Review Flashcards
(277 cards)
1
Q
Whether there is a clear-cut indication of _____ of the subject matter covered by the claim should be considered when examining claims that contain functional language in order to determine whether the language is ambiguous.
A
scope
2
Q
Whether the language sets forth well-defined _____ of the invention or only states a problem solved or a result obtained should be considered when examining claims that contain functional language in order to determine whether the language is ambiguous.
A
boundaries
3
Q
Whether one of ordinary skill in the art would know from the claim terms what structure or steps are encompassed by the claim should be considered when examining claims that contain functional language in order to determine whether the language is ______.
A
ambiguous
4
Q
The primary inquiry when considering claims that contain functional language is to determine whether the language leaves room for _____ or whether the boundaries are clear and precise.
A
ambiguity
5
Q
An ambiguity of a functional limitation may be resolved by using a _____ rather than a qualitative functional feature.
A
Quantitative metric
6
Q
To resolve an ambiguity of a functional limitation, an applicant could demonstrate that the specification provides a formula for calculating a property along with _____ that do and do not meet claim limitations.
A
examples
7
Q
To resolve an ambiguity of a functional limitation, an applicant could demonstrate that the specification provides a general _____ and examples sufficient to teach a person skilled in the art when the claim limitation was satisfied.
A
guideline
8
Q
To resolve an ambiguity of a functional limitation, an applicant could _____ the claims to recite the particular structure that accomplishes the function.
A
amend
9
Q
Where can you find examples of non-structural terms that invoke 112(f) as well as structural terms that do not?
A
MPEP 2181
10
Q
112(f) is applied when the following conditions are met:
1) claim limitation uses a non-structural term that does not have a _____;
2) the term is modified by _____ language; AND
3) the term is not modified by sufficient _____ for achieving the specified function
A
structural modifier
functional
structure, material, acts
11
Q
If a non-structural term in a claim limitation is accompanied by a structural modifier, 112(f) ____ invoked.
A
is not
12
Q
In order to determine whether a word term or phrase coupled with a function denotes structure, it is necessary to check _____, _____, and ______.
A
spec (description)
dictionaries (gen & art)
prior art
13
Q
If the invocation is unclear, the disclosure is insufficient, and/or structure and function are not linked, a rejection of a means-plus-function claim under §112(b) may be _____.
A
appropriate
14
Q
For a computer-implemented means-plus-function claim limitation invoking 112(f), the corresponding
structure is required to be more than ______.
A
general purpose computer/processor
15
Q
It is _____ to claim a means for performing a particular computer-implemented function and then to
disclose a general-purpose computer as the structure designed to perform that function
A
insufficient
16
Q
If the specification explicitly discloses an algorithm, the sufficiency of the disclosure of the algorithm must be determined in light of _____.
A
ordinary skill in the art
17
Q
For a computer-implemented means-plus-function claim limitation invoking §112(f) the corresponding structure is required to be more than simply a _____.
A
general-purpose computer or microprocessor
18
Q
Applicant may express an algorithm in any understandable terms including as a mathematical formula in prose in a
flow chart or in any other manner that provides sufficient _____.
A
structure
19
Q
A rejection under §112(b) is _____ if the specification discloses no corresponding algorithm associated with a computer or microprocessor
A
appropriate
20
Q
A process claim containing the term “computer” should 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 _____.
A
meaning
21
Q
If the method involves or is executed by a _____ machine or apparatus the claims are less likely to be drawn to an abstract idea.
A
particular
22
Q
Integral use of a machine or apparatus to achieve performance of the method weighs _____ patent eligibility.
A
toward
23
Q
Use of a machine or apparatus that contributes nominally to the execution of the claimed method (e.g. in a data-gathering step or in a field-of-use limitation) would weigh _____ eligibility.
A
against
24
Q
If a transformation exists, the claims are _____ likely to be drawn to an abstract idea.
A
less
25
Five factors that determine whether a process (transformation) claim is an abstract idea:
1) particularity/generality of transformation
2) particularity/generality of article
3) nature/type/extent of transformation
4) nature of article
5) imposes _____
meaningful limits
26
The machine-or-transformation test _____ the sole test for deciding whether an
invention is a patent-eligible process
is not
27
If a general concept is involved in executing the steps of the method this can be a clue that the claim is drawn to a(n) _____.
abstract idea
28
Five factors relevant to patentability of claims reciting general concepts:
1) Monopoly in all fields
2) Cover _____ uses
3) All possible solutions
4) Disembodied or instantiated
5) Observable vs subjective implementation
unknown
29
If a particular machine or apparatus is incorporated into the claimed method this weighs _____ patent eligibility.
in favor of
30
A transformation weighs in favor of patentability if:
1) applied to _____ article
2) in terms of different function or use
3) specifically defined
particular
31
The Patent Act _____ the possibility that there are at least some processes that can be fairly described as business methods that are within patentable subject matter under §101.
leaves open
32
A patent should not grant a(n) ______ over an abstract idea.
monopoly
33
An applicant can use a 1.131 affidavit to swear back of a reference that disclosed but did not claim the claimed invention up to ____ prior to the pre-AIA application date.
1 year
34
In an AIA application, a 1.130 affidavit may disqualify prior art on account of _____ to inventor and/or prior public disclosure by inventor.
attribution
35
A _____ application contains disclosure entitled to priority both before March 16 2013 and on/after March 16 2013.
transitional
36
If at any time an application includes claims that gain priority support only from a filing that occurred on or after March 16 2013, the entire application will be considered under the AIA, even if such claims are _____.
cancelled
37
A transition application
contains or contained at any time a claim to a claimed invention that has an effective filing date on or after _____.
March 16 2013
38
A transition application must be accompanied by a statement notifying ____ that it is a transition application.
the Office
39
A transition application statement must be provided by the later of:
1) later-filed filing date + 4 months
2) entry to national stage + 4 months
3) prior-filed filing date + 16 months
4) effective filing date of a _____ claim
post-AIA
40
The oath or declaration must identify the inventor by legal
name and provide a mailing address unless that information is supplied in the _____.
ADS
41
An amendment to a claim to make it patentably distinct from a reference in order to overcome a rejection based on that reference may also indirectly amend any _____ claims.
dependent
42
In a test question, a narrative may indicate whether failure to timely file to claim priority was unintentional, and, as a result, whether priority may be restored under PLTIA within _____ months of the original filing.
14
43
New claims are not necessarily new _____.
matter
44
A new claim added on or after March 16, 2013 that is supported by the disclosure filed prior to March 16, 2013 will be examined under ______ law.
pre-AIA
45
An applicant may opt out of publication at the time they file a nonprovisional patent application, but doing so waives the right to file a _____ application.
foreign
46
When a US patent, a published US patent application, or a WIPO publication of a PCT application claims priority to a foreign filing, the date the US filing will become prior art is as of the ______ date.
earliest effective (foreign) filing
47
A US application claiming priority from a foreign filing may not opt out of _____.
publication
48
A _____ patent can be used as prior art in a utility case.
design
49
A foreign application that supports a priority claim in a US patent/application/PCT becomes prior art as of _____.
(foreign) filing date
50
A foreign application that does not support any priority claims in a US patent/application/PCT becomes prior art as of _____.
publication
51
37 CFR 1.78(a)(6) requires a statement from the applicant in a _____ application only if the application was filed before March 16 2013 and contains or contained at any time a claim to a claimed invention that has an effective filing date on or after March 16 2013.
transition
52
A transition application is a nonprovisional application filed on or after March 16 2013 that claims priority to or the benefit of the filing date of an earlier application (i.e. foreign
provisional or nonprovisional application or an international application designating the United States)
filed prior to _____.
March 16, 2013
53
Canceling the AIA claims in a transition application will not work to return the application to one
deserving of _____ treatment.
pre-AIA
54
In the identical applications 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 _____ Proceeding.
Derivation
55
When the claims of two applications are identical, there will be a ______ at the
Patent Office to determine who is entitled to receive the claims.
contest
56
In an Interference, if a junior party (later to file) demonstrates diligence from conception to reduction to practice, which period predates conception by the senior party, the junior party _____ prevail.
will
57
A party to an Interference that can demonstrate diligence from time of conception to reduction to actual or constructive practice, or that said period of diligence began or occurred prior to the opposite party's period of diligence, is more likely to _____.
prevail
58
Reasons considered "unintentional" with regards to timely filing to properly claim priority within 12 months can be really _____.
stupid
59
A petition for a retroactive foreign filing license must include:
1) statement that matter was/is not secret
2) explanation of unintentional error
3) a listing of _____
countries where filed
60
A substitute specification must accompanied by a _____ and a statement that there is no _____.
mark-up
new matter
61
Matter canceled from the application file wrapper of a pre-AIA U.S. patent may be used as prior art as of the _____ in that it then constitutes prior public knowledge under 35 U.S.C. 102(a).
patent date
62
Canceled matter in the application file of a U.S. patent is not a proper reference as of the
filing date under _____.
102(e)
63
If an abandoned application properly serving as a priority document has an enabling disclosure of the subject matter in the child application, the subject matter is pre-AIA prior art as of _____.
filing date of parent (abandoned) application
64
An RCE is not available after the filing of a Notice of Appeal to the Federal Circuit unless the appeal is terminated and the application is still _____.
pending
65
An RCE request filed after a Notice of Appeal but before the Board's decision on the appeal is considered a request to _____ the appeal and reopen prosecution.
withdraw
66
An applicant's failure to comment on examiner's reasons for allowance will be determined on a case-by-case basis to determine whether an implication of _____ can be derived.
agreement / acquiescence
67
That the examiner does not respond to a statement by the applicant commenting on reasons for
allowance does not mean that the examiner agrees with or acquiesces in the _____ of such
statement.
reasoning
68
In the absence of a request by the Office an applicant has no duty to and need not
reply to a _____.
protest
69
The Patent Office will conduct an interview with a registered practitioner without PoA but will not allow said practitioner to view or access the patent before a _____ is filed.
power of attorney
70
Any registered practitioner may submit a response even if they do not have _____.
power of attorney
71
An examiner error can restart the ______.
period for replying
72
A product of human ingenuity is _____.
patentable
73
If an examiner’s answer contains a
rejection designated as a new ground of rejection, appellant may request that prosecution be reopened before the examiner by filing a reply under _____.
37 CFR 1.111
74
If an examiner’s answer contains a
rejection designated as a new ground of rejection, appellant may request that the appeal be maintained by filing a reply brief under 37 CFR 41.41 that addresses each ______.
new ground of rejection
75
A reply brief under 37 CFR 41.41 may not be accompanied by any amendment or _____.
affidavit
76
A protest, unlike a third party submission, may include _____ against patentability.
arguments
77
A third party submission may include printed publications only; however, a protest may also include ______.
facts and other information
78
Neither a protest nor a third party submission may be filed after _____.
allowance
79
A protest may be filed after _____ only with applicant consent.
publication
80
A third party submission must always be filed before allowance, and in addition filed prior to the later of the first rejection of any claim or ______.
publication + 6 months
81
A protest must be, but a third party submission need not be, _____ upon the applicant.
served
82
There is no obligation resting on the Board to consider new or amended claims submitted while the case is on _____.
appeal
83
To initiate an interference, claims must be copied within one year of the earlier filed application's ______.
issue date
84
When an application is refiled (as a continuation) during an appeal, the Board should be promptly notified; otherwise the Board may refuse to _____ its decision.
vacate
85
During an appeal, the Board may refuse to enter an ______.
amendment
86
The Board may refuse to initiate an interference during an appeal if no claims have been found to be ______.
allowable
87
Any person or organization may pay a ______.
maintenance fee
88
Correspondence in a secrecy order case is not allowed via _____.
fax
89
If subject matter in a secrecy order case is disclosed to any person in the US, the principals must promptly inform the person of the order and ____.
penalties
90
If subject matter in a secrecy order case is disclosed to any person outside the US, the principals must promptly inform the _____.
Assistant Commissioner
91
If days of the week are not provided in close copendency questions, take the dates at _____.
face value
92
Separate verification is no longer required for:
1) small entity statements,
2) translations,
3) claim for foreign priority, or
4) _____.
petition to make special
93
A CPA applies to design applications filed anytime, but only utility applications filed before _____.
5-29-00
94
Under Rule 129, an application (except reissue or design) pending 2+ years as of 6-8-95 can petition to have a _____ withdrawn.
final rejection
95
The statutory bars of 102(b) are applicable even if public use is by a _____.
third party
96
The time period to file a notice of appeal to USDC/EDV is within 2 months of Board decision or action on _____.
Request for Rehearing or Reconsideration
97
A PCT application need only designate the US, and need not actually enter the national stage, in order for its 102(e) date to be its _____.
international filing date
98
The Office may provide status information for pending patent
applications that claim the benefit of the filing date of an application for which status information _____ be
provided.
may
99
For Office purposes, assignments which are made conditional are regarded as ______.
absolute
100
If there is an authorization to charge the filing fee to a deposit account which is overdrawn or has insufficient funds a _____ (37 CFR §1.16(e)) is required in addition to payment of
the filing fee.
surcharge
101
A petition invoking the supervisory authority of the Commissioner when the examiner has refused to enter an amendment will be delegated to the Group Director (Technology Center Director) to whom the _____ has been assigned.
application
102
37 CFR 1.291 only allows subsequent protests by the same party to be based
on new art/issues that could not have been presented _____.
earlier
103
If a maintenance payment includes identification of only the patent number (i.e. does not identify the application number) the Office may apply the payment or _____ the payment.
return
104
The patent application number is needed for payment of maintenance fees; providing the patent number only may lead to the fee being _____ by the Office.
returned
105
While a published application is still pending, the file itself (including actions, etc.) will not be available to the public, but copies of the _____ may be ordered.
application
106
If a prior-filed foreign application contains less description than the corresponding US application, applicant may submit a redacted copy of the US application for _____.
publication
107
The Office will provide a copy of the complete file wrapper and contents of an application for which a redacted copy was submitted to any person who makes a request under 1.14(c)(2), unless applicant provides redacted copies of other _____ materials.
file wrapper
108
A copy of a published pending application (application-as-filed, file contents, or a specific document in the file) may be provided to _____ upon request with a fee.
any person
109
Applicant may decide to allow application to publish as-filed (default) or as-amended if applicant supplies a compliant ______.
amended copy
110
Claims deleted from a pre-AIA application that issues become a statutory bar 1 year after _____.
issue
111
Where color is a distinctive feature of the subject matter of a plant application, the color should be positively identified in the specification by referenced to a recognized _____.
color dictionary or chart
112
A foreign patent or inventor's certificate need not be published to establish a pre-AIA _____ bar.
102(d)
113
In order to create a pre-AIA 102(d) bar, the foreign patent or inventor's certificate must be actually granted before _____.
US filing date
114
An original plant or utility application filed on or after 5-29-00 is eligible for patent term _____.
adjustment
115
A CPA is a _____ application.
new
116
Applications filed on or after 6-8-95 may accrue patent term _____ under 35 USC 154(b).
extension
117
An RCE is is not a _____ application.
new
118
Provisional and reissue applications are excepted from _____.
publication
119
) Re-publication of a patent application is available where the Office makes a material mistake apparent from the records and the request for re-publication is filed within _____ from the date of the patent application publication.
2 months
120
Group Director is another term for _____ Director.
Technology Center
121
Final drawings are due within 3 months of the mailing of the _____.
Notice of Allowance and Issue Fee Due
122
Final drawings may be submitted after the issue fee is paid so long as it is within _____ of the mailing of the Notice of Allowance and Issue Fee Due.
3 months
123
Twelve is ____ than sixteen; therefore, if a rule states a deadline is sixteen months, and a question cites a compliant action by twelve months, the option falls within the rule.
less
124
Designs have a special _____ procedure, found in Rule 155.
expediting
125
A preferred narrower range set forth within a broader range is an indefinite claim _____.
limitation
126
An applicant cannot use a patent to prove the state of the art for the purpose of the enablement requirement if the patent has an issue date _____ than the effective filing date of the application
later
127
A publication dated after the effective filing date of an application may be properly used to demonstrate that an application is non-enabling if the publication provides evidence of what one skilled in the art would have known on or before the application's _____ date.
effective filing
128
The patentability of a product-by-process claim is determined based on the _____.
product
129
In a reexamination, when the time for appeal has expired or any appeal proceeding hasterminated, the Director will issue and publish a certificate
canceling any claim of the patent finally determined to be
unpatentable, confirming any claim of the patent determined to be patentable, and incorporating in the patent any proposed
amended or _____ claim determined to be patentable.
new
130
If the ex parte reexamination proceeding is terminated
by the grant of a reissued patent as provided in § 1.565(d), the reissued patent will constitute the ex parte reexamination
_____ required
certificate
131
There are no _____ in reexaminations.
divisionals
132
Since abandonment is not possible in a
reexamination proceeding, a reexamination
certificate will be issued and published at the conclusion of the proceeding in each patent in which
a reexamination proceeding has been ordered, except where reexamination has been vacated or a reissue patent has been issued, where the patent grated serves as the reexamination _____.
certificate
133
A nonpublication request may be rescinded at any _____.
time
134
A statement regarding lack of deceptive intent is not required when inventorship is corrected to remove inventors solely connected to ______ claims.
cancelled
135
Where the claims covering a particular co-inventor's invention are cancelled, a statement regarding lack of deceptive intent is not _____.
required
136
In connection with filing an amendment to correct inventorship by adding previously omitted inventors to a
provisional application the submission of a statement that the inventorship error occurred without deceptive intention on
the part of the _____ inventors.
omitted
137
Assignment of an original application is not applied to a CIP because the assignment pertains only to common _____.
subject matter
138
CIP applications require a new assignment if they are to be issued to an _____.
asignee
139
A petition under 37 CFR 1.84 is required to avoid an objection to _____ photographs.
color
140
USPTO has
sua sponte waived 37 CFR 1.84(a)(2)(iii) and 1.165(b) and is no longer requiring a black and white photocopy of any color ______.
drawing or photograph
141
A change in small entity status after the application was filed does not require the inventor to retroactively pay a large entity _____.
filing fee
142
If there is a restriction requirement, applicant must always make an _______.
election
143
In an interference-bound IDS, it should be stated which claim from which patent has been ______.
copied
144
RCE has different rules for IDS deadlines; instead of regular application rules of within 3 months of filing/entry to national stage or before first action on merits, an RCE IDS must be submitted before mailing of the first office action after the _______.
request for continued examination
145
The status known as Associate Attorney no longer _____.
exists
146
On petition the failure to obtain an "Express Mail" receipt with the "date-in" clearly marked may be considered an omission that could have been avoided by the exercise of _____.
due care
147
Those who use drop boxes can protect themselves from
uncertainty due to illegible mailing labels by routinely maintaining a log of "Express Mail" deposits in which notations are entered by the person who deposited the correspondence as "Express Mail" within
_____ after deposit with the USPS.
one business day
148
In plant application drawings, view numbers and reference characters need not be employed unless required by the _____.
examiner
149
To rely on equivalence as a rationale
supporting an obviousness rejection the equivalency must be recognized in the prior art and cannot be
based on applicant's _____.
disclosure
150
Only patents which issued from original applications filed in the United States on or after November 29 1999 are eligible for _____.
inter partes reexamination
151
The claim for priority is not required as an applicant may not wish to do so in order to increase the ______ of the patent.
term
152
Factual evidence of the amount of time and effort and level of knowledge required for the practice of the invention from the disclosure alone can rebut a prima facie case of _____.
nonenablement
153
An inherent part of a claimed invention need not have an explicit _____.
antecedent
154
There is no limit on the number of parties,
countries, or winners involved in an _____ proceeding.
interference
155
Anyone may obtain reexamination of a patent upon filing a request as many times as they please provided they pay the required fee each time, and do not make such requests for purposes of _____.
harassment
156
If a second or subsequent request for reexamination is filed (by any party) while a reexamination is pending, the presence of a substantial new question of patentability depends on the _____ cited by the second or subsequent requester.
prior art
157
If incorrect inventors are named on a non-provisional application transmittal letter filed without an oath or
declaration or signed ADS the later filing of a(n) _____ will correct the earlier mis-identification.
oath or declaration
158
Even though an invention is misappropriated
by a third party, the public sale bar _____.
applies
159
Any request to correct or change the
inventorship under 1.48(a) filed after the Office action on the merits has been given
or mailed in the application must also be accompanied by an additional fee, unless
the request is accompanied by a statement that the
request to correct or change the inventorship is due
solely to ______.
cancelation of claims
160
If an ADS is not filed before/with oath/declaration,
the inventorship is the inventor or joint inventors set forth in the _____, except
as provided for in §§ 1.53(d)(4) and 1.63(d).
oath/declaration
161
Once an ADS or oath/declaration is filed in a nonprovisional application,
any correction of inventorship must be pursuant to _____ .
§ 1.48
162
If neither an ADS nor oath/declaration is filed during the pendency of a nonprovisional application, the inventorship is the inventor or joint inventors set
forth in the application papers filed pursuant to §1.53(b), or other applicant filing with fee supplying the _______.
inventorship
163
If applicant replies within 2 months of Final Rejection and Advisory Action is not mailed until after 3 month SSP, then the SSP is considered to end on and extension fees are calculated from the _____ mailing date.
advisory action
164
Evidence of commercial success to support a
contention of non-obviousness must be comparative, that is measured against a _____ in order to determine whether or not there is commercial success.
logical standard
165
"Same invention" type double patenting requires a change in the second claim language to
overcome any rejection based on the _____.
prior filed application
166
Obvious variations, or obviousness type double-patenting, but not statutory same-invention type double-patenting, may be overcome be being subject to a _____.
Terminal Disclaimer
167
The ultimate criterion of whether a rejection is considered "new grounds" is whether appellants have had fair opportunity to react to the thrust of the _____.
rejection
168
Examples of new grounds of rejection:
1) changing basis from 102 --> 103
2) Changing basis from 103 --> 102, based on a different teaching
3) Citing new calculations supporting overlapping ranges
4) Citing new structure supporting structural obviousness
5) Pointing to a different portion of the claim to maintain a _____ rejection.
“new matter”
169
The use of trademarks in design patent application specifications is _____ under limited circumstances
permitted
170
It is improper to use a trademark alone or coupled with the word "type" in the title of a _____ patent.
design
171
A design patent and a trademark may be obtained on the same _____
subject matter
172
It is the policy of the PTO to allow the inclusion of a copyright notice in a _____
patent application.
design
173
In a plant application, _____ claim(s) is/are permitted.
one
174
The oath/declaration of a plant application must state that the plant has been _____.
asexually reproduced
175
A method claim in a plant application is _____.
improper
176
Plant/fruit specimens should not be sent to the Office unless specifically requested by the _____.
examiner
177
PCT Article 22 was amended to permit applicant to delay entry into the national stage until 30 months from the earliest claimed priority date regardless of whether a _____
was filed within 19 months from said date.
Demand
178
An application may be most likely prevented from publishing via express abandonment and filing a fee and petition to ______.
stop publication
179
Essential material from a foreign application or a printed publication are not permitted to be incorporated by ____.
reference
180
A Notice of Appeal need not be _____.
signed
181
A Notice of Appeal need not identify which claims are being appealed; it is assumed that all rejected claims are on _____.
appeal
182
After the issue fee has been paid, in order to be considered for an RCE a petition to withdraw from ussie under Rule 1.313 must be _____.
granted
183
In a reissue, the Office cannot properly make a restriction requirement involving only subject matter of the original patent _____.
claims
184
In every instance of an interview with an examiner in an ex parte reexamination proceeding a complete written statement of the reasons presented at the interview as warranting favorable action must be filed by the patent _____.
owner
185
An interview does not remove the necessity for reply to ______ as specified in 37 CFR § 1.111.
Office actions
186
A reply to an Office Action following an interview as specified in 37 CFR § 1.111 does not remove the need to file a statement summarizing the _____.
interview
187
The written statement summarizing an ex parte reexamination interview must be filed as a separate part of a reply to an Office action outstanding at the time of the interview or as a separate paper within one month from the date of the _____ whichever is later
interview
188
If an application claims the same invention as a patent, and the patent issue date is more than one year prior to the effective filing date of that invention in the application, a rejection of the claims of the application under 35 U.S.C. §135(b) Is _____.
proper
189
MPEP 715.05 discusses when a non-commonly-owned patent and an application claim the same _____.
invention
190
Under pre-AIA 35 USC 135(b), a claim that is the same/substantially the same as a patent claim may only be made prior to 1 year from the issue date; this rule applies to both inter partes proceedings and ex parte _____.
rejections
191
Communication regarding maintenance fees are directed to the correspondence address of record unless a "_____ address" is otherwise set forth.
fee
192
Revocation/granting of PoA by fewer than all co-inventors may be requested by petition and fee and showing of cause, but must be granted before becoming _____.
effective
193
Papers granting or revoking PoA generally must be signed by all ______.
applicants/owners
194
Where and IDS does not comply with 37 CRF 1.98, it may not be considered by the ______.
examiner
195
Patents granted in conjunction with a terminal disclaimer are only enforceable while there is _____.
common ownership
196
Failure by reissue applicant to file oath/dec indicating a
desire to seek broader claims within the two year limit will bar a subsequent attempt to _____.
broaden the claims
197
Design applications are entitled to priority for _____ after foreign filing.
6 months
198
Date of complete invention (reduction to practice) in a WTO country can be relied upon to show prior invention in a(n) _____.
interference
199
Each patent listed in an IDS must be identified by patent number and issue date; _______ is not needed.
application number
200
A copy of any patent, publication, pending US application, or other information should accompany an IDS; the exception is for a compliant _____ document.
priority
201
No maintenance fees are required for _____ applications.
plant and design
202
A reissue oath must be signed and sworn to
or declaration made by the inventor(s) except as otherwise provided, and must be accompanied by the written consent of all assignees, if any, owning an undivided
interest in the _____.
patent
203
An unequivocal 1.132 declaration that a common co-inventor conceived or invented
the subject matter that was disclosed but not claimed in the reference patent or patent application publication in a pre-AIA 102/103 rejection has been sufficient to
_____ the rejection.
overcome
204
The purpose of
a terminal disclaimer is to limit the term of a patent not to remove a reference as _____.
prior art
205
Do not assume any
additional facts not presented in the _____.
questions
206
Interlineation is proper only for Examiner's Amendments, not for applicant's _____.
amendments
207
To ensure printing of owner name on a patent, assignment should be recorded with the Office before the _____ is paid.
issue fee
208
When sending the issue fee transmittal, one may fill in the name of the _____.
assignee
209
Adding description to correct deficiencies in a plant patent
application does not always constitute _____.
new matter
210
Rules on deposits of biological materials do not apply to ____ patent applications
plant
211
A plant application, which improperly includes a method claim, may properly be subject to a restriction requirement as the method claim must be _____.
canceled
212
Any change in inventive entity may allow a patent or published application to be used under pre-AIA 102 (a), (e), and (f) as _____.
prior art
213
The 3-year patent pendency required to invoke patent term adjustment under 37 CFR 1.702(b) does not include time consumed by Board review where the outcome was not favorable to the _____.
applicant
214
Patent term adjustment calculation may deduct delays in applicant responses more than 3 months after Office Actions, regardless of the deadlines set by the _____ in those actions.
Office
215
Applicant's mailing address need not be
identified in the declaration if it is included in the _____.
ADS
216
The foreign
priority information must be included in the declaration if it was not included in the ____.
ADS
217
Drawing changes normally must be approved by the examiner before
the application will be ______.
allowed
218
The examiner must give written ______ for alterations or corrections before the drawing is corrected.
approval
219
Replacement drawings should be accompanied by an explanation, may be accompanied by a marked-up copy, and should be approved by the _____.
examiner
220
The requirement of 37 C.F.R. §1.177 requiring that all divisional reissue applications issue simultaneously will be routinely ______ sua sponte.
waived
221
Designs which simulate a well known or naturally occurring object or person lack sufficient originality for a _______.
design patent
222
A rejection based on pre-AIA 102(e) can be overcome in some cases by filing a 1.132 affidavit showing that the reference invention is not by "_____."
another
223
Under PLTIA, effective 12-18-13 priority could be restored within ___ of expiration.
2 months
224
Pre-AIA priority may be untimely asserted via a continuation or filing a fee and statement that the delay was ______.
unintentional
225
USPTO only receives mail vial Post Office to Addressee service, not Post Office to _____.
Post Office
226
No extensions of time are permitted for filing the issue fee AND anything else required by a Notice of _______.
Allowability
227
Inventive activities in WTO member counties, including conception, conception, can be relied upon to prove prior ______.
invention
228
An examiner's decision on a substantial new question of patentability in a reexamination request is neither ____ nor _____.
appealable nor petitionable
229
A nonpublication requestunder 35 USC 122(b)(2)(B)(i) must be made upon _____.
filing
230
A request for nonpublication under Rule 213(a) must be submitted with the application upon filing according per _____ requirement.
statutory
231
A request for nonpublication must state in a conspicuous manner that the application is not
to be published under 35 U.S.C. 122(b) and must contain a certification that
the invention disclosed in the application has not been and will not be the subject of an application filed in another country, or under a multilateral
international agreement, that requires eighteen-month
publication. Before making the certification, the
person who signs the certification must make an ______ inquiry to determine whether the
certification can be appropriately made.
actual
232
Foreign priority claims may be taken at face value/benefit of the doubt, but a certified copy and translation may be needed to overcome rejections over ____.
prior art
233
A single assignee of the entire right, title and interest in the pre-AIA application or patent being reexamined
who is of record, or
partial assignee(s) together or with inventor(s) may conduct either the prosecution of a national application for patent or a _____ proceeding .
reexamination
234
In applications filed before September 16, 2012, the assignee of record of the entire interest can revoke
the power of attorney of the applicant unless an “irrevocable” right to _____ the application had
been given .
prosecute
235
A certificate of mailing/transmission is not a Priority Mail Express label or other USPS notation with "_____" stamped.
date accepted
236
Inventors, assignees, and application prosecutors all have a duty to _____.
disclose
237
Does the applicant's response address each and every issue raised in the _____?
Office Action
238
Patentability reports are for applications that involve multiple ______.
technology centers
239
The signature requirement does not apply to filing of a notice of _____.
appeal
240
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.
True
or listed correspondence address
241
After issue, claims given up in a restriction requirement may not be recovered by re-issue, but could be prosecuted in a _____ application.
substitute
242
After the Appeal Brief has been submitted, applicant may only submit amendments that cancel claims (if they do not affect the scope of other claims) to to rewrite dependent claims into ______ form.
independent
243
Reference to an object that is variable may render a claim _____.
indefinite
244
Product and process claims should be separately ______.
grouped
245
USPTO does not require or recommend a minimum or maximum number of _____ claims
dependent
246
USPTO will determine inventorship from the
original declaration filed in the application, even if the ______ mistakenly lists the improper
inventors.
original application
247
No petition to correct inventorship is required where inventorship was not previously established in the original filed _____.
oath/declaration
248
A 102(e) rejection could be overcome by providing proof of _____ at the time of the second invention.
common ownership
249
35 U.S.C. 42(d) only permits a refund of any fee "paid by mistake or any amount paid in excess of that ______."
required
250
USPTO will not refund expedited examination fees if the application is not effectively expedited.
true
251
A claim which depends from an improper base
claim is itself ______.
improper
252
If there is no disclosure of the best mode contemplated by the inventor at the time the application is filed
such a defect cannot be cured by submitting an amendment seeking to put into the specification
something required to be there when the patent application was originally filed; any proposed amendment of this type should be treated as _____.
new matter
253
An oath/declaration must be executed/signed by the inventor (except in the case of a substitute oath/declaration) and may not be signed by someone merely given _____ to sign on the inventor's behalf.
permission
254
Copies of original assignments on 8.5x11 paper accompanied by fee and cover sheet are required for ____ in the USPTO.
recording
255
A preliminary amendment will be considered as a part of the original disclosure if it arrives on
the same day as the rest of the application and is referenced in the first-filed _____.
oath
256
A design patent claim for type fonts need not comply with the "article of _____" requirement.
manufacture
257
Novelty and unobviousness of a design claim must generally be determined by a search in the pertinent design
classes. It is mandatory that the search be extended to the _____ classes encompassing inventions of the same
general type.
mechanical
258
Proper basis for a 101 rejection includes: naturally occurring, impossible product, claim includes more than 1 statutory class, and a mathematical ______.
equation
259
Prior art may be entered into a patent file regardless of
whether _____ is warranted
reexamination
260
A "prior art reference that served as a rejection in the prosecution of the original patent could not support a
substantial new question of patentability that would permit the institution of a _____ proceeding
reexamination
261
A senior party in an interference is the party who is presumed to have ____ first.
invented
262
A final holding of
invalidity by the District Court of a claim in a reexamination is _____ on the PTO.
binding
263
"The issuance of a final district court decision upholding _____ during a reexamination also will have no binding effect."
validity
264
A prior art patent cannot be properly applied as a ground for reexamination
if it is merely used as ______ of alleged prior public use or sale or insufficiency of disclosure.
evidence
265
To raise a substantial new question of patentability to provoke a reexamination, the prior art patent must be applied _____ to claims under 35 U.S.C. §103 and/or an appropriate portion of 35 U.S.C. §102 or relate to the application of other prior art patents or printed publications to claims on such
grounds.
directly
266
The priority claim in the CIP present on the filing date operates as an incorporation by
reference of a prior filed application as to the inadvertently omitted materials; the missing materials should be added by _____.
amendment
267
Subject matter of a claim can be supported by disclosure in any other part of the specification, even other _____.
claims
268
A PCT need only be published, not issued as a patent or entered into the national stage, in order to have a ____ date.
102(e)
269
If a 103 rejection cites a reference that could be removed as prior art under 102, the entire rejection may be traversed as improper with the appropriate _____.
affidavit
270
A preliminary interference motion seeking to designate an application or patent claim to correspond to a count should identify the claim and count and show that the claim defines the same ____ as the count.
patentable invention
271
A pre 11-29-00 PCT filing becomes 102(e) prior art as of the date the fee, oath, and translation are submitted to ____.
the US national stage
272
A post 11-29-00 but pre-AIA PCT filing becomes 102(e) prior art as of its _____ filing date if it designates the US and is (published) in English.
IA
international
273
An AIA application becomes prior art as of its ____.
earliest effective filing date
274
112(a) requires that specification and claims agree (ie spec does not contradict claims). 112(b) does not require agreement, only that claims be supported by the disclosure.
true
275
Admissions constitute prior art, even if it is the practitioner in the discussion of an amendment and not directly by the inventor.
true
276
A disclosure of utility must be specific, not just a statement that the invention might be useful for something someday; there must be a purpose of sorts.
true
277
Pharma/therapies must demonstrate reasonable correlation between the invention and asserted utility, such as with testing data and/or animal models; statistically certain success, or success in humans, need not be demonstrated.
true
