Strict Standards: date(): It is not safe to rely on the system's timezone settings. You are *required* to use the date.timezone setting or the date_default_timezone_set() function. In case you used any of those methods and you are still getting this warning, you most likely misspelled the timezone identifier. We selected 'Europe/Berlin' for 'CEST/2.0/DST' instead in /homepages/42/d106177366/htdocs/patentbarquestions/includes/parser/Parser.php on line 2342

Strict Standards: date(): It is not safe to rely on the system's timezone settings. You are *required* to use the date.timezone setting or the date_default_timezone_set() function. In case you used any of those methods and you are still getting this warning, you most likely misspelled the timezone identifier. We selected 'Europe/Berlin' for 'CEST/2.0/DST' instead in /homepages/42/d106177366/htdocs/patentbarquestions/includes/parser/Parser.php on line 2343

Strict Standards: date(): It is not safe to rely on the system's timezone settings. You are *required* to use the date.timezone setting or the date_default_timezone_set() function. In case you used any of those methods and you are still getting this warning, you most likely misspelled the timezone identifier. We selected 'Europe/Berlin' for 'CEST/2.0/DST' instead in /homepages/42/d106177366/htdocs/patentbarquestions/includes/parser/Parser.php on line 2344

Strict Standards: date(): It is not safe to rely on the system's timezone settings. You are *required* to use the date.timezone setting or the date_default_timezone_set() function. In case you used any of those methods and you are still getting this warning, you most likely misspelled the timezone identifier. We selected 'Europe/Berlin' for 'CEST/2.0/DST' instead in /homepages/42/d106177366/htdocs/patentbarquestions/includes/parser/Parser.php on line 2345

Strict Standards: date(): It is not safe to rely on the system's timezone settings. You are *required* to use the date.timezone setting or the date_default_timezone_set() function. In case you used any of those methods and you are still getting this warning, you most likely misspelled the timezone identifier. We selected 'Europe/Berlin' for 'CEST/2.0/DST' instead in /homepages/42/d106177366/htdocs/patentbarquestions/includes/parser/Parser.php on line 2346

Strict Standards: date(): It is not safe to rely on the system's timezone settings. You are *required* to use the date.timezone setting or the date_default_timezone_set() function. In case you used any of those methods and you are still getting this warning, you most likely misspelled the timezone identifier. We selected 'Europe/Berlin' for 'CEST/2.0/DST' instead in /homepages/42/d106177366/htdocs/patentbarquestions/includes/parser/Parser.php on line 2347

Strict Standards: date(): It is not safe to rely on the system's timezone settings. You are *required* to use the date.timezone setting or the date_default_timezone_set() function. In case you used any of those methods and you are still getting this warning, you most likely misspelled the timezone identifier. We selected 'Europe/Berlin' for 'CEST/2.0/DST' instead in /homepages/42/d106177366/htdocs/patentbarquestions/includes/parser/Parser.php on line 2348

Strict Standards: date(): It is not safe to rely on the system's timezone settings. You are *required* to use the date.timezone setting or the date_default_timezone_set() function. In case you used any of those methods and you are still getting this warning, you most likely misspelled the timezone identifier. We selected 'Europe/Berlin' for 'CEST/2.0/DST' instead in /homepages/42/d106177366/htdocs/patentbarquestions/includes/parser/Parser.php on line 2349

Strict Standards: date(): It is not safe to rely on the system's timezone settings. You are *required* to use the date.timezone setting or the date_default_timezone_set() function. In case you used any of those methods and you are still getting this warning, you most likely misspelled the timezone identifier. We selected 'Europe/Berlin' for 'CEST/2.0/DST' instead in /homepages/42/d106177366/htdocs/patentbarquestions/includes/parser/Parser.php on line 2350

Strict Standards: date(): It is not safe to rely on the system's timezone settings. You are *required* to use the date.timezone setting or the date_default_timezone_set() function. In case you used any of those methods and you are still getting this warning, you most likely misspelled the timezone identifier. We selected 'Europe/Berlin' for 'CEST/2.0/DST' instead in /homepages/42/d106177366/htdocs/patentbarquestions/includes/parser/Parser.php on line 2342

Strict Standards: date(): It is not safe to rely on the system's timezone settings. You are *required* to use the date.timezone setting or the date_default_timezone_set() function. In case you used any of those methods and you are still getting this warning, you most likely misspelled the timezone identifier. We selected 'Europe/Berlin' for 'CEST/2.0/DST' instead in /homepages/42/d106177366/htdocs/patentbarquestions/includes/parser/Parser.php on line 2343

Strict Standards: date(): It is not safe to rely on the system's timezone settings. You are *required* to use the date.timezone setting or the date_default_timezone_set() function. In case you used any of those methods and you are still getting this warning, you most likely misspelled the timezone identifier. We selected 'Europe/Berlin' for 'CEST/2.0/DST' instead in /homepages/42/d106177366/htdocs/patentbarquestions/includes/parser/Parser.php on line 2344

Strict Standards: date(): It is not safe to rely on the system's timezone settings. You are *required* to use the date.timezone setting or the date_default_timezone_set() function. In case you used any of those methods and you are still getting this warning, you most likely misspelled the timezone identifier. We selected 'Europe/Berlin' for 'CEST/2.0/DST' instead in /homepages/42/d106177366/htdocs/patentbarquestions/includes/parser/Parser.php on line 2345

Strict Standards: date(): It is not safe to rely on the system's timezone settings. You are *required* to use the date.timezone setting or the date_default_timezone_set() function. In case you used any of those methods and you are still getting this warning, you most likely misspelled the timezone identifier. We selected 'Europe/Berlin' for 'CEST/2.0/DST' instead in /homepages/42/d106177366/htdocs/patentbarquestions/includes/parser/Parser.php on line 2346

Strict Standards: date(): It is not safe to rely on the system's timezone settings. You are *required* to use the date.timezone setting or the date_default_timezone_set() function. In case you used any of those methods and you are still getting this warning, you most likely misspelled the timezone identifier. We selected 'Europe/Berlin' for 'CEST/2.0/DST' instead in /homepages/42/d106177366/htdocs/patentbarquestions/includes/parser/Parser.php on line 2347

Strict Standards: date(): It is not safe to rely on the system's timezone settings. You are *required* to use the date.timezone setting or the date_default_timezone_set() function. In case you used any of those methods and you are still getting this warning, you most likely misspelled the timezone identifier. We selected 'Europe/Berlin' for 'CEST/2.0/DST' instead in /homepages/42/d106177366/htdocs/patentbarquestions/includes/parser/Parser.php on line 2348

Strict Standards: date(): It is not safe to rely on the system's timezone settings. You are *required* to use the date.timezone setting or the date_default_timezone_set() function. In case you used any of those methods and you are still getting this warning, you most likely misspelled the timezone identifier. We selected 'Europe/Berlin' for 'CEST/2.0/DST' instead in /homepages/42/d106177366/htdocs/patentbarquestions/includes/parser/Parser.php on line 2349

Strict Standards: date(): It is not safe to rely on the system's timezone settings. You are *required* to use the date.timezone setting or the date_default_timezone_set() function. In case you used any of those methods and you are still getting this warning, you most likely misspelled the timezone identifier. We selected 'Europe/Berlin' for 'CEST/2.0/DST' instead in /homepages/42/d106177366/htdocs/patentbarquestions/includes/parser/Parser.php on line 2350

Strict Standards: date(): It is not safe to rely on the system's timezone settings. You are *required* to use the date.timezone setting or the date_default_timezone_set() function. In case you used any of those methods and you are still getting this warning, you most likely misspelled the timezone identifier. We selected 'Europe/Berlin' for 'CEST/2.0/DST' instead in /homepages/42/d106177366/htdocs/patentbarquestions/includes/parser/Parser.php on line 2342

Strict Standards: date(): It is not safe to rely on the system's timezone settings. You are *required* to use the date.timezone setting or the date_default_timezone_set() function. In case you used any of those methods and you are still getting this warning, you most likely misspelled the timezone identifier. We selected 'Europe/Berlin' for 'CEST/2.0/DST' instead in /homepages/42/d106177366/htdocs/patentbarquestions/includes/parser/Parser.php on line 2343

Strict Standards: date(): It is not safe to rely on the system's timezone settings. You are *required* to use the date.timezone setting or the date_default_timezone_set() function. In case you used any of those methods and you are still getting this warning, you most likely misspelled the timezone identifier. We selected 'Europe/Berlin' for 'CEST/2.0/DST' instead in /homepages/42/d106177366/htdocs/patentbarquestions/includes/parser/Parser.php on line 2344

Strict Standards: date(): It is not safe to rely on the system's timezone settings. You are *required* to use the date.timezone setting or the date_default_timezone_set() function. In case you used any of those methods and you are still getting this warning, you most likely misspelled the timezone identifier. We selected 'Europe/Berlin' for 'CEST/2.0/DST' instead in /homepages/42/d106177366/htdocs/patentbarquestions/includes/parser/Parser.php on line 2345

Strict Standards: date(): It is not safe to rely on the system's timezone settings. You are *required* to use the date.timezone setting or the date_default_timezone_set() function. In case you used any of those methods and you are still getting this warning, you most likely misspelled the timezone identifier. We selected 'Europe/Berlin' for 'CEST/2.0/DST' instead in /homepages/42/d106177366/htdocs/patentbarquestions/includes/parser/Parser.php on line 2346

Strict Standards: date(): It is not safe to rely on the system's timezone settings. You are *required* to use the date.timezone setting or the date_default_timezone_set() function. In case you used any of those methods and you are still getting this warning, you most likely misspelled the timezone identifier. We selected 'Europe/Berlin' for 'CEST/2.0/DST' instead in /homepages/42/d106177366/htdocs/patentbarquestions/includes/parser/Parser.php on line 2347

Strict Standards: date(): It is not safe to rely on the system's timezone settings. You are *required* to use the date.timezone setting or the date_default_timezone_set() function. In case you used any of those methods and you are still getting this warning, you most likely misspelled the timezone identifier. We selected 'Europe/Berlin' for 'CEST/2.0/DST' instead in /homepages/42/d106177366/htdocs/patentbarquestions/includes/parser/Parser.php on line 2348

Strict Standards: date(): It is not safe to rely on the system's timezone settings. You are *required* to use the date.timezone setting or the date_default_timezone_set() function. In case you used any of those methods and you are still getting this warning, you most likely misspelled the timezone identifier. We selected 'Europe/Berlin' for 'CEST/2.0/DST' instead in /homepages/42/d106177366/htdocs/patentbarquestions/includes/parser/Parser.php on line 2349

Strict Standards: date(): It is not safe to rely on the system's timezone settings. You are *required* to use the date.timezone setting or the date_default_timezone_set() function. In case you used any of those methods and you are still getting this warning, you most likely misspelled the timezone identifier. We selected 'Europe/Berlin' for 'CEST/2.0/DST' instead in /homepages/42/d106177366/htdocs/patentbarquestions/includes/parser/Parser.php on line 2350

Strict Standards: date(): It is not safe to rely on the system's timezone settings. You are *required* to use the date.timezone setting or the date_default_timezone_set() function. In case you used any of those methods and you are still getting this warning, you most likely misspelled the timezone identifier. We selected 'Europe/Berlin' for 'CEST/2.0/DST' instead in /homepages/42/d106177366/htdocs/patentbarquestions/includes/parser/Parser.php on line 2342

Strict Standards: date(): It is not safe to rely on the system's timezone settings. You are *required* to use the date.timezone setting or the date_default_timezone_set() function. In case you used any of those methods and you are still getting this warning, you most likely misspelled the timezone identifier. We selected 'Europe/Berlin' for 'CEST/2.0/DST' instead in /homepages/42/d106177366/htdocs/patentbarquestions/includes/parser/Parser.php on line 2343

Strict Standards: date(): It is not safe to rely on the system's timezone settings. You are *required* to use the date.timezone setting or the date_default_timezone_set() function. In case you used any of those methods and you are still getting this warning, you most likely misspelled the timezone identifier. We selected 'Europe/Berlin' for 'CEST/2.0/DST' instead in /homepages/42/d106177366/htdocs/patentbarquestions/includes/parser/Parser.php on line 2344

Strict Standards: date(): It is not safe to rely on the system's timezone settings. You are *required* to use the date.timezone setting or the date_default_timezone_set() function. In case you used any of those methods and you are still getting this warning, you most likely misspelled the timezone identifier. We selected 'Europe/Berlin' for 'CEST/2.0/DST' instead in /homepages/42/d106177366/htdocs/patentbarquestions/includes/parser/Parser.php on line 2345

Strict Standards: date(): It is not safe to rely on the system's timezone settings. You are *required* to use the date.timezone setting or the date_default_timezone_set() function. In case you used any of those methods and you are still getting this warning, you most likely misspelled the timezone identifier. We selected 'Europe/Berlin' for 'CEST/2.0/DST' instead in /homepages/42/d106177366/htdocs/patentbarquestions/includes/parser/Parser.php on line 2346

Strict Standards: date(): It is not safe to rely on the system's timezone settings. You are *required* to use the date.timezone setting or the date_default_timezone_set() function. In case you used any of those methods and you are still getting this warning, you most likely misspelled the timezone identifier. We selected 'Europe/Berlin' for 'CEST/2.0/DST' instead in /homepages/42/d106177366/htdocs/patentbarquestions/includes/parser/Parser.php on line 2347

Strict Standards: date(): It is not safe to rely on the system's timezone settings. You are *required* to use the date.timezone setting or the date_default_timezone_set() function. In case you used any of those methods and you are still getting this warning, you most likely misspelled the timezone identifier. We selected 'Europe/Berlin' for 'CEST/2.0/DST' instead in /homepages/42/d106177366/htdocs/patentbarquestions/includes/parser/Parser.php on line 2348

Strict Standards: date(): It is not safe to rely on the system's timezone settings. You are *required* to use the date.timezone setting or the date_default_timezone_set() function. In case you used any of those methods and you are still getting this warning, you most likely misspelled the timezone identifier. We selected 'Europe/Berlin' for 'CEST/2.0/DST' instead in /homepages/42/d106177366/htdocs/patentbarquestions/includes/parser/Parser.php on line 2349

Strict Standards: date(): It is not safe to rely on the system's timezone settings. You are *required* to use the date.timezone setting or the date_default_timezone_set() function. In case you used any of those methods and you are still getting this warning, you most likely misspelled the timezone identifier. We selected 'Europe/Berlin' for 'CEST/2.0/DST' instead in /homepages/42/d106177366/htdocs/patentbarquestions/includes/parser/Parser.php on line 2350

Strict Standards: date(): It is not safe to rely on the system's timezone settings. You are *required* to use the date.timezone setting or the date_default_timezone_set() function. In case you used any of those methods and you are still getting this warning, you most likely misspelled the timezone identifier. We selected 'Europe/Berlin' for 'CEST/2.0/DST' instead in /homepages/42/d106177366/htdocs/patentbarquestions/includes/parser/Parser.php on line 2342

Strict Standards: date(): It is not safe to rely on the system's timezone settings. You are *required* to use the date.timezone setting or the date_default_timezone_set() function. In case you used any of those methods and you are still getting this warning, you most likely misspelled the timezone identifier. We selected 'Europe/Berlin' for 'CEST/2.0/DST' instead in /homepages/42/d106177366/htdocs/patentbarquestions/includes/parser/Parser.php on line 2343

Strict Standards: date(): It is not safe to rely on the system's timezone settings. You are *required* to use the date.timezone setting or the date_default_timezone_set() function. In case you used any of those methods and you are still getting this warning, you most likely misspelled the timezone identifier. We selected 'Europe/Berlin' for 'CEST/2.0/DST' instead in /homepages/42/d106177366/htdocs/patentbarquestions/includes/parser/Parser.php on line 2344

Strict Standards: date(): It is not safe to rely on the system's timezone settings. You are *required* to use the date.timezone setting or the date_default_timezone_set() function. In case you used any of those methods and you are still getting this warning, you most likely misspelled the timezone identifier. We selected 'Europe/Berlin' for 'CEST/2.0/DST' instead in /homepages/42/d106177366/htdocs/patentbarquestions/includes/parser/Parser.php on line 2345

Strict Standards: date(): It is not safe to rely on the system's timezone settings. You are *required* to use the date.timezone setting or the date_default_timezone_set() function. In case you used any of those methods and you are still getting this warning, you most likely misspelled the timezone identifier. We selected 'Europe/Berlin' for 'CEST/2.0/DST' instead in /homepages/42/d106177366/htdocs/patentbarquestions/includes/parser/Parser.php on line 2346

Strict Standards: date(): It is not safe to rely on the system's timezone settings. You are *required* to use the date.timezone setting or the date_default_timezone_set() function. In case you used any of those methods and you are still getting this warning, you most likely misspelled the timezone identifier. We selected 'Europe/Berlin' for 'CEST/2.0/DST' instead in /homepages/42/d106177366/htdocs/patentbarquestions/includes/parser/Parser.php on line 2347

Strict Standards: date(): It is not safe to rely on the system's timezone settings. You are *required* to use the date.timezone setting or the date_default_timezone_set() function. In case you used any of those methods and you are still getting this warning, you most likely misspelled the timezone identifier. We selected 'Europe/Berlin' for 'CEST/2.0/DST' instead in /homepages/42/d106177366/htdocs/patentbarquestions/includes/parser/Parser.php on line 2348

Strict Standards: date(): It is not safe to rely on the system's timezone settings. You are *required* to use the date.timezone setting or the date_default_timezone_set() function. In case you used any of those methods and you are still getting this warning, you most likely misspelled the timezone identifier. We selected 'Europe/Berlin' for 'CEST/2.0/DST' instead in /homepages/42/d106177366/htdocs/patentbarquestions/includes/parser/Parser.php on line 2349

Strict Standards: date(): It is not safe to rely on the system's timezone settings. You are *required* to use the date.timezone setting or the date_default_timezone_set() function. In case you used any of those methods and you are still getting this warning, you most likely misspelled the timezone identifier. We selected 'Europe/Berlin' for 'CEST/2.0/DST' instead in /homepages/42/d106177366/htdocs/patentbarquestions/includes/parser/Parser.php on line 2350
Questions reportedly asked in the Patent Bar Exam - Patentbarquestions

Questions reportedly asked in the Patent Bar Exam


Strict Standards: date(): It is not safe to rely on the system's timezone settings. You are *required* to use the date.timezone setting or the date_default_timezone_set() function. In case you used any of those methods and you are still getting this warning, you most likely misspelled the timezone identifier. We selected 'Europe/Berlin' for 'CEST/2.0/DST' instead in /homepages/42/d106177366/htdocs/patentbarquestions/includes/parser/Parser.php on line 2342

Strict Standards: date(): It is not safe to rely on the system's timezone settings. You are *required* to use the date.timezone setting or the date_default_timezone_set() function. In case you used any of those methods and you are still getting this warning, you most likely misspelled the timezone identifier. We selected 'Europe/Berlin' for 'CEST/2.0/DST' instead in /homepages/42/d106177366/htdocs/patentbarquestions/includes/parser/Parser.php on line 2343

Strict Standards: date(): It is not safe to rely on the system's timezone settings. You are *required* to use the date.timezone setting or the date_default_timezone_set() function. In case you used any of those methods and you are still getting this warning, you most likely misspelled the timezone identifier. We selected 'Europe/Berlin' for 'CEST/2.0/DST' instead in /homepages/42/d106177366/htdocs/patentbarquestions/includes/parser/Parser.php on line 2344

Strict Standards: date(): It is not safe to rely on the system's timezone settings. You are *required* to use the date.timezone setting or the date_default_timezone_set() function. In case you used any of those methods and you are still getting this warning, you most likely misspelled the timezone identifier. We selected 'Europe/Berlin' for 'CEST/2.0/DST' instead in /homepages/42/d106177366/htdocs/patentbarquestions/includes/parser/Parser.php on line 2345

Strict Standards: date(): It is not safe to rely on the system's timezone settings. You are *required* to use the date.timezone setting or the date_default_timezone_set() function. In case you used any of those methods and you are still getting this warning, you most likely misspelled the timezone identifier. We selected 'Europe/Berlin' for 'CEST/2.0/DST' instead in /homepages/42/d106177366/htdocs/patentbarquestions/includes/parser/Parser.php on line 2346

Strict Standards: date(): It is not safe to rely on the system's timezone settings. You are *required* to use the date.timezone setting or the date_default_timezone_set() function. In case you used any of those methods and you are still getting this warning, you most likely misspelled the timezone identifier. We selected 'Europe/Berlin' for 'CEST/2.0/DST' instead in /homepages/42/d106177366/htdocs/patentbarquestions/includes/parser/Parser.php on line 2347

Strict Standards: date(): It is not safe to rely on the system's timezone settings. You are *required* to use the date.timezone setting or the date_default_timezone_set() function. In case you used any of those methods and you are still getting this warning, you most likely misspelled the timezone identifier. We selected 'Europe/Berlin' for 'CEST/2.0/DST' instead in /homepages/42/d106177366/htdocs/patentbarquestions/includes/parser/Parser.php on line 2348

Strict Standards: date(): It is not safe to rely on the system's timezone settings. You are *required* to use the date.timezone setting or the date_default_timezone_set() function. In case you used any of those methods and you are still getting this warning, you most likely misspelled the timezone identifier. We selected 'Europe/Berlin' for 'CEST/2.0/DST' instead in /homepages/42/d106177366/htdocs/patentbarquestions/includes/parser/Parser.php on line 2349

Strict Standards: date(): It is not safe to rely on the system's timezone settings. You are *required* to use the date.timezone setting or the date_default_timezone_set() function. In case you used any of those methods and you are still getting this warning, you most likely misspelled the timezone identifier. We selected 'Europe/Berlin' for 'CEST/2.0/DST' instead in /homepages/42/d106177366/htdocs/patentbarquestions/includes/parser/Parser.php on line 2350
From Patentbarquestions

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Shortcut to Key Things to Know for the Patent Bar Exam

Contents

[edit] New Questions that have been reported

You've got it in one. Couldn't have put it better.

[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 applicant 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] 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] 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] 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.

I think defaulting to plubic would be good. If you are worried that some people won't like that, you could have people select in their settings whether they want to default to plubic or private, so it would be different for each user.

Dedky za odpověď. Koupil bych to v ČR, takže 2 roky ze1ruka tak i tak to že tak Kindle vyjde o něco dre1ž než předmo z Amazonu mi nevaded, navedc jsem ple1tce DPH takže rozdedl nened až tak velkfd.a0Jestli můžu ještě jednu ote1zku jde do toho Hanlinu nějak objednat auattomicke9 posedle1ned aktue1lnedch novin jako to jde přes Amazon do Kindle?a0 Hodně se mi ta možnost ledbed, skoro vedc než možnost nahre1vat si tam knedžky přes kartu.

[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.

a good idea is a good idea what you do is bypass fools and tefihs and go direct to the highest authority top exec whatever that would benifit from your idea arrange a meeting its your idea remember this !!! and record meeting video and ofeer it to them and negotiate a price copyright is bullshit, its just all invented for others to get a slice out of you if they go for it there expensive team of lawyers will do the homework remeber its your idea in your mind ! trust me 100 %

[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
  • 11/6/2012

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).

On a prima facie perusal of this arcltie, SEBI seems to have mandated, that the exchanges shall before launching/implimenting any such "market making scheme" or "market development scheme" in the derivatives segment take prior permission of SEBI. however this mandatory requirement has been imposed upon the exchanges via an unconventional Order / advisory instructions......One question that comes to my mind is that, wouldn't it have been better if SEBI had pased a circular to this effect or would have stated its concern in a fashion that would be more binding on the excahnges considering that the advisory instructions are mandatory in nature. or is it the case that the term "Advisory instructions" used .....would be interpreted by its letter and give the exchanges an option and and a chance to choose to abide or not to abide by these advisory instructions.

[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
    • 11/6/2012

[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.

Here is a similar storyLast week, the U.S. Patent and Trademark Office prvoedid additional details regarding its proposed Three Track patent examination initiative. An outline of the Office's Three Track program, or Enhanced Examination Timing Control Initiative, was originally prvoedid in a Federal Register notice (75 Fed. Reg. 31763) published last June (see USPTO Publishes Notice Regarding Enhanced Examination Timing Control Initiative ). In that notice, the Office indicated that under the Three Track proposal, applicants would be able to: (1) request prioritized examination (Track I examination), (2) request a delay of up to 30 months in the docketing of a non-continuing application (Track III examination), or (3) make neither of these requests and receive the current application processing (Track II examination). That notice also indicated that the fee for Track I examination would be set at a level to provide the resources necessary to increase the work output of the USPTO so that the aggregate pendency of nonprioritized applications would not increase due to work being done on the prioritized application.

[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

Alright alirhgt alright that's exactly what I needed!

[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] 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
  • 12/6/2012: Saw the same as from 12/16/2009


  • 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

the live view?, you have to put it on one of the specialty segtnits, like apeture priority (Av), then press the menu button, then at the top there will be different colored boxes, go to the the second yellow one (with the two dots on the side) and go down to live view function segtnits, click on that , by pressing the SET button, then enable the live view shoot. you can only use manual focus though when on live view, you set it to that by switching the little notch on the side of the lens (MF), then use the thing that turns, with the rigid stripes on it, to focus ( the thinner one, closest to the end of the lens)References :

[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
    • 12/6/2012

[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.

Cash advance is TERRIBLE. That 3% flat fee is proabbly a one-time fee, not including the interest rate you'll have to pay (usually between 20-25%)So if you did a cash advance for $100, they would charge you a 3% flat fee of $3, and then they start charging you interest on it immediatly.Cash advance is absolutely the WORST. You would be better of charging the actual item to the credit card than doing a cash advance. And yes, you will be charged interest the moment you do the advance. It's not like charging it to the card where the interest doesn't kick in until next month. If you have enough of a credit limit to take out a cash advance, you have enough of a limit to just charge it to the card. Trust me on this one So if at the end of the month you paid the whole amount you would pay the whole amount plus the interest and the flat fee.

[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.
  • 12/6/2012: Same question 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.

11/27/2012: Saw the same fact pattern yesterday but different answers same concept. I did not pass. The new test has very few repeats and changes up old questions.

[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... *edit* D has been removed from MPEP (11/20/2012)

As of MPEP 8th edition ver 9 the following 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


  • 10/13/2008 - had this question today.
  • 01/27/2009 - Another question on Means Plus Function involves the 3 characteristics 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.

pyCrust中間的console是pyShell, 是個wxStyledTextCtrl的類別, 可以嵌入wxpython成為一個現有的script console介面, 做tool類型的app很好用.有一個pyShell下的問題, 例如下列程式碼:"""for i in range(10): pssaprint end'"""執行結果為:""" File "", line 3 print end' ^SyntaxError: invalid syntax"""pyShell它內建的parsing機制似乎不接受兩行以上的敘述, 這導致shell.runfile(filename)也會無法執行兩行以上的script. 解法為使用shell.run執行execfile.shell.run(r"execfile(r'%s')"%(filename), verbose=False)

[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.
Also look at MPEP 2141.03, correct answer is A.

I'm always shceokd when an editor doesn't drop onto her knees and beg me to allow her the privilege of publishing my story.All joking aside, rejections can hurt, even after you've had plenty of submissions accepted. Personally, I grab a bag of M&M candies, allow myself to wallow in my pity party for an hour or two, then get back to work.Your post gave excellent advice about taking a second look at the manuscript and tweaking it if need be. After that, send it out again!

[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):

-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.

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