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Flashcards in AIA Exams Deck (22):
1

5. Examiners will apply §112(f) to a claim limitation that meets which of the following conditions:

1.The claim limitation uses the phrase "means for" or "step for" or a non-structural term that further includes a structural modifier.

2.The phrase "means for" or "step for" or the non-structural term recited in the claim is modified by functional language.

3. The phrase "means for" or "step for" or the non-structural term recited in the claim is not modified by sufficient structure, material, or acts for achieving the specified function.
A Statement 1
B Statement 2
C Statement 3
D Statements 2 and 3
E Statement 1, 2 and 3

Correct Answer(s):
D
Related MPEP Chapter(s):
MPEP 2100 - Patentability
Answer Reasoning:ANSWER: D. Statement 1 is not correct. When "means for" or "step for" is used in conjunction with further discussion of structure, §112(f) is not invoked. For example, although a non-structural term like ˜mechanism'' standing alone may invoke §112(f) when coupled with a function, it will not invoke §112(f) when it is preceded by a structural modifier (e.g., ˜detent mechanism'').

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5. Quality Chips was concerned about a patent obtained by their off-shore competitor Chips-R-Us. The patent has a filing date of October 1, 1999, and has been re-issued twice following litigation where terrific prior art showed up. Somehow, Chips-R-Us still has the patent and has indicated to customers that they were not "afraid" of Quality Chips. You've got some good 102(b) prior art to use against the patent in the form of a chip spec sheet available on the web at least as early as September 1, 1998. You decide to file a Reexam request and shove Chips-R-Us back to the USPTO again. You put together all the necessary elements for an inter partes reexam and detail the substantial new question of patentability. You prep and file the papers on August 1, 2011. The inter partes reexam will
A Not be considered.
B Be considered.
C Be refused because of PTO "triple jeopardy" rules.
D Be considered, but if it is pending beyond Sept. 16, 2011, the standard of review will be changed to reasonable likelihood that Quality Chips will prevail with respect to at least one claim.
E Be considered, but if it is still pending after Sept. 16, 2012, it will automatically convert to an Inter partes review.

Correct Answer(s):
A
Related MPEP Chapter(s):
MPEP 2600 - Optional Inter Partes Reexamination
Answer Reasoning:Answer: A. The eligibility filing date for patents to be considered for inter partes reexam is on or after Nov. 29, 1999. The Chips-R-Us patent was filed before that date.

3

6. Quality Chips was concerned about a patent obtained by their off-shore competitor Chips-R-Us. The patent has a filing date of October 1, 1999, and has been re-issued twice following litigation where terrific prior art showed up. Somehow, Chips-R-Us still has the patent and has indicated to customers that they were not "afraid" of Quality Chips. You've got some good 102(b) prior art to use against the patent in the form of a chip spec sheet available on the web at least as early as September 1, 1998. You decide to file a Reexam request and shove Chips-R-Us back to the USPTO again. You put together all the necessary elements for an ex parte reexam and detail the substantial new question of patentability. You prep and file the papers on August 1, 2012. The ex parte reexam will
A Not be considered.
B Be considered.
C Be refused because of PTO "triple jeopardy" rules.
D Be considered, but if it is pending beyond Sept. 16, 2011, the standard of review will be changed to reasonable likelihood that Quality Chips will prevail with respect to at least one claim.
E Be considered, but if it is still pending after Sept. 16, 2012, it will automatically convert to an inter partes review.

Correct Answer(s):
B
Related MPEP Chapter(s):
MPEP 2600 - Optional Inter Partes Reexamination
Answer Reasoning:Answer: B. The eligibility date for patents to be considered for ex parte reexam is way back in 1980 and the standard for review remains SNQ.

4

8. Quality Chips was concerned about a patent obtained by their off-shore competitor Chips-R-Us. The patent has a filing date of October 1, 2004, and has been re-issued twice following litigation where terrific prior art showed up. Somehow, Chips-R-Us still has the patent and has indicated to customers that they were not "afraid" of Quality Chips. You've got some good 102(b) prior art to use against the patent in the form of a chip spec sheet available on the web at least as early as September 1, 2003. You decide to file a Reexam request and shove Chips-R-Us back to the USPTO again. However, you want to pick the reexam procedure, either inter partes or ex parte, that has a lower threshold of review to get started. You put together all the necessary elements for the chosen type of reexam. You prep and file the papers on August 1, 2012. You chose and filed an
A Inter partes reexam using the SNQ standard.
B Inter partes reexam using the reasonable likelihood of success standard.
C Ex parte reexam using the clear and convincing standard of review.
D Ex parte reexam, but if it is pending beyond Sept. 16, 2012, the standard of review will be changed from SNQ to reasonable likelihood that Quality Chips will prevail with respect to at least one claim.
E Ex parte reexam where the threshold to initiate the proceeding remains SNQ.

Correct Answer(s):
E
Related MPEP Chapter(s):
MPEP 2600 - Optional Inter Partes Reexamination
Answer Reasoning:Answer: E. SNQ is a lower threshold of review to initiate a reexam. So, you go with an ex parte reexam, and the standard of proof thereafter is preponderance of evidence.

5

10. Anatov Air is anxious to get a patent because financing its next superliner hinges on getting patents quickly and stopping others. The area of technology that Anatov wants to file in is telecommunications and this area is quite slow to 1st Action. Anatov consults you about jumping ahead in line at the PTO. Anatov has not filed any foreign patents and needs at least 30 total claims to both method and apparatus to adequately cover its technology. Your advice is to
A File a Special Accelerated Examination request, along with an ESD, fee and the other requirements of that procedure.
B File an application and designate it as a part of the Patent Prosecution Highway arrangement with Japan where Anatov intends to file next year.
C File a request for Prioritized Examination along with an application with no more than 30 total claims.
D File a request to make special because the application includes claims to telecommunications.
E File a petition to make special because Anatov's superliner uses less fuel.

Correct Answer(s):
C
Related MPEP Chapter(s):
MPEP 700 - Examination of Applications
Answer Reasoning:Answer: C. A is wrong because you are limited to no more than 20 claims and a single invention. B is wrong because PPH is available only when you have first filed outside the US. D is wrong because telecom is not a basis for making special. E is wrong because it has to be the subject of the application that saves energy, not the assignee's business.

6

14. An application has been afforded Special Status under the Prioritized Examination procedure. Applicant has been sent an Office Action and has been given 3 months for response. Applicant needs more time, and files a response at the 4th month along with a fee for an extension of time. The application is:
A Abandoned inasmuch as no extensions are permitted.
B Held in abeyance until the time extension has been accepted or denied.
C Placed into the Examiner's regular docket and examined thereafter in turn.
D Terminated owing to its loss of special status.
E Forwarded to the Office of Petitions for rapid consideration.

Correct Answer(s):
C
Related MPEP Chapter(s):
MPEP 700 - Examination of Applications
Answer Reasoning:Answer: C. Doing something during prioritized examination that disqualifies the application for the program merely results in the application being placed onto the regular docket of the Examiner. Asking for an extension automatically disqualifies the application for Prioritized Examination.

7

18. An application has been treated and acted upon in accordance with the Prioritized Examination procedure under 37 CFR 1.102. At this point, a Final Office action has been mailed. In reply, the applicant has filed an After Final amendment that creates a total claim count of 35. As a result:
A The application becomes abandoned.
B The amendment is refused entry owing to the claim count.
C The amendment is considered in accord with ordinary After Final PTO procedure.
D The Prioritized Examination is terminated.
E The amendment is returned for rewriting to comply with the limit of 30 total claims. The applicant is given a non-extendable 1 month period within which to respond.

Correct Answer(s):
C
Related MPEP Chapter(s):
MPEP 700 - Examination of Applications
Answer Reasoning:Answer: C. Once a Final Office Action is mailed, the Prioritized Exam procedure is automatically terminated. Thereafter, the application is considered like any other application under After Final rules, 37 CFR 1.116 et seq.

8

21. Alice is writing an Appeal Brief and includes the following list of items. The application is not related to any other current PTO filing and is not licensed. Which items may be left out with no adverse effect on the Appeals process.
A A listing of the real party in interest.
B A listing of Related Appeals and Interferences.
C A claims appendix.
D Summary of the Claimed Subject matter.
E A & B above.

Correct Answer(s):
E
Related MPEP Chapter(s):
MPEP 1200 - Appeal
Answer Reasoning:Answer: E. If either or both of the real party in interest and the listing of related appeals is left out, the PTO will, by default, presume the application is owned by the inventor and that no related cases exist.

9

23. An Appeal Brief may not leave out
A An indication of the status of the claims.
B An indication of the status of amendments.
C The grounds of the rejection to be reviewed on Appeal.
D An Evidence Appendix.
E A claims appendix.

Correct Answer(s):
E
Related MPEP Chapter(s):
MPEP 1200 - Appeal
Answer Reasoning:Answer: E. A-D have all been eliminated owing to the content of the electronic file wrapper being available to the members of the Board. As to C, the presumption of the Board is that all grounds of rejection of all rejected claims in the file are being appealed.

10

26. The following changes in a rejection, if offered in the context of an Examiner's Answer, would likely constitute a "new ground" of rejection.
A Changing the statutory basis of rejection from 102 to 103.
B Changing the statutory basis from 103 to 102, based on a different teaching.
C Citing new calculations in support of overlapping ranges.
D Citing new structure in support of structural obviousness.
E All of the above.

Correct Answer(s):
E
Related MPEP Chapter(s):
MPEP 1200 - Appeal
Answer Reasoning:Answer: E. A-D are all listed as likely new grounds of rejection in the Office's Notice regarding the new appeals rules.

11

30. Pete has filed an Appeal at the USPTO to contest the most recent Final Office Action. Claims 1-30 are pending and are grouped as follows. Claims 1, 5, 10, and 20 are independent. Claims 2-4 depend from 1. Claims 6-9 depend from 5. Claims 11-19 depend from 10. Claims 21-30 depend from 20. Claims 1-19 stand rejected under 35 USC 103 based on a combination of Jones and Stillman. Claims 20-30 are allowed. Pete only offers arguments as to claims 1, 5, and 10. The Board, unless told otherwise, believes
A The appeal is only directed to claims 1, 5, and 10. All remaining claims are cancelled.
B All claims subject to rejection are being appealed.
C Claims 21-30 are cancelled.
D Claims 2-4, 6-9, and 11-19 are cancelled.
E Claims 20-30 must be pursued in a divisional.

Correct Answer(s):
B
Related MPEP Chapter(s):
MPEP 1200 - Appeal
Answer Reasoning:Answer: B. The Board no longer instructs the Examiner to cancel non-appealed or unargued claims. The Board assumes all claims subject to the last rejection are being appealed.

12

32. Nancy filed a Notice of Appeal at the USPTO, and followed that with an Appeal Brief. She received an Examiner's Answer mailed 6 months ago. In her view, the Appeal Brief addressed each and every argument and rejection raised by the Examiner. She got a fax yesterday from her client indicating that she should file a Reply Brief to raise a new argument against the Examiner's rejections. The new argument was not mentioned by the client previously and was not a part of the argument in the Brief already filed. In addition, the argument is not responsive to any new argument raised in the Examiner's Answer. Can Nancy have the new argument considered in this Appeal by the Board?
A Yes, but she has to file an RCE first, then file a 2nd Appeal.
B No; jurisdiction has passed to the Board who will not consider the new argument.
C Yes, but she'll have to file a Reply Brief quickly and ask for an extension of time under 1.136(a).
D No, the Examiner doesn't have to consider anything after the original brief.
E Yes, but only if it can be shown that the client never read the original brief.

Correct Answer(s):
B
Related MPEP Chapter(s):
MPEP 1200 - Appeal
Answer Reasoning:Answer: B. The Board only considers the record already before the Examiner. New arguments, after the Examiner's Answer and not responsive to arguments and issues therein, will not be considered.

13

33. An acceptable Appeal Brief in the USPTO includes citations of case law authority to
A Either the United States Patent Quarterly or the West Reporter system.
B the Federal Reporter only.
C The United States Patent Quarterly only.
D Commissioner's Decisions only.
E Case copies provided with the Brief only.

Correct Answer(s):
A
Related MPEP Chapter(s):
MPEP 1200 - Appeal
Answer Reasoning:Answer: A. The Board has a preference for USPQ but, when not covered, another reporter system is acceptable. B-E are all acceptable, but are wrong because of the use of "only." The Board rules no longer require citation to a particular reporter system and requires copies only when a case is not found in either USPQ or West.

14

34. The Official File or "Record" that may be relied on for purposes of Appeal at the USPTO includes
A Every document found in the Image File Wrapper system.
B Every document or other item found in the Image File Wrapper or artifact folder, but excluding any amendments, Evidence or other documents that were not entered.
C Every document in the Image File as well as any other standard reference text in the relevant field.
D Documents that have been copied and offered to the Examiner in an IDS.
E All documents maintained by the attorney or agent of record in the Official Client file.

Correct Answer(s):
B
Related MPEP Chapter(s):
MPEP 1200 - Appeal
Answer Reasoning:Answer: B. The Record is what has been entered and considered by the Examiner and nothing more.

15

35. The submissions by an applicant after final rejection are only permitted under 37 CFR 1.116. This rule is discretionary in implementation since prosecution is "closed." However, when a Notice of Appeal is filed, this rule terminates and the Board takes jurisdiction
A Upon the submission of the Appeal Brief.
B Upon mailing of the Examiner's answer.
C Upon entry of a new ground of rejection in the Examiner's Answer.
D Upon the filing of a Reply Brief.
E Upon the Examiner acknowledging the Reply Brief.

Correct Answer(s):
D
Related MPEP Chapter(s):
MPEP 1200 - Appeal
Answer Reasoning:Answer: D. The Board takes jurisdiction upon the filing of a Reply Brief or the expiration of the time period for such a filing.

16

36. The following may NOT be omitted in the preparation of an Appeal Brief at the USPTO.
A A statement of the real party in interest.
B A statement of related Appeals and Interferences.
C A statement of the Status of Claims.
D A statement of the Status of Amendments.
E A claims appendix.

Correct Answer(s):
E
Related MPEP Chapter(s):
MPEP 1200 - Appeal
Answer Reasoning:Answer: E. A and B are necessary, but if omitted, the PTO will assume the inventors are the owners and that no related cases exist. C and D are no longer required.

17

38. A Statement regarding Related Appeals and Interferences should include only those cases which:
A Involve an application or patent owned by the appellant or assignee.
B Are known to appellant, their legal representative, or assignee.
C May be related to, directly affect, or be affected by, or have a bearing on the Board's decision.
D Have an assignment recorded at the PTO to the owner of the case being appealed.
E A, B, and C above.

Correct Answer(s):
E
Related MPEP Chapter(s):
MPEP 1200 - Appeal
Answer Reasoning:Answer: E. All of A-C are required. D is wrong because there is no necessity to have an assignment on file at the USPTO.

18

40. In the Examiner's Answer that Bev was reading, the Examiner had argued the original rejections contained in the file but had also, in the alternative, argued that even if the rejections could not be sustained under 35 USC 103 as obvious for inability to combine, that 35 USC 102 ought to carry the day inasmuch as the references rendered the claims unpatentable for a lack of novelty. A close reading of one of the references revealed all of the elements in the claims. The rigor of exact one-to-one correspondence of claim elements to disclosure could be met with a different teaching of the reference. Such an argument in an Examiner's answer is
A Acceptable.
B Unacceptable.
C Merely an adaptation of the existing rationales.
D A new ground of rejection and should be so designated.
E Going to be remanded by the Board upon review.

Correct Answer(s):
D
Related MPEP Chapter(s):
MPEP 1200 - Appeal
Answer Reasoning:Answer: D. Whenever a "new" teaching or portion of a reference is relied upon for a new rejection, it is likely a new ground of rejection.

19

41. In the Examiner's Answer that Flo was reading, the Examiner had argued the original rejections contained in the file but had also, in the alternative, argued that even if the rejections could not be sustained under 35 USC 102 as anticipatory, that 35 USC 103 ought to carry the day inasmuch as the references rendered the claims obvious in view of revised calculations the Examiner had shown in tabular form for the first time. The newly included tables included one argument that had been previously made, but now stretched to include endpoints of the ranges of the claims and mooted Flo's appeal arguments. Such an argument in an Examiner's answer is
A A new ground of rejection.
B Acceptable because the "thrust of the rejection" was similar.
C An indication of the poor quality of the original rejection in terms of anticipation.
D Acceptable since common sense under 103 enables endpoints to be extrapolated from reference disclosures.
E Acceptable since 102 only requires a single point within a range to be disclosed, so the anticipation is still well founded.

Correct Answer(s):
A
Related MPEP Chapter(s):
MPEP 1200 - Appeal
Answer Reasoning:Answer: A. New calculations are "new facts" that did not exist in the record previously. As such it is a new ground of rejection.

20

43. In the Examiner's Answer that Newman was reading, the Examiner had argued the original rejections contained in the file but had also, in the alternative, argued that even if the rejections could not be sustained under 35 USC 103 as obvious based on the original rationale set forth in the Final Office action, other better rejections also existed in the same references and were also now being advanced. The alternative rejections have been designated as a new ground of rejection. Newman does not want to prolong the Appeal but feels the new rejection should be addressed. Newman should
A File an RCE along with an amendment to address the new rejections.
B File a Reply Brief with new arguments not heretofore raised but necessitated by the new rejections.
C Petition the Director to exclude the rejections as untimely under 1.181.
D Do nothing: The Board will exclude the rejections from their considerations.
E File a revised Appeal Brief directed to the new rejections.

Correct Answer(s):
B
Related MPEP Chapter(s):
MPEP 1200 - Appeal
Answer Reasoning:Answer: B. The applicant can, at their option, reopen prosecution or continue the Appeal by filing a Reply Brief including only argument.

21

45. In the Examiner's Answer that Rick recently received, the Examiner had argued the original rejections contained in the file but had also, in the alternative, argued that even if the rejections could not be sustained under 35 USC 102 as anticipatory, that 35 USC 103 ought to carry the day inasmuch as the references rendered the claims obvious. In addition, since the rigor of exact one-to-one correspondence of claim elements to disclosure is relieved under 103, the rejection should be maintained because common sense would render the invention obvious. Rick filed a Petition under 1.181 to ask that the new rejection(s) be designated as a new ground of rejection. The Petition was denied. Rick can
A Do nothing.
B File a single Reply Brief within 2 months of the mailing of the Decision on the Petition.
C Reopen prosecution by filing an amendment within 2 months.
D File a Revised Appeal brief within 6 months of the mailing of the Decision on the Petition.
E File an Affidavit asking for renewed consideration of the Decision.

Correct Answer(s):
B
Related MPEP Chapter(s):
MPEP 1200 - Appeal
Answer Reasoning:Answer: B. Once the petition is denied, an applicant has 2 months to file a Reply Brief.

22

46. In the Examiner's Answer that Rick recently received, the Examiner had argued the original rejections contained in the file but had also, in the alternative, argued that even if the rejections could not be sustained under 35 USC 102 as anticipatory, that 35 USC 103 ought to carry the day inasmuch as the references rendered the claims obvious. In addition, since the rigor of exact one-to-one correspondence of claim elements to disclosure is relieved under 103, the rejection should be maintained because common sense would render the invention obvious. Rick filed a Petition under 1.181 to ask that the new rejection(s) be designated as a new ground of rejection. The Petition was granted. Rick should
A Do nothing.
B File an amendment, within 2 months, under Rule 1.111 reopening prosecution.
C File a Reply Brief.
D A or B or C.
E A or B.

Correct Answer(s):
B
Related MPEP Chapter(s):
MPEP 1200 - Appeal
Answer Reasoning:Answer: B. If the appellant does not file an amendment, the Appeal is automatically dismissed.