Old 102 Questions Flashcards
1
Q
- On March 20, 2002, A invented an environmentally friendly and disposable grocery cart. He filed a continuation-in-part application on December 14, 2005, that claimed benefit of an earlier copending patent application filed on May 14, 2002, now abandoned. The claims in the December 14, 2005 application are sufficiently supported by the earlier filed application. The examiner rejected the claims in the CIP application citing three references. The first reference was a newspaper article from a small town in Northern Idaho about A on April 4, 2003, that discussed his plans and efforts to commercially develop the disposable grocery cart for use in urban settings. The examiner stated that the article anticipated the invention under 35 USC § 102 because it was printed one year prior to the application date. The two other references were U.S. Patents issued in 1988. Patent #1 disclosed, but did not claim, a grocery cart with inflatable tires for use on roads. Patent #2 disclosed a disposable and environmentally friendly snow sled. Concerning these two patents, the examiner stated the invention was obvious under 35 USC § 103 because the two patents, when viewed together, taught all the features of the claimed invention. You are the patent practitioner prosecuting this application and you are preparing a response to the rejection. Your best course of action is to:
A Petition the Commissioner under 37 CFR § 1.181(a)(3) stating that the examiner improperly relied on an obscure newspaper that is not widely available to many people and that Patent #1 did not claim the technology upon which the examiner based the rejection.
B Submit an amendment that avoids the cited references and a statutory disclaimer.
C Submit a response to the examiner arguing that the claims are patentably distinct from the cited patent references and arguing the newspaper article is not prior art.
D Submit an affidavit under 37 CFR § 1.131 showing that A’s invention predates the April 4, 2003, newspaper article and an affidavit under 37 CFR § 1.132 showing that the two cited patents do not teach all that is claimed by applicant.
E Submit an affidavit under 37 CFR § 1.131 showing that A’s invention predates the April 4, 2003, newspaper article.
A
Correct Answer(s): C Related MPEP Chapter(s): MPEP 700 - Examination of Applications MPEP 2100 - Patentability Answer Reasoning:The correct answer is - (C) 35 USC § 102, MPEP 706.02 and 706.02(b). The newspaper article does not predate the effective filing date and the two patents cannot be combined to make a 35 USC § 102 rejection. (A) is incorrect because petitions to the Commissioner may not be addressed to the merits of a rejection. (B) is incorrect because an amendment is not necessary to overcome the rejections. (D) is incorrect because an affidavit is not necessary to show an earlier filing date and an affidavit is not necessary to show that two references may not be combined to make a § 102 rejection. (E) is incorrect because an affidavit is not necessary to show an earlier filing date.
2
Q
53. Independently of each other, M and Z invented the same tennis racket in the United States. A U.S. patent was granted to M on February 18, 2007, on an application filed on April 12, 2005, claiming the same tennis racket. On March 10, 2007, Z filed a patent application in the PTO claiming the same tennis racket. There is no common assignee between M and Z, and they are not obligated to assign their inventions to a common assignee. M and Z filed their respective patent applications diligently shortly after each conceived the tennis racket invention. Under which of the following provisions of 35 USC § 102 is the U.S. patent to M prior art with regard to the tennis racket claimed by Z? A 35 USC § 102(a). B 35 USC § 102(e). C 35 USC § 102(g). D (A) and (B) only. E (A), (B) and (C).
A
Correct Answer(s): E Related MPEP Chapter(s): MPEP 700 - Examination of Applications MPEP 2100 - Patentability Answer Reasoning:The correct answer is - (E) (E) is the most inclusive answer (it includes each of (A), (B), and (C)); whereas answers (A), (B), (C) and (D) are less inclusive. The given facts make out a prime facie case under 35 USC § 102(a) inasmuch as the same invention was patented in this country before the invention thereof by Z, i.e., before the filing date of Z's application. MPEP 2126, 2126.01, 2132, and 2132.01. Also a prima facie case under 35 USC § 102(e) is made out because the same invention is described in a patent granted on a patent application by another, i.e., M's application, before the invention thereof by Z, i.e., before the filing date of Z's application. MPEP 2136 - 2136.04. Further, the given facts make out a case for 35 USC § 102(g) inasmuch as before the invention thereof by Z, i.e., Z's filing date, the invention was made in this country, i.e., constructively reduced to practice by the filing of M's patent application, by another, i.e., M, who had not abandoned, suppressed or concealed the invention. MPEP 2138, 2138.02, 2138.03, and 2138.05.
3
Q
- Your client Sam, a U.S. resident, invented the Wigerator, a new device for the manufacture of toupees. On May 10, 2005, Sam secretly went to Cleveland, Ohio and sold four of his Wigerators to Ted’s Big Hair, Inc., a Canadian manufacturer of toupees. No restriction was placed on the use of the machines. On July 5, 2005, Ted started using the Wigerators in his Mexico factory to manufacture his revolutionary new Shag 2000 hairpiece. In order to boost the sales of his new line, Ted has widely publicized in Mexico, Canada and the U.S. both the Shag 2000 and the Wigerator. On June 1, 2006, Sam came to your office seeking advice about patenting his machine. Which of the following is the most correct advice?
A Sam is not barred from obtaining a U.S. patent on the Wigerator because the Wigerator was not publicly sold more than one year before today’s date.
B Sam is barred from obtaining a U.S. patent on the Wigerator because the Wigerators were sold more than one year before the present date.
C Sam is not barred from obtaining a U.S. patent on his device because the Wigerator was not publicly used more than one year before today’s date.
D Sam is barred from applying for a patent on the Wigerator because Ted now owns the Wigerator.
E None of the above.
A
Correct Answer(s): B Related MPEP Chapter(s): MPEP 700 - Examination of Applications MPEP 2100 - Patentability Answer Reasoning:The correct answer is - (B) 35 USC § 102(b), and MPEP 2133.01 and 2133.02. (B) is correct because the Wigerators were sold more than one year before the present date and therefore Sam's application is barred. (A) is incorrect because the secrecy of a commercial sale does not evade application of the statutory bar. (C) is incorrect because the application is barred based on Sam's sale, not the public use. (D) is incorrect because the inventor Sam is the only one entitled to apply for a patent, irrespective of the sale of the Wigerator machines to Ted. (E) is incorrect because (B) is correct.
4
Q
- On January 2, 2005, S files a patent application in the U.S. for an improved mousetrap. Prior activities involving the mousetrap during the year 2003 will not be a bar under 35 USC § 102(b) if the activity was:
A Use of the mousetrap in S’s warehouse to perfect the mousetrap.
B Sale of the device to J to ascertain whether there was consumer demand for the claimed invention.
C Sale of the device to J to ascertain appropriate pricing strategy for future marketing of the mousetrap.
D Advertisement in a commercial publication with an indication that the device would not be available until 1994.
E Demonstration at a national trade show.
A
Correct Answer(s): A Related MPEP Chapter(s): MPEP 700 - Examination of Applications MPEP 2100 - Patentability Answer Reasoning:The correct answer is - (A) 35 USC § 102(b) and MPEP 2133.03(e) and (e)(1). Experimental use does not act as a bar.
5
Q
56. The next 5 questions are based on the following factual scenario. Unless otherwise indicated, answer each question independently of the other questions. On June 25, 2002, in Brussels, Belgium, inventor Sprout reduced to practice a vegetable processor device. He instructed a Belgian patent attorney, Phideux, to obtain patent protection in Belgium. Phideux prepared the patent application on the inventive vegetable processor device and filed the application in the Belgian Patent Office on January 4, 2003. The Belgian Patent was granted on February 1, 2003, but the invention disclosure was not laid open for public inspection, via a publication of the abstract, until May 3, 2003. The certified copy of the patent decree, along with an attached copy of the specification, was sent by the Belgian Patent Office to Sprout on June 10, 2003. The complete specification was not published until December 23, 2003. On January 5, 2004, Sprout realized that it was no longer possible for his Belgian application to act as a priority document because the anniversary for filing a patent application in the United States had passed. Thus, he was not entitled to foreign priority for his Belgian application. The invention had been first sold to a Belgian company, which does vegetable processing, on October 7, 2003, and was slowly gaining favor among other vegetable processors in Europe. Based on this limited commercial success, Sprout decided that it would be prudent to obtain patent protection in the United States. He hired you to act as his U.S. agent. On January 14, 2004, you filed the U.S. application, containing claims 1-10. Which of the following most correctly sets forth the section of Title 35 USC under which Sprout would not be entitled to a U.S. patent? A 119 B 102(a) C 102(b) D 102(c) E 102(d)
A
Correct Answer(s): E Related MPEP Chapter(s): MPEP 700 - Examination of Applications MPEP 2100 - Patentability Answer Reasoning:The correct answer is - (E) 35 USC § 102(d); MPEP 706.03(s). The invention was patented in Belgium, prior to its filing in the U.S., and has a filing date in Belgium of January 4, 2003, which is greater than 12 months prior to the filing in the U.S. of January 14, 2004.
6
Q
57. For this question and the next 2, assume Sprout did not file an application in Belgium nor obtain a Belgian patent. In the first Office action, the examiner rejected claims 1-10 as being anticipated by the disclosure in a U.S. patent to Carrot. The Carrot patent discloses, but does not claim, a vegetable processor. The Carrot patent issued on August 16, 2004, and is based on a patent application filed on June 26, 2002. Under which of the following sections of Title 35 USC, if any, would Sprout not be entitled to a U.S. patent? A 102(a) B 102(b) C 102(d) D 102(e) E None of the above.
A
Correct Answer(s): D Related MPEP Chapter(s): MPEP 700 - Examination of Applications MPEP 2100 - Patentability Answer Reasoning:The correct answer is - (D) 35 USC § 102(e); MPEP 706.02. The invention was described in Carrot which was patented on August 16, 2004 and filed on June 26, 2002, which is prior to when the Sprout patent application was filed in the U.S. on January 14, 2004.
7
Q
58. In the first Office action, the examiner rejected claims 1-10 as being anticipated by the disclosure of a U.S. patent to Beet. The Beet patent discloses, but does not claim, a vegetable processor. The Beet patent issued January 12, 2003, and is based on an application filed on June 23, 2002. Which of the following most correctly sets forth the sections of Title 35 USC under which Sprout would not be entitled to a U.S. patent? A 102(a) B 102(c) C 102(d) D 102(f) E 102(g)
A
Correct Answer(s): A Related MPEP Chapter(s): MPEP 700 - Examination of Applications MPEP 2100 - Patentability Answer Reasoning:The correct answer is - (A) 35 USC § 102(a); In re Hilmer, 833 O.G. 13, 149 USPQ 480 (CCPA 1966). The invention was disclosed in a printed publication by Beet on January 12, 2003, which is prior to the U.S. patent application by Sprout of January 14, 2004.
8
Q
59. Assume the same facts as in the previous question, except that the Beet patent issued on January 11, 2004. Which of the following sets forth the sections of Title 35 USC under which Sprout would not be entitled to a U.S. patent? A 102(b) B 102(d) C 102(e) D 102(f) E 102(g)
A
Correct Answer(s): C Related MPEP Chapter(s): MPEP 700 - Examination of Applications MPEP 2100 - Patentability Answer Reasoning:The correct answer is - (C) 35 USC § 102(e). The invention was patented by Beet on January 11, 2004, prior to, but less than a year from the filing of the invention in the U.S. on January 14, 2004.
9
Q
- In the first Office action, the examiner rejected claims 1-10 under 35 USC 103 over a U.S. patent to Spud in view of a U.S. patent to Parsnip. The Spud patent was issued on January 11, 2004, based on an application filed on June 23, 2002, and the Parsnip patent issued in 1924. Which of the following responses would be the most persuasive in having the rejection withdrawn?
A Argue that the Parsnip invention cannot be bodily incorporated into the Spud patent.
B Argue that fifty years had elapsed between the dates of the Parsnip patent and the Spud patent, and that one having ordinary skill in the art would not have found it obvious to combine the teachings of the two patents because the Parsnip device was obsolete.
C Argue that the Spud reference is not prior art because its filing date is after inventor Sprout’s date of invention.
D Argue that the claimed invention defines patentably over Spud, pointing out the specific language in the claims that is not shown by the basic Spud reference.
E Argue that the claimed invention defines patentably over the combination of Spud and Parsnip, pointing out the specific language in the claims that is not shown by the combination of the references.
A
Correct Answer(s): E Related MPEP Chapter(s): MPEP 700 - Examination of Applications MPEP 2100 - Patentability Answer Reasoning:The correct answer is - (E) 37 CFR § 1.111. Reason why answer (A) is wrong: see 37 CFR § 1.111. Reason why answer (B) is wrong: see In re McGuire & Pogan (CCPA), 163 USPQ 417 and In re Neal, 179 USPQ 56. Reason why answer (D) is wrong: see In re McLaughlin, 170 USPQ 209. Reason why answer (C) is wrong: Sprout's date of invention is June 25, 2002, and Spud's filing date is June 23, 2002.
10
Q
- The next 4 questions are based on the following paragraph. Unless otherwise indicated, answer each question independently of all other questions.
You are a registered patent agent in Philadelphia, Pennsylvania. On March 5, 1992, Britebulb, a resident of Willow Grove, Pennsylvania, came to your office regarding the filing of a U.S. patent application on a new energy saving light bulb. After your initial meeting, you immediately prepared a utility application. Britebulb reviewed the application and executed the oath on April 20, 1992. You filed the application in the PTO on April 23, 1992. Consider each of the situations presented in Questions 10-13 below in view of the above facts as well as the additional facts given in the question, and determine under which paragraph or paragraphs, if any, of 35 USC 102, Britebulb would not be entitled to a patent on his invention.
In May of 1990 while visiting relatives in Bonn, Germany, Britebulb entered into a contract with a German manufacturing firm to make his new energy saving light bulb. In October of 1990, over 1000 light bulbs incorporating Britebulb's invention were sold throughout Europe. A 35 USC 102(a) B 35 USC 102(b) C 35 USC 102(a) and 102(b) D 35 USC 102(c) E None of the above.
A
Correct Answer(s): E Related MPEP Chapter(s): MPEP 700 - Examination of Applications MPEP 2100 - Patentability Answer Reasoning:The correct answer is - (E) Sale of the invention in a foreign country is not a bar under 35 USC §102(a) or 102(b).
11
Q
62. On August 31, 1990, Britebulb and Makeit Corporation, a corporation of New York, signed an agreement by which Britebulb assigned his light bulb invention to Makeit who agreed to further develop the invention. As part of the agreement, Britebulb received a $20,000 payment from Makeit. However, after three months, Makeit exercised a termination clause in the agreement and terminated the agreement without making any effort to further develop the invention. A 35 USC 102(a) B 35 USC 102(b) C 35 USC 102(a) and 102(b) D 35 USC 102(c) E None of the above.
A
Correct Answer(s): E Related MPEP Chapter(s): MPEP 700 - Examination of Applications MPEP 2100 - Patentability Answer Reasoning:The correct answer is - (E) An assignment of the invention, even though money is received as a result of an agreement, is not a sale under 35 USC § 102(b) of the energy saving light bulb. Moleculon Research Corp. v. CBS, Inc., 229 USPQ 805, 809 (CAFC 1986) and Scott Paper Co. v. Moore Business Forms, Inc., 594 F.Supp. 1051, 1075, 224 USPQ 11, 29 (D. Del. 1984).
12
Q
63. In the first week of February 1991, in an effort to commercialize his invention, Britebulb mailed over 500 printed brochures to potential manufacturers in Germany. The brochure disclosed every detail of the invention, including a full disclosure of how to make and use the energy saving light bulb. Despite his efforts, none of the manufacturers expressed any interest in the invention. A 35 USC 102(a) B 35 USC 102(b) C 35 USC 102(a) and 102(b) D 35 USC 102(c) E None of the above.
A
Related MPEP Chapter(s):
MPEP 700 - Examination of Applications
MPEP 2100 - Patentability
Answer Reasoning:The correct answer is - (B) The brochure is a printed publication which was published more than one year before the filing date of Britebulb’s application.
13
Q
64. While visiting his brother in Berlin, Germany in July of 1989, Britebulb first learned about the new energy saving light bulb from his brother's neighbor, Fred Fritz. Fritz disclosed every detail of the new light bulb to Britebulb, including how to make and use the new light bulb. Fritz told Britebulb that he had spent his entire life savings to perfect the new light bulb and that he expected to earn millions from his idea. A 35 USC 102(a) B 35 USC 102(f) C 35 USC 102(g) D 35 USC 102(a) and 102(f) E 35 USC 102(a), 102(f) and 102(g).
A
Correct Answer(s): B Related MPEP Chapter(s): MPEP 700 - Examination of Applications MPEP 2100 - Patentability Answer Reasoning:The correct answer is - (B) Britebulb was not the original inventor.
14
Q
- You represent Jane, the inventor of a fire resistant fabric. She made and tested her invention on February 29, 2002 while she was living in Alaska. The dates of conception of her invention and reduction to practice are well documented and properly witnessed. Satisfied that her invention was complete, she asked you to prepare a patent application. On March 27, 2003, Jane executed the application and you filed the application in the PTO on the same date. All of the claims in her application were properly rejected in an Office action as being anticipated under 35 USC 102(a) and 102(b) by an article authored by Tom who discloses a fire resistant fabric he invented which is identical in all respects to that claimed in Jane’s application. Tom’s article was published in a French trade magazine which was received by subscribers on March 1, 2003. Can Jane antedate Tom’s article to overcome the rejections under 35 USC 102?
A No, because Tom’s article constitutes a constructive reduction to practice of Jane’s invention.
B No, because Jane did not complete her invention in this country.
C Yes, because Jane can file a terminal disclaimer disclaiming the period of time between March 1, 2003 and March 27, 2003.
D Yes, because Tom does not claim Jane’s fire resistant fabric and Tom’s article was not published in the United States.
E Yes, because Jane completed her invention in Alaska before Tom’s article was published.
A
Correct Answer(s): E Related MPEP Chapter(s): MPEP 700 - Examination of Applications MPEP 2100 - Patentability Answer Reasoning:The correct answer is - (E) 37 CFR § 1.131; MPEP 715.
15
Q
- On January 4, 2000, Arthur, a U.S. citizen working in a chemical laboratory in the United States, conceived a new process for making ethylene from methane. After a continuous and diligent effort by Arthur over the next four months, he was unable to reduce his invention to practice. However, on July 30, 2000, Arthur’s process was reduced to practice by Ted, a chemist in Arthur’s laboratory. A patent application was filed in the PTO on September 15, 2000. Assuming that Arthur was not aware of any of the following facts at the time of his conception, which of the following facts will not bar Arthur and Ted from obtaining a U.S. patent claiming the process?
A A written disclosure of the process in a printed publication which was published in France on December 20, 1999, but which did not reach the United States until January 10, 2000.
B A written disclosure of the process by another in a printed publication which was published in the United States on October 10, 1999.
C Use of the process by three U.S. oil companies in their manufacturing operations in the United States before January 1, 2000; none of the companies regard the process as being a proprietary secret.
D An oral disclosure of the process on December 21, 1989 by a German scientist in a presentation in Germany to the research managers of two German chemical companies.
E An oral disclosure of the process by a French scientist to all attendees at a seminar in Atlanta, Georgia on December 14, 1999.
A
Correct Answer(s): D Related MPEP Chapter(s): MPEP 700 - Examination of Applications MPEP 2100 - Patentability Answer Reasoning:The correct answer is - (D) 35 USC § 102(a).
16
Q
- Frack, a Belgian citizen, presented a paper in French to a scientific conference in Brussels on Saturday, September 1, 1990. The paper described Frack’s invention in detail. There is no known prior art teaching or suggesting Frack’s invention. One thousand copies of Frack’s paper (in French) were distributed to participants at the conference. The paper was also included in a paperback book which was a compilation of all papers presented at the conference. The book became available to the general public on Wednesday September 5, 1990. On Monday, September 10, 1990, Frack filed a patent application in the Belgian Patent Office disclosing and claiming his invention. The Belgian application had substantially the same disclosure as the paper Frack presented at the conference in Brussels. On Monday, September 9, 1991, Frack’s U.S. patent agent filed a U.S. patent application based on and claiming priority of the Belgian application. For the purposes of this question, disregard any issues of absolute novelty under the Belgian law. Frack’s September 1, 1990 paper _______ a statutory bar to Frack’s U.S. patent application because _______________ .
A is not ….. Frack can properly rely on the September 10, 1990 filing date of the Belgian application which was filed less than one year after the September 1, 1990 publication date of the paper.
B is not ….. a foreign publication cannot be a bar to a U.S. patent application.
C is not ….. the statutory provisions for patentability only apply to U.S. citizens.
D is ….. the invention was known and used by others after the invention thereof by Frack.
E is ….. 35 USC 119 cannot be used to overcome a printed publication, anywhere in the world, in any language, which was published more than one year before the actual filing date of the U.S. patent application.
A
Correct Answer(s): E Related MPEP Chapter(s): MPEP 700 - Examination of Applications MPEP 2100 - Patentability Answer Reasoning:The correct answer is - (E) 35 USC § 102(b) and 119 (first paragraph).
17
Q
- Which of the following circumstances constitute a statutory bar under 35 USC 102(b) as to claims to an invention described in an application filed in the PTO on Monday May 3, 2003?
A All details of the invention claimed in the application are described in a trade magazine first received by subscribers on May 15, 2002.
B All details of the invention claimed in the application are disclosed, but not claimed, in an application for patent by another filed on May 5, 1981, but abandoned on August 15, 1984.
C A display of your client’s claimed invention in a trade show in The Hague, Netherlands on May 5, 2002.
D An agreement dated November 26, 2001, granting an exclusive license to MNO Chemical Company and providing for a royalty payment to the inventor that could exceed ten thousand dollars a year if the invention is patented.
E A secret sale on December 27, 2001 of the original prototype of your client’s claimed invention to a friend for fifty cents.
A
Correct Answer(s): E Related MPEP Chapter(s): MPEP 700 - Examination of Applications MPEP 2100 - Patentability Answer Reasoning:The correct answer is - (E) 35 USC § 102(b); MPEP 2125.03, 2125.04 and 2126.01.
18
Q
69. On March 5, 1999, inventor Smart built what he believed to be a new 3-D picture tube for a television set. His picture tube used two electron guns. However, when he tested the tube, it failed. Jones, a co-worker of Smart's, suggested that Smart add a third electron gun to his picture tube. Smart added a third electron gun to his picture tube and, on April 1, 2003, he tested the improved picture tube and was satisfied that it worked as he had envisioned. On May 5, 2003, Smart entered into an agreement with Multi-Dimensional Company (MDC) to manufacture and sell the improved picture tube. By the end of 2003, MDC had sold over 10,000 of the improved picture tubes to television manufacturers. However, due to a rapid decline in sales, MDC stopped the production of the tubes on May 31, 2004. On May 4, 2004, Smart filed a patent application in the PTO disclosing and claiming the improved picture tube with the three electron guns. Which of the following sections, if any, of the patent statute would bar Smart from being entitled to a patent on the improved picture tube? A 35 USC 102(b) B 35 USC 102(f) C 35 USC 102(a) and 102(g) D 35 USC 102(b) and 102(f) E None of the above.
A
Correct Answer(s): B Related MPEP Chapter(s): MPEP 700 - Examination of Applications MPEP 2100 - Patentability Answer Reasoning:The correct answer is - (B) Smart did not conceive the improved tube and therefore is not the inventor of the claimed subject matter in the patent application. The invention was not "on sale" more than one year before Smart filed the application in the PTO.
