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Flashcards in April 02 PM Deck (11):
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14. Which of the following timely actions should you take to accord maximum patent protection at minimum government fees for your client whose invention is described in a provisional patent application that was filed 6 months ago with no claim?
A File a request to convert the provisional application to a nonprovisional application, accompanied by a proper executed declaration, an amendment including at least one claim as prescribed by paragraph 2 of 35 USC 112 and the proper fee set forth in 37 CFR 1.17(i).
B File a request to convert the provisional application to a nonprovisional application, accompanied by a proper executed declaration, an amendment including at least one claim as prescribed by paragraph 2 of 35 USC 112, the proper fee set forth in 37 1.17(i), and the basic filing fee for the nonprovisional application.
C File a request to convert the provisional application to a nonprovisional application, accompanied by a proper executed declaration, an amendment including at least one claim as prescribed by paragraph 2 of 35 USC 112, the proper fee set forth in 37 CFR 1.17(i), the basic filing fee for the nonprovisional application, and the surcharge required by 37 CFR 1.16(e).
D File a nonprovisional application including at least one claim accompanied by a proper executed declaration, and the basic filing fee. The application contains a specific reference to the provisional application in compliance with 37 CFR 1.78(a)(5).
E File a nonprovisional application including at least one claim accompanied by a proper executed declaration but without the basic filing fee. The application contains a specific reference to the provisional application in compliance with 37 CFR 1.78(a)(5).

Correct Answer(s):
D
Related MPEP Chapter(s):
MPEP 600 - Parts, Form, and Content of Application
Answer Reasoning:ANSWER: (D) is correct. (A), (B) and (C) are wrong because MPEP § 601.01(c) states, "Claiming priority is less expensive [than conversion] and will result in a longer patent term." Conversion requires payment of the conversion fee. (D) is correct because MPEP § 601.01(c) states, "In addition, if the provisional application was not filed with an executed oath or declaration and the filing fee for a non-provisional application, the surcharge set forth in 37 C.F.R. § 1.16(e) is required. (E) is wrong because the action taken claims priority under 35 U.S.C. § 119(e)(1) rather than conversion under 37C.F.R. § 1.53(c)(3). No surcharge is required.

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22. Which of the following is in accordance with the provisions in the MPEP?
A In order to correct inventorship in a nonprovisional application where the statement of the lack of deceptive intent is not available from an inventor to be added, a petition under 37 CFR 1.181 may be properly filed.
B If a person A learns that a patent application has been filed by person B without naming A as coinventor, A may file in the USPTO a petition that protests inventorship and directs B to add A's name as a coinventor to the patent application.
C If the application is involved in an interference pre-AIA, and a petition under 37 CFR 1.48 is filed to correct inventorship, the Board of Patent Appeals and Interferences will remand the case to the primary examiner for consideration of the petition to ensure that a search of the relevant prior art is performed.
D When a second conversion under 37 CFR 1.48(a) is attempted by the practitioner, the conversion decision will be decided by the Technology Center Director.
E None of the above.

Correct Answer(s):
D
E
Related MPEP Chapter(s):
MPEP 200 - Types, Cross-Noting, and Status of Application
MPEP 1900 - Protest
Answer Reasoning:ANSWERS: (D) and (E) were accepted. As to (D), see MPEP § 201.03 at p. 200-4. The language in answer (D) is literally found in MPEP § 201.03, which states, "Requests under 37 CFR 1.48 are generally decided by the primary examiner except . . . (D) When a second conversion under 37 CFR 1.48(a) is attempted (decided by the Technology Center (TC) Director)." Answer (E) was accepted inasmuch as the word "conversion" in answer (D) and MPEP 201.03 at page 200-4 may be confusing. Although answer (D) references 37 CFR 1.48, which addresses correction of inventorship, answer (D) uses "conversion," a word that is not typically used when addressing correction of inventorship. To the extent "conversion" in answer (D) and MPEP 201.03 at page 200-4 may be inaccurate terminology in the context in which it was used, it may have caused some candidates to select answer (E), none of the above. Answer (E) is dependent on answer (D). Inasmuch as answer (D) used inaccurate terminology, selection of answer (E) can be a reasonable alternative. Accordingly, answer (E) was accepted at this time. Answers (A), (B) and (C) are independent of the content of answer (D). Thus, selection of these answers, which are incorrect, was not accepted as a correct answer. As to (A) the petition to be filed would be under 37 C.F.R. § 1.183. As to (B), 35 U.S.C. § 116 provides that inventors may apply for a patent jointly. A person not named in the application could not file a petition under 37 C.F.R. § 1.48 as this would not be a joint filing. In accordance with MPEP 1901.05, unless a protestor has been granted access, the protestor is not entitled to any information including the fact that the application exists. MPEP at 1900-6. The patent application process is ex parte, and inventorship may only be contested inter partes (between opposing parties) in the USPTO through the interference process. MPEP § 1901.07 precludes the protestor from further participation beyond submission of the protest. See also 37 C.F.R. § 1.291(c). (C) is incorrect at least for the reasons that if the application is involved in an interference the Board will decide the petition. See MPEP § 201.03.

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24. A claim, as required by the second through fifth paragraphs of section 112, shall not be required in a _____________ patent application.
A reissue
B design
C continuation
D provisional
E plant

Correct Answer(s):
D
Related MPEP Chapter(s):
MPEP 200 - Types, Cross-Noting, and Status of Application
Answer Reasoning:ANSWER: (D) is correct. (D) is correct because 35 U.S.C. § 111(b)(2) states, "A claim, as required by the second through fifth paragraphs of section 112, shall not be required in a provisional application." MPEP § 201. (A) is wrong because an application for reissue must contain the entire specification, including the claims, and the drawings of the patent. 37 C.F.R. § 1.173(a). (B) is wrong because a design patent application contains a single claim. 37 C.F.R. § 1.53(b); MPEP § 1503.03. (C) is wrong because a continuation patent application is a second application for the same invention claimed in a prior nonprovisional application and filed before the original becomes abandoned or patented. MPEP § 201.07. (E) is wrong because 35 U.S.C. § 162 states, "The claim in the specification shall be in formal terms to the plant shown and described." MPEP § 1605.

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25. Applicant Jones filed a request for a first continued prosecution application (CPA) on December 29, 2000 in a utility application that was filed on April 28, 2000. Jones received a final Office action mailed on June 28, 2001. In response, Jones filed an amendment amending the claims in the first CPA. Jones received an advisory action on September 27, 2001 stating that the proposed amendment to the first CPA would not be entered because it raises new issues that would require further consideration. Additionally, the proposed amendment did not meet the requirements for a complete reply under 37 CFR 1.111. On December 28, 2001, Jones filed a petition for a 3-month extension of time with appropriate petition fee, a request for a second continued prosecution application, a request for suspension of action, and appropriate processing fee for the request for suspension of action. No application filing fee was filed with the request for the second CPA. Which of the following would be a proper communication mailed by the Office based on Jones' actions?
A A Notice of Allowability.
B A Notice to File Missing Parts.
C A first Office action on the merits.
D A notice of improper Request for Continued Examination (RCE) and a notice of abandonment.
E A letter granting the suspension of action.

Correct Answer(s):
D
Related MPEP Chapter(s):
MPEP 700 - Examination of Applications
Answer Reasoning:ANSWER: The most correct answer is (D). See MPEP § 706.07(h), page 700-71, under "IV. IMPROPER CPA TREATED AS RCE." The request for a second CPA filed on December 28, 2001 is improper because the application in which the CPA was filed in has a filing date of December 29, 2000 and is not eligible for the CPA practice. The CPA practice does not apply to applications that have a filing date on or after May 29, 2000. The Office will automatically treat the improper request for a CPA as a Request for Continued Examination under 37 C.F.R. § 1.114. However, the request for a CPA filed on December 28, 2001 does not satisfy the requirements of 37 C.F.R. § 1.114 to be a proper RCE because it lacks the filing fee required by 37 C.F.R. § 1.17, and the required submission under 37 C.F.R. § 1.114. Therefore, the improper CPA will be treated as an improper RCE and the time period set in the last Office action mailed on June 28, 2001will continue to run. Since the time period expired on December 28, 2001, the application is abandoned. Answers (A), (B), and (C) are incorrect because the request for a second CPA filed on December 28, 2001 is improper and the amendment was not entered. Answer (E) is incorrect because a request for a suspension of action will not be granted if the CPA or the RCE is improper (e.g., a filing date was not accorded in the CPA or the RCE was filed without a submission). See 37 C.F.R. § 1.103, MPEP § 709, page 700-113.

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27. Adams filed Application X on March 1, 2001. Beth filed application Y on May 1, 2001. Neither application has been published. Applications X and Y are copending and commonly assigned. Earlier filed application X claims the same invention as claimed in application Y using identical language. In accordance with the MPEP, which of the following actions should the examiner or assignee follow?
A The claims to the same invention in application Y should be rejected under 35 USC 102(a) as being anticipated by application X.
B The claims to the same invention in application Y should be rejected under 35 USC 102(b) as being anticipated by application X.
C The claims to the same invention in application Y should be rejected under 35 USC 102(e) as being provisionally anticipated by application X.
D The common assignee should file a terminal disclaimer in application Y to avoid any question of double patenting.
E The claims to the same invention in application Y should be rejected under 35 USC 102(e) as being anticipated by application X.

Correct Answer(s):
C
Related MPEP Chapter(s):
MPEP 800 - Restriction in Applications Filed Under 35 U.S.C. 111; Double Patenting
Answer Reasoning:ANSWER: (C) is correct 35 U.S.C. § 102(e); MPEP § 804, Chart III-A. (C) is correct because section I. of MPEP § 706.02(f) states, "If (1)...the applications are commonly assigned and (2) the effective filing dates are different, then a provisional rejection of the later filed application should be made." (A) is wrong because the facts do not indicate prior knowledge or use by others, or that the application Y is patented or published. (B) is wrong because the facts do not indicate that the application Y is patented or published, or the existence of "public use" or "on sale" bars. (D) is wrong. This is a statutory double patenting situation that cannot be avoided by filing a terminal disclaimer. See In re Bartfeld, 17 USPQ2d 1885 (Fed. Cir. 1991). MPEP § 706.02(f), section I; MPEP § 804.02, part I. (E) is wrong. It is improper to make a nonprovisional rejection under § 102(e) in the circumstances described in the question. Choice (E) provides for an improper nonprovisional rejection under § 102(e). MPEP § 804, Chart I-A.

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29. For purposes of determining whether a request for continued examination is in accordance with proper USPTO rules and procedure, in which of the following situations will prosecution be considered closed?
A The last Office action is a final rejection.
B The last Office action is an Office action under Ex Parte Quayle.
C A notice of allowance has issued following a reply to a first Office action.
D The application is under appeal.
E All of the above.

Correct Answer(s):
E
Related MPEP Chapter(s):
MPEP 700 - Examination of Applications
Answer Reasoning:ANSWER: (E) is the correct answer. 37 C.F.R. § 1.114 (effective August 16, 2000); "Request for Continued Examination Practice and Changes to Provisional Application Practice; Final Rule," MPEP 700. (A) is a final action (§ 1.113). "...an action that otherwise closes prosecution in the application (e.g., an Office action under Ex Parte Quayle, 1935 Comm'r Dec. 11 (1935))." Thus (A), (B), (C) and (D) are individually correct, and (E), being the most inclusive, is the most correct answer.

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36. The USPTO notifies John, a registered patent agent who is representing applicant A, that after a reasonable search, the USPTO has been unable to locate applicant A's patent application. By which of the following procedures may John avoid abandonment of applicant A's application within the time period set by the USPTO?
A Provide the USPTO with a copy of his record of all the correspondence between his office and the USPTO, assuming the existence of such record.
B Provide the USPTO with a list of all the correspondence between his office and the USPTO, assuming the existence of such list, and a statement that the list is complete and accurate.
C Provide the USPTO with a statement that he does not possess any record of the correspondence between his office and the USPTO because his files were destroyed.
D Provide the USPTO with a record of all the correspondence between his office and the USPTO, and a statement that the papers produced are his complete record of all the correspondence between his office and the USPTO, assuming the existence of such record.
E Provide the USPTO with a copy of his record of all the correspondence between his office and the USPTO, assuming the existence of such record, a list of all such correspondence, and a statement that he is not aware of any correspondence between his office and the USPTO that is not among his records.

Correct Answer(s):
C
Related MPEP Chapter(s):
MPEP 500 - Receipt and Handling of Mail and Papers
Answer Reasoning:ANSWER: (C) is correct. 37 C.F.R. § 1.251(a)(3). (C) is correct because there is compliance with 37 C.F.R. § 1.251(a)(3). (A) is wrong because along with a copy of the record, he is required to provide a list of all correspondence, and a statement that the copy is complete and accurate and that he is not aware of any correspondence between his office and the USPTO that is not among his records. 37 C.F.R. § 1.251(a)(1)(ii). (B) is wrong because along with a list of all correspondence and a statement that the copy of his record of all the correspondence is complete and accurate, he is required to provide a copy of his record of all the correspondence, and the statement must recite that he is not aware of any correspondence between his office and the USPTO that is not among his records. 37 C.F.R. § 1.251(a)(1)(i). (D) is wrong because the statement omits the recitation that he is not aware of any correspondence between his office and the USPTO that is not among his records. 37 C.F.R. § 1.251(a)(2)(ii). (E) is wrong because the statement omits the recitation that the copy of his record of all the correspondence is complete and accurate. 37 C.F.R. § 1.251(a)(1)(iii).

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42. Evidence of unexpected results is relied upon to overcome a prima facie case of obviousness. Which of the following is incorrect?
A The evidence must compare the claimed invention to the closest prior art.
B The evidence must be commensurate in scope with the claims.
C Data relied upon to show unexpected results need not cover the full range of the claims if one of ordinary skill in the art could ascertain a trend in the data that would allow that person to reasonably extend the probative value of the data to the full scope of the claims.
D Unexpected results can be shown by factual evidence or, if no factual evidence is available to the applicant, by sound argument by the applicant's agent or attorney.
E The evidence need not be in an affidavit or declaration under 37 CFR 1.132 if the evidence is presented in the specification of an application to which the applicant has attested.

Correct Answer(s):
D
Related MPEP Chapter(s):
MPEP 700 - Examination of Applications
Answer Reasoning:ANSWER: (D) is the most correct answer because mere attorney argument, unsupported by factual evidence, is insufficient to establish unexpected results. See In re Geisler, 116 F.3d 1465, 1470-71, 43 USPQ2d 1362, 1365-66 (Fed. Cir. 1997). (A) is not the proper choice because such a comparison is required. See In re Baxter Travenol Labs., 952 F.2d 388, 392, 21 USPQ2d 1281, 1285 (Fed. Cir. 1991); In re De Blauwe, 736 F.2d 699, 705, 222 USPQ 191, 196 (Fed. Cir. 1984), and MPEP § 716.02(e). (B) is not the proper choice because evidence relied upon for overcoming a prima facie case of obviousness must be commensurate in scope with the claims. See In re Grasselli, 713 F.2d 731, 743, 218 USPQ 769, 778 (Fed. Cir. 1983); In re Clemens, 622 F.2d 1029, 1035, 206 USPQ 289, 296 (CCPA 1980), and MPEP § 716.03(a). (C) is not the proper choice because the unobviousness of a broader range recited in a claim can be proven by a narrower range of data provided that one of ordinary skill in the art could ascertain a trend in the data which would allow that person to reasonably extend the probative value of the data to the broader range. See In re Kollman, 595 F.2d 48, 56, 201 USPQ 193, 199 (CCPA 1979), and MPEP § 717.02(d). (E) is not the proper choice because the relied-upon evidence can be in the specification. See In re Soni, 54 F.3d 746, 750, 34 USPQ2d 1684, 1687 (Fed. Cir. 1995).

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43. A patent application filed in the USPTO claims a nylon rope coated with element E for the purpose of preventing breakage of the rope. In the first Office action, the examiner rejects the claim as obvious over P in view of a trade journal publication, T. P teaches a nylon rope coated with resin for the purpose of making the rope waterproof. T teaches a nylon tent fabric coated with element E for the purpose of making the tent waterproof, and suggests the use of element E for making other nylon products waterproof. Following proper USPTO practices and procedures, the combination of P and T:
A cannot support a prima facie case of obviousness because T lacks a suggestion to combine with P for the purpose of preventing breakage in nylon rope.
B cannot support a prima facie case of obviousness because P lacks a suggestion to combine with T for the purpose of preventing breakage in nylon rope.
C cannot support a prima facie case of obviousness because T only contains a suggestion to combine with P for the purpose of waterproofing nylon rope.
D can support a prima facie case of obviousness, even though T only contains a suggestion to combine with P for the purpose of waterproofing nylon rope.
E can support a prima facie case of obviousness because the applicant is always under an obligation to submit evidence of non-obviousness regardless of whether the examiner fully establishes a prima facie case of obviousness.

Correct Answer(s):
D
Related MPEP Chapter(s):
MPEP 2100 - Patentability
Answer Reasoning:ANSWER: (D). "It is not necessary in order to establish a prima facie case of obviousness...that there be a suggestion or expectation from the prior art that the claimed [invention] will have the same or a similar utility as one newly discovered by the applicant." In re Dillon, 919 F.2d 688, 692, 16 USPQ2d 1897, 1900 (Fed. Cir. 1990) (emphasis in original). Thus, "[i]t is not necessary that the prior art suggest the combination to achieve the same advantage or result discovered by applicant." MPEP § 2144 ("Rationale Different from Applicant's is Permissible"). Here, T suggests the combination with P to achieve a different advantage or result, i.e., waterproofing, from that discovered by applicant, i.e., reducing breakage. Answers (A) - (C) are incorrect because the suggestion to combine does not need to be for the same purpose as applicant discloses in the application. Dillon, 919 F.2d at 692, 16 USPQ2d at 1900; MPEP § 2144 ("Rationale Different from Applicant's is Permissible"). Answer (E) is incorrect because an applicant is under no obligation to submit evidence of non-obviousness unless the examiner meets his or her initial burden to fully establish a prima facie case of obviousness. MPEP § 2142.

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44. The procedures in the MPEP do not require an applicant claiming foreign priority in a nonprovisional utility application to:
A submit the processing fee set forth in 37 CFR 1.17(i) if the claim for priority or submission of the certified copy of the priority document is made after payment of the issue fee and before the patent is granted.
B identify the foreign application for which priority is being claimed as well as any foreign application for the same subject matter having a filing date before that of the application for which priority is being claimed.
C file the claim in the application.
D have the same inventive entity listed in the foreign application as in the U.S. application in which the priority claim has been filed.
E identify the intellectual property authority or country in or for which the foreign application was filed.

Correct Answer(s):
D
Related MPEP Chapter(s):
MPEP 200 - Types, Cross-Noting, and Status of Application
Answer Reasoning:ANSWER: (D). There is no requirement as to the inventive entity being the same. As to (A), see 37 C.F.R. § 1.55(a)(2). As to (E), see MPEP 201.14 at p. 200-82 (right column). As to (C), see MPEP 201.14(a). As to (B), see 37 C.F.R. § 1.55(a)(1)(i) and MPEP 201.14(a).

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47. A registered practitioner's client, Apex Mfg. Corporation, bought the entire assets of Pinnacle Mfg. Corporation. Pinnacle gave Apex a list of its patent applications but did not maintain records of the patent assignments. Apex wishes to know which of the assignment documents, if any, of the pending patent applications in Pinnacle's patent portfolio were never recorded. In accordance with the MPEP, which of the following actions could the practitioner rely upon to most expeditiously answer this question?
A Request certified copies of the patent applications as filed.
B Request certified copies of the assignment documents of record of the patent applications.
C Request certified copies of the patent applications as filed accompanied by the fees set forth in 37 CFR 1.19(b)(1)(i).
D Request certified copies of the patent applications as filed accompanied by the fees set forth in 37 CFR 1.19(b)(1)(ii).
E Request certified copies of the assignment documents of record of the patent applications accompanied by the fees set forth in 37 CFR 1.19(b)(4).

Correct Answer(s):
E
Related MPEP Chapter(s):
MPEP 300 - Ownership and Assignment
Answer Reasoning:ANSWER: (E) is correct see fee in 37 CFR 1.19(b)(4) and (A), (B), (C) and (D) are incorrect. As MPEP § 303 states: "Certified copies of patent applications as filed do not include an indication of assignment documents. Applicants desiring an indication of assignment documents of record should request separately certified copies of assignment documents and submit the fees required by 37 C.F.R. § 1.19." (B) is incorrect because the fee required by 37 C.F.R. § 1.19(b)(4) has not been paid for the requested certified copy of assignment records.