Questions reportedly asked in the Patent Bar Exam

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Shortcut to Key Things to Know for the Patent Bar Exam

Contents 1 New Questions that have been reported 1.1 PCT Related Questions 1.1.1 Amending Abstract 1.1.2 PCT / National Stage 1.1.3 102(e) / PCT applications 1.1.4 Faxing National Stage Application 1.1.5 PCT Bypass Method 1.1.6 PCT / Patent Term 1.1.7 Missing parts in PCT Application 1.1.8 Correcting PCT application / No address 1.1.9 PCT-going right to national stage 1.1.10 Correcting Errors in PCT Application 1.2 Appeal, Reexam, and Reissue Questions 1.2.1 Divisional Reissue 1.2.2 Hair Gel Question 1.2.3 Investigating deceptive intent 1.3 All Other Questions 1.3.1 Application Data Sheet (ADS) 1.3.2 Proper 102(e) Date 1.3.3 Contesting Inventors 1.3.4 Claim of priority to Japanese national app to overcome prior art 1.3.5 Limiting Claims 1.3.6 Black ink or Red ink? 1.3.7 Museum Titanium Baseball Question 1.3.8 Mirror Question 1.3.9 Obviousness 1.3.10 Deleting Benefit Claim 1.3.11 Suspended Practitioner 1.3.12 Digital Media for Gene Sequence 1.3.13 Signature on 1.132 petition 1.3.14 Submitting Tables on CD-ROM 1.3.15 Trade Secret Question 1.3.16 Supplemental Oath 1.3.17 Best Mode 1.3.18 Toy plane with aluminum foil wing: 1.3.19 Information requested from USPTO 1.3.20 Who to contact question 1.3.21 Velcro Trademark Question 1.3.22 Lip Gloss Question 1.3.23 Spanish Phone Question 1.3.24 Federal Court Decisions binding for Office 1.3.25 Restriction Requirement / Continuation Application 1.3.26 Small Entity Status 1.3.27 Documents an Assignee Not of Record can sign 1.3.28 Means-Function Claim language question 1.3.29 102(a): Need to file foreign language translation 1.3.30 Death of inventor before application is filed 1.3.31 Canadian Patent Agent in the USA 1.3.32 IDS / Not exact wording 1.3.33 How to claim benefit 1.3.34 Basic filing fee 1.3.35 Small Entity's Filing Fee - Refund 1.3.36 Multiplicity 1.3.37 Rejection after Allowance 1.3.38 103(c) / Effective Date Nov. 29, 1999 1.3.39 Maintenance Fee Paid / Check Returned 1.3.40 Indefinite Claim using 'high' 1.3.41 What can an assignee do before taking ownership 1.3.42 Anticipation 1.3.43 Means plus function, determining equivalence 1.3.44 2 month rule for final office action 1.3.45 Chemical Claim 1.3.46 Sec 103 Question 1.3.47 Sec. 112 & 102(b) Question 1.3.48 Claims to a Signal (Sec. 101 Post Bilski) 2 Questions from Previous Exams

[edit] New Questions that have been reported

[edit] PCT Related Questions

gACoSL web20power.txt;1;1

[edit] Amending Abstract

A question about whether the International Searching Authority could amend/write an abstract

if one were not supplied in an International App. [Refer to MPEP 1844.01]

Answer: The International Searching Authority shall establish an Abstract (if missing),

and the applicant may within one month from the date of mailing of the international search report,

submit comments on the abstract established by the International Searching Authority.

This question is meant to be tricky, because for a US national app. the examiner is not allowed to supply

an abstract if one isn't present, but can amend an existing abstract if that's the only thing preventing

allowance. (see sections below)

PCT RULE 38 - Missing or Defective Abstract

PCT RULE 38.1 - Lack of Abstract

If the international application does not contain an abstract and the receiving Office has notified

the International Searching Authority that it has invited the applicant to correct such defect, the

International Searching Authority shall proceed with the international search unless and until it

receives notification that the said application is considered withdrawn.

AND

PCT RULE 38.2 - Establishment of Abstract

(a) If the international application does not contain an abstract and the International Searching

Authority has not received a notification from the receiving Office to the effect that the applicant

has been invited to furnish an abstract, or if the said Authority finds that the abstract does not

comply with Rule 8, it shall itself establish an abstract. Such abstract shall be established in the

language in which the international application is to be published or, if a translation into another

language was transmitted under Rule 23.1(b) and the International Searching Authority so wishes, in

the language of that translation.

(b) The applicant may, within one month from the date of mailing of the international search report,

submit comments on the abstract established by the International Searching Authority. Where that

Authority amends the abstract established by it, it shall notify the amendment to the International Bureau.

“In general, the examiner will have to establish a new abstract if the applicant did not provide an

abstract or if the abstract does not comply with PCT Rule 8.”

The answer is different if it does not specifically hinge on a PCT Rules (red herring - International Searching

Authority) from MPEP 1800. Generally, USPTO procedure is that the examiner will not supply an abstract if one

is absent, but the examiner may revise an abstract if the application is otherwise in a condition of allowance.

[See MPEP 608.01(b)]

In 608.01(b) Abstract of the Disclosure

The Office of Initial Patent Examination (OIPE) will review all applications filed under 35 U.S.C. 111(a)

for compliance with 37 CFR 1.72 and will require an abstract, if one has not been filed. In all other

applications which lack an abstract, the exam­iner in the first Office action should require the submission

of an abstract directed to the technical disclosure in the specification. See Form Paragraph 6.12 (below).

Applicants may use either “Abstract” or “Abstract of the Disclosure” as a heading.

Regarding an improper abstract, if the application is otherwise in condition for allowance,

the examiner should make any necessary revisions:

In 608.01(b) “Upon passing the application to issue, the examiner should make certain that the abstract is

an adequate and clear statement of the contents of the disclosure and generally in line with the guidelines.

If the application is otherwise in condition for allowance except that the abstract does not comply with the

guidelines, the examiner generally should make any necessary revisions by a formal examiner’s amendment after

obtaining applicant’s authorization (see MPEP § 1302.04 rather than issuing an Ex parte Quayle action requiring

applicant to make the necessary revisions.”

In 608.01(b) Abstract of the Disclosure

The Office of Initial Patent Examination (OIPE) will review all applications filed under 35 U.S.C. 111(a)

for compliance with 37 CFR 1.72 and will require an abstract, if one has not been filed. In all other

applications which lack an abstract, the exam­iner in the first Office action should require the submission

of an abstract directed to the technical disclosure in the specification. See Form Paragraph 6.12 (below).

Applicants may use either “Abstract” or “Abstract of the Disclosure” as a heading.

Edit 11/16/08 - 37 CFR 1.438. The abstract.

(a) Requirements as to the content and form of the abstract are set forth in PCT Rule 8, and shall be adhered to.

(b) Lack of an abstract upon filing of an international application will not affect the granting of a filing date.

However, failure to furnish an abstract within one month from the date of the notification by the Receiving Office

will result in the international application being declared withdrawn.

EDIT: 2/12/2009 Variant of this question appeared today.

Q: If ISA creates/provides an Abstract, what can the Applicant do.

Answer: [..]the applicant may within one month from the date of mailing of the international search report,

submit comments on the abstract established by the International Searching Authority.

The above question appear in exams on:

• 2/12/2009
• 09/2009
• 11-10-09
• 12/16/2009
• 12/31/2009

[edit] PCT / National Stage

Questions on what to submit when entering the national stage in case USPTO was the receiving office of the

international application.

Answer is to pay the fee because if you file with the USPTO as an RO you do not need to submit the application

or wait for it to be transferred from IB.

In 1893.01(a)(1) Submissions Required by 30 Months from the Priority Date

Where the international application was filed with the United States Receiving Office as the competent receiving Office,

the copy of the international application referred to in 37 CFR 1.495(b) is not required. Payment of the basic national

fee will indicate applicant’s intention to enter the national stage and will provide a U.S. correspondence address in

most instances.

- Question on what can be faxed in PCT entering the stage in US

- MPEP 1834.01 (Use of Telegraph, Teleprinter, or Facsimile machine) - can't file PCT application or copy of application

and fee to enter national stage by fax.

- Question on what USPTO will do if: Japanese citizen currently residing in US files PCT application with USPTO

but application is in Japanese - the choices were as follows:

1. not given a filing date

2. sent to International Bureau for processing

3. sent to Japanese PTO

4. can't remember the last choice!!

- the correct answer can be found in section 1805 on page 1800-7 2nd column, 3rd paragraph.

The US RO will forward the application to the International bureau for processing, if the app was filed using USPTO

but not in English, or if applicant not a resident/citizen of US at the time. The date of US filing will be date given

the PCT application by the International Bureau - if all other requirements met - which is the date the application was

received by the US office. "The Receiving Office of the International Bureau will consider the international

application to be received as of the date accorded by the United States Receiving Office." (Id).

One question on this issue gives potential answers involving 20, 36 and 30 months (from priority date).

Only one answer requires $ to enter national stage by 30 months - just give that answer.

This question appeared on:

• 11-10-09
• 12/16/2009
• 01/10/2010
• 12/31/2009
• 04/07/2010
• 10/13/2011

had a q about a pct filed w/o claims but everything else present, what can you do to keep certain filing date?

choices were

1. fax w/cert.

2. mail w/cert.

3. express mail.

4. wait for us/ro send invitation to correct & correct within given time.

5. all of the above.

• 2/13/10: I had these questions:

(1) if IA submitted to US RO, submit national fee only by 30 months from priority date;

(2) Japanese resident/national files in US RO, gets forwarded to IB but keeps filing date.

[edit] 102(e) / PCT applications

• One question on 102(e) with a date of 1998 so that the reference date of the patent is when it completed requirements under 371(c).
• (Probably April 17, 2002 AM Questions 11 and 12 or some variation) PCT designating USA filed in English claiming priority to JP application. Filing date was after Nov 29, 2000. IA published in English, and entered the National Stage. US application publication was published. Subsequently, the application was patented. When is the 102(e) prior art date?

In 2136 35 U.S.C. 102(e)

Revised 35 U.S.C. 102(e) allows the use of certain international application publications and U.S. patent application publications, and certain U.S. patents as prior art under 35 U.S.C. 102(e) as of their respective U.S. filing dates, including certain international filing dates. The prior art date of a reference under 35 U.S.C. 102(e) may be the international filing date if the international filing date was on or after November 29, 2000, the international application designated the United States, and the international application was published by the World Intellectual Property Organization (WIPO) under the Patent Cooperation Treaty (PCT) Article 21(2) in the English language. See MPEP § 706.02(f)(1) for examination guidelines on the application of 35 U.S.C. 102(e).

(1) If the international application meets the following three conditions:

(a) an international filing date on or after November 29, 2000;

(b) designated the United States; and

(c) published under PCT Article 21(2) in English,

then the international filing date is a U.S. filing date for prior art purposes under 35 U.S.C. 102(e).

706.02(f)(1)

(3) If the international application has an international filing date prior to November 29, 2000, apply the reference under the provisions of 35 U.S.C. 102 and 374, prior to the AIPA amendments:

(a) For U.S. patents, apply the reference under 35 U.S.C. 102(e) as of the earlier of the date of completion of the requirements of 35 U.S.C. 371(c)(1), (2) and (4) or the filing date of the later filed U.S. application that claimed the benefit of the international application;

(b) For U.S. application publications and WIPO publications directly resulting from international applications under PCT Article 21(2), never apply these references under 35 U.S.C. 102(e). These references may be applied as of their publication dates under 35 U.S.C. 102(a) or (b);

(c) For U.S. application publications of applications that claim the benefit under 35 U.S.C. 120 or 365(c) of an international application filed prior to November 29, 2000, apply the reference under 35 U.S.C. 102(e) as of the actual filing date of the later-filed U.S. application that claimed the benefit of the international application.

EDIT 2/12/2009: Two variant questions on determining 102(e) prior art dates appeared today. Q1: German Appl filed prior to 11/29/2000 Date 1, IA filed prior to 11/29/2000 claiming benefit of German Appl Date 2 Designating US, IA published after 11/29/2000 in English Date 3, goes to National Stage Date 4, Applicant fulfills 37 CFR 1.497 requirement on Date 5, Patent issues from the National Stage, What is the 102(e) prior art date for the US Patent issuing from the National Stage? (potential Answers included A-D Some of the above Dates, E - none of the above)

Q2: German Appl filed prior to 11/29/2000 Date 1, IA filed after 11/29/2000 claiming benefit of German Appl Date 2 Designating US, IA published after 11/29/2000 in non-English Date 3, goes to National Stage Date 4, Applicant fulfills 37 CFR 1.497 requirement on Date 5, Patent issues from the National Stage, What is the 102(e) prior art date for the US Patent issuing from the National Stage? (potential Answers included A-D Some of the above Dates, E - none of the above)

See 706.02(f)(1):[..](2)If the international application was filed on or after November 29, 2000, but did not designate the United States or was not published in English under PCT Article 21(2), do not treat the international filing date as a U.S. filing date for prior art purposes. In this situation, do not apply the reference as of its international filing date, its date of completion of the35 U.S.C. 371(c)(1), (2) and (4) requirements, or any earlier filing date to which such an international application claims benefit or priority. The reference may be applied under 35 U.S.C. 102(a) or (b) as of its publication date, or 35 U.S.C. 102(e) as of any later U.S. filing date of an application that properly claimed the benefit of the international application (if applicable). (3)If the international application has an international filing date prior to November 29, 2000, apply the reference under the provisions of 35 U.S.C. 102and 374, prior to the AIPA amendments: (a)For U.S. patents, apply the reference under 35 U.S.C. 102(e) as of the earlier of the date of completion of the requirements of 35 U.S.C. 371(c)(1), (2) and (4) or the filing date of the later-filed U.S. application that claimed the benefit of the international application;

In Q1: IA was filed prior to 11/29/2000, and Applicant fulfilled National Stage requirement of Inventorship (37 CFR 1.497 See PCT Rules Appendix T) on Date 4, I answered Date 4. In Q2: IA was filed after 11/29/2000 but not in English, I answered E - none of the above.

• 09/28/2009: NUMEROUS versions of this question appeared on the exam today.

• 11/10/2009: questions, one prior to the Nov. 00 date in US desg. & in english prior to Nov. '00; and the other US desg. after Nov. '00 but no english

• 12/16/2009: This and similar questions appeared.

The date that the app publishes in English is not that important, an old exam question (I will try to find it after this post) gives facts were the app did not publish in English for another year after the filing of the IA, but it nonetheless retained the filing date of the IA for purposes of 102(e) and not the date when it published in English.

Here is the question from Oct 2003 pm Q#40

40. Applicant files a patent application in Japan on January 5, 2000. Applicant files a PCT international application designating the United States on January 5, 2001, based on the Japanese application. The international application is published in English on July 5, 2001. The international application enters the national stage in the United States on September 5, 2001. The USPTO publishes the application on June 6, 2002. The application issues as a United States patent on December 3, 2002. What is its earliest possible 35 USC 102(e) prior art date for the application published by the United States, in view of the amendment to Title 35 by the American Inventors Protection Act of 1999 and the Intellectual Property and High Technology Technical Amendments Act of 2002? (A) January 5, 2000. (B) January 5, 2001. (C) July 5, 2001. (D) June 6, 2002. (E) December 3, 2002.

Answer is (B)

[edit] Faxing National Stage Application

One questions asks whether you can FAX your national stage application to the USRO - you can not.

In 1834.01 Use of Telegraph, Teleprinter, Facsimile Machine

Generally, any paper may be filed by facsimile transmission with certain exceptions which are identified in 37 CFR 1.6(d).

It should be noted that a facsimile transmission of a document is not permitted and, if submitted, will not be accorded

a date of receipt if the document is:

(A) Required by statute to be certified;

(B) A drawing submitted under 37 CFR 1.437;

(C) An international application for patent; or

(D) A copy of the international application and the basic national fee necessary to enter the national stage,

as specified in ** 37 CFR 1.495(b).

Facsimile transmission may be used to submit substitute sheets (other than drawings), extensions of time, power of attorney,

fee authorizations (other than the basic national fee), confirmation of precautionary designations, Demands, response to

written opinions, oaths or declarations, petitions, and translations in international applications.

---

9/15/2010: This question appeared today. Ask about whether you can fax claim to get PCT filing date.

• This question appeared on:
  • 09/28/2009
  • 11-10-09
  • 12/16/2009

[edit] PCT Bypass Method

PCT specific question. French application filed, then PCT application designating US filed claiming French application

and IA was published in French (I think). At some point within 30 months, without entering National Stage, applicant files

continuation from PCT application, is the claim for French priority proper? or is it perfected?

Answer: claim for French priority proper, but not perfected.

since you filed continuation and USPTO only has the French application,

you need to file translation to USPTO.

(6/4/2007 edit -- I think only a certified copy needed to perfect priority claim, not a translation)

I chose that answer. There were other choices. (7/19/07- Still not sure, but 1895.01 says..)

1895.01 Handling of and Considerations in the Handling of Continuations, Divisions,

and Continuations-In-Part of PCT Applications [R-6]

... A certified copy of the international application (and an English translation) of the international application

may be required by the examiner to perfect the claim for benefit under 35 U.S.C. 120 and 365(c) if the international

application did not originate in the United States and such is necessary, for example, where an intervening reference

is found and applied in a rejection of one or more claims. If the international application was published by the

International Bureau pursuant to PCT Article 21, then a certified copy would not normally be necessary.

So since the IA publishsed it. I think only a translation would be needed?? Haven't seen the question though.

Note Added 02/01/08:

When claiming foreign priority, I believe a certified translation is only required for either interference purposes,

or if intervening references are found (i.e., between the foreign priority date and the US filing date).

Added 5/20/08:

The question is asking if the priority claim to the French application is proper. This is 119a priority.

The above reference to 1895.01 is not applicable because it deals with priority under 120 (here, only to the parent IA)

not 119 (to the first French application). The rule that follows explains that in the continuation of an IA,

for 119a priority, you need to re-claim priority AND file another copy of the priority document

(unless the parent IA has entered the National Stage, and that application has a copy).

1895.01 under "PRIORITY CLAIMS UNDER 35 U.S.C. 119(a)-(d)":

A claim for foreign priority under 35 U.S.C. 119 (a)-(d) must be made in the continuing application in order to

obtain the benefit of the filing date of the prior filed foreign application...A foreign priority claim is proper

in the continuing application if the foreign application was filed within 12 months prior to the filing of the

continuing application or within 12 months prior to the international filing date of the parent international

application.

In addition, the required claim must be made within the time period set forth in 37 CFR 1.55 (a)(1)...A certified

copy of any foreign priority document must be provided by the applicant unless the parent international application

has entered the national stage under 35 U.S.C. 371 and the national stage application contains a photocopy of the

priority document from the International Bureau.

So it would seem that the claim is proper, but not perfected because you still need to file the copy of the

French national application because the parent IA hasn't entered the national stage as stated in the question

(don't need translation until you need to rely on it for priority). The IB publishing the IA does not prevent

need for the certified copy for 119a (foreign) priority.

[edit] PCT / Patent Term

One question asked about a PCT application that was filed in Germany before Nov 29, 2000 (95 or 96)

and asked when to measure the US patent term (I hope it was from the date of the PCT application

and not when it entered the national stage).

2701 Patent Term

[...]

INTERNATIONAL APPLICATIONS

A patent granted on an international application filed on or after June 8, 1995 and which enters the national stage

under 35 U.S.C. 371 will have a term which ends twenty years from the filing date of the international application.

A continuation or a continuation-in-part application claiming benefit under 35 U.S.C. 365(c) of an international

application filed under 35 U.S.C. 363 designating the United States will have a term which ends twenty years from

the filing date of the parent international application.

FOREIGN PRIORITY

Foreign priority under 35 U.S.C. 119(a)-(d), 365(a), or 365(b) is not considered in determining the term of a patent.

Accordingly, an application claiming priority under 35 U.S.C. 365(a) or 365(b) has a term which ends twenty years

from the filing date of the application in the United States and not the prior international application.

---

BUT See 35 USC 154: "...(2) TERM...term beginning on the date on which the patent issues and ending 20 years

from the date on which the application for the patent was filed in the United States or, if the application

contains a specific reference to an earlier filed application or applications under section 120, 121,

or 365(c) of this title, from the date on which the earliest such application was filed."

(3) PRIORITY.-Priority under section 119, 365(a), or 365(b) of this title shall not be taken into account in

determining the term of a patent.

THUS, the patent term will generally begin on the filing date of an IA to which priority is claimed.

However, if any priority is claimed to an earlier-filed national app, then the term begins on the date

of the earlier-filed national app. On the contrary, if priority is claimed to an earlier-filed foreign app,

the patent term begins on the US filing date or the IA filing date rather than the earlier foreign filing date.

For example, a US patent issuing from a national stage app claiming priority to an IA will have a term which

begins on the filing date of the IA filing date. If the IA claimed priority to an earlier-filed national

application, then the patent term for the US patent will begin on the filing date of the earlier-filed national

app, which is earlier than the IA filing date. (This would happen if the US patent is a continuation of the IA.)

However, the patent term of the US patent is not affected if the IA (to which priority is claimed) claimed

priority to an earlier-filed foreign app--the term will begin on the IA filing date. Also, if the US patent

claimed priority to a foreign app (no IA involved), then the US patent's term would begin on the US filing date,

not the foreign priority date.

• The above question appeared on a 09/2009 exam.
• Above question appeared on 12/16/2009

[edit] Missing parts in PCT Application

One questions ask what to do with a PCT app where there were two missing parts of the spec,

and the applicant filed them at two intervals. The international filing date will be the date

the timely filed filed correction is received by the receiving office. MPEP 1810

Answer: There are only 30 days to do this, and so his 2nd submission was not entered.

Why is this a 30 day limit? PCT Rule 20.6 which refers to 20.7 show two months (20.7)

from either filing or notice of missing parts (if sent).

Consult PCT Rule 20.6 for more details about this specific question,

and 20.7 for the time limits for various other situations.

Another Perspective: See MPEP 1810, Filing Date Requirements (citing 37 CFR 1.431(c)):

(c) Payment of the international filing fee (PCT Rule 15.2) and the transmittal and search fees (§ 1.445) may be made

in full at the time the international application papers required by paragraph (b) of this section are deposited or

within one month thereafter. The international filing, transmittal, and search fee payable is the international filing,

transmittal, and search fee in effect on the receipt date of the international application.

(1) If the international filing, transmittal and search fees are not paid within one month from the date of receipt

of the international application and prior to the sending of a notice of deficiency which imposes a late payment fee,

applicant will be notified and given one month within which to pay the deficient fees plus the late payment fee.

Subject to paragraph (c)(2) of this section, the late payment fee will be equal to the greater of:

(i) Fifty percent of the amount of the deficient fees; or

(ii) An amount equal to the transmittal fee.

(2) The late payment fee shall not exceed an amount equal to fifty percent of the international filing fee not taking

into account any fee for each sheet of the international application in excess of thirty sheets (PCT Rule 16bis).

(3) The one-month time limit set pursuant to paragraph (c) of this section to pay deficient fees may not be extended.

It seems the dance is as follows: application filed, get one month to complete; if not completed, office issues

notice of deficient fees; if that notice is not complied with within one month, application goes abandoned.

(Please delete this if this is incorrect.)

EDIT (10/19/09)

37 CFR 1.495. Entering the national stage in the United States of America.

(b) To avoid abandonment of the application, the applicant shall furnish to the United States Patent and Trademark

Office not later than the expiration of thirty months from the priority date:

(1) A copy of the international application, unless it has been previously communicated by the International

Bureau or unless it was originally filed in the United States Patent and Trademark Office; and

(2) The basic national fee (see § 1.492(a)). **>

(c)

(1) If applicant complies with paragraph (b) of this section before expiration of thirty months from the

priority date, the Office will notify the applicant if he or she has omitted any of:

(i) A translation of the international application, as filed, into the English language, if it was

originally filed in another language and if any English language translation of the publication of the

international application previously submitted under 35 U.S.C. 154(d) (§ 1.417) is not also a translation

of the international application as filed (35 U.S.C. 371(c)(2));

(ii) The oath or declaration of the inventor (35 U.S.C. 371(c)(4) and § 1.497), if a declaration of

inventorship in compliance with § 1.497 has not been previously submitted in the international application

under PCT Rule 4.17(iv) within the time limits provided for in PCT Rule 26ter.1;

(iii) The search fee set forth in § 1.492(b);

(iv) The examination fee set forth in § 1.492(c); and

(v) Any application size fee required by § 1.492(j);

(2) A notice under paragraph (c)(1) of this section will set a time period within which applicant must

provide any omitted translation, oath or declaration of the inventor, search fee set forth in § 1.492(b),

examination fee set forth in § 1.492(c), and any application size fee required by § 1.492(j) in order to

avoid abandonment of the application.

1893.01(d) TRANSLATION

If applicant has timely paid the basic national fee and submitted the copy of the international application

but the translation is missing or is defective, a Notification of Missing Requirements (PCT/DO/EO/905) will be

sent to applicant setting a period to correct any missing or defective requirements. The time period is 32

months from the priority date or 2 months from the date of the notice, whichever expires later. The time

period may be extended for up to five additional months as provided in 37 CFR 1.136(a).

1893.01(e) OATH

If the basic national fee and copy of the international application has been received by the expiration of

30 months from the priority date, but the required oath or declaration has not been filed, the Office will

send applicant a Notification of Missing Requirements (Form PCT/DO/EO/905) setting a time period to correct

any missing or defective requirements and to submit the surcharge fee required under 37 CFR 1.492*>(h)< unless

previously paid. The time period is 32 months from the priority date or 2 months from the date of the notice,

whichever expires later. The time period may be extended for up to five additional months as provided in 37

CFR 1.136(a). Failure to timely file the required oath or declaration will result in abandonment of the application.

37 CFR 1.437 MISSING DRAWINGS

(b)

Drawings missing from the application upon filing will be accepted if such drawings are received within 30 days

of the date of first receipt of the incomplete papers. If the missing drawings are received within the 30-day

period, the international filing date shall be the date on which such drawings are received. If such drawings

are not timely received, all references to drawings in theinternational application shall be considered non-existent

(PCT Art. 14(2), Administrative Instruction 310).

I couldn't find anything about missing spec, just translations and drawings.

If you notice translation and oath are two month limits, and drawings, and ?spec? are 30 days.

• 09/28/2009: The above question appeared on the exam today.

[edit] Correcting PCT application / No address

Obscure facts, like how long you have to correct a PCT application with no address after you are

invited to correct the problem.

Answer:

I did a search on the USPTO website. The site states the following:

The receiving Office shall promptly mail the invitation to the applicant and shall fix a time limit,

reasonable under the circumstances of the case, for filing the correction. The time limit shall not be

less than 10 days, and shall not exceed one month, from the date of the invitation. If such time limit

expires after the expiration of one year from the filing date of any application whose priority is claimed,

the receiving Office may call this circumstance to the attention of the applicant.

Edit 8/22: You can find this information in PCT Rule 20.6 (under the Patent Cooperation Treaty section at the end of the MPEP):

20.6 Invitation to Correct

...

(b) The receiving Office shall promptly mail the invitation to the applicant and shall fix a time limit,

reasonable under the circumstances of the case, for filing the correction. The time limit shall not be

less than 10 days, and shall not exceed one month, from the date of the invitation. If such time limit

expires after the expiration of one year from the filing date of any application whose priority is claimed,

the receiving Office may call this circumstance to the attention of the applicant.

I do not think the above is correct. PCT Rule 20.6(b) is ...

Where the receiving Office finds that the requirements of Rule 4.18 and paragraph (a) have been complied with and that the element or part referred to in paragraph (a) is completely contained in the earlier application concerned, that element or part shall be considered to have been contained in the pur-ported international application on the date on which one or more elements referred to in Article 11(1)(iii) were first received by the receiving Office.

Does anyone have any insight on the "not less than 10 days, not more than 30 day" language? Thanks.

--

This rule is also referenced in MPEP 1810 under the heading: THE "INTERNATIONAL FILING DATE".

The International Application (PCT) filing date accorded the application is the date of compliance with the invitation

to correct. It should be noted that, based on my reading of this section, an applicant can apparently lose his/her

rights to priority if the deficiency in the IA is not cleared up within 12 months from the date of priority, if any,

claimed in the International Application--EVEN IF the time to respond to the invitation to correct has not expired.

[edit] PCT-going right to national stage

One PCT question asked about what is required if you don't make a demand and want to proceed straight

to the national stage and gave 5 very distinct fact patterns with how to accomplish it and what needs

to be filed. One of the answers I narrowed it down to added on top of what seemed to be the right answer,

whether you had to pay a surcharge because there was no international search done. I think I picked that

one because the other answers looked worse to me, and I didn't have time to look up all of the various

nuances addressed by the question.

6/4/2007

I don't know anything about the question, but paying a surcharge because you went national before the ISR issued

sounds fishy to me. You pay the initial search fee when you file the PCT (you select the ISA at that time too,

either EP, US or now Korea too). Though this can be refunded if you withdraw the application before it is searched.

The USPTO will do their own search (which you pay for as part of the national filing fee) anyway . . .

7/30/07

See MPEP 1893.01: "Thus, in the absence of an express request for early processing of an international application

under 35 U.S.C. 371(f) and compliance with the conditions provided therein, the U.S. national stage will commence

upon expiration of 30 months from the priority date of the international application. Pursuant to 35 U.S.C. 371(f),

the national stage may commence earlier than 30 months from the priority date, provided applicant makes an express

request for early processing and has complied with the applicable requirements under 35 U.S.C. 371(c)."

[edit] Correcting Errors in PCT Application

Applicant submits three different amendments to the UPSTO as the Receiving Office of a PCT application.

a) Correcting a misspelled word "ccar"

b) Adding a drawing that was accidentally left out but is in earlier filed provisional

or non-provisional application benefit of which is claimed.

c) Adding a page to explain in the specification something clearly shown on a drawing.

Question is what will the USPTO do?

I believe the question targeted MPEP 1836 - rectification of obvious errors, in which you can read.

Obvious errors in the international application or other papers submitted by the applicant may generally be

rectified under PCT Rule 91, if the rectification is authorized, as required, within the applicable time limit.

[...] The omission of entire sheets of the description cannot be rectified, even if resulting from

inattention at the stage of copying or assembling sheets. Applicants often attempt to rely upon the priority

application to establish a basis for obvious error. The priority document (application) cannot be used to support

obvious error corrections. The rectification is obvious only in the sense that anyone would immediately realize

that nothing else could have been intended than what is offered as rectification.

Examples of obvious errors that are rectifiable include linguistic errors, spelling errors and grammatical

errors so long as the meaning of the disclosure does not change upon entry of the rectification. Changes to

chemical or mathematical formulas would not generally be rectifiable unless they would be common knowledge

to anyone.< A missing chemical formula or missing line of text would not be considered >to be an< obvious error

subject to rectification. **

• 09/28/2009: The above question appeared on the exam today.
• 01/06/2010: Saw this.
• 01/06/2010: I saw 3 PCT questions in which either the applicants were not citizens/residents of the USA

or the application was in German/Swedish/Japanese asking what happens or what is the filing date.

Correct answer is that USPTO will forward the app to the Internation Bureau and

the application will get the filing date of the date the USPTO received the application.

[edit] Appeal, Reexam, and Reissue Questions

• 04/07/2010 Exam had at least a dozen questions in these areas
• 9/15/10 Got quite a few questions in these areas.

At least two questions on what to do after the Board reject on new ground. Get to know the procedure. One is when the appellant filed rehearing, what the examiner would do with the issues raised for rehearing. My choice is Examiner will not do anything until the board decide first.

1/27/2011: I had a similar question, but I think I came to a different result. I had a question where an appellant asked for a rehearing and introduced new evidence and amended his claims. The question was what treatment the examiner would give the new evidence & claims. Options were variants of (1) wait for rehearing to conclude and then consider and (2) consider without regard to rehearing. MPEP 1214.01 (under II. Request for Rehearing) states: A request for rehearing accompanied by an appropriate amendment of the claims rejected by the Board, and/or by new evidence, does not constitute a proper request for rehearing under 37 CFR 41.50(b)(2), and will be treated as a submission under 37 CFR 41.50(b)(1). Pretty sure this means that the examiner considers the new evidence/changes in claims without regard to the rehearing request. That was my answer and I passed, but who knows if I got this one right.

---

1214.01. Part I. Another is if examiner reopened prosecution, and found rejected claims (rejected by examiner and affirmed by the board)allowable during the examination, the examiner will not bother the board again. Prosecution before the examiner of the 37 CFR *>41.50(b)< rejection can incidentally result in overcoming the affirmed rejection even though the affirmed rejection is not open to further prosecution. Therefore, it is possible for the application to be allowed as a result of the limited prosecution before the examiner of the 37 CFR *>41.50(b)< rejection. If the application becomes allowed, the application should not be returned to the Board. Likewise, if the application is abandoned for any reason, the application should not be returned to the Board. If the rejection under 37 CFR *>41.50(b)< is not overcome, the applicant can file a second appeal (as discussed below). Such appeal must be limited to the 37 CFR *>41.50(b)< rejection and may not include the affirmed rejection. If the application does not become allowed or abandoned as discussed above, once prosecution of the claims which were rejected under 37 CFR *>41.50(b)< is terminated before the examiner, the application file must be returned to the Board so that a decision making the original affirmance final can be entered. This part is literally in the question.

Hi everyone, I’m a new member to this page, but I’ve been looking at it for some time, and the content is awesome. Thank you!

[edit] Divisional Reissue

A patent containing claims 1-10 has issued. The subject matter of claims 1-5 was invented by inventor A, who has assigned his rights to your client, company C.

The subject matter of claims 6-10 was invented by inventor B, who refuses to cooperate with company C unless he is the sole named inventor of his own patent.

Company C wishes to divide the claims such that one patent contains only claims 1-5 and has inventor A as the sole inventor,

and another patent contains claims 6-10 and has inventor B as the sole inventor. How should you advise your client?

a) this is impossible

b) use a certificate of correction to cancel claims 6-10 and remove inventor B from the patent,

and file a divisional application on claims 6-10 listing B as the inventor

c) file a reissue, cancel claims 6-10, and remove B as an inventor

d) file a reissue of the original application along with a divisional reissue, cancel claims 1-5

and remove inventor A from the first reissue, move claims 6-10 and inventor B to the divisional reissue

e) file two simultaneous reissue applications from the same patent, cancel claims 1-5

and remove inventor A from the first reissue, cancel claims 6-10 and remove inventor B from the second reissue.

This is a tough one, but, based on the description above I think the likely answer is E and not D.

D sounds more like what would happen if the Examiner restricted out claims that you added when you filed the reissue,

and you wanted to pursue them. Even so, I'm not sure how you "move" claims to the divisional reissue.

E sounds more straightforward. See the rules below.

MPEP 1451

37 CFR 1.176(b) permits the examiner to require restriction in a reissue application between the original claims of the patent and any newly added claims

which are directed to a separate and distinct invention(s). See also MPEP § 1450. As a result of such a restriction requirement,

divisional applications may be filed for each of the inventions identified in the restriction requirement.

Applicant may initiate a division of the claims by filing more than one reissue application in accordance with 37 CFR 1.177.

The multiple reissue applications which are filed may contain different groups of claims from among the original patent claims,

or some of the reissue applications may contain newly added groups (not present in the original patent).

01/31/08: However, remember that reissues cannot be filed solely for the purpose of "dividing claims". Ther must be an error in the patent that must be fixed in order for a reissue to proceed. Office also has the option of merging the two reissues you filed back into one reissue app!

02/19/08: So I think you are misreading 37 cfr 1.177 (c) "No reissue application containing only unamended patent claims and not correcting an error in the original patent will be passed to issue by itself." .... There must be an error corrected in each reissue app in order to receive a reissue patent.

02/28/08: Take a look at 35 U.S.C. 251 - "The Director may issue several reissued patents for distinct and separate parts of the thing patented, upon demand of the applicant, and upon payment of the required fee for a reissue for each of such reissued patents." However - this is based on fixing the patent. A friend in the Patent office sent me that for a reissue there must be something that does not make the patent 'wholly or partly inoperative or invalid,' as required by the statute."

04/01/08:Update from previous - I took the Pbar last month and this question was on it. Got it wrong and went to DC for a review. I talked to the PO attorney about the answer - The statutory error that allows reissue is that if there 2 separable inventions by tow separate inventors, there should have been two separate patents. Thus D is a correct method of reissue.

04/14/08: GS - I don't agree with 04/01/08 poster. He must be mistaken because answer (e) perfectly comports with 1451, which says "Applicant may initiate a division of the claims by filing more than one reissue application in accordance with 37 CFR 1.177"

6/3/08: Even if there are two separate inventions because there is no overlap in the claims of the invention, wouldn't E still be the correct answer? Why would D be correct?

6/3/08: could someone explain what "mistake" is being corrected that warrants reissue apps? Is B's refusal to corporate w/ company C a "mistake" that warrants a reissue? Is the invention by A and B claiming different subject matter that makes a dvisional reissue an acceptable route? If we don't have a mistake to fix, then C's wish to separate the issued patent into two patents is impossible which makes (a) the answer.

06/03/08: "The correction of misjoinder of inventors in divisional reissues has been held to be a ground for reissue." (MPEP 1402--Grounds for Reissue). Accordingly, (D) is the correct answer.

07/25/08 DHG: I still don't buy it that D) is correct. If you "remove inventor A from the first reissue" and "move[...]inventor B to the divisional reissue" Then there is no inventor for the first reissue. Or at the very least inventor B "owns" both reissues. Can anyone explain what is wrong with answer E)?

07/27/08: The Longacre blog posting of June 26 (Jim's Practice Question of the Day #169) says the answer is A, as there is no mistake in the patent and thus nothing to fix.

08/09/08: I have this questions on my today's test. There is no choice of "a) this is impossible" available. All 5 choices is related to petition and reissue. I chose (D) above, with the correct wording "claims 1-5 and inventor A on the first reissue, claims 6-10 and inventor B with second divisional reissue.

10/07/08: I think it is simply a matter of reading the answers carefully. If you do as it says in D and cancel claims 1-5 and remove inventor A in the first reissue, that leaves you with inventor B and claims 6-10. Likewise, if you move claims 6-10 and inventor B to the divisional reissue, that also leaves you with inventor B and claims 6-10. Neither reissue would have claims 1-5 and inventor A. Therefore, E has to be the correct answer.

10/13/08: I just passed and got home. This was the last question on my exam. The answers written above ARE NOT REPRODUCED RIGHT. First, there is no answer for "this is impossible". Second, there is only one answer that comports with answers (D) and (E)... so it was easy. File a reissue and then a divisional of that reissue.

10/19/09: Yea, I don't like the above fact pattern. D and E seem to be the exact same thing. How can you distinguish between the both of them. You cannot. Also assume there is not an answer a) is impossible, to eliminate the question of

1402:

"A reissue application is filed to correct an error in the patent which was made without any deceptive intention,

where, as a result of the error, the patent is deemed wholly or partly inoperative or invalid."

1451: DIVISIONAL REISSUE APPLICATIONS:

says straight up:

"In addition, applicant may initiate a division of the claims by filing more than one reissue application in accordance with 37 CFR 1.177.

The multiple reissue applications which are filed may contain different groups of claims from among the original patent claims,

or some of the reissue applications may contain newly added groups (not present in the original patent)."

So why would you not have a divisional or continuation from the extra filing on reissue? I also agree with 10/13/08.

• 09/28/2009: The above question appeared on the exam today. I agree with 10/13/08 post.
• 01/06/2010: Saw this today. I think they have changed the answer choices as the answer seemed obvious to me as per
• 10/13/2008: It's possible this was a beta question in which the answer choices have evolved. I passed.

• • 03/17/2011: Can't recall if this is the same reissue question but when reviewed questions at PTO, i don't believe the answer was to file two reissues.

[edit] Hair Gel Question

I have not seen this question myself -- but I'm trying to patch something together from comments of others:

"One where a hairdresser find his competitor gets a patent but has an advertisement that he was selling

the patented product one year before the competitor got his patent to that product."

"Hair Gel question, someone gets a patent application in 99 and it issues as a patent in 01.

A couple years later, a competitor realizes that it is the exact same hair gel he had advertised in 98.

The question asks what can he do to correct it,

petition for a correction, ex parte reexam, inter parte reexam, reissue or certificate of correction."

My thoughts: Reissue and certificates of correction have to be requested by the inventors or the assignee

(consent of inventors needed for broadening reissue). A competitor can request reexam (either inter partes

or ex parte) only if there is a patent or printed publication raising a substantial new question of

patentablility. Thus, unless the advertisment constitutes a printed publication (with sufficient disclosure

to raise substantial new question of patenability), the competitor is SOL. If the advert qualified, then

ex parte reexam would be available to the competitor, based on facts above. Inter partes reexam would be

available only if the application was filed on or after Nov 29, 1999 (MPEP 2609). It would probably be

ex parte since it happened 98/99 and there was a printed ad.

(edited Jul 16, 2007)

This sounds just like the Einstein/Weisman football pads question from April 2002 PM #37

where the ex parte reexamination option was correct. (edit -- yes, it is very similar.

The hair gel question is a bit tougher though, in that it does not spell out (to my recollection), like Q37,

that the advertisements raise a substantial question of patentability.)

EDIT: 2/12/2009 Appeared today. Appl was filed after Nov 29, 1999.

Inter Partes reexam would qualify using printed brochure/Ad.

12/16/2009: Application was filed prior to Nov 29, 1999; inter partes would be unvailable.

• The above question appeared on:

2/10/2010: in my question it was before Nov. 29, 1999 so no inter partes available.

2/12/2009

09/2009

11-10-09: decide b/w ex-parte or inter-parte dependent on date

09/28/2009: The football pads version of the above question appeared on the exam today.

12/16/2009: hair gel question appeared; decide b/w ex parte or inter partes

[edit] Investigating deceptive intent

Investigating deceptive intent seems to appear in questions involving regular applications, reissue, and reexam.

• 8/10/2007 I had a question asking about what situation does the PTO still investigate violotations of 37 CFR 1.56.

I think the answer is in MPEP 1448

1448 FRAUD, INEQUITABLE CONDUCT, OR DUTY OF DISCLOSURE ISSUES

The Office no longer investigates and rejects reissue applications under 37 CFR 1.56. The Office will not comment

upon duty of disclosure issues which are brought to the attention of the Office in reissue applications except to

note in the application, in appropriate circumstances, that such issues are no longer considered by the Office

during its examination of patent applications.

...Form paragraph 14.21.09 should be used where the examiner becomes aware of a judicial determination of fraud,

inequitable conduct or violation of the duty of disclosure on the part of the applicant independently of the record

of the case, i.e., the examiner has external knowledge of the judicial determination.

Form paragraph 14.22 should be used where, in the application record, there is (a) an explicit, unequivocal admission

by applicant of fraud, inequitable conduct or violation of the duty of disclosure which is not subject to other

interpretation, or (b) information as to a judicial determination of fraud, inequitable conduct or violation of the

duty of disclosure on the part of the applicant. External information which the examiner believes to be an admission

by applicant should never be used by the examiner, and such external information should never be made of record in

the reissue application.

Just took the test today... the correct answer to this question was (A) - it was from the following section

• 02/10/2010: don't really remember the question, but reading 1448 above, some of the answer choices seemed

to have come from there; it mentioned examiner becoming aware; applicant admitting misconduct; examiner's belief (but no substantial evidence).

• 04/07/2010: Exam had this question

---

2000 Duty of Disclosure

2012 Reissue Applications Involving Issues of Fraud, Inequitable Conduct, and/or Violation of Duty of Disclosure

The examiner is not to make any investigation as to the lack of deceptive intent requirement in reissue

applications. Applicant's statement (in the oath or declaration) of lack of deceptive intent will be accepted

as dispositive except in special circumstances such as an admission or judicial determination of fraud,

inequitable conduct or violation of the duty of disclosure, where no investigation need be made and the fact

of the admission or judicial determination exists per se.

• The above question appeared on:
  • 09/2009
  • 09/28/2009
  • 11-10-09
  • 12/16/2009
  • 08/11/2010

[edit] All Other Questions

Question on when it was not nessacary for examiner to give reasons on allowing patent. Tricky question because MPEP says that examiner is not required to give a reason. Answers are from MPEP 1302.14 Reasons for Allowance -->> EXAMPLES OF WHEN IT IS LIKELY THAT A STATEMENT SHOULD BE ADDED TO THE RECORD

• • 08/11/2010 A question pertaining to this section appeared today

[edit] Application Data Sheet (ADS)

1. A question related to 3 inventors A, B, and C on a pending application. Applicant discovers the ADDRESS is incorrect for Inventor B.

How do you make an address change on the application? (one inventor may be unavailable, and these answers are just surmises)

A) Assignee of entire interest sends in an Application Data Sheet correcting

B) 3 inventors declare oath with correct addresses

C) Send in notification of Inventor B's address

D) Assignee declares oath with all the correct Inventive Entity info

E) Assignee signs a petition under some number naming all inventors A, B, C

declaring all inventors and identifies Inventive Entity

The Correct Answer is A).

from Chapter 600:

Supplemental application data sheets may be subsequently supplied prior to payment of the issue fee to either correct or update information in a previously submitted application data sheet, or an oath or declaration under 37 CFR 1.63 or 1.67. See 37 CFR 1.76(c)(1).

[...]

Supplemental application data sheets identifying only the information that is being changed (added, deleted, or modified) in the supplemental ADS are not acceptable. A supplemental ADS containing only new or changed information is likely to confuse the record, create unnecessary work for the Office, and does not comply with 37 CFR 1.76.

[...]

A supplemental ADS that is being used to correct data shown in an oath or declaration, such as foreign priority or residence information for an inventor, would show the original incorrect information with strike-through or brackets, and the new information with underlining, as if an ADS had originally been used to submit the information.

[...]

If applicant merely files a statement notifying the Office of the typographical or transliteration error in the spelling of an inventor’s name without submitting an application data sheet or a supplemental application data sheet, any patent to issue is less likely to reflect the correct spelling since the spelling of the inventor’s name is taken from the oath or declaration, or any subsequently filed application data sheet.

5/9/2010 I got a variant of this question in the form asking which is NOT proper procedure. The answer was C, send in Inventor B's address and have him sign. This is not proper because "the entire inventive entitiy" must be identified, though only inventor B must sign. It's ok, though overkill, if 3 inventors sign as long as information for all three inventors is included.

---

• 03/04/2010
• 08/11/2010
• 10/13/2011

603 Supplemental Oath or Declaration

37 CFR 1.67 Supplemental oath or declaration.

(a) The Office may require, or inventors and applicants may submit, a supplemental oath or declaration meeting

the requirements of § 1.63 or § 1.162 to correct any deficiencies or inaccuracies present in the earlier filed oath or declaration.

(1) Deficiencies or inaccuracies relating to all the inventors or applicants (§§ 1.42, 1.43, or § 1.47)

may be corrected with a supplemental oath or declaration signed by all the inventors or applicants.

(2) Deficiencies or inaccuracies relating to fewer than all of the inventor(s) or applicant(s) (§§ 1.42, 1.43 or § 1.47)

may be corrected with a supplemental oath or declaration identifying the entire inventive entity but signed

only by the inventor(s) or applicant(s) to whom the error or deficiency relates.

(3) Deficiencies or inaccuracies due to the failure to meet the requirements of § 1.63(c)

(e.g., to correct the omission of a mailing address of an inventor) in an oath or declaration may be corrected

with an application data sheet in accordance with § 1.76.

(4) Submission of a supplemental oath or declaration or an application data sheet (§ 1.76), as opposed to

who must sign the supplemental oath or declaration or an application data sheet, is governed by § 1.33(a)(2)

and paragraph (b) of this section.

8-11-10 Numerous variations of this

[edit] Proper 102(e) Date

J.J. Smith filed a nonprovisional application on date1. Which of the following can have a proper 102(e) date?

a) Pending nonprovisional application by another that claims the same invention, filed before date1

b) A prior patent by J.J. Smith

c) A PCT application published under 21(2) in English

d) A published article, filed before date1

e) All of the above

I believe the answer is C. An interference should result from A.

• This question appeared on:
  • 12/16/2009
  • 12/31/2009
  • 03/04/2010
  • 10/13/2011

on my exam the choice 3) was a wipo publication of an application filed before 11/29/2000 
so it d/n have any 102(e) & and articles' date i think was after smith's application
so i picked a)

Articles don't get 102(e) dates, only patents and published applications, right?

Q #17 on October '03 PM

17. A patent application was filed on November 1, 2000 for the invention of J.J. Smithy.

The application has no priority or benefit claims to any other application.

Claims in the application are separately rejected under 35 USC 102 as being anticipated

by each of the following references. Which reference can be properly applied under 35 U.S.C. 102(e)

in accordance with the patent laws, rules and procedures as related in the MPEP?

(A) A WIPO publication of an international application under PCT Article 21(2),

which has an international filing date of October 3, 2000, was published in English

and designated the United States.

(B) A U.S. patent by J.J. Smithy that has a filing date of September 5, 2000.

(C) A U.S. application publication under 35 U.S.C. 122(b) by inventor Jones

that was filed on August 8, 2000.

(D) A journal article by Marks published on October 11, 2000.

(E) All of the above.

Explanation:

The correct answer is answer (C). 35 U.S.C. § 102(e); MPEP § 706.02(f). The application publication is a proper

reference under 35 U.S.C. 102(e) because it was filed by another prior to the filing date of the invention.

See MPEP § 706.02(f) et seq. Answer (A) is incorrect. The reference in answer (A) is not a proper reference under

35 U.S.C. § 102(e) because its international filing date was prior to November 29, 2000 thereby failing one of the

three conditions for a WIPO publication of an international application to be applied under 35 U.S.C. § 102(e).

See MPEP § 706(f)(1), under the heading “I. Determine The Appropriate 35 U.S.C. 102(e) For Each Potential Reference

By Following The Guidelines, Examples And Flow Charts Set Forth Below,” subpart (C), which states “[I]f the potential

reference resulted from, or claimed the benefit of, an international application, the following must be determined:

(1) If the international application meets the following three conditions: (a) an international filing date on or after

November 29, 2000 . . . then the international filing date is a U.S. filing date for prior art purposes under 35 U.S.C.

102(e).” The reference in (B) is not a proper reference under 35 U.S.C. § 102(e) because the reference is not by another.

See MPEP § 706.02(f). The reference in (D) is not a proper reference under 35 U.S.C. § 102(e) because 35 U.S.C. § 102(e)

refers to patents and patent applications, not journal articles. See MPEP § 706.02(f)(1). (E) is not correct because (C)

is correct and (A), (B) and (D) are incorrect.

comment -- I get what they are going for here, but the answer choice (C) is just badly worded (very common on the patent bar). What they meant to get at was that the pending application can have a 102(e) date because it has been published. But the actual PUBLICATION does not have a 102(e) date...

[edit] Contesting Inventors

J and K work for company XYZ and have no obligation to sign inventions to XYZ. J and K invent something. XYZ fires K.

K refuses to cooperate. XYZ and J ask practitioner E to file an application naming J and K as joint inventors.

E files the application, but K refuses to sign. K thinks that he conceived of the invention alone and that J did nothing.

K has hired F as his attorney. How can K and F contest inventorship?

a) Fire E as the attorney of record, and grant F a power of attorney

b) Provoke an interference by filing a new application to the same invention naming K as sole inventor

c) File a petition under Rule 48, signed only by K under Rule 47.

d) Wait til the patent issues, then file for a reissue and amend inventorship to remove J.

e) Wait til the patent issues, then file for a reexam, presenting evidence that shows J was not an inventor.

I believe the answer is B.

• This question appeared on:
  • 12/16/2009
  • 12/31/2009
  • 02/10/2010
  • 09/11/2011

[edit] Claim of priority to Japanese national app to overcome prior art

Applicant filed Japanese app. Then file PCT app, correctly claiming priority. Then file USA national stage app.

But there is prior art against USA app. The prior art may be overcome if applicant can make a claim of priority

to the Japanese National app. Can the claim of priority be made?

I said Yes, so long as verified copy of Japanese National App is filed. There may have been a 16-month requirement too,

for claim of priority from the National(?) or PCT (?) app. Or was that a different question?

Sorry, there were 3 to 4 different Japanese app questions. There definitely was a question that wanted to know

about the 16-month (or was it 17?) requirement for PCT apps, for correcting ..something..

7/18/07 -- Sounds like MPEP 1828, Priority Claim and Document, may be relevant.

Effective July 1, 1998, applicant may correct or add a priority claim by a notice submitted to the Receiving Office or the

International Bureau within 16 months from the priority date, or where the priority date is changed, within 16 months

from the priority date so changed, whichever period expires first, provided that a notice correcting or adding a priority

claim may in any event be submitted until the expiration of 4 months from the international filing date.

I had a hard time choosing between two answers:

1) The claim for priority is lost because the *practitioner* failed to make a claim for priority

within 16 months of the filing date of the Japanese application.

2) The claim for priority is lost because the *applicant* failed to make a claim for priority

as required by section blahbah of the PCT.

[edit] Limiting Claims

January 24th, 2008 - Question regarding applications having many claims and when it would appropriate to limit

the number or nature of the initial inquiry. Some situations exist where examination of an application appears

best accomplished by limiting action on the claim thereof to a particular issue.

These situations include the following:

(A)Where an application is too informal for a complete action on the merits.

(B)Where there is an undue multiplicity of claims, and there has been no successful telephone request

for election of a limited number of claims for full examination.

(C)Where there is a misjoinder of inventions and there has been no successful telephone request for

election.

(D)Where disclosure is directed to perpetual motion.

(E)All of the above.

The correct answer is (E), see MPEP 707.07(g) Piecemeal Examination.

• The above question appeared on:
  • 09/2009
  • 09/28/2009
  • 11/10/2009
  • 11/12/2009
  • 12/16/2009
  • 12/31/2009
  • 03/04/2010
  • 08/11/2010
  • 09/11/2011
  • 10/13/2011

January 24th, 2008 - Question regarding claim number 4 that was canceled via a pre-examination amendment

in a set of 6 claims, but the registered practitioner wanted to later reinstate the exact same claim;

answers were (approximately);

(A) Submit an amendment uncanceling claim number 4.

(B) Submit an amendment adding claim number 7 with the exact words of the original claim number 4.

(C) It is not possible to reinstate claim number 4 because once it is canceled the matter cannot be reclaimed.

(D) [Another answer changing the claim number inappropriately]

(E) [Another answer changing the claim number inappropriately]

The correct answer is (B), see MPEP 714 Reinstatement of previously canceled claim.

[edit] Black ink or Red ink?

A question that was looking for the wrong response. It had one of the possible answers of red ink being allowed

on applications? I don't know if my memory is good on this one, but everywhere I looked, I only found black ink

pen requirements in the MPEP. I answered that red ink was the wrong response. Does anyone know about this?

Red Ink is generally not allowed, but only used for IFW (Image File Wrapper) purposes (see 714.17).

The following section provides a better answer than the 714.17 reference above --->

1302.04 Examiner's Amendments and Changes [R-3] - 1300 Allowance and Issue

37CFR 1.530(d)(3) "showing the proposed changes in RED for approval by the examiner"

MPEP 605.04(g): When *>a< request is granted to add or delete inventors under 37 CFR 1.48,

the change should be noted in red ink in the left margin of the original oath or declaration,

if the application is maintained in paper.

Best example I've seen is MPEP 608.01 Specification

A quick search for "ink" turned up 37 CFR 1.52 Language, paper, writing, margins, compact disc specifications

that states the following requirement:

(iv) Plainly and legibly written either by a typewriter or machine printer in permanent dark ink or its equivalent

If mistakes are in the drawings or if the drawings need to be amended, the changes MUST BE in red ink (although

examiners will never know if it is or not b/c eDan scanning is only black and white. It is OIPE job to check)

Somewhere in MPEP 700.

The above is incorrect at least as of the 8th ed. rev. 3. MPEP 714 at the bottom of page 700-219:

"The proposed drawing correction practice has been eliminated. ... No proposed changes in red ink should be submitted."

OK, see MPEP 1214.06 under "II. Claims Stand Allowed", first paragraph "For paper files, a< red-ink line should be

drawn through the refused claims and the notion “Board Decision” written in the margin in red ink." Also, a quick

search of "red-ink" under the MPEP also yields a result in MPEP 2682 "The NIRC will indicate the status of all the

claims in the case as a result of the Board decision. A red-ink line should be drawn by the examiner through any

refused claims, and the notation “Board Decision” written in the margin in red ink."

- what can be done via the examiner's amendment. I forget the other answers, but do remember what I thought was

the right answer had to do with fact that "clean red ink" (not clean black ink) must be used in correcting

originally filed papers. MPEP 1302.04

1302.04 Examiner's Amendments and Changes [R-3]

When correcting originally filed papers *>in< applications with a paper application file wrapper,

clean red ink must be used (not blue or black ink).

See Mypatentbar.com for the complete list on when to use Red Ink. For the most part, just remember that the examiner's amendment is in RED INK

[edit] Museum Titanium Baseball Question

A question involving an article about a special titanium baseball put on public display in a museum.

The main question is: Is it public use if only "wealthy museum patrons who have no interest or skill to make baseballs" see it?

Or is it public use when the general public see it, or people who have the interest/skill to make baseballs can see it?

In other words, the main question is: is something public use if ONLY the people having skill in the art can see it?

8/10/2007 The fact pattern for this question, when I had it, was as follows:

1) Article is published on Date 1 though not distributed.

2) Article is put on display at museum on Date 2, museum is only accessed at this time by wealthy museum patrons

who don't have the skills to make baseballs (but the museum is a baseball museum).

3) On Date 3, museum has a big PR event with news media etc.

4) On Date 4, articles in museum are indexed and sorted.

Which date is the prior art date of the publication?

See MPEP 2133.03(a)A.(2.), In Re Blaisdell, Ex Parte Kuklo.

"The person to whom the invention is publicly disclosed need not understand the significance and technical complexities of the invention."

A key to this question is also understanding that if a publication is only viewed by a few select members of the museum club,

then it is not PUBLIC and therefore does NOT qualify as a 102(a) or 102(b) publication. It doesn't matter if it is properly shelved and catalogued.

I disagree; the inventor does not have control over the baseball once it is shown to the museum patrons.

This is distinguished from the _Moleculon Research_ case b/c the inventor retained control over what happened to it in that instance.

Anyway, the question is not really about public use; it has to do with availability of the article, not the invention itself.

If a member of the public has access to something on the shelf of a library and is not under obligation or expected to keep it confidential,

it has been published as far as 35 U.S.C. 102 is concerned.

The closest example I can think of is the single copy of a graduate thesis on the shelf in an obscure university.

Practically speaking, the public does not have access to it, but it is still prior art under §102.

Edit: Took the exam yesterday (passed) and got this question; I chose Date 2 above

Response to above comment:

The text above regarding "it is not PUBLIC and does not qualify as a 102(a) or (b) publication" was taken straight out of the answer key for a past exam question.

When I answered this question on a practice exam, I (like you) believed it was a 102 disclosure and got it wrong.

Hopefully someone else can settle this.

Yes, but *which* past exam question

It was a PRG ExamWare question, so I don't know. Sorry.

But I still contend that something which is available only to members of a museum is not public.

Unless the question specifically states that it is available to the public I would presume otherwise.

Museum patrons are the public. It doesn't say that this is a private museum, only that the people that view the baseball are wealthy people that go to museums.

Putting something in a museum is a public display. This is not a public use under 102(b) because it is not a use of the invention at all.

A reference is proven to be a “printed publication” “upon a satisfactory showing that such document has been disseminated or otherwise made available to the extent that persons interested and ordinarily skilled in the subject matter or art, exercising reasonable diligence, can locate it.”

In re Wyer, 655 F.2d 221,

I just took the exam and my analysis turned the question upon the date of Date 4, which is when the library was indexed, cataloged, and shelved.

Based on the section in the MPEP, that's what makes the date critical.

Edit: OK.. I took (and passed! : ) ) the exam and did encounter this question.

If my recollection is correct, the description of the question above is not entirely accurate.

The wealthy museum patrons who were allowed to view the baseball prior to the public grand opening were museum *members*,

and the first viewing was opened to *members only*. If this is the case, then it is not public and should not count as a 102(a) publication.

I believe I selected Date 4.. the date that the baseball went public.

See the following passage:

MPEP 2128.01, IV.

In resolving whether or not a temporarily displayed reference that was neither distributed nor indexed was nonetheless made sufficiently publicly accessible

to count as a “printed publication” under 35 U.S.C. 102(b), the court considered the following factors:

“the length of time the display was exhibited, the expertise of the target audience, the existence (or lack thereof) of reasonable expectations

that the material displayed would not be copied, and the simplicity or ease with which the material displayed could have been copied.”

(note that "printed publication" as used above applies to 102(a) as well)

EDIT 11/26/2007

Prior art date and public use date are two entirely separate issues.  

* If the question asks for prior art date, 
then the answer is the date it is indexed and cataloged so someone can actually find it.  

* If the question asks for the date of first public use, 
then the answer is the date the thing was displayed for museum patrons to see it, 
regardless whether the musuem is semi private.

EDIT BG 02/14/2008: http://www.intelproplaw.com/ip_forum/index.php?topic=5869.0

RDS saw the answer sheet at the PTO during a review of the exam...

"By the way, the correct answer for the baseball publication in the museum is the date of July 4th,

the date when the publication was available in the catalog and on the shelf (July 4th). "

EDIT 7/24/08: took the exam today (passed) and this question was on there.

This is a question about 102b prior art...correct answer is July 4th.

EDIT AG 8/26/08: took the exam today, passed, this question was still on there or some variant.

The question talked about prior art date and, yes, the answer was the date it is indexed and cataloged.

While the museum was open to varying degrees, the material was not cataloged and on the shelves until the last date

(which I believe was still July 4th..but it will be obvious if you see the question).

EDIT 01/06/2009: MPEP 2133.03(a)

go to Paragraph 4. .....and] whether there were any confidentiality obligations imposed on persons

who observed the use.'" Bernhardt, 386 F.3d at 1381, 72 USPQ2d at 1909.

For example, the court in Bernhardt noted that an exhibition display at issue in the case

"was not open to the public, that the identification of attendees was checked against a list of authorized names

by building security and later at a reception desk near the showroom, that attendees were escorted through the showroom,

and that the attendees were not permitted to make written notes or take photographs inside the showroom....

so the case is about 100 years old showing if the exhibition is controlled in a manner that maintains confidentiality

it is not public use or display. I don't know if the fact statement in the question supports this,

but it may be where the USPTO is coming from.

EDIT 02/12/2009:

This question appeared in test today. I answered Date 2 when Museum Patrons saw it

(there is no indication that they are under any obligation to keep information confidential);

I passed the test.

Edit 06/24/2009: see MPEP 2133.03(a) "Public Use" - (II)(1) "Public Use" and "Non-secret Use" Are Not Necessarily Synonymous" states:

- “Public” is not necessarily synonymous with “non-secret.” The fact “that non-secret uses of the device were made [by the inventor

or someone connected with the inventor] prior to the critical date is not itself dispositive of the issue of whether activity barring a patent

under 35 U.S.C. 102(b) occurred. The fact that the device was not hidden from view may make the use not secret, but nonsecret use is not ipso facto

‘public use’ activity. Nor, it must be added, is all secret use ipso facto not ‘public use’ within the meaning of the statute,”

if the inventor is making commercial use of the invention under circumstances which preserve its secrecy. “The presence or absence

of a confidentiality. The next section (2) Even If the Invention Is Hidden, Inventor Who Puts Machine or Article Embodying the Invention

in Public View Is Barred from Obtaining a Patent as the Invention Is in Public Use states:

- When the inventor or someone connected to the inventor puts the invention on display or sells it, there is a “public use” within the

meaning of 35 U.S.C.102(b) even though by its very nature an invention is completely hidden from view as part of a larger machine or article,

if the invention is otherwise used in its natural and intended way and the larger machine or article is accessible to the public.[...]

Display of equipment including the structural features of the claimed invention to visitors of laboratory is public use even though public

did not see inner workings of device. The person to whom the invention is publicly disclosed need not understand the significance

and technical complexities of the invention. The next Section (3) There Is No Public Use If Inventor Restricted Use to Locations

Where There Was A Reasonable Expectation of Privacy and the Use Was for His or Her Own Enjoyment states:

- An inventory's private use of the invention, for his or her own enjoyment is not a public use. The next sections (4) The presence

or Absence of a confidentiality agreement is not dispositive of the public use issue. So, the fact that the device was not hidden

from view may make the use not secret, but is not public use per (1). In regards to (2), by putting the invention on disply or sells it,

there is a public use, even thou the invention is completely hidden inside a machine (like titanium in the baseball).

(3) cannot be used bc there was no private use for the inventor. Now, the issue is related to the access of wealthy museum patrons,

and the fact that the article was put on a shelf in a museum. My opinion is that the public use was at the time the article was indexed,

bc there is a reasonable question of the article being found and identified by the wealthy patrons.

This question is similar with the student thesis that is available in the library at the times is indexed and cataloged.

• • 02/10/2010: the question was actually talking about the PRIOR ART of the brochure, not the public use of the titanium baseball - which, incidentally, would not have been understood by the wealthy members. Date 1: brochure is published, but not distributed; date 2: museum requests the brochure and allows wealthy members (not the public) of the museum to look; date 3: news/pr announcement of museum's new admission policy; date 4 (July 4): open to general public and brochure is indexed and cataloged. I picked date 4.

I took the bar today (9/15/10) and passed. The question appeared. I chose the date the wealthy patron saw the publication (it's a publication, not the baseball itself). I believe the publication is similar to classified publication. 707.05(f) 707.05(f) Effective Dates of Declassified Printed Matter In using declassified material as references there are usually two pertinent dates to be considered, namely, the printing date and the publication date. The printing date in some instances will appear on the material and may be considered as that date when the material was prepared for limited distribution. The publication date is the date of release when the material was made available to the public. See Ex parte Harris, 79 USPQ 439 (Comm’r Pat. 1948). If the date of release does not appear on the material, this date may be determined by reference to the Office of Technical Services, Department of Commerce. In the use of any of the above noted material as an anticipatory publication, the date of release following declassification is the effective date of publication within the meaning of the statute. For the purpose of anticipation predicated upon prior knowledge under 35 U.S.C. 102(a) the above noted declassified material may be taken as prima facie evidence of such prior knowledge as of its printing date even though such material was lassified at that time. When so used the material does not constitute an absolute statutory bar and its printing date may be antedated by an affidavit or declaration under 37 CFR 1.131.

• The above question appeared on a 09/2009 exam.
• on 11-10-09; generally, in this question I would think about 'when it was published' given that it was a publication.

I selected the answer corresponding to 'when it was indexed' but who knows.

• 12/16/2009: the baseball question appeared on the exam.
• 12/31/2009 i picked july 4 when it was cataloged
• 01/12/2010 Also picked when it was catalogued
• 12/22/2009 (at GUAM) I answered July 4.
• 03/04/2010 July 4 as well.
• 08/11/2010 Still not sure of the answer, but picked July 4 and passed
• 09/15/2010

[edit] Mirror Question

There is one question discussing the use of "mirror" in the claims and whether its "reflective qualities" should be discussed in the specification.

I am not sure if this was a prior question, however.

You were to choose from a list of choices a single answer that comported with USPTO practice and procedure. Among the answers (from memory):

(A) because the definition of mirror automatically includes its reflective qualities,

there is no need to amend the specification to include the reflective qualities

(E) the mirror in one part of the specification is "parallel," and the mirror in another part is "perpendicular,"

the specification is conflicting and one who has knowledge in the art would not be able to tell the difference so you amend the specification.

I would select (A) based on 2163.07(a)

Inherent Function, Theory, or Advantage. Reflection is an inherent function of a mirror, so there is no need to mention it in the description.

However, based on review of March, 2008 exam at PTO, this question deals with the enablement requirement and the correct answer is E

(from the recollection of the above choices) because the specification is conflicting and PHOSITA would be unable to determine which description is correct.

There are evidently 2 variants of the "Mirror" question. I got the "parallel/perpendicular/enablement" wording variant on 1/27/08.

It is of the "which is not correct" type - just pick the answer that involves the mirror and no enablement. The other answers have nothing to do with a mirror.

The other variant must involve "inherent" disclosure; but the parallel/perpendicular issue has nothing to do with the inherency issue.

EDIT 2/12/2009 This questions appeared today.

Answers A through D referred to 'replacing "Mirror" to "light reflecting material" or a "Webster dictionary definition of mirror" in specification'.

I answered E. Passed the test.

• The above question appeared on a 09/2009 exam.
• 12/16/2009: the above question (mirror) appeared on the exam.
• 12/31/2009 picked e

on 11-10-09; I selected the answer relating to an inconsistencies in the spec., which are not apparent to one of ordinary skill

EDIT 10/18/2009 Refer to question 44 on April 02 PM exam. I think the enablement version of this mirror question might be similar to question 44.

Question 44 pertains to an effective amount and gives two different examples of effective amounts. This question asked what would comply with 112 second, and 101.

ANSWER PER PTO:

(C) is incorrect because the claim presented in (C) recites “an effective amount ” without stating the function that is to be achieved, and more than one effect can be implied from the specification. In re Fredericksen 213 F.2d 547, 102 USPQ 35 (CCPA 1954). It is unclear whether “an effective amount” in (C) is an effective amount to increase stickiness or an effective amount to April 17, 2002 Examination Afternoon Session Model Answers 13 increase hardness.

I'm not sure how the question is but this seemed to be a good example to throw in here to clarify enablement.

I'm also not sure if this question gave a claim to go with the spec. hope this helps!

11/12/2009 This question was on the exam. I did not pick E....but I can't remember which I answered.

I picked some variant of "A" above that indicated the reflective quality was inherent and did not need to be in the spec. Passed the test, but not sure if I got this right or wrong.

01/06/2010 Had this question. The correct answer choice is poorly written. Question asks which conditions a 112 rejection for lack of enablement is appropriate. (A) Claim has reflective property; this can be added to the spec as you can move stuff around from the application as filed. (B) Add dictionary definition of mirror to spec; you are allowed the dictionary meaning so this is okay. (C) Add inherent property of refelective qualities to spec; this is okay as you are allowed inherent properties. (D) Reflective property mentioned in spec is used to modify claim; this is okay. (E) Spec has parallel in one section and perpendicular in another section and PHOSITA would not know which is correct. The answer choice goes on to say that an amendment changing "perpendicular" to parallel is submitted as a PHOSITA would know it was parallel. If you take this answer at face value, it should not cause a 112 rejection based on the amendment, but without the amendment 112 is appropriate. Also, since you are allowed to move stuff around, allowed inherent properties, and allowed the dictionary meaning, this was the only answer choice that did not comport with the MPEP. I passed.

• 02/10/2010: the comment above is pretty close in describing the answer answer choices. I don't recall the call of the question exactly, but I read it to ask which of the choices you WOULD be able to be amend in the spec. E was NOT the answer because it was stated that it was not an obvious mistake to the PHOSITA and the applicant tried to amend that the mistake was obvious.

[edit] Obviousness

One obviousness question in there that threw me for a loop because all the answers seemed incorrect.

Only one involved teaching or motivation even though another answer was in better form.

2144.05 III. REBUTTAL OF PRIMA FACIE CASE OF OBVIOUSNESS

A prima facie case of obviousness may also be rebutted by showing that the art, in any material respect, teaches away from the claimed invention.

This is not that helpful!

Is there an answer choice that involves:

(1) substitution of known elements for one another, or (2) presenting a known solution to a relevant problem?

There was a question on the Oct 2003 exam in which four of the answers listed how to overcome a prima facie case of obviousness

but the question was about a 102 rejection so those answers were wrong.

[edit] Deleting Benefit Claim

Two questions on how to extend your patent life by deleting a claim of benefit. If you didn't realize the answer

to the first was file an RCE the second question does it in the fact pattern and calls it 'proper'. But in the

second question, which is tougher, you have to realize the 4 months/16 months deadlines (see 1.55(a) and 1.78(a)(2)(ii)),

figure out they are exceeded, and realize that because the applicant removed the claim himself he cannot avail

himself of adding the claim as unintentional (applicant gets screwed because a new ground of rejection is applied

after he withdraws his claim and he has no way to put the claim back).

In 201.11 G. Deleting Benefit Claims

As a result of the 20-year patent term, it is expected, in certain circumstances, that applicants may cancel

their claim to priority by amending the specification or submitting a new application data sheet (no supplemental

declaration is necessary) to delete any references to prior applications. [...]

A cancellation of a benefit claim to a prior application may be considered as a showing that the applicant is

intentionally waiving the benefit claim to the prior application in the instant application. If the applicant later files

a petition to accept an unintentionally delayed claim to add the benefit claim to the prior application in the same

application from which the benefit claim was canceled, the Office may refuse to accept such benefit claim

because the delay was not unintentional.

---

9/15/10 Appeared today. Patent allowed, issue fee not paid. What to do to have the deletion "necessarily" get into the patent. Narrow down to two answer. One to amend before paying issue fee; one file RCE and amendment. Chose the RCE one because w/o RCE, Examiner has the discretion to decide whether allow the entry of the amendment.

• The above question appeared on:
  • 09/2009
  • 11-10-09 (RCE)
  • 12/16/2009
  • 12/31/2009

[edit] Suspended Practitioner

Question on suspended practitioner. Is one of the "which one is incorrect" type.

Know that the USPTO will not "ad litem" appoint a new practitioner if the one in the power of attorney is suspended.

105 Suspended or Excluded Practitioner Cannot Inspect [R-2]

U.S. Patent and Trademark Office (USPTO) employees are forbidden to hold either oral or written communication

with an attorney or agent who has been suspended or excluded from practice by the USPTO regarding an application

unless it *>is< one in which said attorney or agent is the applicant. Power to inspect given to such an attorney

or agent will not be accepted.

Apparently this is based on a true story according to the PLI videos.

It seems a suspended practitioner would add himself as an inventor so that he could prosecute his client's application.

I'm sure the USPTO took a dim view of this, but he won in court.

[edit] Digital Media for Gene Sequence

Question about how many and what kind of digital media you have to submit with a gene sequence.

2421.02 Summary of the Requirements of the Sequence Rules

Basically, the sequence rules define a set of symbols and procedures that are both mandatory and the only way that

an applicant is permitted to describe information about a sequence that falls within the definitions used in the rules.

Thus, 37 CFR 1.821 defines a “sequence” and a “Sequence Listing” for the purpose of the rules, the requirements for

specific symbols, and formats for the “Sequence Listing,” the requirement for a computer readable form (CRF) of the

“Sequence Listing,” and the deadlines for complying with the requirements. 37 CFR 1.822 to 37 CFR 1.824 set forth

detailed descriptions of the requirements that are mandatory for the presentation of sequence data, and 37 CFR 1.825

sets forth procedures that are available to an applicant in the event that amendments to the sequence information or

replacement of the computer readable copy become necessary.

§ 1.824 Form and format for nucleotide and/or amino acid sequence submissions in computer readable form.

(a) The computer readable form required by § 1.821(e) shall meet the following requirements:

(1) Diskette: 3.50 inch, 1.44 Mb storage; 3.50 inch, 720 Kb storage; 5.25 inch, 1.2 Mb storage; 5.25 inch,

360 Kb storage.

(2) Magnetic tape: 0.5 inch, up to 24000 feet; Density: 1600 or 6250 bits per inch, 9 track; Format: Unix

tar command; specify blocking factor (not “block size”); Line Terminator: ASCII Carriage Return plus ASCII

Line Feed.

(3) 8mm Data Cartridge: Format: Unix tar command; specify blocking factor (not “block size”); Line Terminator:

ASCII Carriage Return plus ASCII Line Feed.

(4) Compact disc: Format: ISO 9660 or High Sierra Format.

(5) Magneto Optical Disk: Size/Storage Specifications: 5.25 inch, 640 Mb.

[edit] Signature on 1.132 petition

Question asking who can sign a 1.132 petition showing that a previous invention was not by another.

The subject matter of the question is "Application A" and "Patent X". The answer choices included

variations of: declarations or statements from - the owner of Application A, the inventor of Application A,

the inventor of Patent X, the attorney, and there was another choice. 2 answers were accepted because

the inventor is in a position to have the best knowledge of ownership of the invention - or something along

those lines - but the original correct answer was the attorney can send in a statement.

I marked that answer on the exam.

37 CFR 10.18. Signature and certificate for correspondence filed in the Patent and Trademark Office.

(a) For all documents filed in the Office in patent, trademark, and other non-patent matters, except for

correspondence that is required to be signed by the applicant or party, each piece of correspondence filed

by a practitioner in the Patent and Trademark Office must bear a signature, personally signed by such

practitioner, in compliance with § 1.4(d)(1) of this chapter.

The oath or declaration may not be signed by an attorney on behalf of the inventor, even if the attorney

has been given a power of attorney to do so.

But see: 37 CFR 1.33 Correspondence respecting patent applications, reexamination proceedings, and other proceedings.

(b) Amendments and other papers. Amendments and other papers, except for written assertions pursuant to

§ 1.27(c)(2)(ii) of this part, filed in the application must be signed by:

(1) A patent practitioner of record appointed in compliance with § 1.32(b);

(2) A patent practitioner not of record who acts in a representative capacity under the provisions of § 1.34;

(3) An assignee as provided for under § 3.71(b) of this chapter; or

(4) All of the applicants (§ 1.41(b)) for patent, unless there is an assignee of the entire interest

and such assignee has taken action in the application in accordance with § 3.71 of this chapter.

10.18 only says that something filed by a practitioner must be signed by that person; any of the parties

in 1.33 can sign the oath. If you would like to debate this, please provide a cite.

Another perspective: Some correct answer choices suggest that the inventor of a prior art reference can sign

a declaration stating that the reference derived the information from the patent applicant. Also, experts in

a given field can sign a declaration that shows evidence of a long felt need, commercial success, etc.

My understanding is that the 132 declaration is a catch-all declaration; the person who is competent to sign

it depends on the contents of the declaration.

It's hard to say for sure without reading the actual question and answer choices, but I think you guys are

missing the point of this question. I would caution anyone against relying too heavily on this submission.

---

Note that MPEP 715.04 requires the inventor(s) to make and sign an affidavit under 37 CFR 1.131 (antedating a

reference by showing invention prior to the effective date of a reference). All of the inventors of that claim

must sign unless they are unavailable. [1.131 says that a patent owner can submit the petition in a reexam.]

I was unable to find any such requirement for 1.132 affidavits (ie, requirement that inventor(s) sign).

715.01 distinguishes between 1.131 and 1.132 affidavits by clarifying that 1.132 affidavits can be used to prove

that the subject matter of a reference was the applicant's own invention or that the subject matter of the reference

and the claimed invention were commonly owned or subject to assignment at the time the later invention was made.

If there is no stated requirement that an inventor/other person sign a document, does 37 CFR 1.33 give the practitioner

the power to sign all documents that aren't required to be signed by someone else in order to satisfy the signature

requirement? If an oath, declaration, or affidavit is being submitted, shouldn't the person signing have actual personal

knowledge of any facts in the document? It seems to me that if any facts are revealed in the document, the person who

knows the facts first-hand should sign the document rather than the practitioner who only knows the facts as hearsay.

I am so effing confused. The MPEP, Title 35, and Title 37 are so poorly written, unorganized, and sometimes contradictory.

---

7/26/09 SO - I'm pretty sure that the person making the declaration or affidavit signs it.

I think you guys are making this harder than it is. If the applicant is stating that the previous invention

is not by another, the applicant signs. If a co-inventor from the prior art is saying that the invention is

not by another, then the co-inventor signs. The attorney cannot sign the declaration or affidavit unless it

is the attorney who is making the statement (which likely wouldn't fly with USPTO).

[edit] Submitting Tables on CD-ROM

Question on submitting 52 tables in CD-ROM. 52 tables were divided into two portions; 1-26 and 27-52.

Is this proper?

Question about having lots of small tables in your spec.

One of the answer choices includes that CD-ROM have to be submitted in duplicate.

However, I believe this answer to be misleading because only tables LONGER than 50 pages can be submitted on Compac

37 CFR 1.52. Language, paper, writing, margins, compact disc specifications.

[...]

(4) Any compact disc must be submitted in duplicate unless it contains only the “Sequence Listing” in computer

readable form required by § 1.821(e). The compact disc and duplicate copy must be labeled “Copy 1” and “Copy 2,”

respectively.

608.05(b) < Compact Disc Submissions of Large Tables [R-2]

A single table contained on fifty pages or less must be submitted either as drawings (in compliance with 37 CFR 1.84)

or as part of the specification in paper (in compliance with 37 CFR 1.52). A single table contained on 51 pages or more

may be submitted on a CD-ROM or CD-R (in compliance with 37 CFR 1.52(e) and 37 CFR 1.58). The presentation of a

subheading to divide a large table into smaller sections of less than 51 pages should not be used to prevent an

applicant from submitting the table on a compact disc unless the subdivided tables are presented as numerous files on

the compact disc so as to lose their relationship to the overall large table.

September 20, 2008- From MPEP E8R4

37 CFR 1.52. Language, paper, writing, margins, compact disc specifications.

[...]

(e)(1) The following documents may be submitted to the Office on a compact disc in compliance with this paragraph:

(iii) Any individual table (see § 1.58) if the table is more than 50 pages in length, or if the total number of pages

of all of the tables in an application exceeds 100 pages in length, where a table page is a page printed on paper in

conformance with paragraph (b) of this section and § 1.58(c).

This also appeared on:

• 03/04/2010
• 04/07/2010
• 08/11/2010 - Variant today asked if CD submisson was proper or improper, I picked Improper due to no individual table being 51 pages or more and lack of duplicates

regarding 08/11/2010 post -- not entirely correct. see chapter 600: A single table contained on 51 pages or more >, or if there are multiple tables in an application and the total number of pages of the tables exceeds one hundred pages, the tables< may be submitted on a CDROM or CD-R (in compliance with 37 CFR 1.52(e) and 37 CFR 1.58).

[edit] Trade Secret Question

Question on Trade secret, Proprietary, protective order materials.

It seems the answer is easily found in MPEP 724.

724 Trade Secret, Proprietary, and Protective Order Materials

[...]

That wherever possible, trade secret law and patent laws should be administered in such manner that the former will not

deter an inventor from seeking the benefit of the latter, because, the public is most benefited by the early disclosure

of the invention in consideration of the patent grant. If a patent applicant is unwilling to pursue his right to a patent

at the risk of certain loss of trade secret protection, the two systems will conflict, the public will be deprived of

knowledge of the invention in many cases, and inventors will be reluctant to bring unsettled legal questions of significant

current interest . . . for resolution.

On 8/10/2007 the trade secret question related to what happens to the trade secret information in reexam if the Examiner

finds it material to the patentability of the invention, and what if there is/or isn't a request to expunge the info.

see MPEP 724.04(c)

Any materials submitted under MPEP § 724.02 in a reexamination file open to the public under 37 CFR 1.11(d) will be treated

in the following manner:

(A)

>Materials submitted under MPEP § 724.02 will only be released to the public with any other papers in the reexamination

file if no petition to expunge (37 CFR 1.59) was filed prior to the mailing of a Notice of Intent to Issue Reexamination

Certificate(NIRC), or if a petition to expunge was filed and the petition was denied.< The submitted information will be

maintained separate from the reexamination file and will not be publicly available until a determination has been made as

to whether or not the information is important to a reasonable examiner in deciding whether or not a claim is patentable.

(B)

>Prior to the mailing of a NIRC, the examiner will review the reexamination file and determine if a petition to expunge

is in the reexamination file but not acted upon.< The examiner, or other appropriate Office official who is responsible

for considering the information, will make a determination as to whether or not any portion or all of the information

submitted is important to a reasonable examiner in deciding whether or not a claim is patentable.

(C)

If any portion or all of the submitted information is found important to a reasonable examiner in deciding whether or

not a claim is patentable, **>the petition to expunge will be denied and the information< will thereafter become a

permanent part of the reexamination file and open to the public.

(D)

If any portion or all of the submitted information is found not to be important to a reasonable examiner in deciding

whether or not a claim is patentable,>the petition to expunge will be granted and the information expunged.<

(E)

>If a petition to expunge is not filed prior to the mailing of the NIRC, the materials submitted under MPEP § 724.02

will become a permanent part of the reexamination file and open to the public under 37 CFR 1.11(d).<

• 12/16/2009: the sealed trade secret Reexam question appeared today.
• 12/31/2009: my version asked "what's not in accordance..."
• 03/04/2010: the choices i remember were "information important for patentability will become part of records

accessible to the public unless petition is granted to expunge" & "information found important will stay in the

sealed envelope & never will become available to the public"

• 08/11/2010: variant today similar to 03/04
• 10/13/2011

[edit] Supplemental Oath

Oct '03 AM Q#26

Question when is a supplemental oath or declaration treated as an amendment?

Answer: After Notice of Allowance in reissue application.

714.16 Amendment After Notice of Allowance, 37 CFR 1.312

[...]

With the exception of a supplemental oath or declaration submitted in a reissue, a supplemental oath or declaration

is not treated as an amendment under 37 CFR 1.312. See MPEP § 603.01. A supplemental reissue oath or declaration is

treated as an amendment under 37 CFR 1.312 because the correction of the patent which it provides is an amendment of

the patent, even though no amendment is physically entered into the specification or claim(s). Thus, for a reissue

oath or declaration submitted after allowance to be entered, the reissue applicant must comply with 37 CFR 1.312 in

the manner set forth in this section.

[edit] Best Mode

Probably November 3, 1999 AM – 49 One question about best mode. One of the answer choices is:

If applicant doesn’t designate a best mode, but puts forth several embodiment

- the application does not require a statement which specifically points out the best mode.

2165.01 Considerations Relevant to Best Mode

[...]III. DESIGNATION AS BEST MODE IS NOT REQUIRED

There is no requirement in the statute that applicants point out which of their embodiments they con­sider to be their best;

that the disclosure includes the best mode contemplated by applicants is enough to satisfy the statute.

• The above question appeared on:
  • 09/2009 exam.
  • 09/28/2009: The above question appeared on the exam today.
  • 11/10/2009
  • 12/16/2009
  • 12/31/2009
  • 01/06/2010

[edit] Toy plane with aluminum foil wing:

Applicant claims a toy plane whose wings are covered in aluminum foil. The spec describes a toy plane whose wings

are covered in foil but whose body isn’t. Reference discloses a plane that is covered entirely in chewing gum wrapper,

which includes aluminum foil and another material. Claim is rejected, and applicant responds by arguing that covering

only the wings in foil provides useful aerodynamic properties, and therefore the claimed invention is distinguishable

from the reference. How should the examiner respond? I said the examiner should maintain the rejection b/c the claim

is broad enough to include a plane that is covered entirely in aluminum foil (limitations present in the spec will not

be read into the claim if not expressly recited A patent of a paper airplane with aluminum foil (I think) wings.

The prior art is a plane covered with aluminum I think. Is it patentable? similar to Oct 2003: PM 46 (airplane with foil

on wings, prior art has airplane covered completely in chewing gum wrapper)

I recently reviewed this answer at the PTO. Yes, the examiner should maintain the rejection in view of practitioner’s

arguments. The answer description points out that the claim is open-ended (“…comprising wings covered in aluminum foil”).

Thus, the prior art anticipates the claim.

(May 16, 2008- I just checked the October, 2003 A.M. and P.M. exams.

This question was not on EITHER exam. I, specifically, looked at Question 46 on both exams. Plus, I used the Search option

just to be sure. I would like to read the exact text of this question. Can anyone confirm its location?)

• 08/11/10 Question appeared today
• 10/13/2011 Exactly as written.

[edit] Information requested from USPTO

Company A gave their agent B, the competitor’s patent application number, and asked if the agent B

could get the information on the competitor’s patent application; whether it has been published and

publication date. By telephoning the office, how do you get such information?

101 General

[...]When handling an incoming telephone call or an in person request for information regarding an unpublished

pending or abandoned patent application, no information should be disclosed until the identity of the requester

can be adequately verified as set forth below. Particular care must be exercised when a request is made for the

publication date or publication number, or issue date and patent number assigned to a pending patent application.

If the publication or issue date is later than the current date (i.e., the date of the request), such information

may be given only to the applicant, or the assignee of record, or the attorney or agent of record.

You can get the basic information on the patent being published and publication date from PAIR, which may be one

of the answers "in the public domain" or some such. Longacre has a similar question. Beyond those two things

(publication/date), they won't give you any information without verifying your identity as quoted above.

There is also another question related to "Requests for Information". Know that section from Ch. 700.

EDIT: 2/12/2009 Appeared today. Answer A indicated that USPTO will not give out info. Answers B-E indicated

USPTO will give him info. I chose A. The reason being, if they were published then a practitioner would have

found them through PAIR. The fact that practitioner approached USPTO assumes that these are Unpublished yet and

USPTO will not give out that info to anybody but "to the applicant, or the assignee of record, or the attorney or

agent of record".

12/16/2009 I don't think it's a good idea to assume things such as "the agent has checked PAIR before calling the

USPTO" when it's not in the fact pattern. In theory an agent may call the USPTO even though it takes him/her only

2 minutes to check PAIR online. Therefore, the key here is whether the request for info is made on or after the

publication date. If the application has not been published, the agent is not someone with the authority to receive

any information on the application.

• The above question appeared on a 09/2009 exam.
• Appeared on 12/16/2009
• 12/31/2009 yeah... but all but choice E in my version was talking about the practitioner trying to get info

on the client's competitor application. and the E said something like "applicant can get the info and give it to

the practitioner" so i picked E.

• 08/11/2010 there was an answer choice mentioning PAIR so i picked it, none of the others fit

[edit] Who to contact question

Asked about who to contact when you are filing petition under CFR 1. 183 (Suspension of Rules)?

1002.01 Procedure

Petitions, together with the respective application files, are sent to the official having

the delegated authority to decide the petition.

1002.02 goes on to say...

"In accordance with 37 CFR 1.181(g), the authority to decide petitions to the Director of the USPTO ...

has been delegated to various Office officials. Generally, these officials will decide petitions as

specified in the following sections for the effective operation of the Office."

Immediately following that is a 34 item listing of all the petitions that are decided by the "Office of

the Deputy Commissioner for Patent Examination Policy" A subsequent list of petitions decided by the

"Technology Center Directors", and finally, the Primary Examiner gets to decide just one petition:

Correction of Inventorship

And the answer??

Office of the deputy commissioner for patents examination (its # 2 on the list of 34)

[edit] Velcro Trademark Question

See also November 3, 1999 AM 4 and 608.01(v) trade NAMES may be sufficient under 112.

The Velcro trademark question deals with the rules about including trademarked names into an application.

2173.05(u) Trademark or Trade Name as a Limitation in the Claim

Claim [1] contains the trademark/trade name [2]. Where a trademark or trade name is used in a claim as a

limitation to identify or describe a particular material or product, the claim does not comply with the

requirements of 35 U.S.C. 112, second paragraph. See Ex parte Simpson, 218 USPQ 1020 (Bd. App. 1982).

The claim scope is uncertain since the trademark or trade name cannot be used properly to identify any

particular material or product. A trademark or trade name is used to identify a source of goods, and

not the goods themselves. Thus, a trademark or trade name does not identify or describe the goods

associated with the trademark or trade name. In the present case, the trademark/trade name is used to

identify/describe [3] and, accordingly, the identification/ description is indefinite.(Actually from 706.03(d))

Among the answer choices (from memory):

(A) maintain the VELCRO rejection because sufficient structure is not recited

(B) maintain the rejection because VELCRO is a recognized prior art fastener,

and this fastener would be obvious to replace with the current fastener

(C) turn around three times and then do the hokey pokey

(D) object to the trademark for being a trademark and request the applicant

to modify the specification to include further structure

(E) (don't remember)

The correct answer is to maintain the rejection because sufficient structure is not recited, (A).

The Velcro trademark question deals with the rules about including trademarked names in an application.

Trademarks are USUALLY not accepted when in claims (see 706.03(d)) but they are SOMETIMES allowed in the specification (see 608.01(v)).

from Chapter 700: Where a trademark or trade name is used in a claim as a limitation to identify or describe a particular material or product

(thus, I wouldn't say trademarks can NEVER be in claims -- if they aren't used as a limitation, then maybe)

from Chapter 600: In patent specifications, every element or ingredient of the product should be set forth in positive, exact, intelligible language, so that there will be no uncertainty as to what is meant. Arbitrary trademarks which are liable to mean different things at the pleasure of manufacturers do not constitute such language. Ex Parte Kattwinkle, 12 USPQ 11 (Bd. App. 1931). However, if the product to which the trademark refers is set forth in such language that its identity is clear, the examiners are authorized to permit the use of the trademark if it is distinguished from common descriptive nouns by capitalization.

(thus, I wouldn't say trademarks are ALWAYS allowed in the spec)

Fact Pattern

A claim in a pending application was amended to define “a VELCRO fastener” as one of the elements.

The specification describes the use of a VELCRO fastener in the invention, but doesn’t describe the structure

of such a fastener. The examiner rejected the application because of the usage.

How should the examiner address the claim? Among the answer choices are:

(A) maintain the VELCRO rejection because sufficient structure is not recited.

(B) maintain the rejection because VELCRO is a recognized prior art fastener,

and this fastener would be obvious to replace with the current fastener

(C) do not object/reject

(D) object to the trademark for being a trademark and request the applicant to modify

the specification to include further structure

(E) (don’t remember)

The answer should be (A) because trademarks used in claims are indefinite under 112 paragraph 2,

pursuant to section 706.03(d) of the MPEP. Thus, anytime a Velcro trademark is used in a claim,

it fails to recite sufficient structure and should be rejected. The applicant is relying solely on

the trademark to define the element, without reciting any specific structural limitations.

Note: Test takers report that answer choices change, so know the rule not the letter for the exam.

---

• The above question appeared on:
  • 2/12/2009
  • 09/2009
  • 11-10-09
  • 12/31/2009
  • 02/10/2010; I had A as the correct answer, as well.

[edit] Lip Gloss Question

This question has to do with experimental use and a 102(b) rejection.

Know that experimental use doesn't start the 1 year for a 102(b),

but using it in a non-experimental way, even in a stupid way, starts the 1 year for 102(b).

It doesn't matter if no one knew or could tell that the use was "public"

Basically, the question deals with a girl that comes up with lip gloss that has crazy flavors

(they either change flavors or taste like vegetables or something unimportant) and she experimentally uses them

for a period of time. Then, one night, she goes to a party and uses it on her own lips and kisses other people

at the party. More than a year after this, she tries to get patent protection on her idea.

Basically, the question is wanting you to spot that she used her invention IN PUBLIC (non-experimentally)

more than one year before she filed her application...which is a statutory bar, even though no one knew about the lip gloss.

The question likely goes something like this (note, this explains the concept but is merely a presumption on my part):

Woman invents new lip gloss that has some novel use or is an improvement over prior art

(lets say it keeps lips from getting dry for 50% longer).

She begins to wear it on Date A for experamental purposes.

On Date B she becomes convinced that it works for the intended purpose and no longer needs to undergo testing.

That night she wears the lip gloss on a date with Joe Schmo.

When is the latest date she can file a patent application?

Answer: 1 year from date B to avoid 102(b). Date A doesn't trigger public use because of experimental purpose.

• 08-11-10 Question appeared today

• • I think the question was testing if you know that you have 1 year to apply for patent after you consider the invention complete. There is a date C where she is testing it out in public, but 1 year from date B (i.e. the date she considered it complete) is the bar date.

[edit] Spanish Phone Question

A phone was made in Spain. A US application covering the utility of the phone was filed within the appropriate time period.

Later, the patent issues for the phone in Spain. Some time later, while the application is still at the USPTO,

the inventors realize that they have a great looking phone and they want to get a patent for the design. What can they do?

A. File a design app claiming priority to the US application

B. File file a CIP of the utility application

C. Give up

D. File a design application with priority based off the Spanish patent application

Answer: Give up since you only have 6 months for design patents under 35 U.S.C. 172.

Edit to provide more reasoning:

This sounds like a 102(d) question. Hard to say without dates, but I'm assuming that the US utility was filed somewhere between 6 and 12 months from the Spanish filing date.

If so, once the patent issued in Spain and they hadn't filed in the US within 6 months of the Spanish filing date,

the fact that the Spanish patent issued meant they were barred from getting a design patent.

It's a 35 U.S.C. 172 question:

35 U.S.C. 172 Right of priority.

The right of priority provided for by subsections (a) through (d) of section 119 of this title and the time specified in section 102(d)

shall be six months in the case of designs. The right of priority provided for by section 119(e) of this title shall not apply to designs.

and MPEP 1504.10:

The provisions of 35 U.S.C. 119(a)-(d) apply to design patent applications. However, in order to obtain the benefit of an earlier foreign filing date, the United States application must be filed within 6 months of the earliest date on which any foreign application for the same design was filed. Design applications may not make a claim for priority of a provisional application under 35 U.S.C. 119(e).

New variation (1/24/08): Inventors submit application for a utility patent in Spain and then file for a design patent in the USA within 6 months, claiming priority from the Spanish application. Inventors then come up with a modified dial (round instead of square) not disclosed in the original utility patent. Can the Spanish patent application be used as the basis for a 102 rejection of the modified design?

1504.20 (1500-56)...where an application is found to be fatally defective under 35 U.S.C. 112 because of an inadequate disclosure to support an allowable claim, a second design patent application filed as an alleged “continuation-in-part” of the first application to supply the deficiency is not entitled to the benefit of the earlier filing date. See Hunt Co. v. Mallinckrodt Chemical Works, 177 F.2d 583, 83 USPQ 277 (Fed. Cir. 1949). However, unless the filing date of the earlier application is actually needed, such as to avoid intervening prior art, the entitlement to priority in this CIP application will not be considered. See In re Corba, 212 USPQ 825 (Comm’r Pat. 1981).

Edit: 4/28/2009. I haven't seen the actual squib, but perhaps the question is one of anticipation. It seems the round Spanish dial does not anticipate the square American dial. They are different inventions and 102(d) should not bar the American design patent. The submission above seems to relate to whether the design application can get priority to another design application.

• 09/28/2009: The above question appeared on the exam today.
• 01/06/2010: I chose that the Spanish patent was prior art barring the design app for the square dial. I passed.
• 10/13/2011

[edit] Federal Court Decisions binding for Office

One was about the extent to which a Federal Court decision was binding on the Office:

if the Court finds it not invalid, or if the Court finds it invalid, etc.

2286 Ex Parte Reexamination and Litigation Proceedings

The issuance of a final Federal Court decision upholding validity during an ex parte reexamination also will have

no binding effect on the examination of the reexamination. [...] The Office is not bound by a court’s holding

of patent validity and should continue the reexamination. The court notes that district courts and the Office use

different standards of proof in determining invalidity, and thus, on the same evidence, could quite correctly come

to different conclusions. Specifically, invalidity in a district court must be shown by “clear and convincing” evidence,

whereas in the Office, it is sufficient to show nonpatentability by a “preponderance of evidence.” Since the “clear

and convincing” standard is harder to satisfy than the “preponderance” standard, deference will ordinarily be accorded

to the factual findings of the court where the evidence before the Office and the court is the same. If sufficient

reasons are present, claims held valid by the court may be rejected in reexamination.

On the other hand, a final Federal Court holding of invalidity or unenforceability (after all appeals), is binding on the Office.

Upon the issuance of a final holding of invalidity or unenforceability, the claims held invalid or unenforceable will be withdrawn

from consideration in the reexamination. The reexamination will continue as to any remaining claims.

RDS (Dec 9, 07) See Q19 PM, April 2000, Answer B which is correct.

A final decision by a United States District Court finding a patent to be valid will have no binding effect

during reexamination since the PTO may still find the claims of the patent to be invalid.

• 09/28/2009: A version of this question appeared on the exam today.
  • 02/10/2010
  • 03/04/2010
  • 04/07/2010
  • 08/11/2010
• 10/13/2011

[edit] Restriction Requirement / Continuation Application

One had to do with a Continuation of an application where a restriction requirement had been made,

and the applicant had ignored the requirement and filed with all the original claims.

804.01 Prohibition of Double Patenting Rejections Under 35 U.S.C. 121

[...]Note that a restriction requirement in an earlier-filed application does not carry over to claims

of a continuation application in which the examiner does not reinstate or refer to the restriction

requirement in the parent application. Reliance on a patent issued from such a continuation application

to reject claims in a later-filed divisional application is not prohibited under 35 U.S.C. 121.

• 10/13/2011

[edit] Small Entity Status

Questions about small entity status include who can sign the assertion of it.

One about if the small entity status changes before issuance.

509.03 Claiming Small Entity Status

(2) Parties who can sign and file the written assertion. The written assertion can be signed by:

(i) One of the parties identified in § 1.33(b) (e.g., an attorney or agent registered with the Office),

§ 3.73(b) of this chapter notwithstanding, who can also file the written assertion;

(ii) At least one of the individuals identified as an inventor (even though a § 1.63 executed oath or

declaration has not been submitted), notwithstanding § 1.33(b)(4), who can also file the written

assertion pursuant to the exception under § 1.33(b) of this part; or

(iii) An assignee of an undivided part interest, notwithstanding §§ 1.33(b)(3) and 3.73(b) of this

chapter, but the partial assignee cannot file the assertion without resort to a party identified

under § 1.33(b) of this part.

[...]

(g)(1) New determination of entitlement to small entity status is needed when issue and maintenance

fees are due. Once status as a small entity has been established in an application or patent, fees

as a small entity may thereafter be paid in that application or patent without regard to a change in

status until the issue fee is due or any maintenance fee is due.

• This question or a version of it appeared on:
  • 09/28/2009
  • 11-10-09
  • 12/16/2009
  • 08/11/2010

[edit] Documents an Assignee Not of Record can sign

One question was, what things can an assignee sign, if he has never properly recorded his ownership?

MPEP 324 VII. WHEN OWNERSHIP NEED NOT BE ESTABLISHED

Examples of situations where ownership need not be established under 37 CFR 3.73(b) are when the assignee:

signs a request for a continued prosecution application under 37 CFR 1.53(d), where papers establishing

ownership under 37 CFR 3.73(b) were filed in the prior application and ownership has not changed (MPEP §

201.06(d)); signs a small entity statement (MPEP § 509.03); signs a statement of common ownership of two

inventions (MPEP § 706.02(l)(2)); signs a NASA or DOE property rights statement (MPEP § 151); signs an

affidavit under 37 CFR 1.131 where the inventor is unavailable (MPEP § 715.04); signs a certificate under

37 CFR 1.8 (MPEP § 512); or files a request for reexamination of a patent under 37 CFR 1.510 (MPEP § 2210).

I believe there may be several forms of this question out there.

I believe the answer for mine was sign a small entity statement.

The situations are listed in MPEP 324 part VII.

• 01/27/2009 - Got this question.

Yes, the answer is that an Assignee not of record can sign a statement claiming small entity status.

• 09/28/2009: The above question appeared on the exam today.

• 09/28/2009: The above question appeared on the exam today.
• 12/31/2009: with small entity version
• 01/06/2010: Unestablished assignee can sign claiming small entity.
• 08/11/10

[edit] Means-Function Claim language question

Question referring to 35 U.S.C. 112 paragraph 6.

May be a repeat question about a claim with a door having a "means for opening the door",

using “means-function” language, and the cited prior art discloses a pull-bar for opening a door,

and how do you overcome the reference?

Correct choice is to replace the Means-function language for opening with the structure "a door knob”.

The original claim langueage was too broad ad ran afoul of the prior art.

35 U.S.C. 112, paragraph 6:

An element in a claim for a combination may be expressed as a means or step for performing a specified

function without the recital of structure, material, or acts in support thereof, and such claim shall

be construed to cover the corresponding structure, material, or acts described in the specification and

equivalents thereof.

2173.05(i) Negative Limitations

The current view of the courts is that there is nothing inherently ambiguous or uncertain about a

negative limitation. So long as the boundaries of the patent protection sought are set forth definitely,

albeit negatively, the claim complies with the requirements of 35 U.S.C. 112, second paragraph. [...]

6/3/07- Actually, this is Oct '03 AM Q#24

Negative limitation is usually OK, but here is "new matter" so negative limitation is wrong answer here.

Correct answer is (D) An amendment to the claim substituting for the term "means for pulling

the door open" the structure of a handle and a knob.

knob question on 11-10-09

From the Answers Explanation:

The examiner has made a prima facie case of equivalent in the Office action to support the rejection

based on 35 U.S.C. § 102. By amending the claim to no longer include the means limitation in question,

the claim becomes narrower inasmuch as it no longer includes equivalents under 35 U.S.C. § 112,

paragraph 6 for examination purposes. Thus, (D) overcomes the lack of novelty rejection under these

circumstances.

[edit] 102(a): Need to file foreign language translation

One question asks whether you have to file an English translation of a foreign-language reference.

§ 1.98 Content of information disclosure statement.

[...]

(3)(i) A concise explanation of the relevance, as it is presently understood by the individual designated

in § 1.56(c) most knowledgeable about the content of the information, of each patent, publication, or other

information listed that is not in the English language. The concise explanation may be either separate from

applicant’s specification or incorporated therein.

(ii) A copy of the translation if a written English-language translation of a non-English-language document,

or portion thereof, is within the possession, custody, or control of, or is readily available to any individual

designated in § 1.56(c).

• EDIT: 2/12/2009

Question appeared today whether a Certified Copy of Foreign App is needed to Claim Foreign Priority

with or without English Translation.

Answer: English Translation is not needed [unless (i) during interference or (ii) asked by examinar.]

• 09/28/2009: A version of this question appeared on the exama today.
• 10/13/2011

[edit] Death of inventor before application is filed

Death of inventor BEFORE application filed - many facts indicated that inventor had possession of invention prior to death

- legal rep. can file application.

Fact pattern looked something like A invented a fishing device but passed away before application is filed.

The heir is 13 years old and legally incapacitated.

Barbara is the attorney in living will - and seem to be the most likely correct answer.

37 CFR 1.42. When the inventor is dead.

In case of the death of the inventor, the legal representative (executor, administrator, etc.) of the deceased

inventor may make the necessary oath or declaration, and apply for and obtain the patent. Where the inventor

dies during the time intervening between the filing of the application and the granting of a patent thereon,

the letters patent may be issued to the legal representative upon proper intervention.

- Question fact pattern is something like this:

Inventor dead, appointed best friend as executor/administrator of will.

Son thinks that he will be 1 of the heirs of the estate.

Wants to go ahead and file for patent application using Dad's invention.

The estate is over the minimum sum required by state law for the appointment of administrator.

- Answer can be found in section 409.01 (Death of Inventor), subsection - A, 37CFR 1.42.

Executor/legal representative has to be the one to file application (sign oath etc) in this case.

Heirs can file only if no will, or no executor appointed in will and estate was under the sum required

by the state for appointing an executor.

• 09/28/2009: The above question appeared on the exam today.
• 01/06/2010: Son find's dads invention but needs executor to sign to file patent app.

• 08/10/2007: Variation on the death of Inventor:

Death of inventor AFTER application is filed, and AFTER assignment of all rights, BEFORE allowance

409.01(e) If Applicant of Assigned Application Dies

When an applicant who has prosecuted an application after assignment, dies, the administrator of

the deceased applicant’s estate may carry on the prosecution upon filing letters of administration

unless and until the assignee intervenes (MPEP § 402.07).

• 3/18/2008 Variation: Inventor dies after filing application and assigning partial interest to patent attorney;

prosecution may continue without any filing by the inventor's estate.

• 11/10/2009: inventor dies, but attorney has partial interest in patent;

• 12/16/2009: inventor assigns attorney partial interest, attorney files application, inventor dies

• 12/11/2009: 2 inventors, Alan and Bret, file invention and then die. What happens to the application?

I narrowed it down to two choices (d) and (e),

(d) if executor intervenes, the application will be allowed to issue.

(e) if executor doesn't intervene, the application will be allowed to issue.

I think I chose (d).

• 12/31/2009 one like 11/20/2009 post

• 02/10/2010: I had the 3/18/2008 variation.

Inventor dies, but gave the attorney a power of attorney coupled with an interest. MPEP 409.01.

Attorney can continue prosecution.

• • 17 March 2011**If there is an active power of atty, when inventor dies, this power of atty is no longer valid. The executor of estate may continue prosecution of the application unless an assignee intervenes.

• 10/13/2011 Two questions on death of inventor

[edit] Canadian Patent Agent in the USA

Canadian patent agent living in America question?

MPEP 402

A power of attorney or authorization given to a registered Canadian patent agent, to be valid,

must be given by the applicants, all of whom are located in Canada. See 37 CFR 10.6(c).

37 CFR 10.6 (comment: 9/24/2007, it appears in 37 CFR 11.6 in the 8th Edition Revision 4)

(c) Foreigners. Any foreigner not a resident of the United States who shall file proof to the satisfaction

of the Director that he or she is registered and in good standing before the patent office of the country

in which he or she resides and practices and who is possessed of the qualifications stated in § 10.7,

may be registered as a patent agent to practice before the Office for the limited purpose of presenting

and prosecuting patent applications of applicants located in such country, provided: The patent office

of such country allows substantially reciprocal privileges to those admitted to practice before the United

States Patent and Trademark Office. Registration as a patent agent under this paragraph shall continue

only during the period that the conditions specified in this paragraph obtain. . .

. . .Upon ceasing to reside in such country, the patent agent registered under this section is no longer

qualified to be registered under this section, and the OED Director shall promptly remove the name of the

patent agent from the register and publish the fact of removal.

[edit] IDS / Not exact wording

Practitioner submitted a Information Disclosure Statement within three months after receiving communication

from a foreign patent office. Application has already been allowed, but issue fee hasn't been paid yet. In

the required 37 CFR 1.97(e) statement the wording doesn't explicitly mention that the information from the

foreign patent office was the first such citation from a foreign patent office in a counterpart application.

Somewhere deep inside MPEP 609 I found this, which made me believe the submission will still be accepted

and processed.

If an information disclosure statement includes a copy of a dated communication from a foreign patent office

which clearly shows that the statement is being submitted within 3 months of the date on the communication,

the copy will be accepted as the required *>statement under 37 CFR 1.97(e)(1)<. It will be assumed, in the

absence of evidence to the contrary, that the communication was for a counterpart foreign application.

Edit 8/22: Not entirely sure of the fact pattern here, but it may be similar/identical to April 2002 AM #2,

IF it has something to do with maximizing Patent Term Adjustment/Extension (can't remember which).

The gist of the question is that, since you're after a notice of allowance, merely filing the IDS with

appropriate fee and statement within 30 days of the applicant's receipt of allowance may deduct from the

accumulated PTA (filing an IDS after allowance is a delaying action that reduces PTA). However, filing

within 30 days of a foreign office's sending of a notification does not trigger the PTA reduction.

This plays out in the following fact pattern similar to the April 2002 question:

If the foreign office notification was dated, say, Sept. 10, and the allowance was dated Sept. 20,

AND the applicant became aware of the foreign office notification for the first time on Sept. 25,

you would technically have until Oct. 25 to submit the IDS (30 days from the applicant's receipt of the information).

However, if you choose to file no later than Oct. 10 (30 days from the sending),

you inherently meet the 30-days-after-receipt requirement, AND lose no accumulated PTA time.

EDIT: the above statement is slightly wrong. The date in which the 30 days starts from is the date

the foreign offices sends the notice not the date which the applicant receives the information.

• 12/31/2009 ids with communication from the foreign office but after issue fee paid.

i picked "will not be considered"

Edit 5/10/2010:

There are pieces of several different scenarios discussed above, which can confuse and cause reader mistakes.

I supect the quote from MPEP 609 about accepting the IDS within three months from foreign communication only applies if prior to notice of allowance. As noted under this site's Key_Things_to_Know_for_the_Patent_Bar_Exam, after notice of allowance 1.97(e) statement and 1.17(p) fee are required. Related, after issue fee is paid, the IDS will not be accepted becasue examination is already closed. The 12/31/2009 edit is correct and I also got this question on a recent exam.

I believe all remarks above which mention a 30 day requirement only apply to PTA (patent term adjuctment), not to accepting the IDS with foreign citation. I disagree with the edit above stating the 30 day clock starts from the date the foreign office sends the notice. Also I believe he/she thought so because the fact pattern date and correct answer in April 2002 AM #2 relate to foreign office mailing, however close reading of the answer states that if applicant sends within 30 days of that he/she will "inherantly" meet the real requirement: 30 days from receipt by foreign office. Edit 8/22 was correct.

• 08/11/2010 question appeared again re: the "first cited" issue.

Edit 7/15/11

See the USPTO website with examples regarding this 30-day IDS/PTA issue - a very thorough explanation. Edit 5/10/10 pretty much hit the nail on the head. One thing to watch out for is who received the foreign info under 1.56(c) and the 30 days run from receipt by that person. http://www.uspto.gov/patents/law/aipa/pta/index.jsp

[edit] How to claim benefit

Question about where in an application you claim benefit of an earlier application.

I believe answer options were combinations of a) in the first sentence of the specification,

b) in the application data sheet and c) in the oath or declaration.

MPEP 201.11

An application in which the benefits of an earlier application are desired must contain a specific reference

to the prior application(s) in the first sentence of the specification or in an application data sheet

(37 CFR 1.78(a)(2) and (a)(5)).

[edit] Basic filing fee

One question deals with the basic filing fee. Among the answer options is that the basic filing fee includes

up to three independent claims and 20 claims altogether.

See MPEP 607 re: excess claims fee

[edit] Small Entity's Filing Fee - Refund

Applicant accidentally paid large entity filing fee even though entitled to small entity status.

Can he get a refund and how long does he have to apply?

37 CFR 1.28(a). Refunds when small entity status is later established; how errors in small entity status are excused..

(a) Refunds based on later establishment of small entity status.

A refund pursuant to § 1.26, based on establishment of small entity status, of a portion of fees timely paid

in full prior to establishing status as a small entity may only be obtained if an assertion under § 1.27(c)

and a request for a refund of the excess amount are filed within three months of the date of the timely

payment of the full fee. The three-month time period is not extendable under § 1.136. Status as a small entity

is waived for any fee by the failure to establish the status prior to paying, at the time of paying, or within

three months of the date of payment of, the full fee.

Edit: Under 607.02 "II. Time Period for Requesting a Refund" the MPEP states:

Any request for a refund which is not based upon subsequent entitlement to small entity status (see 37 CFR

1.28(a)) must be filed within the two-year non-extendable time limit set forth in 37 CFR 1.26(b).

12/07/08: This question is on the April 01 AM exam, question 38. The correct answer is D), which is a date that

is three months from the payment of the large entity fee. From another board. I had a tricky variation of Apr/01

AM #38 (not reported in the repeat question list) the question is about a small entity paying for the full filling

fee and requesting a refund: 3 answers were easy to cross, something like a) cannot; b) you have 2 years; c) it was

not a mistake so you will not get a refund; then there was d) 3 months extendable with 37 CFR 1.136 and e) 3 months

no extension. answer is e, but please read the questions in Apr/01 #38AM.

Question from previous exam:

When is the small entity filing fee not reduced? For documents affecting the title.

• 10/13/2011 - Refund question very similar to above.

[edit] Multiplicity

Multiplicity question - applicant has one utility claim and more than 900 claims covering small ornamental differences.

Answer is that the examiner should call the applicant and have him select a few claims for examination.

M.P.E.P. Section 2173.05(n), Specific Topics Related to Issues Under 35 U.S.C.

If a rejection on multiplicity is in order the examiner should make a telephone call explaining

that the claims are unduly multiplied and will be rejected on that ground. Note MPEP Section 408.

The examiner should request selection of a specified number of claims for purposes of examination.

• The above question appeared on:
  • 09/28/2009
  • 11/10/2009
  • 04/07/2010
  • 08/11/2010

[edit] Rejection after Allowance

Examiner finds a new prior art reference based on which the claim should be rejected

- but the notice of allowance has already been sent. Now what?

1308.01 Rejection After Allowance [R-2]

A claim noted as allowable shall thereafter be rejected only with the approval of the primary examiner.

Great care should be exercised in authorizing such rejection. See MPEP § 706.04.

When a new reference is discovered, which obviously is applicable to one or more of the allowed claims

in an application in issue, a * >memorandum< is addressed to the Technology Center (TC) Director,

requesting that the application be withdrawn from issue for the purpose of applying the new reference.

This *>memorandum< should cite the reference, and, if need be, briefly state its application.

The *>memorandum< should be submitted with the reference and the file wrapper>, if the application

file is in paper<.

• 01/27/2009 - Another question involves whether an amendment can ever be made after you filed your

appeal brief. Pretty sure the answer was "none of the above".

• 09/28/2009: The above question appeared on the exam today.

• 01/27/2009 - Another question involved whether you could bring up issues/arguments that you hadn't

brought up in your appeal brief. Pretty sure the answer was that you could only bring up new issues

as a result of recent court decisions. See section in Ch 1200 on this issue.

• 09/28/2009: The above question appeared on the exam today.

[edit] 103(c) / Effective Date Nov. 29, 1999

One question requires you to know that 35 U.S.C. 103(c) prior art exclusion only applies to applications

filed on or after November 29, 1999.

706.02(l)(1) Rejections Under 35 U.S.C. 102(e)/103; 35 U.S.C. 103(c)

Effective November 29, 1999, subject matter which was prior art under former 35 U.S.C. 103 via 35 U.S.C. 102(e)

is now disqualified as prior art against the claimed invention if that subject matter and the claimed invention

“were, at the time the invention was made, owned by the same person or subject to an obligation of assignment to

the same person.” This change to 35 U.S.C. 103(c) applies to all utility, design and plant patent applications

filed on or after November 29, 1999, including continuing applications filed under 37 CFR 1.53(b), continued

prosecution application filed under 37 CFR 1.53(d), and reissues. The amendment to 35 U.S.C. 103(c) does not

affect any application filed before November 29, 1999, a request for examination under 37 CFR 1.129 of such an

application, nor a request for continued examination under 37 CFR 1.114 of such an application.

Remember that it is on or after language. Also remember that the Nov. 29, 1999 102(e) date is when the international

application is filed, not the date of the application to which it claims priority is filed.

The amendment to 35 U.S.C. 103(c) made by the AIPA to change "subsection (f) or (g)" to "one of more of subsections

(e), (f), or (g)" applies to applications filed on or after November 29, 1999.

[edit] Maintenance Fee Paid / Check Returned

One question deals with a maintenance fee that was paid, but the patent was not identified correctly

with the payment, so the USPTO mailed the check back. Answer options refer to 37 CFR 1.377. Review of

decision refusing to accept and record payment of a maintenance fee filed prior to expiration of patent

and 37 CFR 1.378. Acceptance of delayed payment of maintenance fee in expired patent to reinstate patent.

I chose the answer option based on 37 CFR 1.5. Identification of patent, patent application, or patent-related

proceeding that covers mail returned by the USPTO for not identifying an application (not sure if correct)

[Edit: see MPEP 2580].

Any correspondence not containing such identification will be returned to the sender where a return address

is available. The returned correspondence will be accompanied with a cover letter which will indicate to the

sender that if the returned correspondence is resubmitted to the Patent and Trademark Office within two weeks

of the mail date on the cover letter, the original date of receipt of the correspondence will be considered

by the Patent and Trademark Office as the date of receipt of the correspondence.

§ 1.377 Review of decision refusing to accept and record payment of a maintenance fee filed prior to expiration

of patent.

(a) Any patentee who is dissatisfied with the refusal of the Patent and Trademark Office to accept and record

a maintenance fee which was filed prior to the expiration of the patent may petition the Director to accept

and record the maintenance fee.

(b) Any petition under this section must be filed within two months of the action complained of, or

within such other time as may be set in the action complained of, and must be accompanied by the fee set forth

in § 1.17(g). The petition may include a request that the petition fee be refunded if the refusal to accept

and record the maintenance fee is determined to result from an error by the Patent and Trademark Office.

(c) Any petition filed under this section must comply with the requirements of § 1.181(b) and must be signed

by an attorney or agent registered to practice before the Patent and Trademark Office, or by the patentee, the

assignee, or other party in interest.

MPEP 2580: "This petition [under §1.377] may be used, for example, in situations where an error is present in the

identifying data required by 37 CFR 1.366(c) with the maintenance fee payment, i.e., either the patent number or

the application number * >is< incorrect." However, "A petition under 37 CFR 1.377 would not be appropriate where

the patentee paid a maintenance fee on one patent when the patentee intended to pay the maintenance fee on a

different patent but through error identified the wrong patent number and application number."

• This question appeared on:
  • 01/27/2009: Had this question. The potential answer proposes "3 months", but the limit is 2 months.
  • 09/28/2009: The above question appeared on the exam today.
  • 12/16/2009
  • 12/31/2009: in my version a practitioner failed to identify the patent completely & it says somewhere in the mpep

that in this case you can't use 1.377

[edit] Indefinite Claim using 'high'

This question asked if a claim was indefinite because it used the word 'high' instead of a range.

There were various answers ranging from never to always. I chose one in the middle which said something about

it being acceptable as long as there is enough description in the specification that would allow one of ordinary

skill in the art to know what 'high' means. See Atmel Corp. v. Information Storage Devices, Inc. in MPEP 2181.

see MPEP 2173.05(b)

12/7/08: MPEP 2173.05(b) covers this:

"The fact that claim language, including terms of degree, may not be precise, does not automatically render the claim

indefinite under 35 U.S.C. 112, second paragraph. Seattle Box Co., v. Industrial Crating & Packing, Inc., 731 F.2d 818,

221 USPQ 568 (Fed. Cir. 1984). Acceptability of the claim language depends on whether one of ordinary skill in the art

would understand what is claimed, in light of the specification."

[edit] What can an assignee do before taking ownership

I believe there may be several forms of this question out there.

I believe the answer for mine was sign a small entity statement.

The situations are listed in MPEP 324 part VII.

• 01/27/2009 - Got this question.

Yes, the answer is that an Assignee not of record can sign a statement claiming small entity status.

• 09/28/2009: The above question appeared on the exam today.

[edit] Anticipation

Invention has 2 layers (layer x and layer z). Layers are parallel and "in continuous, direct contact" with one another.

Prior art has 2 layers (layer x and layer z) in which there exists an epoxy/adhesive layer in between the layers.

Which claim is anticipated by prior art (if analyzed independently) ???

A) Claim 1: An article comprising layers x and z stacked horizontally.

B) Claim 2: An article comprising layers x and z stacked horizontally, in which layers are in continuous and direct contact.

C) Claim 3: An article comprising layers x and z stacked horizontally, but not including an adhesive/epoxy layer.

D) A and B

E) All of the above

Answer: A) claim 1 is anticipated because the prior art reference includes all claimed limitations.

Note: B & C avoid anticipation by providing a limitation.

B) provides an affirmative limitation that is mutually exclusive with the prior art. Can't have continuous and direct contact and also have an adhesive layer.

C) provides a negative limitation which explicitly distinguishes it from the prior art.

One variant of this question appears as Q17 April 2000 AM . These two questions are very similar.

The answer is different though!! The Apr 00' question is asking which claims avoid the prior art.

The above question is asking which question is anticipated. Be sure to read this question carefully and see what it is asking for.

Avoid the knee jerk response of skimming and answering from memory.

10/31/2010- I could be wrong here, but if answer (E) said "none of the above" it would be the correct answer, as anticipation requires each and every step to be covered.

10/7/2011 - And you are wrong. Anticipated by the prior art reference would mean which claim is invalid because it is covered by the Prior Art. Anticipation is each and every one of your claims is covered by a reference, not that everything about your invention needs to be identical to something else. Bourbon anticipates whisky. Whisky does not necessarily anticipate bourbon. Because both the reference and the application contain a layer x and a layer z stacked horrizontally, A is invalid. The prior art does not anticipate B or C because the Prior Art does not have these features, namely continuous and direct contact and an absence or lack of an epoxy layer.

• 10/13/2008: saw this question on my test today
• 09/28/2009: The above question appeared on the exam today.
• 01/06/2010: Saw this, grabbed the right answer and passed.

[edit] Means plus function, determining equivalence

• 8/10/2007 Question asking how to determine equivalence in a means-plus-function situation.

Posed in the form: which of the following are in accord with MPEP. I found MPEP 2183 to have the answers verbatim.

2183 MAKING A PRIMA FACIE CASE OF EQUIVALENCE

If the examiner finds that a prior art element

(A) performs the function specified in the claim,

(B) is not excluded by any explicit definition provided in the specification for an equivalent, and

(C) is an equivalent of the means- (or step-) plus-function limitation,

the examiner should provide an explanation and rationale in the Office action as to why the prior art element is an equivalent.

Factors that will support a conclusion that the prior art element is an equivalent are:

(A) the prior art element performs the identical function specified in the claim in substantially the same way,

and produces substantially the same results as the corresponding element disclosed in the specification. ...

(B) a person of ordinary skill in the art would have recognized the interchangeability of the element shown in the prior art

for the corresponding element disclosed in the specification...

(C) there are insubstantial differences between the prior art element and the corresponding element disclosed in the specification...

(D) the prior art element is a structural equivalent of the corresponding element disclosed in the specification...

• 10/13/2008 - had this question today.
• 01/27/2009 - Another question on Means Plus Function involves the 3 charistics of MPF claims from Ch. 2100. Know those 3.
• 09/28/2009 - The above question appeared on the exam today.
• 01/06/2010 - Saw this one.

[edit] 2 month rule for final office action

I had a question that asked about extension fees when the Applicant has replied to a final Office action before

2 months after the mailing date of the Office action. Know that the date of mailing of the Examiner Advisory action

resets the 3 month date for calculating extensions of time.

• EDIT (8/31/07): That's not quite right. If you respond to the final office action within 2 months and

the examiner gives an advisory action after the 3 month deadline than the extensions basically run from that point.

You must respond before 2 months though and he must respond after 3.

• Edit: Also remember to look out for the 6 month statutory bar, which supercedes the 3 month deadline above.

In the event that the Advisory Action is mailed out after the 6 mo. bar, it is too late (Applicant would have

to have submitted an Notice of Appeal or file continuation before the AA). I doubt if this happens too often.

• Edit: See 710.02(e)I for specifics on this.

"The extension of time is calculated from the date the examiner responds after the three month period"

pp 700-166 and 167.

[edit] Chemical Claim

I had a question where an application had claimed a chemical that was useful for relieving headaches.

The application did not disclose how to make said chemical. Examiner rejects claim on enablement

and written description. Applicant shows that a PHOSITA would know how to make said chemical and

points formulas and technical data in the spec.

A. Examiner should withdraw both rejections in light of applicant's submissions.

B. Examiner should withdraw enablement rejection, but keep written description

C. Examiner should withdraw both rejections as neither were proper to begin with,

Look at 2164.04 last 2 paragraphs

"In accordance with the principles of compact prosecution, if an enablement rejection is appropriate,

the first Office action on the merits should present the best case with all the relevant reasons,

issues, and evidence so that all such rejections can be withdrawn if applicant provides appropriate

convincing arguments and/or evidence in rebuttal. Providing the best case in the first Office action

will also allow the second Office action to be made final should applicant fail to provide appropriate

convincing arguments and/or evidence....

In other words, the examiner should always look for enabled, allowable subject matter and communicate

to applicant what that subject matter is at the earliest point possible in the prosecution of the application."

The applicant will probably need to show evidence to rebut other than an argument.

But if the evidence of Phosita knowledge is available the rejections should be removed.

I would think the key is in the rejection language.

• 06/03/08: MPEP 2161

"the Federal Circuit reaffirmed that under 35 U.S.C. 112, first paragraph, the written description requirement

is separate and distinct from the enablement requirement and gave an example thereof.). An invention may be

described without the disclosure being enabling (e.g., a chemical compound for which there is no disclosed or

apparent method of making), and a disclosure could be enabling without describing the invention (e.g., a

specification describing a method of making and using a paint composition made of functionally defined ingredients

within broad ranges would be enabling for formulations falling within the description but would not describe any

specific formulation)."

This means that by showing that a Phosita can make and use the chemical, the enablement requirement is satisfied

and so that rejection should be dropped. However, the above facts do not tell us if the written disclosure requirement

is satisfied, so that rejection may stay. So B is the correct answer.

• 01/06/2010 I saw something like this, as to when it was appropriate for a 112 "lack of enablement" rejection.

One choice was that a chemical is mentioned but how to make it is not disclosed but that a PHOSITA would know

how to make it. There was a better answer choice which I selected (and passed the exam) but I don't remember all the choices.

• 01/18/2012 Um, you all know that possession of the invention is part of Written Description right? I would withdraw both just based on what is written here.

[edit] Sec 103 Question

10/31/11: Sec. 103 Question
One question asked which of the following is in accordance with USPTO rules and procedures:
I. In determining the level of ordinary skill in the art, it is appropriate to consider the rapidity with which innovations are made in the field.
II. In determining the level of ordinary skill in the art, references that predate the filing date of the application under examination may not be considered.
III. In an obviousness inquiry, one must always make a specific finding of the level of ordinary skill in the art, regardless of what the content of the prior art is.

A. I only.
B. II only.
C. III only.
D. I and II.
E. I and III.

I'm not 100% sure of the exact phrasing of III, but I do remember that it used the word "specific" (because I kept trying to figure out if, by "specific," the question meant explicit. If specific = explicit, then III is incorrect. MPEP 2141:
C.Resolving the Level of Ordinary Skill in the Art
Any obviousness rejection should include, either explicitly or implicitly in view of the prior art applied, an indication of the level of ordinary skill. A finding as to the level of ordinary skill may be used as a partial basis for a resolution of the issue of obviousness. The person of ordinary skill in the art is a hypothetical person who is presumed to have known the relevant art at the time of the invention. Factors that may be considered in determining the level of ordinary skill in the art may include: (1) “type of problems encountered in the art;” (2) “prior art solutions to those problems;” (3) “rapidity with which innovations are made;” (4) “sophistication of the technology; and” (5) “educational level of active workers in the field. In a given case, every factor may not be present, and one or more factors may predominate.”

Based on the above MPEP section, I is obviously correct. II is correct, except that you can use a reference that predates the filing date of the application if the reference specifically tells you something about the level of ordinary skill in the art at the time the invention was made. (I'm not sure which MPEP section this is from but it's in 2100.) Anyway, I picked (E) at first but then changed my answer to (D) after deciding that the word "specific" in statement III probably meant "explicit." I passed the exam, but not sure if I got this question right.

11/19/11: II is incorrect (MPEP2124) A) should be the answer.

[edit] Sec. 112 & 102(b) Question

Another question involved a claim to a composition comprising 25-60% A. The spec discloses a range of 25-60% A, with specific embodiments of 36% and 50% A. The examiner rejected the claim as anticipated under 102(b) by a reference that only discloses a composition with 25% A. In response to the rejection, the applicant amended the claim to "at least 35% A." The examiner maintained the 102(b) rejection and further rejected the claim under sec. 112, first paragraph for lack of written description support. In response, the applicant amended the claim to "35-60% A." Which action, if taken by the examiner, would be in accord with proper USPTO practice and procedure?

The answers all involved some combination of withdrawing and maintaining the 102(b) and 112 rejections. Some possibilities include:
A. Maintain the 102(b) rejection and withdraw the 112 rejection.
B. Maintain the 112 rejection and withdraw the 102(b) rejection.
C. Withdraw the 112 rejection and also withdraw the 102(b) rejection.
D. Maintain both the 112 rejection and the 102(b) rejection.
Not sure what the last choice was.

At first, I was thrown off by the fact that the examiner maintained the 102(b) rejection after the applicant amended the claim to "at least 35% A." But I finally decided that the examiner just made a mistake in maintaining the 102(b) rejection so I chose the option that said the examiner should withdraw both the 112 and 102(b) rejections.

• 1/18/2012 This question is almost verbatim from MPEP 2163.05 and a specific court case. But I see they put a little twist on it:)

[edit] Claims to a Signal (Sec. 101 Post Bilski)

Another question involved a claim to "a signal, encoded by the process of * * *" (The * * * represents some gibberish that I can't remember.) The question asks whether the subject matter of the claim is patent-eligible under sec. 101. The choices were something like:
A. The subject matter of the claim is not patent eligible because a transient propagating signal is not a process, machine, manufacture, or composition of matter.
B. Because the signal is made by a process, the claim is really directed to a process so it is patent-eligible.
C. Because a signal cannot be created in a vacuum, the claim is really directed to a machine.
D. The claim is really directed to a manufacture.
E. The claim is really directed to a composition of matter (or maybe it said that the signal was a composition of matter).

For each of the answers B-E, there was a explanation, but I can't remember all of them. (By explanation I mean something like "because a signal cannot be created in a vacuum," which was the only explanation I really remember.) The correct answer is probably (A). Per the [2009 Interim Instructions] (bottom of page 1, top half of page 2), "Transitory forms of signal transmission (for example, a propagating electrical or electromagnetic signal per se) ... covers a non-statutory embodiment and therefore should be rejected under § 101 as being directed to non-statutory subject matter." See also MPEP 2100-10: "In re Nuitjen, Docket no. 2006-1371 (Fed. Cir. Sept. 20, 2007)(slip. op. at 18)(“A transitory, propagating signal like Nuitjen’s is not a ‘process, machine, manufacture, or composition of matter.’ … Thus, such a signal cannot be patentable subject matter.”)"

[edit] Questions from Previous Exams

The following questions have been spotted in the computerized test

(these were copied from an old version of mypatentbar.com, please refer to the website for an updated version of this list):

• 1999 NOV PM: 39
• 2000 APR AM: 6, 9, 10, 14, 17, 23, 24, 32, 34, 36, 42, 47
• 2000 APR PM: 21, 41, 44
• 2000 OCT AM: 2, 48
• 2001 OCT AM: 10
• 2002 APR AM: 37, 44
• 2002 APR PM: 23, 24, 37
• 2002 OCT AM: 1, 2, 6, 12, 17, 27, 30, 34 , 46, 49, 50
• 2003 APR AM: 1†&, 2†^&, 8&, 12, 13, 21, 22, 23, 25&, 29&, 30^, 31, 33•^&, 37&, 38, 41&, 42, 44•, 45, 48†^
• 2003 APR PM: 4, 9&, 11&, 12•, 13, 21, 26&, 28&, 32†&, 38&, 44&, 48
• 2003 OCT AM: 3†, 4†^, 5, 6, 7•^&, 8, 9•, 10, 11&, 12&, 13, 14, 16•&, 17, 18&, 19, 20, 21, 22, 23^&, 24^&, 26, 28, 29, 30, 31, 32•&, 33, 34, 36&, 37, 38^, 39, 41†, 42&, 44•&, 46, 50&
• 2003 OCT PM: 1, 2&, 4&, 6&, 7, 8, 10, 11, 12, 13•, 14&, 15, 16, 17, 18•&, 19&, 20, 21, 22, 23, 24•&, 25, 27, 28&, 29&, 30&, 31, 32, 34, 36, 37, 38^&, 39, 40&, 41, 42, 43&, 44, 45, 46, 47, 50

-Don't know the exam it came from but the counting claims question showed up again - claims 1-15; 1 is only independent claim, all other claims dependent on 1; add claims 16-27 all are dependent on claims 5-15 - what is the total of all the claims for fee purposes -Answer: 1-15 are each worth 1 pt = 15pts total; 16-27 are each counted 11 times (i.e - 1,5, 16 + 1,6,16 + 1,7,16, all the way up to 15 - repeat this process for the rest of the claims 17-27)= 12 claims x 11pts = 132 + 15 = 147 is the correct answer (OCT 2003 AM Question 50)(This question also showed up on a Jan 2007 exam and a March 2008 exam and on 2/12/2009)

• At least 10 questions come from the 2003 Oct AM and 2003 Oct PM test as of 09/2009.

-Still tested as of June 2007: The Potter Application.
The cancer and alleviating pain utility question.
ABCD->ABCDE->BCDE question.
Inventor Tip & moon dust erasers (Q 6, 10/03 PM) (on March 2008 exam).
Detecting expired parking meters with comparater and alarm (on March 2008 exam) -- correct answer is to submit a drawing showing only the comparator and alarm (see Q 28, 10/03 PM).
Electric toothbrush switch location question (on March 2008 and May 2008 exam) -- on previous released exams this question is listed as having two correct answers, however, on computerized exams there is only one correct answer: the location of the switch (verified during exam review at PTO).

1/27/2011 Exam: I estimate that at least a third of my questions came from the Oct. 02, April 03, or Oct. 03 exam (see http://www.uspto.gov/ip/boards/oed/exam/pastexamresults.jsp). From memory: ABCD => BCDE; claim counting (147 claims); elemental copper as defined in the spec; Y by method 1 v. Y by method 2; Y made from cancer alleviating Z.

You can find the old exams on the USPTO website.

The questions marked with "&" reportedly appeared in a 2009 December exam.

The questions marked with "^" reportedly appeared in a 2007 December exam.

The questions marked with "†" reportedly appeared in a 2006 December exam.

The questions marked with "•" reportedly appeared in a 2006 October exam.