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Flashcards in 2003 april afternoon Deck (36):
1

In accordance with the USPTO rules and the procedures in the MPEP, in which of the following instances is the reference properly available as prior art under 35 USC 102(d)?

The applicant files a foreign application, later timely files a U.S. application claiming priority based on the foreign application, and then files a continuation- in-part (CIP) application, and the claims in the CIP are not entitled to the filing date of the U.S. parent application. The foreign application issues as a patent before the filing date of the CIP application and is used to reject the claims directed to the added subject matter under 35 USC 102(d)/103. The reference is the foreign application.

MPEP § 2135.01, under the heading “A Continuation - In - Part Breaks The Chain Of Priority As To Foreign As Well As U.S. Parents.” If an applicant files a foreign application, later files a U.S. application claiming priority based on the foreign application, and then files a continuation - in - part (CIP) application whose claims are not entitled to the filing date of the U.S. parent, the effective filing date of the CIP application is the filing date of the CIP. The applicant cannot obtain the benefit of either the U.S. parent or foreign application filing dates.

2

request for a suspension of action

709
search with the CFR number

3

In a reissue application, additions and deletions to the original patent should be made by underlining and bracketing, respectively, except for changes made in prior Certificates of Correction and disclaimer(s) of claims under 37 CFR 1.321(a).

If after the filing of a reissue application no errors in the original patent are found, a reissue patent will be granted on the reissue application noting no change, and the original patent will be returned to the applicant.

1400 correction of patents

true 1411; false 1402

4

A complete continuation application by the same inventors as those named in the prior application may be filed under 35 USC 111(a) using the procedures of 37 CFR 1.53(b) by providing, in accordance with the USPTO rules and the procedures set forth in the MPEP:

35 USC 111(a) vs. 35 U.S.C. 111(b)

Applications filed under 35 U.S.C. 111(b) are provisional applications for patent; 35 U.S.C. 111(a) are nonprofessional and others

A new and proper specification (including one or more claims), any necessary drawings, a copy of the signed declaration as filed in the prior application (the new specification, claim(s), and drawings do not contain any subject matter that would have been new matter in the prior application), and all required fees.

5

Inventors B and C are employed by Corporation D, which authorized registered practitioner E to prepare and file a patent application claiming subject matter invented by B and C. Inventor B signed the oath, an assignment to Corporation D, and a power of attorney authorizing practitioner E to prosecute the application. Inventor C refused to sign the oath and any assignment documents for the application. The employment contract between inventor C and Corporation D contains no language obligating C to assign any invention to Corporation D. A patent application was properly filed in the USPTO under 37 CFR 1.47 naming B and C as inventors, but without inventor C signing the oath. C has now started his own company competing with Corporation D producing a product with the invention in the application. Inventor B is a friend of inventor C and wants C to have continued access to the application. Which of the following statements is in accordance with the USPTO rules and the procedures set
forth in the (A) (B)
(C)
(D) (E)
MPEP?

MPEP § 106 states: “[t]he assignee of record of the entire interest in an application may intervene in the prosecution of the application, appointing an attorney or agent of his or her own choice. See 37 CFR § 3.71. Such intervention, however, does not exclude the applicant from access to the application to see that it is being prosecuted properly, unless the assignee makes specific request to that effect.”

106 Control of Inspection by Assignee

6

Secrecy, Access, National Security, and Foreign Filing

100

7

Interference Proceedings

2300

8

interviews

?

9

ownership and assignment

300

10

reexamination

2200

11

Prior to filing a patent application for a client, a registered practitioner determined that the client was entitled to claim small entity status under 37 CFR 1.27. The practitioner filed a patent application for the client on November 1, 2002 together with a claim for small entity status under 37 CFR 1.27. On December 2, 2002, a Notice to File Missing Parts was mailed setting a two month period for reply and requiring the basic filing fee and the surcharge under 37 CFR 1.16(e). The practitioner timely submitted the small entity fees for the basic filing fee and the surcharge as required in the Notice. Shortly thereafter, the practitioner discovered that on October 31, 2002, the day before the application was filed, the client, without advising the practitioner, had assigned all rights in the invention that is the subject of the application to an entity that would not qualify for small entity status under 37 CFR 1.27. In accordance with the USPTO rules and the procedures set forth in the MPEP, which of the following actions would be
the best action for the practitioner to take?

509 payment of fees - small entity

File a paper under 37 CFR 1.28(c) requesting that the good faith error in claiming small entity status be excused and complying with the separate submission and itemization requirements of 37 CFR 1.28(c) and including payment of the deficiency owed.

12

which one is good to file a broadening reissue app?
assignee or applicant

because the assignee may not file a broadening reissue application. MPEP § 706.03(x).

706.03 Rejections Not Based on Prior Art

13

THE INVENTOR IS NOT REQUIRED TO REDUCE THE INVENTION TO PRACTICE

2100

inventorship

14

In accordance with the USPTO rules and the procedures set forth in the MPEP, in which of the following cases is the date of actual receipt by the USPTO not accorded as the application filing date?


Provisional application filed without claims.
Non-provisional application filed containing an error in inventorship.
Non-provisional application filed which fails to identify the inventor(s).
Non-provisional application with executed oath filed without any claim(s).
Non-provisional application filed using a certificate of mailing in accordance with 37 CFR 1.8.

A non-provisional application filed without at least one claim is regarded as incomplete and will not be accorded a filing date. 35 U.S.C.
§ 111(a); 37 CFR § 1.53(b); MPEP § 506.

15

Overcoming a Pre-AIA 35 U.S.C. 102(a), (b), or (e) Rejection Based on a Printed Publication or Patent

which one is not
A reply that only contains arguments that Smith fails to teach all the elements in the only independent claim, and which specifically points out the claimed element that Smith lacks.
A reply that consists of an affidavit or declaration under 37 CFR 1.131 properly proving invention of the claimed subject matter of the Potter application prior to April 10, 2001.
A reply that consists of an affidavit or declaration under 37 CFR 1.132 properly showing that Smith’s invention is not by “another.”
A reply that properly states that the invention of the Potter application and the Smith application were commonly owned by ABC Company at the time of the invention of the Potter application.

706

D

706.02(b) A rejection based on pre-AIA 35 U.S.C. 102(e) can be overcome by:

16

The claims in a patent application having been twice or finally rejected, the applicant files a timely Notice of Appeal on January 2, 2003. In accordance with USPTO rules and procedures set forth in the MPEP, which of the following situations should the USPTO not notify the applicant that the Appeal Brief is defective and allow him an opportunity to correct the deficiency?
(A) The Appeal Brief is filed on July 10, 2003, without a request for extension of time under 37 CFR 1.136.
(B) The Appeal Brief is submitted unsigned.
(C) The Appeal Brief states that the claims do not stand or fall together, and presents
argument as to why the claims are separately patentable, but the primary examiner
does not agree with the applicant’s argument.

See MPEP § 1206, specifically the Examiner Note for Form Paragraph 12.69.01

If the examiner disagrees with the reasons given, the reason for disagreement should be addressed in the Examiner’s Answer.

“If the brief includes a statement that a grouping of claims does not stand or fall together but does not provide reasons,as set forth in 37 CFR 1.192(c)(7), [the examiner is to] notify appellant of the non-compliance using form paragraphs 12.69, 12.69.01 and 12.78.”

17

The specification in a patent application has been objected to for lack of enablement. To overcome this objection in accordance with the USPTO rules and the procedures set forth in the MPEP, a registered practitioner may do any of the following except:
(A) traverse the objection and specifically argue how the specification is enabling.
(B) traverse the objection and submit an additional drawing to make the specification
enabling.
(C) file a continuation-in-part application that has an enabling specification.
(D) traverse the objection and file an amendment without adding new matter in an
attempt to show enablement.
(E) traverse the objection and refer to prior art cited in the specification that would
demonstrate that the specification is enabling to one of ordinary skill.

“Drawings submitted after the filing date of the application may not be used (i) to overcome any insufficiency of the specification due to lack of an enabling disclosure.”

18

Registered practitioner Joe duly files a non-provisional utility patent application on May 6, 1999. The USPTO sends Joe a notice of allowance dated November 13, 2000. On November 23, 2000, Joe learns about a publication (“Smith reference”) which he knows to be material to patentability of the claims presented in the application, but which was not considered by the examiner during prosecution of the application. Joe prepares an information disclosure statement that complies with the provisions of 37 CFR 1.98, listing the Smith reference. In accordance with USPTO rules and procedure which of the following actions, if taken by Joe, will result in the examiner considering the Smith reference during prosecution of the application?

MPEP 706.07(h), under the heading “II. Submission Requirement.”

19

On January 2, 2001, a registered practitioner filed a patent application with the USPTO for inventor Bock. The application includes a specification and a single claim to the invention, which reads as follows:
1. A new string consisting only of material Z that has the ability to stretch to beyond its initial unstretched length.

On June 2, 2001, the practitioner received an Office action from the primary examiner rejecting the claim. The claim is solely rejected under 35 USC 102 in view of Patent A, which discloses a string consisting only of material Z. The Office action states, “Patent A discloses a string consisting only of material Z. Patent A does not expressly teach the stretchability property of the string. Nevertheless, the recited stretchability is inherent in the string of patent A. Accordingly, patent A anticipates the claimed string.” Mr. Bock believes he is entitled to a patent to his new string and authorizes the practitioner to reply to the Office action by arguing that his string stretches to ten times its initial unstretched length, something that patent A does not teach. Since this is not expressly taught in Patent A, the practitioner argues, Patent A cannot anticipate the claimed string. In accordance with USPTO rules and procedures set forth in the MPEP, is the practitioner’s reply persuasive as to error in the rejection?

MPEP § 2112, under the heading “Something Which Is Old Does Not Become Patentable Upon The Discovery Of A New Property,” states that “claiming of a new use, new function or unknown property which is inherently present in the prior art does not necessarily make the claim patentable.

20

A reference is not presumed to be operable merely because it expressly anticipates or makes obvious all limitations of an applicant’s claimed apparatus.

false; MPEP § 2121, under the heading “Prior Art Is Presumed To Be Operable/Enabling,” states that “[w]hen the reference relied on expressly anticipates or makes obvious all of the elements of the claimed invention, the reference is presumed to be operable.”

21

A non-enabling reference may not qualify as prior art for the purpose of determining anticipation or obviousness of the claimed invention.

false; MPEP § 2121.01, under the heading “35 U.S.C. 103 Rejections And Use Of Inoperative Prior Art,” as stating that “a non-enabling reference may qualify as prior art for the purpose of determining obviousness under 35 U.S.C. 103.”

22

A reference does not provide an enabling disclosure merely by showing that the public was in possession of the claimed invention before the date of the applicant’s invention.

false; MPEP § 2121.01 states that “[a] reference contains an ‘enabling disclosure’ if the public was in possession of the claimed invention before the date of invention.”

23

prior art/ reference

2121

24

claim compound Y, In the specification, Bloc explains that compound Y is an intermediate in the chemical manufacture of synthetic Z. With respect to synthetic Z, the specification discloses its structural formula and further states that synthetic Z is modeled on the natural form of Z to give it the same therapeutic ability to alleviate pain. The specification goes on to state that synthetic Z is also a cure for cancer. On June 2, 2001, the practitioner received an Office action from the primary examiner rejecting the claim. The claim is rejected under 35 USC 101 as being inoperative; that is, the synthetic Z does not operate to produce a cure for cancer (i.e., incredible utility). Bloc believes he is entitled to a patent to his compound Y. In accordance with USPTO rules and procedures set forth in the MPEP, how best should the practitioner reply to the rejection of the claim?

File a reply arguing that whether or not a cure for cancer is incredible is superfluous since Bloc has disclosed another utility – alleviating pain, which is not incredible.

MPEP § 2107.02, under the heading “The Claimed Invention Is The Focus Of The Utility Requirement,” states “...regardless of the category of invention that is claimed (e.g., product or process), an applicant need only make one credible assertion of specific utility for the claimed invention to satisfy 35 U.S.C. 101 and 35 U.S.C. 112; additional statements of utility, even if not “credible,” do not render the claimed invention lacking in utility.

25

final OA mailed, The member of the public does not have a power to inspect, but would like a copy of the final Office action as well as the other papers in the patent application.

MPEP § 103,
All patent applications filed after June 30, 2003, have been scanned into the IFW system and will be available in public PAIR as soon as they have been published or patented.

under the heading “Published U.S. Patent Applications” states that “If a patent application has been published pursuant to 35 U.S.C. 122(b), then a copy of the specification, drawings, and all papers relating to the file of that published application (whether abandoned or pending) may be provided to any person upon written request and payment of the fee.”

26

A first Office action on the merits rejecting Claim 1 under 35 USC 103 as being obvious in view of reference A set a three month shortened statutory period for reply. A registered practitioner files a timely response (without an extension of time) to the first Office action amending Claim 1 to include a limitation not found in reference A or any other prior art of record. However, the limitation also lacks support in applicant’s original disclosure, i.e., it is new matter. Which of the following courses of action, if taken by the primary examiner, would be in accord with the USPTO rules and the procedures set forth in the MPEP?

MPEP §§ 706.03(o) and 2143.03. MPEP
§ 2143.03, under the heading “Limitations Which Do Not Find Support In The Original Specification Must Be Considered,” states: “When evaluating claims for obviousness under 35 U.S.C. § 103, all the limitations of the claims must be considered and given weight, including limitations which do not find support in the specification as originally filed (i.e., new matter).”

In (C), the examiner considered the new matter as required. MPEP § 706.03(o) states, “In amended cases, subject matter not disclosed in the original application is sometimes added and a claim directed thereto. Such a claim is rejected on the ground that it recites elements without support in the original disclosure under 35 U.S.C. 112, first paragraph

27

Which of the following is a proper basis for establishing a substantial new question of patentability to obtain reexamination in accordance with proper USPTO rules and the procedures set forth in the MPEP?

MPEP § 2217. The prior art applied may only consist of prior art patents or printed publications. Substantial new questions of patentability may be based upon 35 U.S.C. §§ 102(a), (b), (d) and (e), new questions of patentability under 35 U.S.C. § 103 that are based on the foregoing indicated portions of 35 U.S.C. § 102, and substantial new questions of patentability may be found under 35 U.S.C.
§§ 102(f)/103 or 102(g)/103 based on the prior invention of another disclosed in a patent or printed publication.

28

Which of the following is not a policy underlying the public use bar of 35 USC 102(b)?
(A) Discouraging the removal, from the public domain, of inventions that the public reasonably has come to believe are freely available.
(B) Favoring the prompt and widespread disclosure of inventions.
(C) Allowing the inventor(s) a reasonable amount of time following sales activity to
determine the potential economic value of a patent.
(D) Increasing the economic value of a patent by extending the effective term of the
patent up to one year.
(E) Prohibiting the inventor(s) from commercially exploiting the invention for a
period greater than the statutorily prescribed time.

D

29

for small entity Applicant can pay a fee to file a request for continued examination pursuant to 37 CFR 1.114 that is less than the fee paid by other than a small entity.

true

30

In accordance with USPTO rules and the procedures set forth in the MPEP, an amendment filed with or after a notice of appeal under 37 CFR 1.191(a), but before jurisdiction has passed to the Board of Patent Appeals and Interferences, should be entered by the primary examiner where the amendment:
(A) requests unofficial consideration by the examiner.
(B) is less than six pages long.
(C) removes issues from appeal.
(D) presents more specific claims, because it is believed that they may have a better
chance of being allowable even though the claims do not adopt the examiner’s
suggestions.
(E) introduces new issues, allowing the examiner to rethink his position.

c

31

Evidence that a claim may not comply with the second paragraph of 35 USC 112 occurs in accordance with the USPTO rules and the procedure set forth in the MPEP where:

knows the chapter, how to find the answer quicker?

MPEP § 2172

search exact words from the options in the chapter

32

Paprika is a known product. A patent application discloses a composition which is made by subjecting paprika to processing steps X, Y and Z. The composition is disclosed to be useful in treating cancer. The application was filed June 1, 2002. A reference published May 1, 2001 discloses a food product made by subjecting paprika to processing steps X, Y and Z. The reference does not disclose that the resulting composition has any properties that would make it useful for treating cancer. In accordance with USPTO rules and procedures set forth in the MPEP, which of the following claims is not anticipated by the reference?
(A) A composition made by the process of subjecting paprika to processing steps X, Y and Z, wherein the composition is effective for treating cancer.
(B) A composition for treating cancer, made by the process of subjecting paprika to processing steps X, Y and Z.
(C) A method of making a cancer-treating composition, comprising subjecting paprika to processing steps X, Y and Z.
(D) A method of treating cancer, comprising administering an effective amount of a composition made by subjecting paprika to processing steps X, Y and Z.
(E) All of the above.

D

MPEP § 2131, under the heading, “To Anticipate A Claim, The Reference Must Teach Every Element Of The Claim” states, “A claim is anticipated only if each and every element as set forth in the claim is found, either expressly or inherently described, in a single prior art reference.”. The claim is directed to a method of use that is not disclosed by the reference.

33

A person being sued for infringement may file a request for reexamination without first obtaining the permission of the Court in which the litigation is taking place?

Any person at any time may file a request for reexamination. 35 U.S.C. § 302.

34

John, unaware of the existence of Jane’s U.S. patent, which issued on Tuesday, July 11, 2000, files a patent application on Friday, January 11, 2001. John’s application and Jane’s patent are not commonly owned. On Thursday, July 11, 2001, in reply to an Office action rejecting all of his claims, John files an amendment canceling all of his claims and adding claims setting forth, for the first time, “substantially the same subject matter” as is claimed in Jane’s patent. The examiner rejects John’s claims on the basis of 35 USC 135(b). Which of the following statements accords with the USPTO rules and the procedures set forth in the MPEP?


The rejection is improper because 35 USC 135(b) relates to interferences.
The rejection is proper because 35 USC 135(b) is not limited to inter partes proceedings, but may be used as a basis for ex parte rejections.
Since John’s claims would interfere with Jane’s unexpired patent, the proper procedure is for the examiner to declare an interference rather than to reject John’s claims.
The rejection is proper merely by reason of the fact that John’s claims are broad enough to cover the patent claims.
The rejection is improper inasmuch as John is claiming “substantially the same subject matter” as is claimed in the patent.

B

MPEP § 715.05 U.S. Patent or Application Publication Claiming Same Invention states “[i]f the patent is claiming the same invention as the application and its issue date is one year or more prior to the presentation of claims to that invention in the application, a rejection of the claims of the application under 35 U.S.C. § 135(b) should be made.

35

Matter canceled from the application file wrapper of a U.S. patent may be used as prior art as of the patent date.

As explained in MPEP § 901.01, the “matter canceled from the application file wrapper of a U.S. patent may be used as prior art as of the patent date in that it then constitutes prior public knowledge under 35 U.S.C. 102(a)

36

Where the reference patent claims the benefit of an earlier filed, copending but subsequently abandoned application which discloses subject matter in common with the patent, and the abandoned application has an enabling disclosure for the common subject matter and the claimed matter in the reference patent, the effective date of the reference patent as to the common subject matter is the filing date of the reference patent.

As MPEP § 901.02 indicates, where the reference patent claims the benefit of a copending but abandoned application which discloses subject matter in common with the patent, and the abandoned application has an enabling disclosure of the common subject matter and claimed matter in the reference patent, the effective date of the reference as to the common subject matter is the filing date of the abandoned application.