You must reclaim foreign priority in a reissue, even if mentioned in the original
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Q) 35 USC 119(a) (10.02.1p)
1. Which of the following is not in accordance with the provisions of the MPEP?
(A) Where joint inventors are named, the examiner should not inquire of the patent applicant concerning
the inventors and the invention dates for the subject matter of the various claims until it becomes
necessary to do so in order to properly examine the application.
(B) Under 35 USC 119(a), the foreign priority benefit may be claimed to any foreign application that
names a U.S. inventor as long as the U.S. named inventor was the inventor of the foreign application
invention and 35 USC 119(a)-(d) requirements are met.
(C) Where two or more foreign applications are combined in a single U.S. application, to take advantage
of the changes to 35 USC 103 or 35 USC 116, the U.S. application may claim benefit under 35 USC 119(a)
to each of the foreign applications provided all the requirements of 35 USC 119(a)-(d) are met.
(D) One of the conditions for benefit under 35 USC 119(a) is that the foreign application must be for
the same or a nonobvious improvement of the invention described in the United States application.
(E) If a foreign application for which priority is being claimed under 35 USC 119 is filed in a country
which does not afford similar privileges in the case of applications filed in the United States or to
citizens of the United States and the foreign country is not a WTO member country, any claim for the
foreign priority thereto by a U.S. application will not be effective.
1. ANSWER: (D) is the best answer as the inventions must be the same in the foreign and U.S. applications.
As to (A) through (C), see MPEP § 605.07 at p. 600-49, right column. As to (E), see 35 U.S.C. § 119 which provides
that the previously filed application must have been filed in a country that affords similar privileges in the case
of applications filed in the United States or to citizens of the United States or in a WTO member country.
Q) 102(b) dates (4.00.41p)
41. Which of the following may not be properly used as prior art for purposes of rejecting a claim
under 35 U.S.C. § 102(b) in an application having an effective filing date of Monday, May 3, 1999?
(A) A journal article, published Saturday, May 2, 1998, disclosing all the claimed
elements and fully teaching how to make and use the invention as claimed.
(B) A foreign patent, published March 3, 1998, which applicant referenced in the
application when claiming foreign priority based on the foreign application date,
and applicant submitted a certified copy of the original foreign application.
(C) Applicant’s statement in a declaration under 37 C.F.R. § 1.132 that although the
invention as claimed had been offered for sale in department stores in New York
during 1997, this was done only to analyze consumer acceptance of the packaging
in which the invention is marketed.
(D) A journal article, published May 1, 1997, disclosing all the elements of the claim
and teaching how to make and use the claimed invention. The examiner used the
article in combination with another journal article in a previous non-final Office
action to reject the same claim under 35 U.S.C. § 103.
(E) All of the above.
41. ANSWER: (A). MPEP 706.02(a). (B) is incorrect since the foreign patent, published more
than one year before the effective filing date of the application, would serve as a bar regardless
of the attempt to claim priority. 35 U.S.C. § 102(b). (C) is incorrect since market testing is not a
proper exception to a statutory bar under 35 U.S.C. § 102(b). MPEP 2133.03(e)(6). Also, the
facts do not involve testing the invention, but only the packaging. (D) is incorrect since a
reference may be used to reject claims under both 35 U.S.C. § 102 and 35 U.S.C. § 103.
MPEP 2141.01. (E) is incorrect since only (A) may not properly be used.
Q) Claims stand or fall together (4.00.28p)
Reported on the exam: Variant of April 12, 2000 PM – see 28 answer (A) as a concept.
One question reported about the applicant asserting the claims do not rise or fail together,
and the Examiner’s Answer stating that they do. Question was, what will the Board do as to the rejected claims?
1206 Appeal Brief
[...] In the absence of a separate statement that the claims do not stand or fall together, the Board panel assigned to the case will normally select the broadest claim in a group and will consider only that claim, even though the group may contain two broad claims, such as “ABCDE” and “ABCDF.” The same would be true in a case where there are both broad method and apparatus claims on appeal in the same group. The rationale behind the rule, as amended, is to make the appeal process as efficient as possible. Thus, while the Board will consider each separately argued claim, the work of the Board can be done in a more efficient manner by selecting a single claim from a group of claims when the appellant does not meet the requirements of 37 CFR 1.192(c)(7).
It should be noted that 37 CFR 1.192(c)(7) requires the appellant to perform two affirmative acts in his or her brief in order to have the separate patentability of a plurality of claims subject to the same rejection considered. The appellant must (A) state that the claims do not stand or fall together and (B) present arguments why the claims subject to the same rejection are separately patentable. Where the appellant does neither, the claims will be treated as standing or falling together. Where, however, the appellant (A) omits the statement required by 37 CFR 1.192(c)(7) yet presents arguments in the argument section of the brief, or (B) includes the statement required by 37 CFR 1.192(c)(7) to the effect that one or more claims do not stand or fall together (i.e., that they are separately patentable) yet does not offer argument in support thereof in the “Argument” section of the brief, the appellant should be notified of the noncompliance as per 37 CFR 1.192(d). Ex parte Schier, 21 USPQ2d 1016 (Bd. Pat. App. & Int. 1991); Ex parte Ohsumi, 21 USPQ2d 1020 (Bd. Pat. App. & Int. 1991).
8TH ED, REVISION 4 No longer has 37 CFR 1.192. Changes made: “removed and reserved, 69 FR 49959, Aug. 12, 2004, effective Sept. 13, 2004″ It only says [Reserved] now.
RDS (Dec. 9, 07) 37 CFR 1.192 has moved to 37 CFR 41.30 SUBPART B – Ex Parte Appeals
28. Which of the following is true?
(A) On appeal of a rejection of ten claims to the Board of Patent Appeals and
Interferences, each appealed claim stands or falls separately as a result of
appellant pointing out differences in what the claims cover.
(B) The 2-month period for filing a petition mentioned in 37 CFR 1.181(f) is
extendable under 37 CFR 1.136(a).
(C) An examiner may enter a new ground of rejection in the examiner’s answer to an
applicant’s appeal brief.
(D) After filing a notice of appeal, an applicant is estopped from further prosecuting
the same claims in a continuation application.
(E) When desiring to claim foreign priority, the oath or declaration in a reissue
application must claim foreign priority even though the priority claim was made
in the original patent.
28. ANSWER: (E). See MPEP 1414 Content of Reissue Oath/Declaration and 37 CFR
1.175(a) which states that reissue oaths/declarations must meet the requirements of 37 CFR 1.63,
including 1.63(c) relating to a claim for foreign priority. As to (A), 37 CFR 1.192(c)(7) requires
appellant to state that the claims do not stand or fall together. Appellant must present
appropriate argument under 37 CFR 1.192(c)(8) why each claim is separately patentable.
Merely pointing out differences in what the claims cover is not argument why the claims are
separately patentable. MPEP 1206, pages 1200-8 and 9. As to (B), see MPEP 1002 and the
sentence bridging pages 1000-2 and 1000-3. As to (C), 37 CFR 1.193(a)(2) prohibits the entry
of a new ground of rejection in an examiner’s answer. As to (D), continuation may be filed
during pendency of parent.
Q) Mario Lepieux (4.00.10a/4.00.11a)
MPEP 700, Reference is Publication of Applicant’s Own Invention
Test takers have noted that Questions #10 & 11 from April 2000 (AM) patent bar exam is in the Prometric database.
Please answer questions 10 and 11 based on the following facts.
10. Mario Lepieux was a member of a Canadian national hockey team touring Europe. While traveling
through Germany (a WTO member country) in December 1998, Mario conceived of an aerodynamic design
for a hockey helmet that offered players improved protection while reducing air resistance during
skating. Upon Mario’s return to Canada (a NAFTA country), he enlisted his brothers Luigi and Pepe
Lepieux to help him market the product under the tradename “Wing Cap.” On February 1, 1999, without
Mario’s knowledge or permission, Luigi anonymously published a promotional article written by Mario
and fully disclosing how the Wing Cap was made and used. The promotional article was published in
Moose Jaw Monthly, a regional Canadian magazine that is not distributed in the United States. The
Wing Cap was first reduced to practice on March 17, 1999. A United States patent application properly
naming Mario as the sole inventor was filed September 17, 1999. That application has now been rejected
as being anticipated by the Moose Jaw Monthly article.
10. Which of the following statements is most correct?
(A) The promotional article cannot be used as prior art because the Wing Cap had not been reduced
to practice at the time the article appeared in the regional Canadian magazine.
(B) The regional Canadian magazine article is not prima facie prior art because it was published
without Mario’s knowledge or permission.
(C) The regional Canadian magazine article is not prima facie prior art because it appeared in a
regional Canadian publication and does not evidence knowledge or use in the United States.
(D) The promotional article in the regional Canadian magazine constituted an offer to sell that
operates as an absolute bar against Mario’s patent application.
(E) Mario, as the inventor, can overcome the rejection by filing an affidavit under 37 C.F.R.
§ 1.132 establishing that he is the inventor, and the article describes his work.
11. Which of the following statements is most correct?
(A) In a priority contest against another inventor, Mario can rely on his activities in Canada
in establishing a date of invention.
(B) In a priority contest against another inventor, Mario can rely on his activities in Germany
in establishing a date of invention.
(C) Mario can rely on his activities in Canada in establishing a date of invention prior to
publication of the regional Canadian magazine article.
(D) (A) and (C).
(E) (A), (B), and (C).
10. ANSWER: (E). MPEP § 716.10. There is no requirement that a publication describe something that has
actually been reduced to practice before the publication can act as a prior art reference. Thus, statement (A)
is not correct. With regard to statement (B), there is no requirement under 35 U.S.C. § 102 that a publication
be made with an inventor’s knowledge or permission before it constitutes prior art. Statement (C) is incorrect
at least because the Wing Cap was “described in a printed publication in…a foreign country” (35 U.S.C. § 102(a))
before Mario’s filing date and is therefore presumptive prior art. (D) is incorrect because even if the
promotional article constituted an offer to sell, it was not in this country and was made less than a year prior
to Mario’s filing date. 35 U.S.C. § 102(b).
11. ANSWER: (E). Mario may rely on activities in both Germany (a WTO member country) and Canada (a NAFTA country)
in establishing a date of invention prior to publication of the Moose Jaw Monthly article or in establishing
priority. 35 U.S.C. § 104; see also MPEP § 715.01(c).
