April 03 AM Exam Flashcards Preview

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Flashcards in April 03 AM Exam Deck (11):
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3. Registered practitioner Rick drafted a patent application for inventor Sam. The application was filed in the USPTO on May 15, 2000, with a power of attorney appointing Rick. On March 15, 2001, Sam filed a revocation of the power of attorney to Rick, and a new power of attorney appointing registered practitioner Dave. In a non-final Office action dated September 12, 2001, the examiner included a requirement for information, requiring Dave 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 Dave in reply to the requirement for information, will be accepted as a complete reply to the requirement for information?
A A statement by Dave that the information required to be submitted is unknown and is not readily available to Dave.
B A statement by Dave that the requirement for information is improper because it was included in a non-final Office action.
C A statement by Dave that the requirement for information is improper because Dave is not an individual identified under 37 CFR 1.56(c).
D A statement by Dave that the requirement for information is improper because information used to draft a patent application may not be required unless the examiner identifies the existence of a relevant database known by Sam that could be searched for a particular aspect of the invention.

Correct Answer(s):
A
Related MPEP Chapter(s):
MPEP 700 - Examination of Applications
Answer Reasoning:ANSWER: (A) is the correct answer. See 37 CFR § 1.105(a)(3); 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." The given facts do not state that the applicant did not understand the requirement, or the reply was ambiguous and a more specific answer is possible. (B) is incorrect because the requirement for information may be included in an Office action, or sent separately. 37 CFR § 1.105(b). (C) is incorrect because 37 CFR § 1.56(c) includes each attorney or agent who prepares or prosecutes the application. 37 CFR § 1.56(c)(2). (D) is incorrect because information used to draft a patent application may be required and there is no support for (D) in 37 CFR § 1.105. (E) is incorrect because (A) is correct.

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3. Registered practitioner Rick drafted a patent application for inventor Sam. The application was filed in the USPTO on May 15, 2000, with a power of attorney appointing Rick. On March 15, 2001, Sam filed a revocation of the power of attorney to Rick, and a new power of attorney appointing registered practitioner Dave. In a non-final Office action dated September 12, 2001, the examiner included a requirement for information, requiring Dave 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 Dave in reply to the requirement for information, will be accepted as a complete reply to the requirement for information?
A A statement by Dave that the information required to be submitted is unknown and is not readily available to Dave.
B A statement by Dave that the requirement for information is improper because it was included in a non-final Office action.
C A statement by Dave that the requirement for information is improper because Dave is not an individual identified under 37 CFR 1.56(c).
D A statement by Dave that the requirement for information is improper because information used to draft a patent application may not be required unless the examiner identifies the existence of a relevant database known by Sam that could be searched for a particular aspect of the invention.

Correct Answer(s):
A
Related MPEP Chapter(s):
MPEP 700 - Examination of Applications
Answer Reasoning:ANSWER: (A) is the correct answer. See 37 CFR § 1.105(a)(3); 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." The given facts do not state that the applicant did not understand the requirement, or the reply was ambiguous and a more specific answer is possible. (B) is incorrect because the requirement for information may be included in an Office action, or sent separately. 37 CFR § 1.105(b). (C) is incorrect because 37 CFR § 1.56(c) includes each attorney or agent who prepares or prosecutes the application. 37 CFR § 1.56(c)(2). (D) is incorrect because information used to draft a patent application may be required and there is no support for (D) in 37 CFR § 1.105. (E) is incorrect because (A) is correct.

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6. According to the USPTO rules and the procedures set forth in the MPEP, in which of the following situations would the finality of an Office action rejection be improper?

I. The final Office action rejection is in a first Office action in a substitute application that contains material which was presented in the earlier application after final rejection but was denied entry because the issue of new matter was raised.

II. The final Office action rejection is in a first Office action in a continuing application, all claims are drawn to the same invention claimed in the earlier application, and the claims would have been properly finally rejected on the grounds and art of record in the next Office action if they had been entered in the earlier application.

III. The final Office action rejection is in a first Office action in a continuation-in-part application where at least one claim includes subject matter not present in the earlier application.
A I
B II
C III
D I and III
E II and III

Correct Answer(s):
D
Related MPEP Chapter(s):
MPEP 700 - Examination of Applications
Answer Reasoning:ANSWER: (D) is the correct answer. MPEP § 706.07(b). In both I and III the finality is improper. MPEP § 706.07(b). Therefore (A) and (C) are incorrect. In II the finality is proper. MPEP § 706.07(b). Therefore (B) and (E) are incorrect.

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9. Which of the following is not in accordance with the provisions of the USPTO rules and the procedures set forth in the MPEP?
A Where joint inventors are named, the examiner should not inquire of the patent applicant concerning the inventors and the invention dates for the subject matter of the various claims until it becomes necessary to do so in order to properly examine the application.
B Under 35 USC 119(a), the foreign priority benefit may be claimed to any foreign application that names a U.S. inventor as long as the U.S. named inventor was the inventor of the foreign application invention and 35 USC 119(a)-(d) requirements are met.
C Where two or more foreign applications are combined in a single U.S. application, to take advantage of the changes to 35 USC 103 or 35 USC 116, the U.S. application may claim benefit under 35 USC 119(a) to each of the foreign applications provided all the requirements of 35 USC 119(a)-(d) are met.
D One of the conditions for benefit under 35 USC 119(a) is that the foreign application must be for the same or a nonobvious improvement of the invention described in the United States application.
E If a foreign application for which priority is being claimed under 35 USC 119 is filed in a country which does not afford similar privileges in the case of applications filed in the United States or to citizens of the United States and the foreign country is not a WTO member country, any claim for the foreign priority thereto by a U.S. application will not be effective.

Correct Answer(s):
D
Related MPEP Chapter(s):
MPEP 600 - Parts, Form, and Content of Application
Answer Reasoning:ANSWER: (D) is the best answer as the inventions must be the same in the foreign and U.S. applications. 35 U.S.C. § 119(a). As to (A) through (C), see MPEP § 605.07. As to (E), see 35 U.S.C. § 119, 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.

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12. The Potter patent application was filed on June 6, 2002, claiming subject matter invented by Potter. The Potter application properly claims priority to a German application filed on June 6, 2001. A first Office action contains a rejection of all the claims of the application under 35 USC 103(a) based on a U.S. patent application publication to Smith in view of a U.S. patent to Jones. A registered practitioner prosecuting the Potter application ascertains that the relevant subject matter in Smith's published application and Potter's claimed invention were, at the time Potter's invention was made, owned by ABC Company or subject to an obligation of assignment to ABC Company. The practitioner also observes that the Smith patent application was filed on April 10, 2001 and that the patent application was published on December 5, 2002. Smith and Potter do not claim the same patentable invention. To overcome the rejection without amending the claims, which of the following timely replies would comply with the USPTO rules and the procedures set forth in the MPEP to be an effective reply for overcoming the rejection?
A 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.
B 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.
C A reply that consists of an affidavit or declaration under 37 CFR 1.132 stating that the affiant has never seen the invention in the Potter application before.
D A reply that consists of an affidavit or declaration under 37 CFR 1.131 properly proving invention of the claimed subject matter of Potter application only prior to June 6, 2001.
E A reply that consists of a proper terminal disclaimer and affidavit or declaration under 37 CFR 1.130.

Correct Answer(s):
B
Related MPEP Chapter(s):
MPEP 700 - Examination of Applications
Answer Reasoning:ANSWER: (B) is the most correct answer. See 35 U.S.C. § 103(a); MPEP §§ 706.02(l)(1) and 2145. The prior art exception in 35 U.S.C. § 103(c) is applicable because the Smith reference is only prior art under 35 U.S.C. § 102(e), (f), or (g), was applied in a rejection under 35 U.S.C. § 103(a), and was commonly owned at the time Potter made the invention claimed by Potter. See MPEP § 706.02(l)(1). Answer (A) is not a correct answer in that one cannot show nonobviousness by attacking the references individually where the rejections are based on a combination of references. See MPEP § 2145. Answer (C) is not a correct answer. An affirmation that the affiant has never seen the invention before is not relevant to the issue of nonobviousness of the claimed subject matter. See MPEP 716. Answer (D) is not a correct answer. Invention must be proved prior to the effective filing date of Smith, which is April 10, 2001. See MPEP § 715. Answer (E) is not a correct answer. A terminal disclaimer and affidavit or declaration under 37 CFR § 1.130 are not proper because the Potter application and the Smith reference are not claiming the same patentable invention. See MPEP § 706.02(k).

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24. Sam is a sole proprietor of Sam's Labs, which has no other employees. Sam invented a new drug while doing research under a Government contract. Sam desires to file a patent application for his invention and assign it to Sam's Labs. Sam has licensed Rick, also a sole proprietor with no employees, to make and use his invention. Sam wants to claim small entity status when filing a patent application for his invention. Sam also wants to grant the Government a license, but will not do so if he will be denied small entity status. Sam has limited resources and wants to know whether, how, and to what extent he may claim small entity status. Which of the following is not in accord with the USPTO rules and the procedures set forth in the MPEP in relation to applications filed on or after January 1, 2001?
A Sam's Labs is a small business concern for the purposes of claiming small entity status for fee reduction purposes.
B If Sam grants a license to the Government resulting from a rights determination under Executive Order 10096, it will not constitute a license so as to prohibit claiming small entity status.
C The establishment of small entity status permits the recipient to pay reduced fees for all patent application processing fees charged by the USPTO.
D Sam may establish small entity status by a written assertion of entitlement to small entity status. A written assertion must: (i) be clearly identifiable; (ii) be signed; and (iii) convey the concept of entitlement to small entity status, such as by stating that applicant is a small entity, or that small entity status is entitled to be asserted for the application or patent.
E While no specific words or wording are required to assert small entity status, the intent to assert small entity status must be clearly indicated in order to comply with the assertion requirement.

Correct Answer(s):
C
Related MPEP Chapter(s):
MPEP 500 - Receipt and Handling of Mail and Papers
Answer Reasoning:ANSWER: (C) is the most correct answer. Not all fees are subject to the small entity reduction. See, for example, 37 CFR § 1.17(p). As to (A), a small business concern for the purposes of claiming small entity status for fee reduction purposes is any business concern that: (i) has not assigned, granted, conveyed, or licensed, and is under no obligation under contract or law to assign, grant, convey, or license, any rights in the invention to any person, concern, or organization which would not qualify for small entity status as a person, small business concern, or nonprofit organization. and (ii) meets the standards set forth in the appropriate section of the code of federal regulations to be eligible for reduced patent fees. Sam's Labs meets all of the elements required by 37 CFR § 1.27 (a)(2). Statement (B) contains all of the elements required by 37 CFR § 1.27 (a)(4). Statement (D) contains all of the elements required by 37 CFR § 1.27 (c)(1). Statement (E) contains all of the elements required by 37 CFR § 1.27 (c)(1)(iii).

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25. 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?
A Remand for a fuller description of the claimed invention.
B Remand for a clearer explanation of the pertinence of the references.
C Remand for a selection by the primary examiner of a preferred or best ground of rejection when multiple rejections of a cumulative nature have been made by the examiner.
D 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.
E Remand to the primary examiner to prepare a supplemental examiner's answer in response to a reply brief.

Correct Answer(s):
D
Related MPEP Chapter(s):
MPEP 1200 - Appeal
Answer Reasoning:ANSWER: (D) is the most correct answer. See MPEP § 1211.02. (D) is not a proper basis for remand because the Board has no authority to require the examiner to consider an affidavit which has not been entered after final rejection and which was filed while the application was pending before the examiner. Pursuant to 37 CFR § Part 41, "[a]ffidavits...submitted after the case has been appealed will not be admitted without a showing of good and sufficient reasons why they were not earlier presented." The facts are silent regarding whether such a showing was made. However, as discussed in MPEP § 715.09, "Review of an examiner's refusal to enter [and consider] an affidavit as untimely is by petition and not by appeal to the Board of Patent Appeals and Interferences. In re Deters, 515 F.2d 1152, 185 USPQ 644 (CCPA 1975); Ex parte Hale, 49 USPQ 209 (Bd. App. 1941)." Thus, remand by the Board cannot be expected. Support for each of answers (A), (B), (C) and (E) is specifically provided for in MPEP § 1211.

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29. In accordance with the USPTO rules and the procedures set forth in the MPEP, which of the following papers is precluded from receiving the benefit of a certificate of mailing or transmission under 37 CFR 1.8?
A An amendment, replying to an Office action setting a period for reply, transmitted by mail with a certificate of mailing to the USPTO from a foreign country.
B An amendment, replying to an Office action setting a period for reply, transmitted by facsimile with a certificate of transmission to the USPTO from a foreign country.
C An information disclosure statement (IDS) under 37 CFR 1.97 and 1.98 transmitted after the first Office action.
D A request for continued examination (RCE) under 37 CFR 1.114.
E An appeal brief.

Correct Answer(s):
A
Related MPEP Chapter(s):
MPEP 500 - Receipt and Handling of Mail and Papers
Answer Reasoning:ANSWER: (A) is the most correct answer. See MPEP § 512, which states "The Certificate of Mailing procedure does not apply to papers mailed in a foreign country." (B) is not correct. See MPEP § 512. Certificate of transmission procedure applies to correspondence transmitted to the Office from a foreign country and an amendment is not prohibited from being transmitted by facsimile and is not precluded from receiving the benefits under 37 CFR § 1.8. (C) is not correct. See MPEP § 609, under the heading "Time for Filing." An IDS will be considered to have been filed on the date of mailing if accompanied by a properly executed certificate of mailing or facsimile transmission under 37 CFR § 1.8. (D) is not correct. See MPEP § 706.07(h) Comparison Chart. An RCE is entitled to the benefit of a certificate of mailing or transmission under 37 CFR § 1.8. (E) is not correct. See MPEP § 1206. An appeal brief is entitled to the benefit of a certificate of mailing or transmission under 37 CFR § 1.8 because it is required to be filed in the Office within a set time period which is 2 months from the date of appeal.

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33. A claim in a pending patent application for an electric toothbrush is rejected under pre-AIA 35 USC 102 as being anticipated by a U.S. Patent, which was issued to Lancer, the sole name inventor, for a similar electric toothbrush. The Lancer patent was issued one day before the filing date of the application in question. The claim in the pending application contains a limitation specifying the location of an on/off switch. In accordance with USPTO rules and procedures set forth in the MPEP, which of the following arguments, if true, would overcome the rejection?
A The Lancer patent discloses and claims an electric toothbrush, but does not mention whether its toothbrush includes a power supply.
B Evidence is submitted to show the electric toothbrush claimed in the application is commercially successful.
C The Lancer patent teaches away from the bristles of the claimed toothbrush.
D Lancer is one of the three named inventors of the claimed toothbrush in the pending application.
E The on/off switch in the Lancer patent is on a different side of the body than that recited in the claim for the electric toothbrush in the patent application.

Correct Answer(s):
A
Related MPEP Chapter(s):
MPEP 2100 - Patentability
Answer Reasoning:ANSWER: (A) and (E) are accepted as correct answers. Regarding (E), see MPEP § 2131. To anticipate a claim, the elements of a reference "must be arranged as required by the claim...." See MPEP § 2131, citing In re Bond, 910 F.2d 831, 15 USPQ2d 1566 (Fed. Cir. 1990). In (E), the on/off switch of Lancer's toothbrush is arranged differently than that of the claimed toothbrush. (A) is accepted as correct because the given facts do not specify the location of the power supply as being included within the toothbrush. Though the description of the toothbrush as being electric can imply an inherent source of power, it may also may imply an external power source for the electric toothbrush. Accordingly, (A) is also accepted as a correct answer in the circumstances. (B) is incorrect because evidence of secondary considerations, such as commercial success, is irrelevant to a 35 U.S.C. § 102 rejection. See MPEP § 2131.04. (C) is incorrect. "'Arguments that the alleged anticipatory prior art...'teaches away from the invention'...[are] not 'germane' to a rejection under section 102.'" MPEP § 2131.05 (quoting Twin Disc, Inc. v. United States, 231 USPQ 417, 424 (Cl. Ct. 1986)). (D) is incorrect. "The term 'others' in 35 U.S.C. 102(a) refers to any entity which is different from the inventive entity. The entity need only differ by one person to be 'by others.' This holds true for all types of references eligible as prior art under 35 U.S.C. 102(a) including publications...." MPEP § 2132. Here, because Lancer is only one of three inventors of the claim, the patent is by others.

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34. Inventor files an application containing the following original Claim 1:

1. A widget comprising element A, and element B.

In a first Office action on the merits, a primary examiner rejects claim 1 under 35 USC 103 as being obvious over reference X. Reference X explicitly discloses a widget having element A, but it does not disclose element B. The examiner, however, takes official notice of the fact that element B is commonly associated with element A in the art and on that basis concludes that it would have been obvious to provide element B in the reference X widget. In reply to the Office action, the registered practitioner representing the applicant makes no amendments, but instead requests reconsideration of the rejection by demanding that examiner show proof that element B is commonly associated with element A in the art. Which of the following actions, if taken by the examiner in the next Office action would be in accord with the USPTO rules and the procedures set forth in the MPEP?

I. Vacate the rejection and allow the claim.

II. Cite a reference that teaches element B commonly associated with element A in the art and make the rejection final.

III. Deny entry of applicant's request for reconsideration on the ground that it is not responsive to the rejection and allow applicant time to submit a responsive amendment.
A I and II only.
B II only.
C II and III only.
D I, II, and III.
E I and III only.

Correct Answer(s):
A
Related MPEP Chapter(s):
MPEP 2100 - Patentability
Answer Reasoning:ANSWER: (A) is the most correct answer. MPEP § 2144.03 provides that when an applicant seasonably traverses an officially noticed fact, the examiner may cite a reference teaching the noticed fact and make the next action final. Here, applicant did seasonably traverse the noticed fact by demanding proof in response to the rejection. II is therefore an appropriate action by the examiner. I is also an appropriate action because the examiner should vacate a rejection based on official notice if no support for the noticed fact can be found in response to a challenge by the applicant. See In re Ahlert, 424 F.2d 1088, 1091 (C.C.P.A. 1970) ("[a]ssertions of technical facts in areas of esoteric technology must always be supported by citation to some reference work" and "[a]llegations concerning specific "knowledge" of the prior art, which might be peculiar to a particular art should also be supported"). (B) is incorrect because (A) is correct. (C), (D), and (E) are incorrect because action III is improper. An applicant is entitled to respond to a rejection by requesting reconsideration, with or without amending the application. 37 CFR § 1.111(a)(1). Applicant is also required to timely challenge a noticed fact in order to preserve the issue for appeal. MPEP § 2144.03.

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44. 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:
A Indicate the claim allowable over the prior art because there is no teaching, motivation or suggestion to increase the amount of polypropylene from 34.9% to 35% and decrease the amount of polyethylene from 65.1% to 65%.
B Reject the claim under 35 USC 102 as anticipated by the prior art reference.
C Reject the claim under 35 USC 103 as obvious over the prior art reference.
D Reject the claim alternatively under 35 USC 102 as anticipated by or under 35 USC 103 as obvious over the prior art reference.
E None of the above.

Correct Answer(s):
C
Related MPEP Chapter(s):
MPEP 2100 - Patentability
Answer Reasoning:ANSWER: (C) is the most correct answer. 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. In Titanium Metals Corp. v. Banner, 778 F.2d 775, 783, 227 USPQ 773, 779 (Fed. Cir. 1985), a claim recited a titanium base alloy consisting essentially of 0.8% nickel, 0.3% molybdenum, up to 0.1% maximum iron, and the balance titanium. A prior art reference described two similar alloys: (i) one with 0.25% molybdenum, 0.75% nickel, and balance titanium; and (ii) another with 0.31% molybdenum, 0.94% nickel, and balance titanium. The court held: As admitted by appellee's affidavit evidence from James A. Hall, the Russian article discloses two alloys having compositions very close to that of claim 3, which is 0.3% Mo and 0.8% Ni, balance titanium. The two alloys in the prior art have 0.25% Mo-0.75% Ni and 0.31% Mo-0.94% Ni, respectively. The proportions are so close that prima facie one skilled in the art would have expected them to have the same properties. Appellee produced no evidence to rebut that prima facie case. The specific alloy of claim 3 must therefore be considered to have been obvious from known alloys. Id. Thus, (A) is incorrect. (B) and (D) are incorrect because a claim is anticipated by a prior art reference only when the prior art discloses, either expressly or inherently, every limitation of the claimed invention. (E) is incorrect because (C) is correct.