2002 APRIL PM: 24

From Patentbarquestions

24. In 1995 Patent Agent filed a U.S. patent application containing five claims

(Application 1). All five claims are fully supported under 35 U.S.C. § 112 by the

disclosure of Application 1. In 2000, Patent Agent filed a U.S. patent application

(Application 2) that was a continuation- in-part of Application 1. Application 2 adds new

subject matter to the disclosure of Application 1, and ten additional claims. Of the fifteen

claims in Application 2, claims 1-5 are exactly the same as Application 1, claims 6-10 are

fully supported under 35 U.S.C. § 112 by the disclosure of Application 1, and claims 11-

15 are fully supported under 35 U.S.C. § 112 only by the newly added subject matter of

Application 2. The effective filing date for claims in Application 2 is:

(A) 1-15 is 2000.

(B) 1-15 is 1995.

(C) 1-10 is 1995.

(D) 11-15 is 2000.

(E) (C) and (D).

24. ANSWER: (E) is the most correct answer. MPEP § 706.02 page 700-20 (8th ed.), under the

heading “DETERMINING THE EFFECTIVE FILING DATE OF THE APPLICATION” states

“[t]he effective filing date of a U.S. application may be determined as follows: … (B) If the

application is a continuation-in-part of an earlier U.S. application, any claims in the new

application not supported by the specification and claims of the parent application have an

effective filing date equal to the filing date of the new application. Any claims which are fully

supported under 35 U.S.C. § 112 by the earlier parent application have the effective filing date of

that earlier parent application.” Accordingly, the effective filing date of claims 1-10 is 1995 and

the effective filing date of claims 11-15 is 2000. Answers (A) and (B) are incorrect because they

do not account for the two different effective filing dates. Answers (C) and (D) are both correct,

therefore answer (E) which includes both (C) and (D) is the most correct answer.