Missed Practice Problems Flashcards

Question

Arnold Horshack is the inventor of a new and improved turkey call, which he conceived and reduced to practice on January 30, 2012. The device creates the most obnoxious sound, which approximates a wheezing hyena. Field studies show that turkeys appear to be drawn to the noise out of curiosity, or perhaps pity for what sounds like a dying animal. Horshack files a patent application in Canada on April 1, 2012, and on May 1, 2012, he files a U.S. patent application claiming priority to his Canadian filing date. For financial reasons, the U.S. application is expressly abandoned on July 1, 2012. The Canadian application publishes on October 1, 2013. Freddie Washington files a U.S. nonprovisional patent application on November 1, 2013, which relates to a turkey call that approximates a wheezing coyote. Which of the following would be the earliest date the Horshack disclosure could be used as prior art against Washington? A) January 12, 2012. B) April 1, 2012. C) May 1, 2012. D) July 1, 2012. E) October 1, 2013.

Answer 1

E) October 1, 2013. Reasoning: The US patent application was expressly abandoned, which means that it won't be published. That leaves only the Canada application which publishes October 1, 2013. Since the foreign application isn't used for priority, the publication date is the only date that matters for prior art.

Answer 2

C) Convert the nonprovisional patent application into a provisional patent application because provisional patent applications do not require claims. Reasoning: It is true that the Patent Law Treaties Implementation Act of 2012 (“PLT”) changes the law with respect to obtaining a filing date. Specifically, a claim is no longer required in order to have a filing date awarded. However, the provisions of the PLT that make it unnecessary to have a claim in order to obtain a filing date apply only to applications filed on or after December 18, 2013. Thus, A and B are wrong.

Answer 3

A) Are entitled to an effective filing date as of the filing date of the CIP because they are not supported by either of the earlier applications. Reasoning: The CIP includes a new disclosure, therefore the claims are directed towards that new disclosure and are not supported by the earlier applications and can't use them for priority. They can only be used for priority if the disclosures in the applications support the claims.

Answer 4

B) Priority needs to be claimed in the continuation application. Reasoning: MPEP 201.07 - The inventorship in the continuation application must include at least one inventor named in the prior-filed application, and the continuation application must also claim the benefit of the prior-filed application under 35 U.S.C. 120, 121, 365(c), or 386(c). See 37 CFR 1.78, especially paragraphs (d) and (e), and MPEP § 211 et seq. for additional requirements and more information regarding entitlement to the benefit of the filing date of a prior-filed copending application.

Answer 5

C) Point out that a stale oath no longer must be replaced. Reasoning: MPEP 602.03 - The Office does not check the date of execution of the oath or declaration and will not require a newly executed oath or declaration based on an oath or declaration being stale (i.e., when the date of execution is more than three months prior to the filing date of the application) or where the date of execution has been omitted. However, applicants are reminded that they have a continuing duty of disclosure under 37 CFR 1.56.

Answer 6

A) No protection can be obtained because it is barred by 102(b). Reasoning: Design applications can't claim priority from provisional applications. I originally choose D because I thought that would be a way to get around it. This is what I thought why: MPEP 201.06 - A design application may be considered to be a divisional of a utility application (but not of a provisional application), and is entitled to the filing date thereof if the drawings of the earlier filed utility application show the same article as that in the design application sufficiently to comply with 35 U.S.C. 112(a). However, such a divisional design application may only be filed under the procedure set forth in 37 CFR 1.53(b), and not under 37 CFR 1.53(d). See MPEP § 1504.20 However, the design has to be disclosed in the utility application.

Answer 7

B) Your client can attend the interview. Reasoning: I thought it was E initially. However, in 713.09, it says "Interviews may be held after the expiration of the shortened statutory period and prior to the maximum permitted statutory period of 6 months without an extension of time. See MPEP § 706.07(f)."

Answer 8

C) October 23, 2016 and April 3, 1997. Reasoning: The patent term is 20 years from filing. The filing date of the PCT is the date it enters the national stage.

Answer 9

F Reasoning: It is prior art as of its publication date

Answer 10

F Reasoning: Depends if it is filed before or after 11-29-00. If after, then the international application just has to indicate the US, then it has a pre-AIA 102(e) date as of it's filing date.

Answer 11

F Reasoning: Can still be prior art

Answer 12

T Reasoning: 2135.01

Answer 13

D) Whether one of ordinary skill in the art would understand the claimed method incorporating the law of nature to be obvious. Reasoning: Don't overthink it and look for particularities. A-C deal with 101 considerations while D deals with obviousness, which is a 103 consideration.

Answer 14

E) Statements 1, 2 and 3 Reasoning: The use of the concept can't preempt its use in other fields. If the claim covers all known and unknown uses of the concept, then it is abstract. Lastly, if the claim covers all possible solutions, then it is just a statement of the problem.

Answer 15

A) Statement 1 Reasoning: If a particular machine or apparatus is incorporated into the claimed method, this weighs in favor of patent eligibility in that there is "significantly more" than the method alone. This is particularly true when the method steps are specifically tied to the machine or apparatus. Factors weighing against eligibility are: (1) No recitation of a machine or transformation (either express or inherent). (2) Insufficient recitation of a machine or transformation. (3) Involvement of machine or transformation with the steps is merely nominally, insignificantly, or tangentially related to the performance of the steps. (4) Machine is generically recited such that it covers any machine capable of performing the claimed step(s). (5) Machine is merely an object on which the method operates. (6) Transformation involves only a change in position or location of an article. (7) The claim would monopolize a natural force or patent a scientific fact; e.g., by claiming every mode of producing an effect of that law of nature. (8) A law of nature is applied in a merely subjective determination. (9) A law of nature is merely nominally, insignificantly, or tangentially related to the performance of the steps. (10) The claim is a mere statement of a general concept. (11) Use of the concept, as expressed in the method, would effectively grant a monopoly over the concept. (12) Both known and unknown uses of the concept are covered, and can be performed through any existing or future-devised machinery, or even without any apparatus. (13) The claim only states a problem to be solved. (14) The general concept is disembodied. (15) The mechanism(s) by which the steps are implemented is subjective or imperceptible. Found in 2106.05(b)

Answer 16

F Reasoning: 37 CFR 1.135(c), 1.136 (c) When reply by the applicant is a bona fide attempt to advance the application to final action, and is substantially a complete reply to the non-final Office action, but consideration of some matter or compliance with some requirement has been inadvertently omitted, applicant may be given a new time period for reply under § 1.134 to supply the omission.

Answer 17

F Reasoning: A copy of the application doesn't require a petition, but access does. 37 CFR 1.14(c)(1)(i)

Answer 18

T Reasoning: 37 CFR 1.53(d) 37 CFR 1.53(d) pertains to the filing requirements for a Continued Prosecution Application (CPA). According to this regulation, a CPA is considered a continuation of the prior application. Therefore, a patent issuing from a CPA would carry the same application number and filing date as the prior parent application.

Answer 19

B) The prior art teaches away from the claimed combination and the combination yields more than predictable results. Reasoning: I chose A originally, but A is just a lack of teaching, while B is a teaching away from the combination, which is a stronger argument.

Answer 20

D) Statements 2 and 3 Reasoning: 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''). Look in MPEP 2181 page 496.

Answer 21

A) Not be construed as limited to a computer having a specific set of characteristics and capabilities, unless the term is modified by other claim terms or clearly defined in the specification to be different from its common meaning. Reasoning: In In re Paulsen, the claims, directed to a portable computer, were rejected as anticipated under §102 by a reference that disclosed a calculator, because the term ˜computer'' was given the broadest reasonable interpretation consistent with the specification to include a calculator, and a calculator was considered to be a particular type of computer by those of ordinary skill in the art. Answer B is incorrect because you simply cannot give the broadest reasonable interpretation without reference to what the specification includes; otherwise you would be giving more claim scope than the written description supports. Answer C is incorrect because the inclusion of a "computer" does ordinarily satisfy the machine-or-transformation test, particularly when the process steps are indicated to be performed on a computer. Answer D is incorrect; the term "computer" does not have a well-defined meaning, and does frequently include far more than what the generally understood term encompasses. Computer is a wide term.

Answer 22

D) February 28, 2018. Reasoning: An applicant seeking entry into the US National phase via PCT has to pay the national fee no later than 30 months from the earliest priority date being asserted. Here, the priority being asserted is August 30, 2015. When 30 months are added to that date, you obtain the last day of February, 2018. Don't even consider that the year in question might have been a leap year (and so the perfect answer would be February 29, 2019). Unless specifically told otherwise on the Exam, the year in question is NOT a leap year, and February has 28 days. Moreover, this is an example that you may not get the "right" answer among the choices; you're looking for the "best" answer. February 28 is clearly the best answer here, even if it's not "right."

Answer 23

D) The name of the inventor. Reasoning: MPEP 1810

Answer 24

C) March 12, 1997. Reasoning: Since this PCT was filed before 11/29/00, the 102(e) date for a later-issuing US patent is the day the filing requirements (under 371, a.k.a. the FOoT rule) were complete. Here, the day the last of these (fee, oath, translation) arrived was March 12, 1997. The later objection to the declaration does not move that date.

Answer 25

D) The filing fee must be submitted. Reasoning:

Answer 26

A) Nothing. No additional countries need to be designated. Reasoning: All member countries of WIPO are automatically designated in any PCT applications filed after 1/1/04. Hence, they are all already designated.

Answer 27

D) Claiming less than Jane had a right to claim in her patent may be the basis of a reissue. Reasoning: Broadening claims can only be filed in a reissue, not a reexamination. That removes A and B as answers. There is no deadline for a reexamination, only a reissue, so C is out. Reexaminations are filed under 37 CFR 1.510. That removes E as an answer.

Answer 28

C) Argue that obvious to try is an inappropriate standard to apply for a rejection under 35 U.S.C. 103. Reasoning: "Obvious to try" is a valid standard to apply. MPEP 2141 page 263

Answer 29

D) Statement 1 and 2 Reasoning: See teaching points for In re ICON Health & Fitness and Agrizap, Inc. v. Woodstream Corp. Statement 3 contradicts the teaching point from Agrizap.

Answer 30

E) Statements 1, 2 and 3. Reasoning: In re Kubin specifically cites In re O'Farrell for statements 1 and 2. The Federal Circuit in summarizing statement 1 explains that "In such circumstances, where a defendant merely throws metaphorical darts at a board filled with combinatorial prior art possibilities, courts should not succumb to hindsight claims of obviousness." Thus, statement 3 is also a correct articulation as well. Presumably, the throwing of darts at the board equates with not having any particular direction within the prior art, requiring the examiner to merely pick and choose based on the absence of reason or logic.

Answer 31

D) Compound Y was one of only 20 compounds identified in the prior art to have the most positive therapeutic value for treating memory loss and, therefore, the prior art as a whole would not suggest to one of skill in the art that it would be obvious to try Compound Y over the other 19 compounds. Reasoning: The "obvious to try" reasoning for a obviousness rejection is a valid argument by the examiner.

Answer 32

B) The failure to claim priority in the continuation application can be corrected by obtaining a Certificate of Correction and also filing a Grantable Petition and fee for Late Assertion of Priority. Reasoning: 216.01

Answer 33

C) All the claims of the patent are invalid under 35 USC 102(a)(1). Reasoning: Don't overthink it.

Answer 34

B) Abandon the reissue application. Reasoning: The objection cannot be overcome.

Answer 35

B) The McElroy publication will create an insurmountable 102(a) rejection. Reasoning: Read the question closely! It's asking about the Dent patent. Dent will not be able to obtain a patent on this invention because the McElroy publication occurred before the effective filing date of his application. No exception under AIA 102(b) can save Dent because he is not an inventor. This was formerly a problem under pre-AIA 102(f) and still remains a problem under AIA 102. That is why the new law is characterized as a “first inventor to file” rule. (A) is incorrect because the disclosure to McElroy was done in confidence, which means that it would not be prior art. (C) and (D) are incorrect because Dent will not be able to overcome the rejections because he is not an inventor, even with a 130 Affidavit. He merely filed an application on an invention where he did not provide any conception whatsoever. (E) is incorrect because (B) is correct.

Answer 36

E) None of the above. Reasoning: This may seem unfair, but the USPTO has taken the firm position that if, at any time, an application includes claims that gain priority support only in a filing that occurred on or after March 16,2013, the entire application will be considered under the AIA. Further, the USPTO has also said that, once such claims have been presented in an application, there is no cure; the canceling of the AIA claims will not work to return the application to one deserving of pre-AIA treatment. Thus, (D) is incorrect. (A) is incorrect. As initially filed, the Foreman application was not truly a transition application, because it was confined to claiming only what was disclosed in the provisional patent application. The addition of claims to the latching device, however, means that the nonprovisional will be considered under the AIA. (B) and (C) are incorrect. It is true that the nonprovisional is entitled to claim the benefit of the provisional filing date, but only with respect to what was present at the time of filing. The latching device was not present at the time of the provisional filing. It is the claiming of the latching device that is problematic.

Answer 37

D) The failure to preserve priority can be restored via a PLTIA filing because the delay in filing the nonprovisional patent application was unintentional; thus, the application will be afforded pre-AIA treatment. Reasoning: Thanks to the Patent Law Treaties Implementation Act (“PLTIA”), applicants who unintentionally fail to file an application within the 12-month priority period can have that period extended up to an additional 2 months. Thus, (C) is incorrect. Further, this would not be a scenario for unavoidability. Douglas incorrectly calculated the filing date of the provisional patent application. While it is true that the USPTO was closed on December 25, 2013, if a filing were made on a Saturday, Sunday or Federal Holiday, the USPTO will still award the date of receipt via EFS as the filing date. Based on the story contained within the question, it is obvious that Douglas did not intend to lose the ability to claim priority to the provisional filing; thus, the mistake was unintentional. As a result, her ability to claim priority to the provisional filing may be restored. Once restored, since the provisional application was filed prior to March 16, 2013, and further because the provisional and nonprovisional applications are identical, the application will be examined under the provisions of pre-AIA, not AIA. Thus, (A) is incorrect. (B) is close, but not completely correct. Douglas will still need to seek restoration of the ability to claim priority. The PLTIA does not automatically make it possible to claim priority within 14 months. (E) is incorrect because the nonprovisional application is not a substitute application. Upon seeking restoration and paying the appropriate fee, Douglas will be allowed to claim priority from the December 25, 2013, provisional patent application.

Answer 38

A) January 2, 2013. Reasoning: I originally chose C because foreign patents are prior art as of their publication date. An applicant may opt out of publication, but then they waive their right to file a foreign patent. Since he already filed, he can't opt out of publication. Thus, the US patent will publish and the prior art date will be the date of the foreign filing.

Answer 39

B) Lee will be able to overcome the rejection of claims 1 – 22 by pointing out that the Claire reference is not prior art. Reasoning: First notice that the Lee nonprovisional patent application will be treated under AIA. Although the filing date of the International Application is prior to March 16, 2013, the nonprovisional patent application contains claims not entitled to the priority date of the International Application. Thus, the entirety of the nonprovisional patent application will be examined under the AIA. Most importantly, that means that US patent applications and US patents will be prior art as of their foreign filing dates, provided that the foreign filing dates are used to support priority in those published US application, granted US patents or published PCT applications that designate the US. Therefore, the Claire reference will be prior art as of its filing date on April 1, 2013, which means that the International Application filing date of March 15, 2013, will remove the Claire reference from the obviousness rejections. We know this to be true because the Claire reference in combination with Taft (from 1925) was used to reject the pulmonary mattress claims that are supported by the March 15, 2013, International Application filing. Thus, the claims that include the pulmonary mattress plus vibration and pulmonary mattress plus coin-operated vibration, will likewise be patentable once Claire is removed; even those extended features do not obtain priority until the filing of the nonprovisional patent application on March 3, 2014. (A) is incorrect because Claire will be able to be removed as a reference. (C), (D) and (E) are all incorrect because the McHenry, Cosmappo and Hampton references each have a filing date prior to the nonprovisional filing date of March 3, 2014.

Answer 40

D) Provide a statement to the Patent Office no later than August 15, 2013, which identifies the nonprovisional patent application as a transition application. Reasoning: Remember, once the application is deemed AIA, then it can't be reversed! Thus, the other answers are incorrect.

Answer 41

B) Richard will obtain the patent because he was the first to conceive and had diligence beginning before Christine's filing date. Reasoning: The key to getting this question correct is to accurately determine which law will apply. Christine filed her application on December 31, 2012, which means her application is entitled to pre-AIA treatment. Richard filed his application on March 18, 2013, which means his application will receive AIA treatment. However, in this case, the claims of the two applications are identical, which means there will be a contest at the Patent Office to determine who is entitled to receive the claims. In the situation where one application is entitled to pre-AIA treatment and the other application is entitled to AIA treatment, the contest will be an Interference Proceeding, not a Derivation Proceeding. Thus, Christine will not prevail simply because she was the first to file, and (A) is incorrect. In fact, on these facts, Christine will not prevail at all. Richard conceived first and filed second. As the junior party, for him to prevail, he would have had to be diligent from immediately before the conception of the senior party (i.e., Christine) straight through and uninterrupted until his reduction to practice. Richard did break diligence by going on vacation, but the facts state that he once again diligently worked on his invention prior to Christine’s conception. This restarted diligence is acceptable as long as it now goes continuously through the time of Richard’s reduction to practice, which can either be actual or constructive. This time, Richard remains diligent until he achieves a working prototype (i.e., actual reduction). Any break in diligence after that is irrelevant. Therefore, Richard will prevail. This leaves us with answers (B) or (D). (D) is incorrect because it is irrelevant whether the senior party has achieved an actual reduction to practice. Thus, (B) is the best answer.

Answer 42

D) II and IV Reasoning: Raven filed his application in Australia on December 14, 2012. As a general matter, he has up to 12 months to file an application in the US claiming the benefit of this foreign filing date. However, as the result of the Patent Law Treaties Implementation Act, in the situation where the failure to claim priority was unintentional, it can be restored. The PLTIA gives the applicant an additional two months to claim priority if, and only if, the failure was the result of unintentional delay. Here, the question clearly suggests that the intent was to file within the 12-month timeframe, but due to the fact that his e-mail was erroneously filed as SPAM, the application was not filed and priority was not claimed within the typical 12-month window. Thus, Raven will be able to have priority restored. As a result, the Raven US patent application will be treated under pre-AIA because the Australian filing date is prior to March 16, 2013, and because the US filing does not include any claims that enjoy priority only on or after March 16, 2013. Therefore, I is false and II is true. Unfortunately the restoration of priority does not save him. Under pre-AIA 102(b), a US patent application must be filed within 12 months of a sale or offer for sale in the US. Here, Raven offered a prototype of his invention for sale on December 17, 2012, in Las Vegas, Nevada. Therefore, he had only until December 17, 2013, within which to file a US patent application. Because the patent application was filed in the US on December 23, 2013, Raven has missed and will be barred under pre-AIA 102(b) from ever obtaining a patent on the prototype version of his zoom lens. Therefore, III is false and IV is true. The sale activity in Hollywood, California in March 2013 does not create a pre-AIA 102(b) impediment to patentability because it occurs within 12 months of his US filing; therefore, V is false.

Answer 43

D) Will not be considered. Reasoning: Derivation is only available for patents issuing on applications filed after March 16, 2013, AND have to be filed, no matter what, within one year of the patent issuing or the application publishing.

Answer 44

B) Be considered. Reasoning: A chip spec sheet is considered a publication under reexamination

Answer 45

C) The amendment is considered in accord with ordinary After Final PTO procedure. Reasoning: The prioritized examination is abandoned after a final office action. Therefore, the amendment is considered as normal. D was my original answer but that is a step behind.

Answer 46

E) None of the above. Reasoning: The application must be complete at the time of filing.

Answer 47

C) File a Reply Brief and argue against the new rejection. Reasoning: 1207.03(b) "This procedure should be used if an appellant feels an answer includes a new ground of rejection that has not been designated as such and wishes to reopen prosecution so that new amendments or evidence may be submitted in response to the rejection. However, if appellant wishes to submit only arguments, the filing of a petition under 37 CFR 1.181 is not necessary because appellant may submit arguments in a reply brief if they are responsive to arguments the examiner raised for the first time in the examiner’s answer."

Answer 48

D) Cannot be relied on unless admitted via petition to the Director under Rule 1.181. Reasoning: Only Evidence that has been admitted and considered may form the basis of the Appeal. Such non-admitted evidence cannot be relied on by either the Examiner or Applicant.

Answer 49

A) Either the United States Reports or the West Reporter system. Reasoning: The Board has a preference for United States Reports and West but, when not covered, any other 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 US Reports or West.

Answer 50

E) A claims appendix. Reasoning: E is required! Omitted means removed. "What may not be removed" is the question.

Answer 51

B) File a Reply Brief with arguments. Reasoning: The examiner didn't cite the other structures, just indicated them. So it will likely not constiitute a new rejection.

Answer 52

E) All of the above. Reasoning: Kind of a trick question. It is meant to be A or B. But, if any form of amendment accompanies a Reply Brief, it will treated as a request to reopen prosecution. Page 43 of MPEP 1200

Answer 53

D) Third-party submissions must include an English language translation of any non-English language item identified, so it will be necessary to translate the articles from Javanese into English. Reasoning: D was so apparently true, why wasn't it chosen right away? The rule is 6 months after publication or the date of first rejection, the later of those two.

Answer 54

C) Do nothing; it is already too late to file a third-party submission, because a third-party submission would have to have been filed prior to January 18, 2019. Reasoning: MPEP Chapter 1100. The preissuance submissions by third parties applies to any patent application (filed before, on or after September 16, 2012). § 1.290(b) sets forth the rules relative to the deadline for filing a preissuance third-party submission. A third-party submission must be filed prior to the earlier of: (1) The date a notice of allowance; or (2) The later of: (i) 6 months after the date on which the application is first published by the USPTO, or (ii) The date of the first rejection of any claim by the examiner. The Wolowitz application published July 18, 2018. Six months after that publication is January 18, 2019. The date the first rejection was given or mailed was October 25, 2018. Therefore, the later of these two dates is January 18, 2019. Thus, a third-party submission would have to be filed no later than the earlier of the Notice of Allowance, which has not yet occurred based on these facts, or January 18, 2019. Thus, a third-party preissuance submission of prior art must have been filed prior to January 18, 2019.

Answer 55

B) PA can file a written submission with the USPTO that includes prior art consisting of patents or printed publications. Reasoning: 37 CFR 1.501: Information content of submission: At any time during the period of enforceability of a patent, any person may file a written submission with the Office under this section, which is directed to the following information: (1) Prior art consisting of patents or printed publications which the person making the submission believes to have a bearing on the patentability of any claim of the patent; or (2) Statements of the patent owner filed by the patent owner in a proceeding before a Federal court or the Office in which the patent owner took a position on the scope of any claim of the patent. Any statement submitted under this paragraph must be accompanied by any other documents, pleadings, or evidence from the proceeding in which the statement was filed that address the written statement, and such statement and accompanying information under this paragraph must be submitted in redacted form to exclude information subject to an applicable protective order. The ITC is not a federal court

Answer 56

C) Statements made by the patent owner in a Federal court may not be used to determine whether to order reexamination of the Hagarthy patent, but if reexamination is ordered, such statements may be considered if they have previously been made a part of the file. Reasoning: 37 CFR 1.515: ... A statement and any accompanying information submitted pursuant to § 1.501(a)(2) will not be considered by the examiner when making a determination on the request ...

Answer 57

E) There is no continuing duty to supplement the submission. Reasoning: During the comment phase after proposing rules some questioned the USPTO with respect to whether there was a continuing duty to supplement any written submission. The USPTO responded: "The statute does not impose a continuing duty to supplement any submissions made pursuant to 35 U.S.C. 301(a)(2). Should a party determine that a subsequent submission is needed one can be filed in accordance with § 1.501."

Answer 58

A) Neutral Zone must demonstrate that Sally was under both an obligation to assign the invention and that she cannot be found after reasonable efforts to locate her, in order to be able to file a patent application without the inventor executing an oath or declaration. Reasoning: 35 U.S.C. 115(a) says that when one files a patent application under either 35 U.S.C. 111(a) (i.e., a nonprovisional patent application) or enters the national stage under 35 U.S.C. 371, each inventor must be named and each inventor or joint inventor must execute an oath or declaration unless "otherwise provided." It is 35 U.S.C. 115(b) that relates to the exception for each inventor to submit an oath or declaration. In lieu of executing an oath or declaration under subsection 115(a), the applicant for patent may provide a "substitute statement." The substitute statement must identify the individual for whom the statement pertains. Furthermore, the substitute statement must either state that the inventor identified is under an obligation to assign and refused to execute the oath or declaration (see 115(d)(2)(B)) or that the inventor is deceased, legally incapacitated or cannot be found after reasonable effort (see 115(d)(2)(A)). (E) is not correct because both elements need to be in the substitute statement. It is an assignment plus "either/or" situation.

Answer 59

A) An inventor Reasoning: MPEP 401, 37 CFR 1.31 An applicant for patent may file and prosecute the applicant's own case, or the applicant may give power of attorney so as to be represented by one or more patent practitioners or joint inventors, except that a juristic entity (e.g., organizational assignee) must be represented by a patent practitioner even if the juristic entity is the applicant. The Office cannot aid in the selection of a patent practitioner.

Answer 60

C) This is acceptable, but the application must contain an application data sheet specifying in the applicant information section that JARA LLC is the assignee. Reasoning: Pursuant to 37 CFR 1.46(b), if an application is made by a person other than the inventor the application must contain an application data sheet specifying the assignee, the person to whom the inventor is under an obligation to assign the invention, or a person who otherwise shows sufficient proprietary interest in the matter. A and B are incorrect because the American Invents Act and associated USPTO rules now allow for one other than the inventor to file a patent application. Specifically, an assignee is considered an "applicant" and may file. With respect to D and E. Section 1.495(c)(3)(ii) provides that the applicant must file an oath or declaration in compliance with § 1.63, or substitute statement in compliance with § 1.64, executed by or with respect to each actual inventor no later than the expiration of the time period set in the "Notice of Allowability" to avoid abandonment. However, both D and E are incorrect because Aloysius is not an inventor and would not be required to file an inventor's oath or declaration. Furthermore, even if Aloysius were an inventor, D would be incorrect because the patent examiner can and will issue a Notice of Allowability prior to the filing of an oath or declaration. The Notice of Allowability will set the due date by which the oath or declaration, or substitute statement, must be filed.

Answer 61

D) It would be wise to file a request for supplemental examination before filing a patent infringement action. Reasoning: Supplemental examination is a desirable procedural path to follow because it can inoculate a patent owner against potential charges of inequitable conduct. A and B are incorrect because inequitable conduct is always raised during patent litigation, and 35 U.S.C. 257(c) only absolves inequitable conduct if the supplemental examination and any reexamination ordered pursuant thereto are concluded before the date on which a patent infringement action is brought. C and E are incorrect because this is not a situation where there is "material fraud." The USPTO says that they will interpret "material fraud" to be more stringent than inequitable conduct. Inequitable conduct requires both materiality and intent. The question says that the claims are still patentable and the â€˜888 patent is not as bad as Kensyr thinks. So while he may have intended to deceive the USPTO, there is no materiality. If there is no inequitable conduct, there could not be any "material fraud."

Answer 62

E) I, II, III, IV and V Reasoning: A covered business method patent review is conducted as a post-grant review.

Answer 63

C) The petitioner has been offered a license to the patent. Reasoning: Merely being offered a license to a patent would not support the filing of a petition for a covered business method patent review. 37 CFR 42.302(a), which is consistent with Section 18 of the AIA, explains that a petitioner may not institute a covered business method patent review of the patent unless the petitioner, the petitioner's real party-in-interest, or a privy of the petitioner has been sued for infringement of the patent or has been charged with infringement under that patent. Charged with infringement is defined to mean a real and substantial controversy regarding infringement of a covered business method patent exists such that the petitioner would have standing to bring a declaratory judgment action in Federal court. Therefore, a challenge may be brought in A, B and D. Furthermore, 37 CFR 42.302(b) explains that a petitioner may not file a petition to institute a covered business method patent review of the patent where the petitioner, the petitioner's real party-in-interest, or a privy of the petitioner is estopped from challenging the claims on the grounds identified in the petition. Therefore, a challenge may be brought in E.

Answer 64

C) The inventor has assigned the rights to the invention. Reasoning: This isn't enough reasoning to sign a substitute statement. A and B is legal incapacity. D is required to sign a substitute statement. E is required to sign a substitute statement.

Answer 65

C) A non-exclusive licensee Reasoning: A non-exclusive licensee of the innovation would not have sufficient proprietary interest to file a patent application.

Answer 66

B) The oath or declaration does not always need to identify each inventor by his or her legal name; nor does the oath or declaration always need to identify a mailing address where the inventor customarily receives mail, and residence. Reasoning: All the things in B can be supplemented with an ADS, making B true. C is too restrictive.

Answer 67

E) II and III Reasoning: In order to be eligible for entry into the Patent Prosecution Highway (PPH), the applicant must have already received an indication of allowable subject matter in a related patent application from a partnering PPH office. The indication of allowable subject matter can come before the patent actually issues in the Office of Earlier Examination (OEE). Therefore, (I) is incorrect. In order to partake in the PPH, it is a requirement that the application with allowable subject matter from a partnering PPH office must share the common earliest date of priority. Therefore, (II) is correct. The rule for entry into the PPH says that examination cannot have started in the U.S. application prior to entry into the PPH. This requirement however relates to substantive examination. The USPTO has specifically explained: “if you have only received a notice to file missing parts, this would not be considered as substantive examination.” Thus, in this question, you have received but have not yet responded to the Notice of Missing Parts, which means that no substantive examination could possibly have started. Therefore, you could still enter the PPH.

Answer 68

D) An Information Disclosure Statement (IDS) should be filed within two months from the filing of a provisional application. Reasoning: (D) is correct because it is the only choice that is false. You do not file an Information Disclosure Statement (IDS) in a provisional patent application. There is no prosecution of a provisional patent application and, therefore, no duty to disclose prior art. (A) is incorrect because it properly states that secondary considerations must be considered, if present, when making an obviousness rejection. (B) is incorrect because it is a true statement: One or more assignees may conduct prosecution of a patent application as the applicant, or conduct prosecution of a supplemental examination or reexamination proceeding, to the exclusion of the inventor or previous applicant or patent owner. (C) is incorrect because it is a true statement: In the absence of a correspondence address being provided that is different from that of the attorney/agent of record, the USPTO will communicate with the attorney/agent of record. (E) is incorrect because the enforceability period of a patent lasts until 6 years after the patent has expired because the Statute of Limitations to bring a patent infringement action is 6 years. Thus, a reexamination can be filed at any time during the enforceability period of the patent.

Answer 69

C) Do nothing, but tell the Patent Office that will be your course of action. Reasoning: Preliminary amendment can't add new matter.

Answer 70

B) He should file an application directed to both the original invention and the improvement. Reasoning: On these facts, there is nothing to suggest that he is unable to file and obtain a patent.

Answer 71

C) Prepare and file a full and complete response on or before August 12, 2018, together with the required extension of time. Reasoning: The question here is really whether you must respond or whether you can get away with not responding. Unfortunately, it is too late to withdraw from this case. The old rule relating to withdrawal was that you could not get out of a case if there was less than 30 days remaining on the statutory period. That rule has changed to a much more squishy rule that provides no bright line. Still, the rule says that you cannot get out of a case if there is not sufficient time for the client to find alternative representation. In this case, where you are dealing with an independent inventor as a client (i.e., one who is not sophisticated vis-à-vis the patent laws), the Patent Office will not let you dump the client at this late date because you have not left him with sufficient time to find alternative representation. Thus, you must file a complete response before the statutory period expires and pay the required extension fee.

Answer 72

D) Within eight months of the first filing in a foreign country if the benefit of priority is to be preserved. Reasoning: The general rule with respect to preserving priority in a design patent case is that the design patent application must be filed within six months of the filing of the previously filed priority application. However, the Patent Law Treaties Implementation Act provides an additional two months within which to claim priority. In order to avail yourself of this additional two months to claim priority, the right to claim priority must be restored. The right to claim priority can be restored only if the delay in filing the subsequent application was unintentional. Thus, in the situation where the subsequent application was unintentionally filed outside of the six-month priority window, priority can still be established provided it is filed within the additional two months provided, but if and only if the delay was unintentional. Thus, it can be said that, to preserve priority in the case of a design application, the subsequent application must be filed within eight months of the first filing in a foreign country.

Answer 73

B) File a continuation under Rule 1.53 accompanied by a preliminary amendment canceling claims 1-9, and adding new claims 10 - 15, in a non-marked-up from, with the proposed amendments included. Reasoning: For the first time, you realize that claims 1-9 are not patentable, which means you must cease the pursuit of those claims. Otherwise, you are engaging in an ethical violation. You also realize that claims 10-15 can be made allowable but require amendment to add limitations not previously considered by the examiner, but which are present in the application (thus not new matter). The trouble is you are after final rejection procedurally. You could cancel claims after final rejection, but you cannot substantively amend claims the way you want to here after final amendment. Thus, you would need to file either an RCE (not an answer choice) or a continuation under Rule 53 in order to amend claims 10-15.

Answer 74

A) If the facts are as Henry alleges, Henry has better title to the patent than does John. Reasoning: In order to perfect ownership of a patent, it is necessary to record within three months. 35 U.S.C. 261 explains: “An assignment, grant, or conveyance shall be void as against any subsequent purchaser or mortgagee for valuable consideration, without notice, unless it is recorded in the Patent and Trademark Office within three months from its date or prior to the date of such subsequent purchase or mortgage.” The term “valuable consideration” means that the person obtaining the assignment cannot get it via gift, but rather must exchange something of value. The law does not require much value, so several cartons of cigarettes, which would clearly have some monetary value, will suffice. The rest of the question makes clear that Henry did not know that anyone else obtained an assignment before him. Thus, John’s rights are inferior to Henry’s rights. Of course, notice that the question does not say that Henry recorded within three months. If a subsequent bona fide purchaser acquired for value after Henry, then that subsequent purchaser would have rights superior to Henry. Thus, we cannot say that Henry owns the patent. We can only say that Henry has better title to the patent than does John. (B) is not the best choice. We don’t know whether Henry has good title (i.e., meaning he is the true owner), although he well may have good title. We do know for certain, however, that if Henry’s story checks out, he has superior rights to John; thus, (A) is a superior answer.

Answer 75

E) None of the above Reasoning: The secret sale in Canada is of no concern because, for it to create a “sale,” the method must be performed. The sale of the recipe alone does not matter as to a later claim to the “method.” The offer of an exclusive license, like the offer of an assignment, is not a prior art trigger event. The first potential issue is the disclosure in the Winter catalog, but that occurred less than 12 months before Wilbur filed the application in the U.S., so there is no concern here either because of an exception under 102(b)(1)(a).

Answer 76

A) 102(a)(1) Reasoning: Don't overthink it. It's barred from being able to be patented because it already is patented. You thought about foreign filing licenses..... don't think about that. It asks "What sections of 35 USC 102 bar patentability". 102(a)(1) do because it is already patented

Answer 77

B) Rejections under 35 U.S.C. 103 must explain the reasoning associated with a rejection of a particular claim as being obvious. Reasoning: The question is looking for the answer that is “not false,” which means we are looking for the true statement. Only (B) is true. An examiner must explain the reason why a claim is being rejected as obvious. Unsubstantiated conclusions that a claim is obvious are not acceptable and do not satisfy the examiner’s burden to establish a prima facie rejection. NOTE: The examiner’s initial burden is sometimes discussed as the need for an examiner to make a prima facie case. Prima facie is a Latin phrase that literally translates to “at first face.” When spoken in the legal world, it means “on its face” or “at first appearance.” In other words, the examiner must come up with a rejection that on its face is plausible based on the examiner’s first impression. (A) is incorrect because there is no requirement that a reference explicitly teach away for “teaching away” to be a valid rebuttal. In fact, a prior art reference must be considered in its entirety, i.e., as a whole, including portions that would lead away from the claimed invention. It is improper to combine references where the references teach away from their combination. A prior art reference that “teaches away” from the claimed invention is a significant factor to be considered in determining obviousness. (C) is incorrect because, if there is not a reasonable expectation of success, then by definition the combination realized by the inventor would be non-obvious. (D) is incorrect because the examiner must explain the reason for reaching the obviousness rejection. (E) is incorrect because (B) is correct.

Answer 78

C) Parties to a derivation proceeding may resort to binding arbitration. However, the Board will not consider the arbitration award unless it is filed within 20 days of the date of the award. Reasoning: The text is very limited in what you can read about derivations. The only thing close to a right answer is C, which is about derivations. Parties may resort to binding arbitration. Notwithstanding, the Board is not bound by, and may independently determine, any question of patentability. Furthermore, the Board will not consider the arbitration award unless it: (1) is binding on the parties; (2) is in writing; (3) states in a clear and definite manner each issue arbitrated and the disposition of each issue; and (4) is filed within 20 days of the date of the award.

Answer 79

D) The rejection is inappropriate because the subject matter disclosed and claimed in the Wollensky application and the Smith patent were commonly owned prior to the effective filing date of the Wollensky application. Reasoning: With any questions related to 102, the first question you must ask is what law applies. The question deals with a rejection in the Wollensky application, which was first filed on May 1, 2018; therefore, AIA 102 will apply. Under AIA 102, a disclosure that is prior art under AIA 102(a)(2) is not prior art if the subject matter disclosed and the claimed invention, not later than the effective filing date of the claimed invention, were owned by the same entity or subject to an obligation of assignment to the same entity. So the Smith patent would be prior art under AIA 102(a)(2). It would not be prior art under AIA 102(a)(1) for Wollensky because the Smith application did not publish and the patent was not granted until after the Wollensky application was filed. Therefore, as long as Smith and Wollenksy were commonly owned by the effective filing date of the Wollenksy application, the Smith patent cannot be used against Wollensky under AIA 102(a)(2). Therefore, the rejection is inappropriate and (D) is the correct answer. (A), (B) and (C) are all incorrect because the rejection is inappropriate. (A) is further incorrect because the Smith patent would not be prior art under 102(a)(1), and still further because 102(a)(1) prevents a patent in the situation where the claimed invention was patented, described in a printed publication, in public use, on sale, or otherwise publicly available before the effective filing date of the claimed invention. (C) is further incorrect because, since the passage of the AIA, common ownership no longer needs to be as of the date of invention, as was the case for double-patenting under pre-AIA. (E) is incorrect because, under the AIA, the date of conception is no longer relevant.

Answer 80

C) Claim 3 is unpatentable under 35 U.S.C. 112(a) since the description requirement is not satisfied. Reasoning: The addition of a wheel structure not disclosed in the Jones patent will successfully cause claim 1 to overcome the 102 rejection based on Jones. It does not matter that the wheel structure was only supported in the drawings. Since the wheel structure was present at the time of the original filing, it will not be considered to be new matter. Now, more directly, the call of the question: Are claims 2 and 3 patentable? While claim 2 may be unpatentable because it depends from claim 1, it will not be unpatentable for the reasons set forth in (B), (D) and (E). Therefore, (B), (D) and (E) are incorrect. More specifically, the limitation added in claim 2 is a limitation that requires the handlebar to be “Y” shaped. This is supported in the original disclosure, so it is not new matter. Furthermore, it narrows claim 1 because in claim 1 the handlebar need only to be a “shaped handlebar.” Therefore, the introduction of a specific shape narrows from any shape to the “Y” shape. Claim 3 will not be patentable. There is nothing on these facts to tell us one way or another whether the claim will be indefinite, thus (A) is incorrect. What we know about claim 3 is that it is dependent from claim 1, but the shape limitation inserted is a “U” shape. While this does narrow the claim, there is nothing in the question to suggest that the “U” shape embodiment has been disclosed in the original filing. In fact, the question specifically says that the only specifics given in the disclosure state that the handlebar is “Y” shaped. Thus, the written description does not support the claim, which means that the claim is unpatentable under 112(a).

Answer 81

C) Mary and Albert Reasoning: At a basic level, this question is about the duty of disclosure under Rule 56, but notice that the question does not ask who has a duty to disclose under Rule 56. This question specifically asks who has a duty to bring this particular reference to the attention of the patent examiner. The rule is that everyone substantively involved in the prosecution of the patent application owes the Patent Office a duty. Thus, William, Fran, Alex, Mary and Albert each owe a duty to disclose under Rule 56. In this situation, however, William and Fran did not know about the article. Thus, William and Fran are not obligated with respect to this article because there is nothing in these facts to suggest that they knew of the article. Therefore (A) and (B) are incorrect. The parties who knew of this were Alex (who found the article), Albert who was alerted to the article by Alex, and Mary who was alerted to the article by Albert. This may tempt you to select answer (E) as the correct choice, but that would be a mistake. Rule 56(d) allows those who are not the attorney, agent or inventor to satisfy the duty to disclose by notifying the agent, attorney or inventor. Since Alex notified Albert, he successfully discharged his duty to disclose. Therefore, (E) and (D) are incorrect. The parties that have a duty to notify the USPTO of this article are Mary and Albert. Thus, (C) is correct.

Answer 82

E) None of the above Reasoning: The first thing to notice here is that the question explains that you do not have a deposit account. This means that there can be no general authorization in the application on file because the USPTO does not accept a general authorization to charge fees to a credit card. Therefore, if you needed an extension at any time, you needed to file a request for the extension and pay for the necessary extension (i.e., with no general authorization to charge a deposit account, there is no implicit request for extensions of time). When you filed the Notice of Appeal on March 11, 2019, you needed to also file a request for a three-month extension together with the appropriate fee, which did not happen. The six-month statutory period to take action ran through April 1, 2019. The application went abandoned on April 2, 2019. Therefore, your attempt on April 22, 2019, to pay the fee and request a three-month extension was too late; the application was already abandoned. Clearly, you did not intend the application to go abandoned; thus you would be able to revive this application as having been unintentionally abandoned. But that is not what the questions asks.

Answer 83

B) File a request for a supplemental examination since there is some question about whether the Ghoul application was appropriately withheld. Reasoning: The AIA amended the patent laws to provide that a patent owner may request supplemental examination of a patent to consider, reconsider, or correct information believed to be relevant to the patent. The supplemental examination will determine whether the information presented in the request raises a substantial new question of patentability. If the information presented in the request raises a substantial new question of patentability, the Office will order ex parte reexamination of the patent. This will likely cause some to question why (A) is not correct. While filing a reexamination could address the patentability issue, it would not address any potential inequitable conduct problem. The question explains that the Ghoul reference is material to patentability and non-cumulative, which means it should have been disclosed. Even if the claims are patentable over the Ghoul reference, the claims remain in jeopardy. If inequitable conduct is found, all of the claims to the patent are lost because they will be deemed unenforceable. To fix this problem, you need to pursue a supplemental examination. The entire point of supplemental examination is to submit information to the Office so they can consider whether it matters, while at the same time inoculating a patent from a charge of inequitable conduct, or in the terms of the statute, from being “held unenforceable.” Therefore, (B) is the far superior answer to (A). (C) is incorrect because this type of error cannot be fixed through reissue. (D) is incorrect because a post grant review may not be filed by the patent owner.

Answer 84

D) Cancel claim 2 and make the amendments to Claim 1 you believe will overcome the examiner’s rejections and ask for reconsideration. Reasoning: It is true that, since the passage of the AIA, the lack of best mode is no longer an acceptable reason to find a patent claim to be invalid. It is also true that 35 U.S.C. 112(a) still requires best mode to be disclosed. But best mode is not a concept that exists in a vacuum. 35 U.S.C. 112(a) requires the disclosure of the best mode of the claimed invention. In Claim 1, there is no mention of lemons whatsoever. As such, the fact that, in one embodiment of the invention, the cleaning solution uses lemons, and specifically Seminole County, Florida, lemons, is irrelevant. With respect to Claim 2, however, you have included lemons and you have not disclosed that the preferred lemons come from Seminole County, Florida. We know you have not disclosed this fact in the specification because the question tells us that on the August 27 call your client tells you this for the first time. This also means that you have not engaged in any kind of ethical violation by seeking claims you know you are not entitled to receive, but it also means that you cannot ethically proceed to attempt to obtain Claim 2. (A) is incorrect because there is no need to abandon the entire application. Claim 1 is still viable. (B) is incorrect because the best mode still must be disclosed. (C) is incorrect, although it is close. The first two statements are correct, but it would not be unethical to proceed with Claim 1. (E) is incorrect because you cannot proceed with Claim 2 now that you know that the Claim should be rejected under 35 U.S.C. 112(a) for failure to disclose the best mode. Although not implicated in the question, notice that, when you do amend, you always must ask for reconsideration.

Answer 85

A) All applicants are identified as residents and nationals of Germany and the international application is filed in English. Reasoning: This question is tricky. The key word in the question is “accept.” Many of you may pick (B) because 37 CFR 1.412(a) says: “(a) The United States Patent and Trademark Office is a Receiving Office only for applicants who are residents or nationals of the United States of America.” However, 37 CFR 1.421(a) says that, if there is no identification of at least one U.S. applicant, and there is at least one applicant that is either a resident or national in a PCT Contracting State or there is no residence or nationality indicated, the U.S. will forward the application to the International Bureau for processing. The United States will accept an international application for processing in the U.S. where at least one applicant is a resident or national of the U.S. The U.S. will also accept and then forward the application to the International Bureau for processing in (A), (C) and (D), which makes (E) the correct answer.

Answer 86

A) The patent examiner will reject the claims under 35 U.S.C. 101 because what is described is not patent-eligible subject matter. Reasoning: This question is based on the fact pattern of In re Nuijten. In that case, the United States Court of Appeals for the Federal Circuit determined that transitory signals are not patent-eligible subject matter. The Federal Circuit concluded: “A transitory, propagating signal like Nuijten’s is not a ‘process, machine, manufacture, or composition of matter.’ Those four categories define the explicit scope and reach of subject matter patentable under 35 U.S.C. § 101; thus, such a signal cannot be patentable subject matter.” Nuijten was, however, granted patent claims covering the process, the device that performed the process, and a storage medium holding resulting signals. (B)is incorrect because, despite any particular transformation that may be present, the Federal Circuit has announced a bright line rule associated with transitory signals because they are not one of the four categories of statutory subject matter envisioned within 35 U.S.C. 101.

Answer 87

D) February 7, 2019, and the specification, claims and drawings may be amended pursuant to Article 34 Reasoning: Article 34 of the PCT relates to procedures before the International Preliminary Examining Authority, and grants the applicant the right to amend the claims, the description, and the drawings before the international preliminary examination report is established. The amendment made pursuant to Article 34 must not go beyond the disclosure in the international application as filed. Examination by the International Preliminary Examining Authority will start either by the expiration of the 22nd month from the priority date, or three months from the date of transmittal of the international search report, whichever is later. In this case, three months from the transmittal of the international search report is November 7, 2018, and 22 months from the priority date is February 7, 2019. Therefore, the later is February 7, 2019. Thus, amendments made pursuant to Article 34 of the PCT must be made by February 7, 2019. Amendments may, however, also be made under Article 19 of the PCT. Article 19 deals with amending the claims before the International Bureau. The opportunity to make amendments under Article 19 is available after the applicant has received the international search report and the written opinion of the International Search Authority, and remains available until the end of 16 months from the priority date or two months after the date the report and opinion are mailed, whichever expires later. In this question, the search report was transmitted on August 7, 2018, so two months later would be October 7, 2018. 16 months from the priority date would be August 7, 2018. Thus, October 7, 2018, is later. Thus, it would be possible to amend under Article 19 only until October 7, 2018, but possible to amend under Article 34 until February 7, 2019. Thus, (A), (B), (C) and (E) are incorrect.

Answer 88

D) Prepare a PCT patent application claiming priority to the earlier filed U.S. patent application, file it with the USPTO, and simultaneously file an appropriate rescission of the previous nonpublication request. Reasoning: A nonpublication request must be made, if at all, at the time of filing an application. By filing a nonpublication request, the applicant is waiving the right to seek foreign patent protection in another country or under a multilateral international agreement that requires publication of applications at 18 months. The application may, however, rescind the previously filed nonpublication request at any time. In order to rescind the nonpublication request, the applicant must both rescind the nonpublication request and provide notice of foreign filing. Specifically, the applicant must, not later than 45 days after the date of filing of a foreign application or international application, notify the USPTO of such filing. Failure to provide the required notice will result in the U.S. application being regarded as abandoned, unless it is deemed that the delay in submitting the notice was unintentional. Therefore (D) is correct and is more complete than (A). (B) and (C) are incorrect because a license to file is not implicated in the question. The invention is not subject to a secrecy order, and therefore can be filed overseas. (E) is incorrect because an applicant can rescind a nonpublication request at any time.

Answer 89

E) May 3, 2013 Reasoning: The USPTO no longer makes a distinction between formal drawings and informal drawings. The only distinction made is between drawings that are acceptable or drawings that are unacceptable. If the original drawings are not acceptable, the applicant will be notified and informed of the objections and that new corrected drawings are required. Notwithstanding, even drawings deemed unacceptable will be accepted for the purpose of satisfying the requirements for obtaining a filing date. Therefore, the filing date will be the date that at least a specification, at least one claim and one drawing (if necessary) arrived at the Patent Office. That date is January 4, 2013, which makes (A) the correct answer. NOTICE: A specification, at least one claim and at least one drawing (if necessary) are required based on this filing date. Under the Patent Law Treaties Implementation Act (PLTIA), on or after December 18, 2013, only a specification needs to be present in order to obtain a filing date.

Answer 90

C) The claim describes a particular solution to a specific problem to be solved.

Answer 91

D) I., II., III., and IV. Reasoning: This will present as a tricky question for some, which is why it is here. Some no doubt ruled out the correct answer because at least some software is patent eligible with software patents being issued by the USPTO every week. Thus, how could a computer program be considered to be directed to a statutorily ineligible category of invention? That is a very good question for which there probably is not going to be a satisfactory answer other than to say this is what the MPEP specifically says. The MPEP, which cites Gottschalk v. Benson for the proposition that a computer program per se is not patent eligible, thus (II) is not statutorily eligible. If you read Gottschalk the decision is quite different and it is probably a stretch to cite Gottschalk for this proposition. Such a proposition is even more difficult to reconcile with Diamond v. Diehr and the fact that even in Alice the Supreme Court refused to rule software patent ineligible. Do not get caught up in this! Just accept that the MPEP must be splitting some hair that is not particularly well explained. Your mission is to pass the exam! The MPEP clearly and unambiguously says that computer programs per se do not fall within the statutorily eligible categories of invention. That means that claims directed to computer programs per se (whatever that means) would be patent ineligible under 35 U.S.C. 101. Given the newness and uncertainty, as well as the fact that the Office will not test any of the difficult Federal Circuit decisions of the last several years, you can anticipate if you get a question like this it will very closely track the MPEP language. Thus, know that computer programs per se (whatever that means) are not a statutorily eligible category of invention. (I) is not statutorily eligible as the result of In re Nuijten. (III) is not statutorily eligible as the result of the America Invents Act (AIA), which specifically made human organisms patent ineligible. There is no definition of the term human organisms in the AIA, so a question will either be related to humans per se, which the MPEP says is not patent eligible, or specifically to human organisms. (IV) is not statutorily eligible as the result of In re Miller, an old CCPA decision.

Answer 92

B) In order to transform a patent-ineligible law of nature into a patent-eligible invention, the claim must incorporate applications of those laws. Reasoning: In Mayo v. Prometheus, the Supreme Court explained that one must do more than simply state the law of nature while adding the words “apply it” (citing Gottschalk v. Benson). (A) is not the correct choice because it is a true statement. At least for the time being, abstract ideas, laws of nature and natural phenomena are the only judicially recognized exceptions to patent eligibility (See MPEP 2103). Courts will from time to time use additional characterizations (i.e., mental processes, disembodied concepts, disembodied mathematical algorithms) but they will related to one of the three judicially recognized exceptions. (C) is not the correct choice because it is a true statement. The Supreme Court continues to explain in case after case that it is primarily concerned with pre-emption. (D) is not the correct choice because it is a true statement. The Supreme Court views abstract ideas, laws of nature and natural phenomena as basic scientific building blocks and fears that granting exclusive rights (or, as they say, “monopoly rights”) will inhibit rather than promote innovation. (E) is not the correct choice because it is a true statement. The fact that an invention relies upon, leverages or incorporates an abstract idea, law of nature or natural phenomena does not as a matter of fact (or law) mean that the claimed invention is patent-ineligible. This makes sense; otherwise, nothing would be patent-eligible, given that every invention necessarily starts with an idea.

Answer 93

C) A rejection under 35 USC 103 based on reference X, if reference X is available as prior art only under 35 USC 102(a)(2). Reasoning: (A) is wrong because the 102(c) exception does not apply to 102(a)(1) prior art. (B) is wrong because the 102(c) exception does not apply to either obviousness-type or same-invention double patenting. (D) and (E) are wrong because of the above.

Answer 94

A) An amendment canceling all rejected claims and complying with 37 CFR 1.116. Reasoning: I know you probably thought all were correct because you read A and B and thought they were both correct, but B is incorrect because an appeal fee is due as well. The filing of an amendment complying with 37 CFR § 1.116 is a proper reply under 37 CFR § 1.113 to a final rejection. See MPEP § 714.13, under the heading "Entry Not A Matter of Right," which states, in pertinent part , "A reply under 37 CFR 1.113 is limited to: (A) an amendment complying with 37 CFR 1.116." (B) is not the most correct answer because the Notice of Appeal must be accompanied by the appeal fee required by 37 CFR § 1.17(b). (C) is not the most correct answer because the RCE must be accompanied by a submission (i.e., an amendment that meets the reply requirement of 37 CFR § 1.111). (D) is not the correct answer because CPA practice does not apply to utility or plant applications if the prior application has a filing date on or after May 29, 2000. See MPEP § 706.07(h), paragraphs I and IV. (E) is not the correct answer since (A) is a proper reply.

Answer 95

A) I and II only. Reasoning: 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.

Answer 96

D) An amendment to the claim substituting for the term "means for pulling the door open" the structure of a handle and a knob. Reasoning: ANSWER: (D) is the most correct answer. MPEP § 2181 under the heading "Procedures For Determining Whether The Written Description Adequately Describes The Corresponding Structure, Material, Or Acts Necessary To Support A Claim Limitation Which Invokes 35 U.S.C. 112(f)." 35 U.S.C. 112(f) states that a claim limitation expressed in means plus function language "shall be construed to cover the corresponding structure, materials, or acts described in the specification and 'equivalents thereof.'" See also B. Braun Medical, Inc. v. Abbott Lab., 124 F.3d 1419, 1424, 43 USPQ2d 1896, 1899 (Fed. Cir. 1997)." The examiner has made a prima facie case of equivalent in the Office action to support the rejection based on 35 U.S.C. § 102. By amending the claim to no longer include the means limitation in question, the claim becomes narrower inasmuch as it no longer includes equivalents under 35 U.S.C. § 112(f) for examination purposes. Thus, (D) overcomes the lack of novelty rejection under these circumstances. (A) is not the most correct answer because such an amended claim would continue to lack novelty, since both it and the prior art would have the attached bar expressly. Furthermore, such an amendment would introduce new matter lacking support in the application as originally filed. 35 U.S.C. § 112(a). (B) is not the most correct answer because the "not found in the prior art" argument does not rebut the prima facie case of equivalents raised by the examiner. (C) is not the most correct answer because it does not address the rejection. (E) is not the most correct answer because the amendment would raise a new matter issue.

Answer 97

D) When filed in a reissue application after the Notice of Allowance has been mailed. Reasoning: You missed this because you found it in the MPEP but didn't look at the header. Know the context of the MPEP part you are reading! This was in 714.16, which is titled "Amendment After Notice of Allowance". It says "With the exception of a supplemental oath or declaration submitted in a reissue, a supplemental oath or declaration is not treated as an amendment under 37 CFR 1.312". You read this and didn't read the heading.

Answer 98

A) No, because Patent A suggests circular receptacles for any complementary bottle, albeit for a different purpose. Reasoning: MPEP Â§ 2144, under the heading "Rationale Different From Applicant's Is Permissible." Patent A suggests an insert with receptacles that are circular and which can be shaped to complement the shape of the object to be received. The purpose for this in Patent A is to keep the cart organized, not as in the claim to prevent the object from falling and breaking. The difference in objectives does not defeat the case for obviousness because, as MPEP Â§ 2144 states, the "reason or motivation to modify the reference may often suggest what the inventor has done, but for a different purpose or to solve a different problem. It is not necessary that the prior art suggest the combination to achieve the same advantage or result discovered by applicant. In re Linter, 458 F.2d 1013, 173 USPQ 560 (CCPA 1972) ...; In re Dillon, 919 F.2d 688, 16 USPQ2d 1897 (Fed. Cir. 1990), cert. denied, 500 U.S. 904 (1991) ... ." In other words, it does not matter that Patent A does not appreciate the claimed purpose of preventing breakage. It suggests an insert with receptacles to hold bottles. That is enough to render the claimed subject matter prima facie obvious. The prima facie case is not rebutted by arguing that the purpose for the claimed insert is different form that specified for the insert described in Patent A. That is why answer (C) is wrong. To rebut the prima facie case, the practitioner must show a difference in structure instead. Answer (B) is wrong because the prima facie case is not rebutted by showing that Patent A does not teach wine bottles. This is not an anticipation rejection where identity of subject matter might be an issue. This is a question of obviousness. Therefore, it is sufficient to point out that Patent A is a generic teaching of shopping cart inserts that hold objects of any size and shape. (D) is not the most correct answer because what Patent A is interested in doing is irrelevant to the question of obviousness. (E) is not the most correct answer inasmuch as it was not the practitioner's argument. However, the question inquires about the merits of the argument that the practitioner made as set forth in the penultimate sentence of the question, not the merits of some hypothetical reply the examiner may communicate.

Answer 99

A) Before paying the issue fee, timely file an IDS citing the reference, along with the certification specified in 37 CFR 1.97(e), and any necessary fees. Reasoning: (A), describing a procedure that is not in accordance with the USPTO rules and the procedures set forth in the MPEP, is the most correct answer. MPEP § 609, under the heading "Minimum Requirements for an Information Disclosure Statement," under the subheading "B(3). Information Disclosure Statement Filed After B(2), but Prior to Payment of Issue Fee 37 CFR 1.97 (d)", and subheading "B(5) Statement Under 37 CFR 1.97(e)." (A) The statement specified in 37 CFR § 1.97(e) requires that the practitioner certify, after reasonable inquiry, that no item of information contained in the IDS was known to any individual designated in 37 CFR § 1.56(c) more than three months prior to the filing of the information disclosure statement. The practitioner cannot certify this because the reference was known to the client before February 11, 2016, the time of filing of the utility application, which was more than three months prior to the filing of the information disclosure statement. (B), stating a procedure that conforms with the USPTO rules and the procedures set forth in the MPEP, is an incorrect answer. Under 37 CFR § 1.313(a), a petition to withdraw the application from issue is not required if a proper RCE is filed before payment of the issue fee. (C), stating a procedure that conforms with the USPTO rules and the procedures set forth in the MPEP, is an incorrect answer. A practitioner can file a continuing application on or before the date that the issue fee is due and permit the parent application to become abandoned for failure to pay the issue fee. (D), stating a procedure that conforms with the USPTO rules and the procedures set forth in the MPEP, is an incorrect answer. Under 37 CFR § 1.313(c)(3), a petition to withdraw the application from issue can be filed after payment of the issue fee to permit the express abandonment of the application in favor of a continuing application. (E), stating a procedure that conforms with the USPTO rules and the procedures set forth in the MPEP, is an incorrect answer. Under 37 CFR § 1.313(c)(2), a petition to withdraw the application from issue can be filed after payment of the issue fee to permit consideration of a Request for Continued Examination (RCE) under 37 CFR § 1.114. See also MPEP § 1308.

Answer 100

C) No. The application will not be accorded an international filing date because the failure to designate at least one contracting State cannot be cured by a facsimile transmission. Reasoning: 37 CFR §§ 1.6(d)(3) and 1.8(a)(2)(i)(d); MPEP § 502 (reproducing Rule 1.6(d)(3)); MPEP § 512 (reproducing Rule 1.8(a)(2)(i)(d)); and MPEP §1817.01. As stated in MPEP § 1817.01, "[a]ll designations must be made in the international application on filing; none may be added later." The application will not be accorded an international filing date since the practitioner has tried to cure the failure to designate at least one contracting State by filing a paper using facsimile which is not permitted according to 37 CFR §§ 1.6(d)(3) and 1.8(a)(2)(i)(d). Tip: Read the remaining answers. I didn't know about facsimile, and if I read the answer C, I might have checked

Answer 101

A) An argument that the claimed product has an unexpectedly low melting point of 150 degrees F, supported by an affidavit showing that the mixture Y made by process Q2 exhibits a melting point of 300 degrees F. Reasoning: You have to show a difference in products, not processes. You need to back this up with evidence. You originally selected A, but changed the answer because You thought 300 came from nowhere. That is okay.

Answer 102

C) Statement 3 Reasoning: The principle in Statement 3, that consideration of inherent properties is part of proper consideration of the invention as a whole, is recited in MPEP § 2141.02, under the heading "Disclosed Inherent Properties Are Part Of 'As A Whole' Inquiry," and in In re Antonie, 559 F.2d 618, 620, 195 USPQ 6, 8 (CCPA 1977). (A) is incorrect, because the proper question is whether the invention as a whole, not just the differences, would have been obvious. See MPEP § 2141.02, under the heading "The Claimed Invention As A Whole Must Be Considered," (citing Stratoflex, Inc. v. Aeroquip Corp., 713 F.2d 1530, 218 USPQ 871 (Fed. Cir. 1983). (B) is incorrect because an examiner should consider such assertions by an inventor as part of the "subject matter as a whole." See MPEP § 2141.02 (citing In re Sponnoble, 405 F.2d 578, 585, 160 USPQ 237, 243 (CCPA 1969)). (D) and (E) are incorrect because they include incorrect Statements 1 and/or 2.

Answer 103

A) A timely filed and properly signed written reply which does not include an amendment to the claims, but includes a request for the examiner's rejections to be reconsidered supported by arguments replying to every ground of rejection and distinctly and specifically points out the supposed errors in every rejection. and pointing out the specific distinctions believed to render the claims patentable over any applied references. Reasoning: A is the only one fully complete. B and C don't address all the rejections and an RCE can only be filed after prosecution is closed.

Answer 104

B) Tuesday, November 28, 2000 Reasoning: The filing date of the nonprovisional application, (B), is the correct answer. See MPEP § 201.04(b), which states "[t]he [Uruguay Agreement Round Act] provides a mechanism to enable domestic applicants to quickly and inexpensively file provisional applications. Under the provisions of 35 U.S.C. § 119(e) applicants are entitled to claim the benefit of priority in a given application in the United States. The domestic priority period will not count in the measurement of the 20-year patent term. See 35 U.S.C. 154(a)(3). Thus, domestic applicants are placed on the same footing with foreign applicants with respect to the patent term." A provisional application is filed under 35 U.S.C. § 119(e) and according to 35 U.S.C. § 154(a)(3), such a filing date is not taken into account in determining patent term. Therefore, (A) is incorrect. The fact pattern states that benefit was properly claimed in the international application to both the provisional application and the national application and that the national stage application filed under 35 U.S.C. § 371 claimed benefit to the filing date of the nonprovisional application under 35 U.S.C. § 120. According to 35 U.S.C. § 154(a)(2), where an application contains a reference to an earlier filed application or applications under 35 U.S.C. § 120, 121, or 365(c), the patent term ends 20 years from the date on which the earliest such application was filed; in this fact pattern that date would be (B), the filing date of the nonprovisional application. The filing date of the international application, (C), is not correct in view of 35 U.S.C. § 154(a)(2) since the international application claimed the benefit under 35 U.S.C. § 120 to the filing date of the nonprovisional application. You found the correct answer in MPEP 2701, but YOU DIDNT READ ALL THE TEXT.

Answer 105

A) The examiner should maintain the rejection of the claims under 35 USC 102(a) and make the rejection final inasmuch as a 1.131 affidavit has no application in an AIA case. Reasoning: (A) is the correct answer. A 1.131 affidavit, proving a date of invention, has no application vis-a-vis an application being examined under AIA "first to file" law. Accordingly, the examiner should maintain the rejection and make it final. (B) and (C) are incorrect choices since the evidence of record shows that Smith and Jones are simply unable to overcome the prior art. (D) is wrong because an original copy of the published figure which shows that Smith and Jones were not in possession of the claimed invention prior to Bell and Watson publication cannot help their case. (E) is incorrect because prior art under 102(a) is not necessarily a statutory bar if inventors can "pre-date" with a disclosure of their own using a 1.130 affidavit.

Answer 106

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. Reasoning: See MPEP § 512, which states "The Certificate of Mailing procedure does not apply to papers mailed in a foreign country."

Answer 107

A) An uncontradicted declaration by A asserting that the subject matter relied on by the examiner in reference P constitutes A's sole invention, with the result that Reference P is not available as prior art against the claim. Reasoning: See MPEP § 717.01 (III), which states "Under certain circumstances an affidavit or declaration may be submitted which attempts to attribute an activity, a reference or part of a reference to the applicant. If successful, the activity or the reference is no longer applicable. . . . An uncontradicted 'unequivocal statement' from the applicant regarding the subject matter disclosed in an article, patent, or published application will be accepted as establishing inventorship.

Answer 108

E) The reply is proper. Reasoning: MPEP § 1204, under the heading "Appeal By Patent Applicant," states that "[a] notice of appeal may be filed after any of the claims has been twice rejected, regardless of whether the claim(s) has/have been finally rejected. The limitation of 'twice or finally...rejected' does not have to be related to a particular application. For example, if any claim was rejected in a parent application, and the claim is again rejected in a continuing application, then applicant will be entitled to file an appeal in the continuing application, even if the claim was rejected only once in the continuing application."

Answer 109

B) A request for an interview in a continued prosecution application prior to the first Office action, to be held in the examiner's office. Reasoning: 37 CFR § 1.133; MPEP § 713.02. As stated in MPEP § 713.02, "[a] request for an interview prior to the first Office action is ordinarily granted in continuing or substitute applications. A request for an interview in all other applications before the first action is untimely and will not be acknowledged if written, or granted if oral. 37 CFR 1.133(a)." A continued prosecution application counts as a continued application. Duh.

Answer 110

E) None of the above. Reasoning: MPEP § 410 makes clear that the certification requirement set forth in 37 CFR § 10.18(b) "has permitted the PTO to eliminate the separate verification requirement previously contained in 37 CFR ...1.27 [small entity statements], ...1.52 [English translations of non-English documents], ...1.55 [claim for foreign priority], [and] ...1.102 [petition to make an application special]."

Answer 111

A) I and II only. Reasoning: 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.

Answer 112

A) Abandon the application since the Board affirmed the rejection of independent claim 1. Reasoning: MPEP § 1214.06, under the heading "Examiner Sustained in Whole or in Part." Under the heading "No Claims Stand Allowed" it states "Claims indicated as allowable prior to appeal except for their dependency from rejected claims will be treated as if they were rejected." (B) and (C) are not the most correct answers. These options would apply to applications where the Board reversed the rejection of the dependent claims and affirmed the rejection of the independent claim. (D) is not correct. The Board does not render a decision on objected to claims. See 37 CFR § Part 41. (E) is not correct because the mailing of a Board decision does not abandoned an application. See 37 CFR § Part 41

Answer 113

E) Each of statements (B) and (C) is true. Reasoning: As to (B), see 35 U.S.C. §§ 151; 154(b)(2)(ii) and (iii); 37 CFR § 1.704(c)(3); MPEP § 1306. As to (C) see MPEP §§ 2203 and 2212. As to (D), the claim for priority is not required, as a person may not wish to do so in order to increase the term of his or her patent. As to (A) deferral under 37 CFR § 1.103 is not available following the notice of allowance. Since (B) and (C) are correct, (E) is the best answer.

Answer 114

A) All notices and official letters for the patent owner or owners in a reexamination proceeding will be directed to the attorney or agent of record in the patent file at the address listed on the register of patent attorneys and agents. Reasoning: See 37 CFR § 1.33(c)

Answer 115

C) Reject the claim under 35 USC 103 as obvious over the prior art reference. Reasoning: 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.

Answer 116

D) In a utility case, gross sales figures accompanied by evidence of brand name recognition. Reasoning: Gross sales figures must be measured against a logical standard in order to determine whether or not there is commercial success. The recitations of accompanying evidence in (A), (B), and (C) are logical in that they provide a comparative basis for determining commercial success. (D), on the other hand, recites accompanying evidence which is illogical in that it does not provide a comparative basis for determining commercial success. (E) is wrong because it provides a logical basis for attributing commercial success to the design of the device, rather than the utilitarian function of the device. MPEP § 716.03(b).

Answer 117

B) 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 102/103. The reference is the foreign application. Reasoning: See 35 U.S.C. § 102; 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. In re van Langenhoven, 173 USPQ 426, 429 (CCPA 1972); Ex parte Appeal No. 242 - 47, 196 USPQ 828 (Bd. App. 1976). (A) is incorrect. 35 U.S.C. § 102. (C) is not correct. 35 U.S.C. § 102. (D) is not correct. 35 U.S.C. § 102(d); MPEP § 2136, under the heading "Defensive Publications Are Not Prior Art As Of Their Filing Date," citing Ex parte Osmond, 191 USPQ 334 (Bd. App. 1973). (E) is not correct inasmuch as (A), (C) and (D) are not correct.

Answer 118

C) No reply will prevent the application from being held abandoned. Reasoning: As stated in MPEP § 709, under the heading "Request By The Applicant," subheading "Request for Suspension Under 37 CFR 1.103(b) or (c)," "The Office will not grant the requested suspension of action unless the following requirements are met: (A) the request must be filed with the filing of a CPA or an RCE...(1) if the request is filed with an RCE, the RCE must be in compliance with 37 CFR 1.114, i.e., the RCE must be accompanied by a submission and the fee set forth in 37 CFR 1.17(e). Note that the payment of the RCE filing fee may not be deferred and the request for suspension cannot substitute for the submission." The RCE was improper because no submission in reply to the outstanding Office action accompanied the RCE. Since the RCE was improper, the Office will not recognize the request for suspension. The time period set in the final rejection continues to run from the mail date of the Office action. Since the Office action did not set a period for reply, applicant has a maximum period of six months for reply. A reply was due on January 8, 2017. Since the RCE was improper and the Office did not recognize the request for suspension, the application became abandoned at Midnight of January 8, 2017. (A), (B) and (E) are not correct. As stated in MPEP § 706.07(h), under the heading "Submission Requirement," "If a reply to an Office action under 35 U.S.C. 132 is outstanding, the submission must meet the reply requirements of 37 CFR 1.111. See 37 CFR 1.114(c)." An RCE that is not accompanied by a submission is an improper RCE. As stated in MPEP § 706.07(h), under the heading "Initial Processing," subheading "Treatment of Improper RCE," "An improper RCE will not operate to toll the running of any time period set in the previous Office action for reply to avoid abandonment of the application." The period for filing a proper reply was six months inasmuch as no shortened statutory period for reply was set. A proper reply to the final rejection was not filed. Therefore, the application went abandoned for failure to file a proper reply to the final rejection. (D) is not correct. As set forth in MPEP § 706.07(f) under the heading "Examiner's Amendments," paragraph (H), "[a]n examiner's amendment may not be made more than 6 months from the date of the final Office action, as the application would be abandoned at that point by operation of law."

Answer 119

D) After a reexamination proceeding is terminated and the certificate has issued, any member of the public may obtain a copy of the certificate by ordering a copy of the patent. Reasoning: MPEP 2292: Distribution of Certificate

Answer 120

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. Reasoning: See MPEP § 1207. 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, [the examiner is to] notify appellant of the non-compliance. If the examiner disagrees with appellant's statement in the brief that certain claims do not stand or fall together, the examiner explains in the examiner's answer why the claim grouping listed in the brief is not agreed with and why, if appropriate, e.g., the claims as listed by the appellant are not separately patentable. Answer (A) is incorrect. The Appeal Brief was filed less than seven months after the Notice of Appeal was filed. The applicant should be notified of the deficiency and provided an opportunity to request a five-month extension of time.

Answer 121

B) traverse the objection and submit an additional drawing to make the specification enabling. Reasoning: 35 U.S.C. § 113 reads "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." Since choice (A) may be done, 37 CFR § 1.111, it is an incorrect answer to the above question. Since choice (C) may be done, 35 U.S.C. § 120, it is an incorrect answer to the above question. Since choice (D) may be done, 37 CFR § 1.121, it is an incorrect answer to the above question. Since choice (E) may be done, 37 CFR § 1.111, it also is an incorrect answer to the above question.

Answer 122

B) In those appeals in which an oral hearing has been confirmed and either the Board of Patent Appeals and Interferences or the primary examiner has indicated a desire for the examiner to participate in the oral argument, oral argument may be presented by the examiner whether or not the appellant appears. Reasoning: See MPEP § 1209, under the heading "Participation by Examiner." As to (A), see MPEP § 705. As to (C) signature requirement does not apply. 37 C.F.R. § 1.196(b); MPEP § 1205. The notice will not be returned. As to (D), see Gentry Gallery v. Berkline Corp., 134 F.3d 1473, 45 U.S.P.Q.2d 1498 (Fed. Cir. 1998).

Answer 123

C) 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. Reasoning:

Answer 124

D) Increasing the economic value of a patent by extending the effective term of the patent up to one year. Extending patent term is not a policy underlying any section of 35 U.S.C. § 102. Answers (A), (B), (C) and (E) do state policies underlying the public use bar. Lough v. Brunswick Corp., 86 F.3d 1113, 39 USPQ2d 1100 (Fed. Cir. 1996).

Answer 125

D) Al should file a petition to have the application withdrawn from issuance, citing the finding of additional material prior art as the reason for withdrawal. A continuation application should also be filed with an information disclosure statement containing the reference in order to have the reference considered. Reasoning: You didn't trust your gut

Answer 126

C) Requiring an essential feature in the original claims, where the feature is not described in the specification or the claims, and is not conventional in the art or known to one of ordinary skill in the art. Reasoning: The question is asking "THE LACK OF POSSESSION OF THE INVENTION MAY BE EVIDENCED BY:". You read it as if it is asking how to satisfy the 35 USC 112 first paragraph requirement. See, "Guidelines for Examination of Patent Applications under 35 U.S.C. § 112, ¶ 1, 'Written Description' Requirement," MPEP 2163. "The claimed invention as a whole may not be adequately described if the claims require an essential or critical feature that is not described in the specification and is not conventional in the art or known to one of ordinary skill in the art."

Answer 127

E) Claim 6. The doughnut making machine of Claim 1, wherein said applying means is omitted for making plain doughnuts. Reasoning: A dependent claim must further limit the claim from which it depends. 35 U.S.C. § 112, ¶4; 37 C.F.R. § 1.75(c). Dependent claim 6 (Answer E) improperly seeks to broaden Claim 1 by omitting an element set forth in the parent claim.

Answer 128

C) ABC Corporation has no ownership rights in the subcombination. Reasoning: John signed over the rights of the combination and subcombination to the ABC corporation. Under 35 U.S.C. § 261, "An assignment, grant, or conveyance shall be void as against any subsequent purchaser or mortgagee for a valuable consideration, without notice, unless it is recorded in the Patent and Trademark Office within three months from its date or prior to the date of such subsequent purchase or mortgage." John signed over the subcombination to the XYZ Corporation 1 year later! Which means the XYZ assignment is null. Thus, ABC owns the combination and the subcombination. That makes C) the false statement.

Answer 129

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. Reasoning: (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).

Answer 130

D) The reply will be regarded as timely filed in the USPTO if a petition with proper fee for a one month extension of time is filed in the USPTO on or before June 14, 2022. Reasoning:37 C.F.R. § 1.136(a). 37 C.F.R. § 1.136(a) states, "[A]pplicant may extend the time period for reply up to the earlier of the expiration of any maximum period set by statute or five months after the time period set for reply, if a petition for an extension of time and the fee set in § 1.17(a) are filed..." (A) is wrong because the response was not timely filed since it was received by the USPTO after the SSP expired. (B) and (C) are wrong. The reply was not filed on May 14, 2022, because the conditions of 37 C.F.R. § 1.10(b) were not satisfied. For example, the number of the "Priority Express Mail" mailing label must have been placed on each page of the response prior to the original mailing by "Priority Express Mail." The petition should not be expected to be granted inasmuch as the papers did not include the number of the "Priority Express Mail" mailing label on them. See § 1.10(c)(2), (d)(2), and (e)(2). (E) is wrong because 37 C.F.R. § 1.10(b) requires that "the number of the 'Priority Express Mail' mailing label must have been placed on each page of the response prior to the original mailing by 'Priority Express Mail.'" [emphasis added]

Answer 131

B) traverse the objection and submit an additional drawing to make the specification enabling. Reasoning: 35 U.S.C. § 113 reads "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." Since choice (A) may be done, 37 C.F.R. § 1.111, it is an incorrect answer to the above question. Since choice (C) may be done, 35 U.S.C. § 120, it is an incorrect answer to the above question. Since choice (D) may be done, 37 C.F.R. § 1.121, it is an incorrect answer to the above question. Since choice (E) may be done, 37 C.F.R. § 1.111, it also is an incorrect answer to the above question.

Answer 132

C) The claims to the same invention in application Y should be rejected under 35 USC 102(a)(2) as being provisionally anticipated by application X. Reasoning: 35 U.S.C. § 102(a)(2); MPEP § 804. (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 that the application Y is patented or published. (B) is wrong because the facts do not indicate that the application Y is published. (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.