Review

Question 1

Whether there is a clear-cut indication of _____ of the subject matter covered by the claim should be considered when examining claims that contain functional language in order to determine whether the language is ambiguous.

Answer 1

scope

Question 2

Whether the language sets forth well-defined _____ of the invention or only states a problem solved or a result obtained should be considered when examining claims that contain functional language in order to determine whether the language is ambiguous.

Answer 2

boundaries

Question 3

Whether one of ordinary skill in the art would know from the claim terms what structure or steps are encompassed by the claim should be considered when examining claims that contain functional language in order to determine whether the language is ______.

Answer 3

ambiguous

Question 4

The primary inquiry when considering claims that contain functional language is to determine whether the language leaves room for _____ or whether the boundaries are clear and precise.

Answer 4

ambiguity

Question 5

An ambiguity of a functional limitation may be resolved by using a _____ rather than a qualitative functional feature.

Answer 5

Quantitative metric

Question 6

To resolve an ambiguity of a functional limitation, an applicant could demonstrate that the specification provides a formula for calculating a property along with _____ that do and do not meet claim limitations.

Answer 6

examples

Question 7

To resolve an ambiguity of a functional limitation, an applicant could demonstrate that the specification provides a general _____ and examples sufficient to teach a person skilled in the art when the claim limitation was satisfied.

Answer 7

guideline

Question 8

To resolve an ambiguity of a functional limitation, an applicant could _____ the claims to recite the particular structure that accomplishes the function.

Answer 8

amend

Question 9

Where can you find examples of non-structural terms that invoke 112(f) as well as structural terms that do not?

Answer 9

MPEP 2181

Question 10

112(f) is applied when the following conditions are met:
1) claim limitation uses a non-structural term that does not have a _____;
2) the term is modified by _____ language; AND
3) the term is not modified by sufficient _____ for achieving the specified function

Answer 10

structural modifier
functional
structure, material, acts

Question 11

If a non-structural term in a claim limitation is accompanied by a structural modifier, 112(f) ____ invoked.

Answer 11

is not

Question 12

In order to determine whether a word term or phrase coupled with a function denotes structure, it is necessary to check _____, _____, and ______.

Answer 12

spec (description)
dictionaries (gen & art)
prior art

Question 13

If the invocation is unclear, the disclosure is insufficient, and/or structure and function are not linked, a rejection of a means-plus-function claim under §112(b) may be _____.

Answer 13

appropriate

Question 14

For a computer-implemented means-plus-function claim limitation invoking 112(f), the corresponding
structure is required to be more than ______.

Answer 14

general purpose computer/processor

Question 15

It is _____ to claim a means for performing a particular computer-implemented function and then to
disclose a general-purpose computer as the structure designed to perform that function

Answer 15

insufficient

Question 16

If the specification explicitly discloses an algorithm, the sufficiency of the disclosure of the algorithm must be determined in light of _____.

Answer 16

ordinary skill in the art

Question 17

For a computer-implemented means-plus-function claim limitation invoking §112(f) the corresponding structure is required to be more than simply a _____.

Answer 17

general-purpose computer or microprocessor

Question 18

Applicant may express an algorithm in any understandable terms including as a mathematical formula in prose in a
flow chart or in any other manner that provides sufficient _____.

Answer 18

structure

Question 19

A rejection under §112(b) is _____ if the specification discloses no corresponding algorithm associated with a computer or microprocessor

Answer 19

appropriate

Question 20

A process claim containing the term “computer” should not be construed as limited to a computer having a specific set of characteristics and capabilities unless the term is modified by other claim terms or clearly defined in the specification to be different from its common _____.

Answer 20

meaning

Question 21

If the method involves or is executed by a _____ machine or apparatus the claims are less likely to be drawn to an abstract idea.

Answer 21

particular

Question 22

Integral use of a machine or apparatus to achieve performance of the method weighs _____ patent eligibility.

Answer 22

toward

Question 23

Use of a machine or apparatus that contributes nominally to the execution of the claimed method (e.g. in a data-gathering step or in a field-of-use limitation) would weigh _____ eligibility.

Answer 23

against

Question 24

If a transformation exists, the claims are _____ likely to be drawn to an abstract idea.

Answer 24

less

Question 25

Five factors that determine whether a process (transformation) claim is an abstract idea:
1) particularity/generality of transformation
2) particularity/generality of article
3) nature/type/extent of transformation
4) nature of article
5) imposes _____

Answer 25

meaningful limits

Question 26

The machine-or-transformation test _____ the sole test for deciding whether an
invention is a patent-eligible process

Answer 26

is not

Question 27

If a general concept is involved in executing the steps of the method this can be a clue that the claim is drawn to a(n) _____.

Answer 27

abstract idea

Question 28

Five factors relevant to patentability of claims reciting general concepts:
1) Monopoly in all fields
2) Cover _____ uses
3) All possible solutions
4) Disembodied or instantiated
5) Observable vs subjective implementation

Answer 28

unknown

Question 29

If a particular machine or apparatus is incorporated into the claimed method this weighs _____ patent eligibility.

Answer 29

in favor of

Question 30

A transformation weighs in favor of patentability if:
1) applied to _____ article
2) in terms of different function or use
3) specifically defined

Answer 30

particular

Question 31

The Patent Act _____ the possibility that there are at least some processes that can be fairly described as business methods that are within patentable subject matter under §101.

Answer 31

leaves open

Question 32

A patent should not grant a(n) ______ over an abstract idea.

Answer 32

monopoly

Question 33

An applicant can use a 1.131 affidavit to swear back of a reference that disclosed but did not claim the claimed invention up to ____ prior to the pre-AIA application date.

Answer 33

1 year

Question 34

In an AIA application, a 1.130 affidavit may disqualify prior art on account of _____ to inventor and/or prior public disclosure by inventor.

Answer 34

attribution

Question 35

A _____ application contains disclosure entitled to priority both before March 16 2013 and on/after March 16 2013.

Answer 35

transitional

Question 36

If at any time an application includes claims that gain priority support only from a filing that occurred on or after March 16 2013, the entire application will be considered under the AIA, even if such claims are _____.

Answer 36

cancelled

Question 37

A transition application
contains or contained at any time a claim to a claimed invention that has an effective filing date on or after _____.

Answer 37

March 16 2013

Question 38

A transition application must be accompanied by a statement notifying ____ that it is a transition application.

Answer 38

the Office

Question 39

A transition application statement must be provided by the later of:
1) later-filed filing date + 4 months
2) entry to national stage + 4 months
3) prior-filed filing date + 16 months
4) effective filing date of a _____ claim

Answer 39

post-AIA

Question 40

The oath or declaration must identify the inventor by legal
name and provide a mailing address unless that information is supplied in the _____.

Answer 40

ADS

Question 41

An amendment to a claim to make it patentably distinct from a reference in order to overcome a rejection based on that reference may also indirectly amend any _____ claims.

Answer 41

dependent

Question 42

In a test question, a narrative may indicate whether failure to timely file to claim priority was unintentional, and, as a result, whether priority may be restored under PLTIA within _____ months of the original filing.

Answer 42

14

Question 43

New claims are not necessarily new _____.

Answer 43

matter

Question 44

A new claim added on or after March 16, 2013 that is supported by the disclosure filed prior to March 16, 2013 will be examined under ______ law.

Answer 44

pre-AIA

Question 45

An applicant may opt out of publication at the time they file a nonprovisional patent application, but doing so waives the right to file a _____ application.

Answer 45

foreign

Question 46

When a US patent, a published US patent application, or a WIPO publication of a PCT application claims priority to a foreign filing, the date the US filing will become prior art is as of the ______ date.

Answer 46

earliest effective (foreign) filing

Question 47

A US application claiming priority from a foreign filing may not opt out of _____.

Answer 47

publication

Question 48

A _____ patent can be used as prior art in a utility case.

Answer 48

design

Question 49

A foreign application that supports a priority claim in a US patent/application/PCT becomes prior art as of _____.

Answer 49

(foreign) filing date

Question 50

A foreign application that does not support any priority claims in a US patent/application/PCT becomes prior art as of _____.

Answer 50

publication

Question 51

37 CFR 1.78(a)(6) requires a statement from the applicant in a _____ application only if the application was filed before March 16 2013 and contains or contained at any time a claim to a claimed invention that has an effective filing date on or after March 16 2013.

Answer 51

transition

Question 52

A transition application is a nonprovisional application filed on or after March 16 2013 that claims priority to or the benefit of the filing date of an earlier application (i.e. foreign
provisional or nonprovisional application or an international application designating the United States)
filed prior to _____.

Answer 52

March 16, 2013

Question 53

Canceling the AIA claims in a transition application will not work to return the application to one
deserving of _____ treatment.

Answer 53

pre-AIA

Question 54

In the identical applications situation where one application is entitled to pre-AIA treatment and the other application is entitled to AIA treatment, the contest will be an Interference Proceeding, not a _____ Proceeding.

Answer 54

Derivation

Question 55

When the claims of two applications are identical, there will be a ______ at the
Patent Office to determine who is entitled to receive the claims.

Answer 55

contest

Question 56

In an Interference, if a junior party (later to file) demonstrates diligence from conception to reduction to practice, which period predates conception by the senior party, the junior party _____ prevail.

Answer 56

will

Question 57

A party to an Interference that can demonstrate diligence from time of conception to reduction to actual or constructive practice, or that said period of diligence began or occurred prior to the opposite party’s period of diligence, is more likely to _____.

Answer 57

prevail

Question 58

Reasons considered “unintentional” with regards to timely filing to properly claim priority within 12 months can be really _____.

Answer 58

stupid

Question 59

A petition for a retroactive foreign filing license must include:
1) statement that matter was/is not secret
2) explanation of unintentional error
3) a listing of _____

Answer 59

countries where filed

Question 60

A substitute specification must accompanied by a _____ and a statement that there is no _____.

Answer 60

mark-up
new matter

Question 61

Matter canceled from the application file wrapper of a pre-AIA U.S. patent may be used as prior art as of the _____ in that it then constitutes prior public knowledge under 35 U.S.C. 102(a).

Answer 61

patent date

Question 62

Canceled matter in the application file of a U.S. patent is not a proper reference as of the
filing date under _____.

Answer 62

102(e)

Question 63

If an abandoned application properly serving as a priority document has an enabling disclosure of the subject matter in the child application, the subject matter is pre-AIA prior art as of _____.

Answer 63

filing date of parent (abandoned) application

Question 64

An RCE is not available after the filing of a Notice of Appeal to the Federal Circuit unless the appeal is terminated and the application is still _____.

Answer 64

pending

Question 65

An RCE request filed after a Notice of Appeal but before the Board’s decision on the appeal is considered a request to _____ the appeal and reopen prosecution.

Answer 65

withdraw

Question 66

An applicant’s failure to comment on examiner’s reasons for allowance will be determined on a case-by-case basis to determine whether an implication of _____ can be derived.

Answer 66

agreement / acquiescence

Question 67

That the examiner does not respond to a statement by the applicant commenting on reasons for
allowance does not mean that the examiner agrees with or acquiesces in the _____ of such
statement.

Answer 67

reasoning

Question 68

In the absence of a request by the Office an applicant has no duty to and need not
reply to a _____.

Answer 68

protest

Question 69

The Patent Office will conduct an interview with a registered practitioner without PoA but will not allow said practitioner to view or access the patent before a _____ is filed.

Answer 69

power of attorney

Question 70

Any registered practitioner may submit a response even if they do not have _____.

Answer 70

power of attorney

Question 71

An examiner error can restart the ______.

Answer 71

period for replying

Question 72

A product of human ingenuity is _____.

Answer 72

patentable

Question 73

If an examiner’s answer contains a
rejection designated as a new ground of rejection, appellant may request that prosecution be reopened before the examiner by filing a reply under _____.

Answer 73

37 CFR 1.111

Question 74

If an examiner’s answer contains a
rejection designated as a new ground of rejection, appellant may request that the appeal be maintained by filing a reply brief under 37 CFR 41.41 that addresses each ______.

Answer 74

new ground of rejection

Question 75

A reply brief under 37 CFR 41.41 may not be accompanied by any amendment or _____.

Answer 75

affidavit

Question 76

A protest, unlike a third party submission, may include _____ against patentability.

Answer 76

arguments

Question 77

A third party submission may include printed publications only; however, a protest may also include ______.

Answer 77

facts and other information

Question 78

Neither a protest nor a third party submission may be filed after _____.

Answer 78

allowance

Question 79

A protest may be filed after _____ only with applicant consent.

Answer 79

publication

Question 80

A third party submission must always be filed before allowance, and in addition filed prior to the later of the first rejection of any claim or ______.

Answer 80

publication + 6 months

Question 81

A protest must be, but a third party submission need not be, _____ upon the applicant.

Answer 81

served

Question 82

There is no obligation resting on the Board to consider new or amended claims submitted while the case is on _____.

Answer 82

appeal

Question 83

To initiate an interference, claims must be copied within one year of the earlier filed application’s ______.

Answer 83

issue date

Question 84

When an application is refiled (as a continuation) during an appeal, the Board should be promptly notified; otherwise the Board may refuse to _____ its decision.

Answer 84

vacate

Question 85

During an appeal, the Board may refuse to enter an ______.

Answer 85

amendment

Question 86

The Board may refuse to initiate an interference during an appeal if no claims have been found to be ______.

Answer 86

allowable

Question 87

Any person or organization may pay a ______.

Answer 87

maintenance fee

Question 88

Correspondence in a secrecy order case is not allowed via _____.

Answer 88

fax

Question 89

If subject matter in a secrecy order case is disclosed to any person in the US, the principals must promptly inform the person of the order and ____.

Answer 89

penalties

Question 90

If subject matter in a secrecy order case is disclosed to any person outside the US, the principals must promptly inform the _____.

Answer 90

Assistant Commissioner

Question 91

If days of the week are not provided in close copendency questions, take the dates at _____.

Answer 91

face value

Question 92

Separate verification is no longer required for:
1) small entity statements,
2) translations,
3) claim for foreign priority, or
4) _____.

Answer 92

petition to make special

Question 93

A CPA applies to design applications filed anytime, but only utility applications filed before _____.

Answer 93

5-29-00

Question 94

Under Rule 129, an application (except reissue or design) pending 2+ years as of 6-8-95 can petition to have a _____ withdrawn.

Answer 94

final rejection

Question 95

The statutory bars of 102(b) are applicable even if public use is by a _____.

Answer 95

third party

Question 96

The time period to file a notice of appeal to USDC/EDV is within 2 months of Board decision or action on _____.

Answer 96

Request for Rehearing or Reconsideration

Question 97

A PCT application need only designate the US, and need not actually enter the national stage, in order for its 102(e) date to be its _____.

Answer 97

international filing date

Question 98

The Office may provide status information for pending patent
applications that claim the benefit of the filing date of an application for which status information _____ be
provided.

Answer 98

may

Question 99

For Office purposes, assignments which are made conditional are regarded as ______.

Answer 99

absolute

Question 100

If there is an authorization to charge the filing fee to a deposit account which is overdrawn or has insufficient funds a _____ (37 CFR §1.16(e)) is required in addition to payment of
the filing fee.

Answer 100

surcharge

Question 101

A petition invoking the supervisory authority of the Commissioner when the examiner has refused to enter an amendment will be delegated to the Group Director (Technology Center Director) to whom the _____ has been assigned.

Answer 101

application

Question 102

37 CFR 1.291 only allows subsequent protests by the same party to be based
on new art/issues that could not have been presented _____.

Answer 102

earlier

Question 103

If a maintenance payment includes identification of only the patent number (i.e. does not identify the application number) the Office may apply the payment or _____ the payment.

Answer 103

return

Question 104

The patent application number is needed for payment of maintenance fees; providing the patent number only may lead to the fee being _____ by the Office.

Answer 104

returned

Question 105

While a published application is still pending, the file itself (including actions, etc.) will not be available to the public, but copies of the _____ may be ordered.

Answer 105

application

Question 106

If a prior-filed foreign application contains less description than the corresponding US application, applicant may submit a redacted copy of the US application for _____.

Answer 106

publication

Question 107

The Office will provide a copy of the complete file wrapper and contents of an application for which a redacted copy was submitted to any person who makes a request under 1.14(c)(2), unless applicant provides redacted copies of other _____ materials.

Answer 107

file wrapper

Question 108

A copy of a published pending application (application-as-filed, file contents, or a specific document in the file) may be provided to _____ upon request with a fee.

Answer 108

any person

Question 109

Applicant may decide to allow application to publish as-filed (default) or as-amended if applicant supplies a compliant ______.

Answer 109

amended copy

Question 110

Claims deleted from a pre-AIA application that issues become a statutory bar 1 year after _____.

Answer 110

issue

Question 111

Where color is a distinctive feature of the subject matter of a plant application, the color should be positively identified in the specification by referenced to a recognized _____.

Answer 111

color dictionary or chart

Question 112

A foreign patent or inventor’s certificate need not be published to establish a pre-AIA _____ bar.

Answer 112

102(d)

Question 113

In order to create a pre-AIA 102(d) bar, the foreign patent or inventor’s certificate must be actually granted before _____.

Answer 113

US filing date

Question 114

An original plant or utility application filed on or after 5-29-00 is eligible for patent term _____.

Answer 114

adjustment

Question 115

A CPA is a _____ application.

Answer 115

new

Question 116

Applications filed on or after 6-8-95 may accrue patent term _____ under 35 USC 154(b).

Answer 116

extension

Question 117

An RCE is is not a _____ application.

Answer 117

new

Question 118

Provisional and reissue applications are excepted from _____.

Answer 118

publication

Question 119

) Re-publication of a patent application is available where the Office makes a material mistake apparent from the records and the request for re-publication is filed within _____ from the date of the patent application publication.

Answer 119

2 months

Question 120

Group Director is another term for _____ Director.

Answer 120

Technology Center

Question 121

Final drawings are due within 3 months of the mailing of the _____.

Answer 121

Notice of Allowance and Issue Fee Due

Question 122

Final drawings may be submitted after the issue fee is paid so long as it is within _____ of the mailing of the Notice of Allowance and Issue Fee Due.

Answer 122

3 months

Question 123

Twelve is ____ than sixteen; therefore, if a rule states a deadline is sixteen months, and a question cites a compliant action by twelve months, the option falls within the rule.

Answer 123

less

Question 124

Designs have a special _____ procedure, found in Rule 155.

Answer 124

expediting

Question 125

A preferred narrower range set forth within a broader range is an indefinite claim _____.

Answer 125

limitation

Question 126

An applicant cannot use a patent to prove the state of the art for the purpose of the enablement requirement if the patent has an issue date _____ than the effective filing date of the application

Answer 126

later

Question 127

A publication dated after the effective filing date of an application may be properly used to demonstrate that an application is non-enabling if the publication provides evidence of what one skilled in the art would have known on or before the application’s _____ date.

Answer 127

effective filing

Question 128

The patentability of a product-by-process claim is determined based on the _____.

Answer 128

product

Question 129

In a reexamination, when the time for appeal has expired or any appeal proceeding hasterminated, the Director will issue and publish a certificate
canceling any claim of the patent finally determined to be
unpatentable, confirming any claim of the patent determined to be patentable, and incorporating in the patent any proposed
amended or _____ claim determined to be patentable.

Answer 129

new

Question 130

If the ex parte reexamination proceeding is terminated
by the grant of a reissued patent as provided in § 1.565(d), the reissued patent will constitute the ex parte reexamination
_____ required

Answer 130

certificate

Question 131

There are no _____ in reexaminations.

Answer 131

divisionals

Question 132

Since abandonment is not possible in a
reexamination proceeding, a reexamination
certificate will be issued and published at the conclusion of the proceeding in each patent in which
a reexamination proceeding has been ordered, except where reexamination has been vacated or a reissue patent has been issued, where the patent grated serves as the reexamination _____.

Answer 132

certificate

Question 133

A nonpublication request may be rescinded at any _____.

Answer 133

time

Question 134

A statement regarding lack of deceptive intent is not required when inventorship is corrected to remove inventors solely connected to ______ claims.

Answer 134

cancelled

Question 135

Where the claims covering a particular co-inventor’s invention are cancelled, a statement regarding lack of deceptive intent is not _____.

Answer 135

required

Question 136

In connection with filing an amendment to correct inventorship by adding previously omitted inventors to a
provisional application the submission of a statement that the inventorship error occurred without deceptive intention on
the part of the _____ inventors.

Answer 136

omitted

Question 137

Assignment of an original application is not applied to a CIP because the assignment pertains only to common _____.

Answer 137

subject matter

Question 138

CIP applications require a new assignment if they are to be issued to an _____.

Answer 138

asignee

Question 139

A petition under 37 CFR 1.84 is required to avoid an objection to _____ photographs.

Answer 139

color

Question 140

USPTO has
sua sponte waived 37 CFR 1.84(a)(2)(iii) and 1.165(b) and is no longer requiring a black and white photocopy of any color ______.

Answer 140

drawing or photograph

Question 141

A change in small entity status after the application was filed does not require the inventor to retroactively pay a large entity _____.

Answer 141

filing fee

Question 142

If there is a restriction requirement, applicant must always make an _______.

Answer 142

election

Question 143

In an interference-bound IDS, it should be stated which claim from which patent has been ______.

Answer 143

copied

Question 144

RCE has different rules for IDS deadlines; instead of regular application rules of within 3 months of filing/entry to national stage or before first action on merits, an RCE IDS must be submitted before mailing of the first office action after the _______.

Answer 144

request for continued examination

Question 145

The status known as Associate Attorney no longer _____.

Answer 145

exists

Question 146

On petition the failure to obtain an “Express Mail” receipt with the “date-in” clearly marked may be considered an omission that could have been avoided by the exercise of _____.

Answer 146

due care

Question 147

Those who use drop boxes can protect themselves from
uncertainty due to illegible mailing labels by routinely maintaining a log of “Express Mail” deposits in which notations are entered by the person who deposited the correspondence as “Express Mail” within
_____ after deposit with the USPS.

Answer 147

one business day

Question 148

In plant application drawings, view numbers and reference characters need not be employed unless required by the _____.

Answer 148

examiner

Question 149

To rely on equivalence as a rationale
supporting an obviousness rejection the equivalency must be recognized in the prior art and cannot be
based on applicant’s _____.

Answer 149

disclosure

Question 150

Only patents which issued from original applications filed in the United States on or after November 29 1999 are eligible for _____.

Answer 150

inter partes reexamination

Question 151

The claim for priority is not required as an applicant may not wish to do so in order to increase the ______ of the patent.

Answer 151

term

Question 152

Factual evidence of the amount of time and effort and level of knowledge required for the practice of the invention from the disclosure alone can rebut a prima facie case of _____.

Answer 152

nonenablement

Question 153

An inherent part of a claimed invention need not have an explicit _____.

Answer 153

antecedent

Question 154

There is no limit on the number of parties,
countries, or winners involved in an _____ proceeding.

Answer 154

interference

Question 155

Anyone may obtain reexamination of a patent upon filing a request as many times as they please provided they pay the required fee each time, and do not make such requests for purposes of _____.

Answer 155

harassment

Question 156

If a second or subsequent request for reexamination is filed (by any party) while a reexamination is pending, the presence of a substantial new question of patentability depends on the _____ cited by the second or subsequent requester.

Answer 156

prior art

Question 157

If incorrect inventors are named on a non-provisional application transmittal letter filed without an oath or
declaration or signed ADS the later filing of a(n) _____ will correct the earlier mis-identification.

Answer 157

oath or declaration

Question 158

Even though an invention is misappropriated
by a third party, the public sale bar _____.

Answer 158

applies

Question 159

Any request to correct or change the
inventorship under 1.48(a) filed after the Office action on the merits has been given
or mailed in the application must also be accompanied by an additional fee, unless
the request is accompanied by a statement that the
request to correct or change the inventorship is due
solely to ______.

Answer 159

cancelation of claims

Question 160

If an ADS is not filed before/with oath/declaration,
the inventorship is the inventor or joint inventors set forth in the _____, except
as provided for in §§ 1.53(d)(4) and 1.63(d).

Answer 160

oath/declaration

Question 161

Once an ADS or oath/declaration is filed in a nonprovisional application,
any correction of inventorship must be pursuant to _____ .

Answer 161

§ 1.48

Question 162

If neither an ADS nor oath/declaration is filed during the pendency of a nonprovisional application, the inventorship is the inventor or joint inventors set
forth in the application papers filed pursuant to §1.53(b), or other applicant filing with fee supplying the _______.

Answer 162

inventorship

Question 163

If applicant replies within 2 months of Final Rejection and Advisory Action is not mailed until after 3 month SSP, then the SSP is considered to end on and extension fees are calculated from the _____ mailing date.

Answer 163

advisory action

Question 164

Evidence of commercial success to support a
contention of non-obviousness must be comparative, that is measured against a _____ in order to determine whether or not there is commercial success.

Answer 164

logical standard

Question 165

“Same invention” type double patenting requires a change in the second claim language to
overcome any rejection based on the _____.

Answer 165

prior filed application

Question 166

Obvious variations, or obviousness type double-patenting, but not statutory same-invention type double-patenting, may be overcome be being subject to a _____.

Answer 166

Terminal Disclaimer

Question 167

The ultimate criterion of whether a rejection is considered “new grounds” is whether appellants have had fair opportunity to react to the thrust of the _____.

Answer 167

rejection

Question 168

Examples of new grounds of rejection:
1) changing basis from 102 –> 103
2) Changing basis from 103 –> 102, based on a different teaching
3) Citing new calculations supporting overlapping ranges
4) Citing new structure supporting structural obviousness
5) Pointing to a different portion of the claim to maintain a _____ rejection.

Answer 168

“new matter”

Question 169

The use of trademarks in design patent application specifications is _____ under limited circumstances

Answer 169

permitted

Question 170

It is improper to use a trademark alone or coupled with the word “type” in the title of a _____ patent.

Answer 170

design

Question 171

A design patent and a trademark may be obtained on the same _____

Answer 171

subject matter

Question 172

It is the policy of the PTO to allow the inclusion of a copyright notice in a _____
patent application.

Answer 172

design

Question 173

In a plant application, _____ claim(s) is/are permitted.

Answer 173

one

Question 174

The oath/declaration of a plant application must state that the plant has been _____.

Answer 174

asexually reproduced

Question 175

A method claim in a plant application is _____.

Answer 175

improper

Question 176

Plant/fruit specimens should not be sent to the Office unless specifically requested by the _____.

Answer 176

examiner

Question 177

PCT Article 22 was amended to permit applicant to delay entry into the national stage until 30 months from the earliest claimed priority date regardless of whether a _____
was filed within 19 months from said date.

Answer 177

Demand

Question 178

An application may be most likely prevented from publishing via express abandonment and filing a fee and petition to ______.

Answer 178

stop publication

Question 179

Essential material from a foreign application or a printed publication are not permitted to be incorporated by ____.

Answer 179

reference

Question 180

A Notice of Appeal need not be _____.

Answer 180

signed

Question 181

A Notice of Appeal need not identify which claims are being appealed; it is assumed that all rejected claims are on _____.

Answer 181

appeal

Question 182

After the issue fee has been paid, in order to be considered for an RCE a petition to withdraw from ussie under Rule 1.313 must be _____.

Answer 182

granted

Question 183

In a reissue, the Office cannot properly make a restriction requirement involving only subject matter of the original patent _____.

Answer 183

claims

Question 184

In every instance of an interview with an examiner in an ex parte reexamination proceeding a complete written statement of the reasons presented at the interview as warranting favorable action must be filed by the patent _____.

Answer 184

owner

Question 185

An interview does not remove the necessity for reply to ______ as specified in 37 CFR § 1.111.

Answer 185

Office actions

Question 186

A reply to an Office Action following an interview as specified in 37 CFR § 1.111 does not remove the need to file a statement summarizing the _____.

Answer 186

interview

Question 187

The written statement summarizing an ex parte reexamination interview must be filed as a separate part of a reply to an Office action outstanding at the time of the interview or as a separate paper within one month from the date of the _____ whichever is later

Answer 187

interview

Question 188

If an application claims the same invention as a patent, and the patent issue date is more than one year prior to the effective filing date of that invention in the application, a rejection of the claims of the application under 35 U.S.C. §135(b) Is _____.

Answer 188

proper

Question 189

MPEP 715.05 discusses when a non-commonly-owned patent and an application claim the same _____.

Answer 189

invention

Question 190

Under pre-AIA 35 USC 135(b), a claim that is the same/substantially the same as a patent claim may only be made prior to 1 year from the issue date; this rule applies to both inter partes proceedings and ex parte _____.

Answer 190

rejections

Question 191

Communication regarding maintenance fees are directed to the correspondence address of record unless a “_____ address” is otherwise set forth.

Answer 191

fee

Question 192

Revocation/granting of PoA by fewer than all co-inventors may be requested by petition and fee and showing of cause, but must be granted before becoming _____.

Answer 192

effective

Question 193

Papers granting or revoking PoA generally must be signed by all ______.

Answer 193

applicants/owners

Question 194

Where and IDS does not comply with 37 CRF 1.98, it may not be considered by the ______.

Answer 194

examiner

Question 195

Patents granted in conjunction with a terminal disclaimer are only enforceable while there is _____.

Answer 195

common ownership

Question 196

Failure by reissue applicant to file oath/dec indicating a
desire to seek broader claims within the two year limit will bar a subsequent attempt to _____.

Answer 196

broaden the claims

Question 197

Design applications are entitled to priority for _____ after foreign filing.

Answer 197

6 months

Question 198

Date of complete invention (reduction to practice) in a WTO country can be relied upon to show prior invention in a(n) _____.

Answer 198

interference

Question 199

Each patent listed in an IDS must be identified by patent number and issue date; _______ is not needed.

Answer 199

application number

Question 200

A copy of any patent, publication, pending US application, or other information should accompany an IDS; the exception is for a compliant _____ document.

Answer 200

priority

Question 201

No maintenance fees are required for _____ applications.

Answer 201

plant and design

Question 202

A reissue oath must be signed and sworn to
or declaration made by the inventor(s) except as otherwise provided, and must be accompanied by the written consent of all assignees, if any, owning an undivided
interest in the _____.

Answer 202

patent

Question 203

An unequivocal 1.132 declaration that a common co-inventor conceived or invented
the subject matter that was disclosed but not claimed in the reference patent or patent application publication in a pre-AIA 102/103 rejection has been sufficient to
_____ the rejection.

Answer 203

overcome

Question 204

The purpose of
a terminal disclaimer is to limit the term of a patent not to remove a reference as _____.

Answer 204

prior art

Question 205

Do not assume any
additional facts not presented in the _____.

Answer 205

questions

Question 206

Interlineation is proper only for Examiner’s Amendments, not for applicant’s _____.

Answer 206

amendments

Question 207

To ensure printing of owner name on a patent, assignment should be recorded with the Office before the _____ is paid.

Answer 207

issue fee

Question 208

When sending the issue fee transmittal, one may fill in the name of the _____.

Answer 208

assignee

Question 209

Adding description to correct deficiencies in a plant patent
application does not always constitute _____.

Answer 209

new matter

Question 210

Rules on deposits of biological materials do not apply to ____ patent applications

Answer 210

plant

Question 211

A plant application, which improperly includes a method claim, may properly be subject to a restriction requirement as the method claim must be _____.

Answer 211

canceled

Question 212

Any change in inventive entity may allow a patent or published application to be used under pre-AIA 102 (a), (e), and (f) as _____.

Answer 212

prior art

Question 213

The 3-year patent pendency required to invoke patent term adjustment under 37 CFR 1.702(b) does not include time consumed by Board review where the outcome was not favorable to the _____.

Answer 213

applicant

Question 214

Patent term adjustment calculation may deduct delays in applicant responses more than 3 months after Office Actions, regardless of the deadlines set by the _____ in those actions.

Answer 214

Office

Question 215

Applicant’s mailing address need not be
identified in the declaration if it is included in the _____.

Answer 215

ADS

Question 216

The foreign
priority information must be included in the declaration if it was not included in the ____.

Answer 216

ADS

Question 217

Drawing changes normally must be approved by the examiner before
the application will be ______.

Answer 217

allowed

Question 218

The examiner must give written ______ for alterations or corrections before the drawing is corrected.

Answer 218

approval

Question 219

Replacement drawings should be accompanied by an explanation, may be accompanied by a marked-up copy, and should be approved by the _____.

Answer 219

examiner

Question 220

The requirement of 37 C.F.R. §1.177 requiring that all divisional reissue applications issue simultaneously will be routinely ______ sua sponte.

Answer 220

waived

Question 221

Designs which simulate a well known or naturally occurring object or person lack sufficient originality for a _______.

Answer 221

design patent

Question 222

A rejection based on pre-AIA 102(e) can be overcome in some cases by filing a 1.132 affidavit showing that the reference invention is not by “_____.”

Answer 222

another

Question 223

Under PLTIA, effective 12-18-13 priority could be restored within ___ of expiration.

Answer 223

2 months

Question 224

Pre-AIA priority may be untimely asserted via a continuation or filing a fee and statement that the delay was ______.

Answer 224

unintentional

Question 225

USPTO only receives mail vial Post Office to Addressee service, not Post Office to _____.

Answer 225

Post Office

Question 226

No extensions of time are permitted for filing the issue fee AND anything else required by a Notice of _______.

Answer 226

Allowability

Question 227

Inventive activities in WTO member counties, including conception, conception, can be relied upon to prove prior ______.

Answer 227

invention

Question 228

An examiner’s decision on a substantial new question of patentability in a reexamination request is neither ____ nor _____.

Answer 228

appealable nor petitionable

Question 229

A nonpublication requestunder 35 USC 122(b)(2)(B)(i) must be made upon _____.

Answer 229

filing

Question 230

A request for nonpublication under Rule 213(a) must be submitted with the application upon filing according per _____ requirement.

Answer 230

statutory

Question 231

A request for nonpublication must state in a conspicuous manner that the application is not
to be published under 35 U.S.C. 122(b) and must contain a certification that
the invention disclosed in the application has not been and will not be the subject of an application filed in another country, or under a multilateral
international agreement, that requires eighteen-month
publication. Before making the certification, the
person who signs the certification must make an ______ inquiry to determine whether the
certification can be appropriately made.

Answer 231

actual

Question 232

Foreign priority claims may be taken at face value/benefit of the doubt, but a certified copy and translation may be needed to overcome rejections over ____.

Answer 232

prior art

Question 233

A single assignee of the entire right, title and interest in the pre-AIA application or patent being reexamined
who is of record, or
partial assignee(s) together or with inventor(s) may conduct either the prosecution of a national application for patent or a _____ proceeding .

Answer 233

reexamination

Question 234

In applications filed before September 16, 2012, the assignee of record of the entire interest can revoke
the power of attorney of the applicant unless an “irrevocable” right to _____ the application had
been given .

Answer 234

prosecute

Question 235

A certificate of mailing/transmission is not a Priority Mail Express label or other USPS notation with “_____” stamped.

Answer 235

date accepted

Question 236

Inventors, assignees, and application prosecutors all have a duty to _____.

Answer 236

disclose

Question 237

Does the applicant’s response address each and every issue raised in the _____?

Answer 237

Office Action

Question 238

Patentability reports are for applications that involve multiple ______.

Answer 238

technology centers

Question 239

The signature requirement does not apply to filing of a notice of _____.

Answer 239

appeal

Question 240

All notices and official letters for the patent owner or owners in a reexamination proceeding will be directed
to the attorney or agent of record in the patent file at the address listed on the register of patent attorneys and
agents.

Answer 240

True
or listed correspondence address

Question 241

After issue, claims given up in a restriction requirement may not be recovered by re-issue, but could be prosecuted in a _____ application.

Answer 241

substitute

Question 242

After the Appeal Brief has been submitted, applicant may only submit amendments that cancel claims (if they do not affect the scope of other claims) to to rewrite dependent claims into ______ form.

Answer 242

independent

Question 243

Reference to an object that is variable may render a claim _____.

Answer 243

indefinite

Question 244

Product and process claims should be separately ______.

Answer 244

grouped

Question 245

USPTO does not require or recommend a minimum or maximum number of _____ claims

Answer 245

dependent

Question 246

USPTO will determine inventorship from the
original declaration filed in the application, even if the ______ mistakenly lists the improper
inventors.

Answer 246

original application

Question 247

No petition to correct inventorship is required where inventorship was not previously established in the original filed _____.

Answer 247

oath/declaration

Question 248

A 102(e) rejection could be overcome by providing proof of _____ at the time of the second invention.

Answer 248

common ownership

Question 249

35 U.S.C. 42(d) only permits a refund of any fee “paid by mistake or any amount paid in excess of that ______.”

Answer 249

required

Question 250

USPTO will not refund expedited examination fees if the application is not effectively expedited.

Answer 250

true

Question 251

A claim which depends from an improper base
claim is itself ______.

Answer 251

improper

Question 252

If there is no disclosure of the best mode contemplated by the inventor at the time the application is filed
such a defect cannot be cured by submitting an amendment seeking to put into the specification
something required to be there when the patent application was originally filed; any proposed amendment of this type should be treated as _____.

Answer 252

new matter

Question 253

An oath/declaration must be executed/signed by the inventor (except in the case of a substitute oath/declaration) and may not be signed by someone merely given _____ to sign on the inventor’s behalf.

Answer 253

permission

Question 254

Copies of original assignments on 8.5x11 paper accompanied by fee and cover sheet are required for ____ in the USPTO.

Answer 254

recording

Question 255

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 _____.

Answer 255

oath

Question 256

A design patent claim for type fonts need not comply with the “article of _____” requirement.

Answer 256

manufacture

Question 257

Novelty and unobviousness of a design claim must generally be determined by a search in the pertinent design
classes. It is mandatory that the search be extended to the _____ classes encompassing inventions of the same
general type.

Answer 257

mechanical

Question 258

Proper basis for a 101 rejection includes: naturally occurring, impossible product, claim includes more than 1 statutory class, and a mathematical ______.

Answer 258

equation

Question 259

Prior art may be entered into a patent file regardless of
whether _____ is warranted

Answer 259

reexamination

Question 260

A “prior art reference that served as a rejection in the prosecution of the original patent could not support a
substantial new question of patentability that would permit the institution of a _____ proceeding

Answer 260

reexamination

Question 261

A senior party in an interference is the party who is presumed to have ____ first.

Answer 261

invented

Question 262

A final holding of
invalidity by the District Court of a claim in a reexamination is _____ on the PTO.

Answer 262

binding

Question 263

“The issuance of a final district court decision upholding _____ during a reexamination also will have no binding effect.”

Answer 263

validity

Question 264

A prior art patent cannot be properly applied as a ground for reexamination
if it is merely used as ______ of alleged prior public use or sale or insufficiency of disclosure.

Answer 264

evidence

Question 265

To raise a substantial new question of patentability to provoke a reexamination, the prior art patent must be applied _____ to claims under 35 U.S.C. §103 and/or an appropriate portion of 35 U.S.C. §102 or relate to the application of other prior art patents or printed publications to claims on such
grounds.

Answer 265

directly

Question 266

The priority claim in the CIP present on the filing date operates as an incorporation by
reference of a prior filed application as to the inadvertently omitted materials; the missing materials should be added by _____.

Answer 266

amendment

Question 267

Subject matter of a claim can be supported by disclosure in any other part of the specification, even other _____.

Answer 267

claims

Question 268

A PCT need only be published, not issued as a patent or entered into the national stage, in order to have a ____ date.

Answer 268

102(e)

Question 269

If a 103 rejection cites a reference that could be removed as prior art under 102, the entire rejection may be traversed as improper with the appropriate _____.

Answer 269

affidavit

Question 270

A preliminary interference motion seeking to designate an application or patent claim to correspond to a count should identify the claim and count and show that the claim defines the same ____ as the count.

Answer 270

patentable invention

Question 271

A pre 11-29-00 PCT filing becomes 102(e) prior art as of the date the fee, oath, and translation are submitted to ____.

Answer 271

the US national stage

Question 272

A post 11-29-00 but pre-AIA PCT filing becomes 102(e) prior art as of its _____ filing date if it designates the US and is (published) in English.

Answer 272

IA
international

Question 273

An AIA application becomes prior art as of its ____.

Answer 273

earliest effective filing date

Question 274

112(a) requires that specification and claims agree (ie spec does not contradict claims). 112(b) does not require agreement, only that claims be supported by the disclosure.

Answer 274

true

Question 275

Admissions constitute prior art, even if it is the practitioner in the discussion of an amendment and not directly by the inventor.

Answer 275

true

Question 276

A disclosure of utility must be specific, not just a statement that the invention might be useful for something someday; there must be a purpose of sorts.

Answer 276

true

Question 277

Pharma/therapies must demonstrate reasonable correlation between the invention and asserted utility, such as with testing data and/or animal models; statistically certain success, or success in humans, need not be demonstrated.

Answer 277

true