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Flashcards in 2003 april Deck (40):
1

Proof of constructive reduction to practice does not require sufficient disclosure to satisfy the “how to use” and “how to make” requirements of 35 USC 112, first paragraph?

false; MPEP § 2138.05, under the heading “Constructive Reduction To Practice Requires Compliance With 35 U.S.C. 112, First Paragraph.”

2

A process is reduced to actual practice when it is successfully performed?

true; MPEP § 2138.05 under the heading “Requirements To Establish Actual Reduction To Practice.”

3

previous agent got fired. In a non-final Office action dated September 12, 2001, the examiner included a requirement for information, requiring the new agent to submit a copy of any non-patent literature, published application, or patent that was used to draft the application. Which of the following, if timely submitted by new agent in reply to the requirement for information, will be accepted as a complete reply to the requirement for information?

MPEP § 704.12(b). MPEP § 704.12(b) states “A reply stating that the information required to be submitted is unknown and/or is not readily available to the party or parties from which it was requested will generally be sufficient unless, for example, it is clear the applicant did not understand the requirement, or the reply was ambiguous and a more specific answer is possible.”

4

In accordance with the USPTO rules and the procedures set forth in the MPEP, which of the following may not be filed by facsimile transmission?

A request for continued examination under 37 CFR 1.114 along with a submission.
A continued prosecution application under 37 CFR 1.53(d).
An amendment in reply to a non-final Office action.
The filing of a provisional patent application specification and drawing for the purpose of obtaining an application filing date.
(B) and (D).

MPEP § 502.01. MPEP
§ 501.01, under the heading “Correspondence Relative To Patents And Patent Applications Where Filing By Facsimile Transmission Is Not Permitted,” identifies among the correspondence not permitted to be filed by facsimile transmission

5

Receipt and Handling of Mail and Papers

500

6

Final Rejection, When is Proper (on 1st/ 2nd rejection)

706

7

rejection of claims when is proper

700

8

the applicant may remove any issue of inequitable conduct by filing a request for reexamination based on the sales activity?

inequitable conduct cannot be resolved or absolved by reexamination

9

An applicant for a patent may overcome a statutory bar under 35 USC 102(b) based on a patent claiming the same invention by acquiring the rights to the patent pursuant to an assignment and then asserting the assignee’s right to determine priority of invention pursuant to 37 CFR 1.602.

a statutory bar cannot be overcome by acquiring the patent.

10

35 U.S.C. § 119,

"Benefit of earlier filing date; right of priority."

Appendix L - Patent Laws

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.

11

Certificates of Correction - Applicant’s Mistake

Two separate statutory requirements

1481
Two separate statutory requirements must be met before a Certificate of Correction for an applicant’s mistake may issue. The first statutory requirement concerns the nature, i.e., type, of the mistake for which a correction is sought. The mistake must be:
(1) of a clerical nature,
(2) of a typographical nature, or (3) a mistake of minor character.

The second statutory requirement concerns the nature of the proposed correction. The correction must not involve changes which would:
(1) constitute new matter or (2) require reexamination.
If the above criteria are not satisfied, then a Certificate of Correction for an applicant’s mistake will not issue, and reissue must be employed as the vehicle to “correct” the patent. Usually, any mistake affecting claim scope must be corrected by reissue.

12

search for specific words from the answer choices

only look at the matching para, dont read the whole page

13

37 CFR 1.130

700

37 CFR 1.130 provides a mechanism for filing an affidavit or declaration to establish that a disclosure is not prior art in accordance with 35 U.S.C. 102(b).

14

USPTO fees and charges payable to the USPTO requesting any action by the Office for which a fee or charge is payable, are required to be paid when?

in advance, that is, at the time of requesting any action.

15

In accordance with the USPTO rules and the procedures set forth in the MPEP, for a nonprovisional application to receive a filing date in the USPTO under 37 CFR 1.53(b), all of the following must be filed except:

A description pursuant to 37 CFR 1.71.
At least one claim pursuant to 37 CFR 1.75.
Any drawing required by 37 CFR 1.81(a).
The basic filing fee required by 37 CFR 1.16(a).
A specification as prescribed by the first paragraph of 35 USC 112.

MPEP § 601.01(a), the filing fee for an application filed under 37 CFR 1.53(b) can be submitted after the filing date.

37 CFR 1.71: detailed description AND SPECIFICATION OF THE INVENTION

MPEP § 601.01. 37 CFR § 1.53(b) provides that a filing date is granted on the date on which a specification as prescribed by 35 U.S.C. § 112 containing a description pursuant to 37 CFR § 1.71 and at least one claim pursuant to 37 CFR § 1.75, and any drawing required by 37 CFR § 1.81(a) are filed in the Office.

16

A request for an interview in a continued prosecution application prior to the first Office action, to be held in the examiner’s office proper?

MPEP § 713.02. As stated in MPEP § 713.02, “[a] request for an interview prior to the first Office action is ordinarily granted in continuing or substitute applications. A request for an interview in all other applications before the first action is untimely and will not be acknowledged if written, or granted if oral.

17

interview

mainly in 700

18

The examiner’s rejection of the claims to the microorganism under 35 USC 101 as being unpatentable because microorganisms are living matter and living matter is non-statutory subject matter.

MPEP § 2105, under the heading “Patentable Subject Matter – Living Subject Matter,” states “...the question of whether or not an invention embraces living matter is irrelevant to the issue of patentability.” The Supreme Court has held that biological materials such as microorganisms, and non-human animals, is patentable subject matter, provided it is made by man. Here, Eric’s isolation and purification the microorganism from its natural state (environment) makes it a product of human ingenuity, as opposed to a product of nature.

19

Assuming that any rejection has been properly made final
If both the claims and the specification contain the same new matter, and there has been both a rejection and objection by the examiner, the new matter issue is appealable, and should not be decided by petition.

true
2163.06 Relationship of Written Description Requirement to New Matter
MPEP § 2163.06, under the heading “Review Of New Matter Objections And Rejections.”

20

product by process claim, rejected based on similar product but different process

An argument that the claimed product has an unexpectedly low melting point of 150° F, supported by an affidavit showing that the mixture Y made by process Q2 exhibits a melting point of 300° F.

MPEP § 2113, under the heading “Product-By- Process Claims Are Not Limited To The Manipulations Of The Recited Steps, Only The Structure Implied By The Steps,”: If the product in the product-by-process claim is the same as or obvious from a product of the prior art, the claim is unpatentable even though the prior product was made by a different process.

heading “Once A Product Appearing To Be Substantially Identical Is Found And A 35 U.S.C. 102/103 Rejection Made, The Burden Shifts To The Applicant To Show An Unobvious Difference,” states “[o]nce the examiner provides a rationale tending to show that the claimed product appears to be the same or similar to that of the prior art, although produced by a different process, the burden shifts to applicant to come forward with evidence establishing an unobvious difference between the claimed product and the prior art product.

21

Which of the following is not prohibited conduct for a practitioner under the USPTO Code of Professional Responsibility?

Entering into an agreement with the client to limit the amount of any damages which the client may collect for any mistakes the practitioner may make during prosecution of the client’s patent application in exchange for prosecuting the application at a reduced fee.
Encouraging the client to meet with an opposing party for settlement discussions.

practitioner may not limit damages under 37 CFR § 10.78

22

The establishment of small entity status permits the recipient to pay reduced fees for all patent application processing fees charged by the USPTO.

false
509
37 CFR § 1.17(p)

23

In accordance with USPTO rules and procedures set forth in the MPEP, which of the following is not a proper basis on which the Board of Patent Appeals and Interferences may remand a case to the examiner?
Remand to the primary examiner with instructions to consider an affidavit not entered by the examiner which was filed after the final rejection but before the appeal.

1211

1200 appeal

24

Information Disclosure Statement

609

25

knew reference but didn't disclose until now, can he Before paying the issue fee, timely file an IDS citing the reference, along with the certification specified in 37 CFR 1.97(e), and any necessary fees?

no; The statement specified in 37 CFR § 1.97(e) requires that the practitioner certify, after reasonable inquiry, that no item of information contained in the IDS was known to any individual designated in 37 CFR § 1.56(c) more than three months prior to the filing of the information disclosure statement.

26

knew reference but didn't disclose until now, can he After paying the issue fee, timely file a petition to withdraw the application from issue to permit the express abandonment of the application in favor of a continuing application, a continuation application under 37 CFR 1.53(b), an IDS citing the reference, and any necessary fees.

yes; a petition to withdraw the application from issue can be filed after payment of the issue fee to permit the express abandonment of the application in favor of a continuing application.

27

interference case using 37 CFR 1.131 affidavit or declaration

what time period needed to show diligence?
just prior to the effective date of the reference or activity and ends with the date of a reduction to practice
or
between an actual reduction to practice of an invention and the filing of an application

715
Under 37 CFR 1.131(a), the critical period in which diligence must be shown begins just prior to the effective date of the reference or activity and ends with the date of a reduction to practice, either actual or constructive (i.e., filing a United States patent application). Note, therefore, that only diligence before reduction to practice is a material consideration.Any lack of due diligence between an actual reduction to practice of an invention and the filing of an application thereon is not relevant to the sufficiency of an affidavit or declaration under 37 CFR 1.131(a).

28

which of the following papers is precluded from receiving the benefit of a certificate of mailing or transmission under 37 CFR 1.8?

500 Receipt and Handling of Mail and Papers
512

29

Once captured by the Office, bibliographic information derived from an application data sheet containing errors may not be corrected and recaptured by a request therefore accompanied by the submission of a supplemental application data sheet, an oath or declaration under 37 CFR 1.63 or 1.67; nor will a letter pursuant to 37 CFR 1.33(b) be acceptable.

This is not true since 37 CFR § 1.76(d)(4) provides, in part, “(4)...Captured bibliographic information derived from an application data sheet containing errors may be recaptured by a request therefor and the submission of a supplemental application data sheet, an oath or declaration under 37 CFR § 1.63 or § 1.67, or a letter pursuant to 37 CFR 1.33(b).”

30

application data sheet

601

31

dedicate design patent dedicate term to public

37 CFR § 1.321(a) states, in pertinent part, that “any patentee may disclaim or dedicate to the public...any terminal part of the term, of the patent granted.” 35 U.S.C. § 173 states, “Patents for designs shall be granted for the term of fourteen years from the date of grant.”

in the patent law appendix

32

if can't find something in index

go to patent law appendix L

33

The time period set for the payment of the issue fee is statutory and cannot be extended. However, if payment is not timely made and the delay in making the payment is shown to be unavoidable, upon payment of a fee for delayed payment, it may be accepted as though no abandonment had occurred, but there will be a reduction on the patent term adjustment for the period of abandonment.

MPEP § 1306 issue fee
1300 allowance and issue

34

Upon written request, a person citing patents and printed publications to the Office that the person believes has a bearing on the patentability of a particular patent, may request that his or her name remain confidential.

MPEP §§ 2203 and 2212
2200 Citation of Prior Art and Ex Parte Reexamination of Patents

35

Applicant received a Final Rejection with a mail date of Tuesday, February 29, 2000. The Final Rejection set a 3 month shortened statutory period for reply. Applicant files an Amendment and a Notice of Appeal on Monday, March 27, 2000. The examiner indicates in an Advisory Action that the Amendment will be entered for appeal purposes, and how the individual rejection(s) set forth in the final Office action will be used to reject any added or amended claim(s). The mail date of the examiner’s Advisory Action is Wednesday, May 31, 2000. In accordance with the USPTO rules and the procedures set forth in the MPEP, which of the following dates is the last date for filing a Brief on Appeal without an extension of time?

Wednesday, May 31, 2000.

Hence, since no extension fee was paid in the fact pattern, the time allowed applicant for reply to the action from which the appeal was taken is the mail date of the Advisory Action, i.e., May 31, 2000.

"Appellant must, within two months from the date of the notice of appeal under § 1.191 or within the time allowed for reply to the action from which the appeal was taken, if such time is later, file a brief in triplicate."

36

Which of the following practices or procedures may be employed in accordance with the USPTO rules and the procedures set forth in the MPEP to overcome a rejection properly based on 35 USC 102(e)

706 rejection of claims

37

A claim in an application recites “[a] composition containing: (a) 35-55% polypropylene; and (b) 45-65% polyethylene.” The sole prior art reference describes, as the only relevant disclosure, a composition containing 34.9% polypropylene and 65.1% polyethylene. In accordance with USPTO rules and procedures set forth in the MPEP, the primary examiner should properly:

Reject the claim under 35 USC 103 as obvious over the prior art reference.

A prima facie case of obviousness exists where the claimed ranges and the prior art are close enough that one of ordinary skill in the art would have expected them to have the same properties. See MPEP § 2144.05.

2144 Supporting a Rejection Under 35 U.S.C. 103

38

An examiner’s answer, mailed on January 2, 2003, contains a new ground of rejection in violation of 37 CFR 1.193(a)(2). If an amendment or new evidence is needed to overcome the new ground of rejection, what is the best course of action the appellant should take in accordance with the USPTO rules and the procedures set forth in the MPEP?

MPEP § 1208.01 states: “Any allegation that an examiner’s answer contains an impermissible new ground of rejection is waived if not timely (37 CFR 1.181(f)) raised by way of a petition under 37 CFR 1.181(a).” Thus, to avoid waiver of the right to contest the examiner’s action, the appellant must file a timely petition.

39

In accordance with USPTO rules and the procedures set forth in the MPEP, claims in a patent application may not contain:
(A) chemical formulas.
(B) mathematical equations.
(C) drawings or flow diagrams.
(D) only one sentence.
(E) tables not necessary to conform with 35 USC 112.

C
MPEP § 608.01, under the heading “Illustrations In The Specification,” states “[t]he specification, including any claims...may not contain drawings or flow diagrams.”

608.01 specification

40

examiner question the adquency pf
enabling disclosure in the specification of your client’s patent application, and has properly rejected all the claims in the application. The claims in the application are drawn to a computer program system. In accordance with the USPTO rules and the procedures set forth in the MPEP, the rejection should be overcome by submitting

MPEP § 2106.02 under the heading “Affidavit Practice (37 CFR 1.132).” Factual evidence directed to the amount of time and effort and level of knowledge required for the practice of the invention from the disclosure alone can rebut a prima facie case of nonenablement.