokage U.S. Patent 4,026,121 cited by the Examiner” (emphasis added). In view of this explicit admission, the district court’s decision was proper and was sufficiently based on clear and convincing evidence. The controlling case law in this court recognizes this principle. See Aktiebolaget Karlstads Mekaniska Werkstad v. ITC, 705 F.2d1565, 1574, 217 U.S.P.Q. (BNA) 865, 871 (Fed. Cir. 1983); In re Fout, 675 F.2d 297, 300, 213 U.S.P.Q. (BNA) 532, 536 (CCPA 1982), and In re Nomiya, 509 F.2d 566, 571, 184 U.S.P.Q. (BNA) 607, 612 (CCPA 1975). Thus, we must affirm the court’s decision that the Aokage patent was prior art and as such binding on Tyler. (Here again, we do not pass on
the other grounds on which the court concluded that the Aokage was prior art within the meaning of 35 U.S.C. § 102.) Since (B) is true, (D) is not true. Answers (A), (C) and (D) also are not true since the Acme patent can not be sworn behind or otherwise removed as a result of the admission. (E) is not true because (A) and (D) are not true.
[Note re Question 16, choice (B), line 1: Examination proctors were instructed to direct examination candidates after the word “by,” to insert the word –the–. Also in Question 16, choice (D), line 3, examination proctors were instructed to direct examination candidates after the word “by” to insert the words –the registered practitioner–. The question has been carefully reviewed to see if there is any alternative reasonable meaning to the question if any or all of the changes were not made. No such meaning was found. The Director of Enrollment and Discipline concluded that omission of the changes should have no material affect on the question, and should not inhibit an individual’s ability to correctly answer the question.]

Question 43

A rejection based on pre-AIA 35 U.S.C. § 102(a) cannot be overcome by:

A) Filing an affidavit under 37 C.F.R. § 1. 1 32 showing that the reference invention is not by “another.”

B) Perfecting a claim to priority under 35 U.S.C. § 119(a)-(d).

C) Filing an affidavit under 37 C.F.R. § 1.131 “swearing back” of a U.S. patent which substantially shows or describes, and claims the same patentable invention as the rejected invention.

D) Amending the claims to patentably distinguish over the prior art.

E) Persuasively arguing that the claims are patentably distinguishable from the prior art.

Answer 43

ANSWER: (C) is the correct answer because 37 C.F.R. § 1.131 requires that the reference not claim the same patentable invention as the rejected invention. (A), (B), (D), and (E) are wrong because MPEP § 706.02(b) identifies these answers as actions that can be taken to overcome a 35 U.S.C. § 102(a) rejection.

Question 44

You received a Final Rejection dated October 3, 1998 in an application you are prosecuting for your client General Magnetics. The Examiner set a shortened three month period to respond. Because your client is anxious to obtain a patent you filed a response on November 12, 1998 after a brief telephone interview with the Examiner. Although the Examiner indicated in the interview that the amendment would be received positively, you are disappointed to receive on December 14, 1998 an advisory action dated December 9, 1998 indicating your response will not be entered and all claims remain rejected. On December 14, 1998 you file an unsigned Notice of Appeal together with a request to charge all necessary fees to your deposit account. After full discussion with your client you file a RCE on December 17, 1998 and request that the response to the Final Rejection be entered in the RCE.

What would be the very last day on which an appeal brief can be filed if a proper petition and fee for the maximum extension of time permitted under rule 1.136(a) is filed with the brief:

A) 9-Jul-99
B) 14-Jul-99
C) 9-May-99
D) 3-Sep-99
E) None of the above.

Answer 44

ANSWER: (E) is the correct answer. The filing of the RCE immediately moots or dismisses this appeal. As a side note, the Notice of Appeal does not require a signature. MPEP 1204. The three month shortened period to respond to the Final Action expires January 3, 1999. The Notice of Appeal is filed on December 14, 1998 which is within the third month of the statutory period set by the Final Rejection. If the parent had not been abandoned, the Appeal Brief would have to be filed before midnight of July 14, 1999 with the maximum five month extension of time permitted under Rule 1.136(a). MPEP 1206.

Question 45

Today, April 12, 2010, is the last day of a three month shortened statutory period for reply to a non-final rejection over references under 35 U.S.C. § 103. Today, your client, located overseas, requests in a facsimile that you cancel all of the current claims in the application, and advises that a new set of claims to replace the current claims will be sent to you no later than April 29, 2010. There is no deposit account. The client pays all fees in a timely manner.

In accordance with proper PTO practice and procedure, which of the following is the most appropriate course of action to take regarding the non-final rejection?

A) Await receipt of the new claims and necessary fees, and then file the amendment, request for reconsideration, and appropriate fee for an extension of time, no more than
six months from the date of the non-final rejection.

B) File a request for a one month extension of time today and pay the fee when you file the amendment.

C) File an amendment today canceling all claims in accordance with your client’s instructions.

D) File a request for reconsideration today, stating only that “[t]he rejection is in error because the claims define a patentable invention.”

E) File a request for reconsideration today, and state that a supplemental amendment will be forthcoming.

Answer 45

ANSWER: (A). 37 C.F.R. § 1. III; MPEP § 714.02. (B) is incorrect because the fee must be paid when the request for extension of time is made. 37 C.F.R. § 1. 136(A); MPEP 710.02(E). (C) is incorrect. The client did not give instructions to file the amendment today. Further, an amendment canceling all claims is non-responsive to the non-formal rejection. As stated in 37 C.F.R. § 1. III (B), “In order to be entitled to reconsideration.., the applicant … must reply to the Office action. The reply … must be reduced to a writing which distinctly and specifically points out the supposed errors in the examiner’s action and must reply to every ground of objection and rejection in the prior Office action.” MPEP § 714.19, item (H). (D) is incorrect. “A general allegation that the claims define a patentable invention without specifically pointing out how the language of the claims patentably distinguishes them from the references does not comply with the requirements of this section.” 37 C.F.R. § 1. I I I (B). (E) is incorrect inasmuch as it does not comply with 3 7 C.F.R. § 1. I I I (B).

Question 46

Patent applicant X claims “a rotary vane pump having impellers coated with ceramic X for the purpose of preventing cavitation of the impellers.” The examiner rejected the claim under 35 U.S.C. § 103 as being unpatentable over a patent to John in view of a patent to Alex. John teaches a rotary vane pump having impellers coated with epoxy resin for the purpose of preventing corrosion of the impellers. Alex teaches a mixing device having agitator blades coated with ceramic X for the purpose of preventing corrosion of the blades. Alex also suggests that the ceramic X coating material “is useful on various types of pumps for the purpose of preventing corrosion.” The examiner determined that (i) it would have been obvious to one having ordinary skill in the art to substitute the ceramic X coating material taught by Alex for the epoxy resin coating material in John and (ii) the resultant rotary vane pump would have coated impeller blades which would inherently prevent cavitation.

The combination of John and Alex:

A) cannot support a prima facie case for obviousness unless the Alex reference contains a suggestion that ceramic X will cause cavitation.

B) cannot support a prima facie case for obviousness inasmuch as the discovery that ceramic X prevents cavitation imparts patentability to a known composition.

C) may support a prima facie case for obviousness even though the Alex reference does not disclose that ceramic X will prevent cavitation or can be used on the impellers of a rotary vane pump.

D) cannot shift the burden of proof to the applicant to show that the prior invention lacked the newly discovered property asserted for the claimed invention unless one of the references discloses the property.

E) can support a prima facie case for obviousness only if both references show or suggest that ceramic X can be used in a rotary vane pump.

Answer 46

ANSWER: (C) is the correct answer. 35 U.S.C. § 103; MPEP §§ 2143; 21 ; 2145; In re Dillon, 919 F.2d 688, 16 USPQ2d 1897 (Fed. Cir. 1990). The motivation to modify the reference may suggest what the applicant has done, but for a different purpose. As discussed in MPEP § 2144 [p.2100-115], “it is not necessary that the prior art suggest the combination to achieve the same advantage …. [citations omitted]” (A), (B), (D) and (E) are incorrect because they are inconsistent with MPEP § § 2143, 2144, and 2145, as
well as In re Dillon, supra.

Question 47

Inventor Jones retained registered practitioner P to Prepare and file a patent application claiming Jones’ invention. P prepared and filed the application together with a declaration wherein Jones appointed P to represent him and conduct all business before the PTO. While P was away on a vacation, Jones filed a preliminary amendment in the application amending the claims, and no Office action on the merits was issued by the PTO examiner. The amendment was signed by Jones, but not P. When P returned from vacation, Jones provided P with a copy of the amendment. Upon review of the amendment, P realized that the scope of the claims had been broadened, that the broadened claims are supported by the original disclosure, and that the claims now read upon prior art which Jones disclosed to P, but which was not disclosed in the specification. The prior art reference is not material to the patentability of the original claims in the application.

Which of the following actions of P accords with proper PTO practice and procedure and is the most likely to place the application in condition for allowance?

A) File a supplemental amendment arguing that the Jones amendment should not be entered on the ground that 7 CFR § 1.33 provides that “Double correspondence with an applicant and his attorney or agent. . . will not be undertaken.”

B) File a supplemental amendment canceling all amendatory changes effected by the Jones amendment.

C) File a supplemental amendment which (1) cancels all the claims in the patent application, (2) adds the original claims, and (3) argues that the newly added claims are supported
by the disclosure.

D) File a supplemental amendment which (1) adds the original claims, (2) cites to the examiner the prior art reference disclosed by Jones to P with an explanation of how the newly added claims patentably distinguish over such prior art reference, and argues that the added claims are supported by the disclosure.

E) File a supplemental amendment which (1) adds the original claims, (2) cites to the examiner the prior art reference disclosed by Jones to P with an explanation of how all
the claims in the application patentably distinguish over such prior reference, and (3) argues that all the claims in the application are supported by the disclosure.

Answer 47

ANSWER: (C). 37 CFR § 1.56; MPEP 2001.04. “There is no duty to submit information which is not material to the patentability of any existing claim.” (A) is wrong because the amendment will be entered per MPEP 714.01(d). (B) is wrong because the amendment does not comply with 37 CFR §§ 1.119, 1.121, and 1.124, and could not be entered. As stated in 37 CFR § 1.124, “when an amendatory clause is to be amended, it should be wholly rewritten and the original insertion canceled, so that no interlineations or deletions shall appear in the clause as finally presented. Matter canceled by amendment can be reinstated only by a subsequent amendment presenting the canceled matter as a new insertion.” See also MPEP 714.24. (D) and (E) do not place the application in condition for allowance because the claims submitted by Jones, which read upon the prior art disclosed by Jones to P, are still contained in the application.

Question 48

The claimed invention in a patent application is directed to an explosive composition “comprising 60-90% solid ammonium nitrate, and 10-40% water-in-oil in which sufficient aeration is entrapped to enhance sensitivity to a substantial degree.” The application discloses that the explosive requires both fuel (the ammonium nitrate), and oxygen to “sensitize the composition.” A prior art reference, published more than two years before the effective filing date of the application, discloses explosive compositions containing water-in-oil emulsions having identical ingredients to those claimed, in ranges overlapping with the claimed composition. The only element of the claim not recited in the reference is “sufficient aeration entrapped to enhance sensitivity to a substantial degree.” The reference does not recognize that sufficient aeration sensitizes the fuel to a substantial degree. However, in fact, “ sufficient aeration” is necessarily an inherent element in the prior art blasting composition within the overlapping ranges inasmuch as the blasting composition explodes.

The prior art reference:

A) anticipates the claim because it discloses every limitation of the claim either explicitly or inherently.

B) does not anticipate the claim because the prior are reference does not recognize an inherent property.

C) does not anticipate the claim because the prior are reference does not recognize an inherent function of oxygen.

D) does not anticipate the claim because the prior are reference does not recognize an inherent ingredient, oxygen.

E) (B), (C) and (D).

Answer 48

A) is correct. 35 U.S.C. 102. When a patent claims a compostition in terms of ranges of element, any single prior are reference falling within each of the ranges anticipates the claim. Atlas Powder Co. v. IRECO, Inc. 51 USPQ2d 1943 (Fed. Cir. 1999) ( holding “inherency is not necessarily coteminous with knowledge of those of ordinary skill in the art…Artisans of ordinary skill may not recognize the inherent characteristics or functioning of the prior art… . However, the discovery of a previously unappreciated property of a prior art composition, or of a scientific explanation for the prior art’s functioning, does not render the old composition new to the discoverer.” The court also held that “this same reasoning holds true when it is not a property, but an ingredient, which is inherently contained in the prior art.”). (B) is not the most correct answer because the prior are reference, to anticipate the claimed invention is not required to recognize an inherent property. (C) is not the most correct answer because the prior art reference, to
anticipate the claimed invention, is not required to recognize an inherent function of oxygen. (D) is not the most correct answer because the prior art reference, to anticipate the claimed invention, is not required to recognize an inherent ingredient, oxygen. (E) is not the most correct answer because (B), (C) and (D) are not correct, whereas (A) is correct.

Question 49

On March 20, 2007, inventor B filed a patent application in the PTO claiming invention X. Inventor B did not claim priority based on a foreign application filed by inventor B on June 3, 2006, in the Patent Office of Canadiany. In the foreign application, inventor B disclosed and claimed invention X, which inventor B had conceived on October 10. 2005, and reduced to practice on January 5, 2006, all in Canadiany. The patent examiner issued an Office action where all the claims in the patent application were properly rejected under 35 U.S.C. § 102(a) and (e) as being anticipated by a U.S. patent granted to inventor Z on November 5, 2006. on a patent application filed in the PTO on February 6, 2005. There is no common assignee between Z and B, and they are not obligated to assign their inventions to a common assignee. Moreover, inventor Z, independently of inventor B, invented invention X, and did not derive anything from inventor B. The U.S. patent discloses, but does not claim, invention X.

Which of the following is/are appropriate response(s) which could overcome the rejections under § 102 (a) and (e) when timely filed?

A) Amend the claims to require particular limitations disclosed in inventor B’s application, but not disclosed or suggested in inventor Z’s patent, and argue that the limitations patentably distinguish the claimed invention over the prior art.

B) File an antedating affidavit or declaration under 37 CFR § 1.131 showing conception on October 10, 2005, and reduction to practice on January 5, 2006, all in Canadian.

C) File a claim for the right and benefit of foreign priority wherein the Canadian application is correctly identified, file a certified copy of the original Canadian patent application, and argue that as a result of the benefit of foreign priority, the U.S. patent is no longer
available as a prior art reference against the claims.

D) (A), (B) and (C).

E) (A) and (C) only.

Answer 49

ANSWER: (A). By following the procedure in (A), the claims are no longer anticipated by Z’s patent because particular limitations are now disclosed in inventor B’s application which are not disclosed or suggested in inventor Z’s patent. 35 U.S.C. § 102(a) and (e); MPEP 2131. “A claim is anticipated only if each and every element as set forth in the claim is found, either expressly or inherently described, in a single prior art reference.” Verdegaal Bros V. Union Oil Co. of California, 2 USPQ2d 1051, 1053 (Fed. Cir. 1987). (B) is not correct because under 35 U.S.C. § 102(e), the effective date of the prior art patent is the filing date of Z’s patent (Feb. 5, 2005), which is prior to B’s conception (October 10, 2005). 35 U.S.C. § 102(e); MPEP 2136 ̄ 2136.05. (C) is not correct because the foreign priority date (June 3, 2006) does not antedate the filing date (February 6, 2005) of Z’s patent, which is the controlling date for purposes of overcoming the rejection under 35 U.S.C. §102(e). 35 U.S.C. § 119; MPEP 201.15. (D) is not correct because (B) and (C) are not correct. (E) is not correct because (C) is not correct.