Академический Документы
Профессиональный Документы
Культура Документы
http://patentbarquestions.com/Questions_reportedly_asked_in_the_Patent...
Contents
1 New Questions that have been reported 1.1 Black ink or Red ink? 1.2 Museum Titanium Baseball Question 1.3 Mirror Question 1.4 Tribell Question 1.5 Amending Abstract 1.6 Obviousness 1.7 Deleting Benefit Claim 1.8 PCT / National Stage 1.9 102(e) / PCT applications 1.10 Suspended Practitioner 1.11 Digital Media for Gene Sequence 1.12 Signature on 1.132 petition 1.13 Faxing National Stage Application 1.14 Submitting Tables on CD-ROM 1.15 Trade Secret Question 1.16 Supplemental Oath 1.17 Best Mode 1.18 PCT Bypass Method 1.19 PCT / Patent Term 1.20 Toy plane with aluminum foil wing: 1.21 Information requested from USPTO 1.22 Reissue/Filing Amendment 1.23 Who to contact question 1.24 Missing parts in PCT Application 1.25 Velcro Trademark Question 1.26 Lip Gloss Question 1.27 Spanish Phone Question 1.28 Broadening Reissue 1.29 Claims stand or fall together in appeal 1.30 RCE during Appeal 1.31 Federal Court Decisions binding for Office 1.32 Appeal: New ground of rejection 1.33 Restriction Requirement / Continuation Application 1.34 Small Entity Status 1.35 Documents an Assignee Not of Record can sign 1.36 Means-Function Claim language question 1.37 102(a): Need to file foreign language translation 1.38 Death of inventor before application is filed 1.39 Correcting PCT application / No address 1.40 PCT-going right to national stage 1.41 Appeal: New grounds for rejection by the Board 1.42 Canadian Patent Agent in the USA 1.43 IDS / Not exact wording 1.44 How to claim benefit 1.45 Basic filing fee
1 von 31
3/17/2009 10:31 PM
http://patentbarquestions.com/Questions_reportedly_asked_in_the_Patent...
1.46 Correcting Errors in PCT Application 1.47 Small Entity's Filing Fee - Refund 1.48 Multiplicity 1.49 Rejection after Allowance 1.50 103(c) / Effective Date Nov. 29, 1999 1.51 Maintenance Fee Paid / Check Returned 1.52 Indefinite Claim using 'high' 1.53 What can an assignee do before taking ownership 1.54 Anticipation 1.55 Claim of priority to Japanese national app to overcome prior art 1.56 Number of Rejections Required for Appeal purposes when count from parent to continuation 1.57 Divisional Reissue 1.58 Hairgel Question 1.59 Means plus function, determining equivalence 1.60 Investigating deceptive intent 1.61 2 month rule for final office action 1.62 Chemical Claim 2 Questions from Previous Exams
April 12 2008 CLAIM FOR PRIORITY VIA REISSUE Person files a German application (it might even be an international application designating Germany). Person later files a US application and forgets to claim priority from the earlier filed foreign application to get the benefit of the earlier filing date. The US patent issues and then person realizes that he/she did not make a claim for priority from the earlier German application or submit the certified copy. Assuming that all the timing requirements were met in order for the US patent to get the benefit of the German application how can the person perfect priority based on the German application?
2 von 31
3/17/2009 10:31 PM
http://patentbarquestions.com/Questions_reportedly_asked_in_the_Patent...
There were a bunch of certificate of correction answers and reissue answers. I narrowed the choice down to the two choices below: C) file a reissue application along with the necessary fees, certified copy of the priority document (German Application) and a claim for priority. E) (Same as C) file a reissue application along with the necessary fees, certified copy of the priority document (German Application), and English translation and a claim for priority. I put C, but I think the answer might be E. While Brenner (MPEP 1402) clearly spells out that a claim for priority can be perfected via reissue by a submission of certified copy of the priority document and the claim for priority it does not state whether the document had to be in English in order to get the benefit of the earlier filed application. Please let me know if the certified copy has to be in English in order to get the filing date. I do not believe there were any dates in the question. 4/16/08 GS - I believe (c) is correct because according to MPEP 201.13, when claiming priority to a foreign application, a translation is not necessary unless needed for interference, needed to overcome a specific reference in a rejection, or asked for by the examiner. Other resource available: 37 CFR 1.55 a.4.i Claim of Foreign Priority January 24th, 2008 - Question regarding applications having many claims and when it would appropriate to limit the number or nature of the initial inquiry. Some situations exist where examination of an application appears best accomplished by limiting action on the claim thereof to a particular issue. These situations include the following: (A)Where an application is too informal for a complete action on the merits. (B)Where there is an undue multiplicity of claims, and there has been no successful telephone request for election of a limited number of claims for full examination. (C)Where there is a misjoinder of inventions and there has been no successful telephone request for election. (D)Where disclosure is directed to perpetual motion. (E)All of the above. The correct answer is (E), see MPEP 707.07(g). January 24th, 2008 - Question regarding claim number 4 that was canceled via a pre-examination amendment in a set of 6 claims, but the registered practitioner wanted to later reinstate the exact same claim; answers were (approximately); (A) Submit an amendment uncanceling claim number 4. (B) Submit an amendment adding claim number 7 with the exact words of the original claim number 4. (C) It is not possible to reinstate claim number 4 because once it is canceled the matter cannot be reclaimed. (D) [Another answer changing the claim number inappropriately] (E) [Another answer changing the claim number inappropriately] The correct answer is (B), see MPEP 714 Reinstatement of previously canceled claim.
3 von 31
3/17/2009 10:31 PM
http://patentbarquestions.com/Questions_reportedly_asked_in_the_Patent...
Red Ink is generally not allowed, but only used for IFW (Image File Wrapper) purposes (see 714.17). The following section provides a better answer than the 714.17 reference above ---> 1302.04 Examiner's Amendments and Changes [R-3] - 1300 Allowance and Issue 37CFR 1.530(d)(3) "showing the proposed changes in RED for approval by the examiner" MPEP 605.04(g): When the **>request is granted to add or delete inventors< under 37 CFR 1.48, the change should be noted in red ink in the left margin of the original oath or declaration > Best example I've seen is MPEP 608.01 Specification A quick search for "ink" turned up 37 CFR 1.52 Language, paper, writing, margins, compact disc specifications that states the following requirement: (iv) Plainly and legibly written either by a typewriter or machine printer in permanent dark ink or its equivalent If mistakes are in the drawings or if the drawings need to be amended, the changes MUST BE in red ink (although examiners will never know if it is or not b/c eDan scanning is only black and white. It is OIPE job to check) Somewhere in MPEP 700. The above is incorrect at least as of the 8th ed. rev. 3. MPEP 714 at the bottom of page 700-219: "The proposed drawing correction practice has been eliminated. ... No proposed changes in red ink should be submitted."
4 von 31
3/17/2009 10:31 PM
http://patentbarquestions.com/Questions_reportedly_asked_in_the_Patent...
people that go to museums. Putting something in a museum is a public display. This is not a public use under 102(b) because it is not a use of the invention at all. A reference is proven to be a printed publication upon a satisfactory showing that such document has been disseminated or otherwise made available to the extent that persons interested and ordinarily skilled in the subject matter or art, exercising reasonable diligence, can locate it. In re Wyer, 655 F.2d 221, I just took the exam and my analysis turned the question upon the date of Date 4, which is when the library was indexed, cataloged, and shelved. Based on the section in the MPEP, that's what makes the date critical. Edit: OK.. I took (and passed! : ) ) the exam and did encounter this question. If my recollection is correct, the description of the question above is not entirely accurate. The wealthy museum patrons who were allowed to view the baseball prior to the public grand opening were museum *members*, and the first viewing was opened to *members only*. If this is the case, then it is not public and should not count as a 102(a) publication. I believe I selected Date 4.. the date that the baseball went public. See the following passage: MPEP 2128.01, IV. In resolving whether or not a temporarily displayed reference that was neither distributed nor indexed was nonetheless made sufficiently publicly accessible to count as a printed publication under 35 U.S.C. 102(b), the court considered the following factors: the length of time the display was exhibited, the expertise of the target audience, the existence (or lack thereof) of reasonable expectations that the material displayed would not be copied, and the simplicity or ease with which the material displayed could have been copied. (note that "printed publication" as used above applies to 102(a) as well) EDIT 11/26/2007 Prior art date and public use date are two entirely separate issues. If the question asks for prior art date, then the answer is the date it is indexed and cataloged so someone can actually find it. If the question asks for the date of first public use, then the answer is the date the thing was displayed for museum patrons to see it, regardless whether the musuem is semi private. EDIT BG 02/14/2008: http://www.intelproplaw.com/ip_forum/index.php?topic=5869.0 RDS saw the answer sheet at the PTO during a review of the exam... "By the way, the correct answer for the baseball publication in the museum is the date of July 4th, the date when the publication was available in the catalog and on the shelf (July 4th). " EDIT 7/24/08: took the exam today (passed) and this question was on there. This is a question about 102b prior art...correct answer is July 4th. EDIT AG 8/26/08: took the exam today, passed, this question was still on there or some variant. The question talked about prior art date and, yes, the answer was the date it is indexed and cataloged. While the museum was open to varying degrees, the material was not cataloged and on the shelves until the last date (which I believe was still July 4th..but it will be obvious if you see the question). EDIT 01/06/2009: MPEP 2133.03(a) (http://www.uspto.gov/web/offices/pac/mpep/documents /2100_2133_03_a.htm#sect2133.03a) go to Paragraph 4. .....and] whether there were any confidentiality obligations imposed on persons who observed the use.'" Bernhardt, 386 F.3d at 1381, 72 USPQ2d at 1909. For example, the court in Bernhardt noted that an exhibition display at issue in the case "was not open to the public, that the identification of attendees was checked against a list of authorized names by building security and later at a reception desk near the showroom, that attendees were escorted through the showroom, and that the attendees were not permitted to make written notes or take photographs inside the showroom.... so the case is about 100 years old showing if the exhibition is controlled in a manner that maintains confidentiality it is not public use or display. I don't know if the fact statement in the question supports this, but it may be where the USPTO is coming from. EDIT 02/12/2009: This question appeared in test today. I answered Date 2 when Museum Patrons saw it (there is no indication that they are under any obligation to keep information confidential);I passed the test.
Mirror Question
There is one question discussing the use of "mirror" in the claims and whether its "reflective qualities" should be discussed in the specification. I am not sure if this was a prior question, however. You were to choose from a list of choices a single answer that
5 von 31
3/17/2009 10:31 PM
http://patentbarquestions.com/Questions_reportedly_asked_in_the_Patent...
comported with USPTO practice and procedure. Among the answers (from memory): (A) because the definition of mirror automatically includes its reflective qualities, there is no need to amend the specification to include the reflective qualities (E) the mirror in one part of the specification is "parallel," and the mirror in another part is "perpendicular," the specification is conflicting and one who has knowledge in the art would not be able to tell the difference so you amend the specification. I would select (A) based on 2163.07(a) Inherent Function, Theory, or Advantage. Reflection is an inherent function of a mirror, so there is no need to mention it in the description. However, based on review of March, 2008 exam at PTO, this question deals with the enablement requirement and the correct answer is E (from the recollection of the above choices) because the specification is conflicting and PHOSITA would be unable to determine which description is correct. There are evidently 2 variants of the "Mirror" question. I got the "parallel/perpendicular/enablement" wording variant on 1/27/08. It is of the "which is not correct" type - just pick the answer that involves the mirror and no enablement. The other answers have nothing to do with a mirror. The other variant must involve "inherent" disclosure; but the parallel/perpendicular issue has nothing to do with the inherency issue. EDIT 2/12/2009 This questions appeared today. Answers A through D referred to 'replacing "Mirror" to "light reflecting material" or a "Webster dictionary definition of mirror" in specification'. I answered E. Passed the test.
Tribell Question
A question involving the inventor Tribell and an Aroma Therapy Kit, but with the name periodically swapped out with another name. This is Question 16 of the Oct 2003 AM exam, and is related to a broadening reissue. As mentioned in one of the answers, reissue apps. that seek to broaden claims must be filed within two years of the issue date. The answer is to file a reissue to broaden the claims, however, a "divisional reissue" cannot be filed. Failing to file a divisional application claiming restricted claims during the pendency of the application subject to a restriction requirement is not an "error" that can be remedied in a reissue application. See MPEP 1402, Grounds for Filing. 10/13/2008 - Had this question today. The answer was (E) - broadening reissue as to the claims. no reissue for failure to file a divisional. THe answer is A not E. 2/12/2009 Appeared today in the test. Answer is A (file a reissue to broaden the claims).
Amending Abstract
A question about whether the International Searching Authority could amend/write an abstract if one were not supplied in an International App. [Refer to MPEP 1844.01] Answer: The International Searching Authority shall establish an Abstract (if missing), and the applicant may within one month from the date of mailing of the international search report, submit comments on the abstract established by the International Searching Authority. This question is meant to be tricky, because for a US national app. the examiner is not allowed to supply an abstract if one isn't present, but can amend an existing abstract if that's the only thing preventing allowance. (see sections below) PCT RULE 38 - Missing or Defective Abstract PCT RULE 38.1. - Lack of Abstract If the international application does not contain an abstract and the receiving Office has notified the International Searching Authority that it has invited the applicant to correct such defect, the International Searching Authority shall proceed with the international search unless and until it receives notification that the said application is considered withdrawn. AND
6 von 31
3/17/2009 10:31 PM
http://patentbarquestions.com/Questions_reportedly_asked_in_the_Patent...
PCT RULE 38.2. - Establishment of Abstract (a) If the international application does not contain an abstract and the International Searching Authority has not received a notification from the receiving Office to the effect that the applicant has been invited to furnish an abstract, or if the said Authority finds that the abstract does not comply with Rule 8, it shall itself establish an abstract. Such abstract shall be established in the language in which the international application is to be published or, if a translation into another language was transmitted under Rule 23.1(b) and the International Searching Authority so wishes, in the language of that translation. (b) The applicant may, within one month from the date of mailing of the international search report, submit comments on the abstract established by the International Searching Authority. Where that Authority amends the abstract established by it, it shall notify the amendment to the International Bureau. In general, the examiner will have to establish a new abstract if the applicant did not provide an abstract or if the abstract does not comply with PCT Rule 8. The answer is different if it does not specifically hinge on a PCT Rules (red herring - International Searching Authority) from MPEP 1800. Generally, USPTO procedure is that the examiner will not supply an abstract if one is absent, but the examiner may revise an abstract if the application is otherwise in a condition of allowance. [See MPEP 608.01(b)] In 608.01(b) Abstract of the Disclosure The Office of Initial Patent Examination (OIPE) will review all applications filed under 35 U.S.C. 111(a) for compliance with 37 CFR 1.72 and will require an abstract, if one has not been filed. In all other applications which lack an abstract, the examiner in the first Office action should require the submission of an abstract directed to the technical disclosure in the specification. See Form Paragraph 6.12 (below). Applicants may use either Abstract or Abstract of the Disclosure as a heading. Regarding an improper abstract, if the application is otherwise in condition for allowance, the examiner should make any necessary revisions: In 608.01(b) Upon passing the application to issue, the examiner should make certain that the abstract is an adequate and clear statement of the contents of the disclosure and generally in line with the guidelines. If the application is otherwise in condition for allowance except that the abstract does not comply with the guidelines, the examiner generally should make any necessary revisions by a formal examiners amendment after obtaining applicants authorization (see MPEP 1302.04 rather than issuing an Ex parte Quayle action requiring applicant to make the necessary revisions. In 608.01(b) Abstract of the Disclosure The Office of Initial Patent Examination (OIPE) will review all applications filed under 35 U.S.C. 111(a) for compliance with 37 CFR 1.72 and will require an abstract, if one has not been filed. In all other applications which lack an abstract, the examiner in the first Office action should require the submission of an abstract directed to the technical disclosure in the specification. See Form Paragraph 6.12 (below). Applicants may use either Abstract or Abstract of the Disclosure as a heading. Edit 11/16/08 - 37 CFR 1.438. The abstract. (a) Requirements as to the content and form of the abstract are set forth in PCT Rule 8, and shall be adhered to. (b) Lack of an abstract upon filing of an international application will not affect the granting of a filing date. However, failure to furnish an abstract within one month from the date of the notification by the Receiving Office will result in the international application being declared withdrawn. EDIT: 2/12/2009 Variant of this question appeared today. Q: If ISA creates/provides an Abstract, what can the Applicant do. Answer: [..]the applicant may within one month from the date of mailing of the international search report, submit comments on the abstract established by the International Searching Authority.
Obviousness
One obviousness question in there that threw me for a loop because all the answers seemed incorrect. Only one involved teaching or motivation even though another answer was in better form. 2144.05 III. REBUTTAL OF PRIMA FACIE CASE OF OBVIOUSNESS
7 von 31
3/17/2009 10:31 PM
http://patentbarquestions.com/Questions_reportedly_asked_in_the_Patent...
A prima facie case of obviousness may also be rebutted by showing that the art, in any material respect, teaches away from the claimed invention. This is not that helpful!
-the correct answer can be found in section 1805 on page 1800-7 2nd column, 3rd paragraph. The US RO will forward the application to the International bureau for processing, if the app was filed using USPTO but not in English, or if applicant not a resident/citizen of US at the time. The date of US filing will be date given the PCT application by the International Bureau - if all other requirements met - which is the date the application was received by the US office. "The Receiving Office of the International Bureau will consider the international application to be received as of the date accorded by the United States Receiving Office."(Id). One question on this issue gives potential answers involving 20, 36 and 30 months (from priority date). Only one answer requires $ to enter national stage by 30 months - just give that answer.
8 von 31
3/17/2009 10:31 PM
http://patentbarquestions.com/Questions_reportedly_asked_in_the_Patent...
371(c). (Probably April 17, 2002 AM Questions 11 and 12 or some variation) PCT designating USA filed in English claiming priority to JP application. Filing date was after Nov 29, 2000. IA published in English, and entered the National Stage. US application publication was published. Subsequently, the application was patented. When is the 102(e) prior art date? In 2136 35 U.S.C. 102(e) Revised 35 U.S.C. 102(e) allows the use of certain international application publications and U.S. patent application publications, and certain U.S. patents as prior art under 35 U.S.C. 102(e) as of their respective U.S. filing dates, including certain international filing dates. The prior art date of a reference under 35 U.S.C. 102(e) may be the international filing date if the international filing date was on or after November 29, 2000, the international application designated the United States, and the international application was published by the World Intellectual Property Organization (WIPO) under the Patent Cooperation Treaty (PCT) Article 21(2) in the English language. See MPEP 706.02(f)(1) for examination guidelines on the application of 35 U.S.C. 102(e). (1) If the international application meets the following three conditions: (a) an international filing date on or after November 29, 2000; (b) designated the United States; and (c) published under PCT Article 21(2) in English, then the international filing date is a U.S. filing date for prior art purposes under 35 U.S.C. 102(e). 706.02(f)(1) (3) If the international application has an international filing date prior to November 29, 2000, apply the reference under the provisions of 35 U.S.C. 102 and 374, prior to the AIPA amendments: (a) For U.S. patents, apply the reference under 35 U.S.C. 102(e) as of the earlier of the date of completion of the requirements of 35 U.S.C. 371(c)(1), (2) and (4) or the filing date of the later filed U.S. application that claimed the benefit of the international application; (b) For U.S. application publications and WIPO publications directly resulting from international applications under PCT Article 21(2), never apply these references under 35 U.S.C. 102(e). These references may be applied as of their publication dates under 35 U.S.C. 102(a) or (b); (c) For U.S. application publications of applications that claim the benefit under 35 U.S.C. 120 or 365(c) of an international application filed prior to November 29, 2000, apply the reference under 35 U.S.C. 102(e) as of the actual filing date of the later-filed U.S. application that claimed the benefit of the international application. EDIT 2/12/2009: Two variant questions on determining 102(e) prior art dates appeared today. Q1: German Appl filed prior to 11/29/2000 Date 1, IA filed prior to 11/29/2000 claiming benefit of Garman Appl Date 2 Designating US, IA published after 11/29/2000 in English Date 3, goes to National Stage Date 4, Applicant fulfills 37 CFR 1.497 requirement on Date 5, Patent issues from the National Stage, What is the 102(e) prior art date for the US Patent issuing from the Nationa Stage? (potential Answers included A-D Some of the above Dates, E - none of the above) Q2: German Appl filed prior to 11/29/2000 Date 1, IA filed after 11/29/2000 claiming benefit of Garman Appl Date 2 Designating US, IA published after 11/29/2000 in non-English Date 3, goes to National Stage Date 4, Applicant fulfills 37 CFR 1.497 requirement on Date 5, Patent issues from the National Stage, What is the 102(e) prior art date for the US Patent issuing from the Nationa Stage? (potential Answers included A-D Some of the above Dates, E - none of the above) See 706.02(f)(1):[..](2)If the international application was filed on or after November 29, 2000, but did not designate the United States or was not published in English under PCT Article 21(2), do not treat the international filing date as a U.S. filing date for prior art purposes. In this situation, do not apply the reference as of its international filing date, its date of completion of the35 U.S.C. 371(c)(1), (2) and (4) requirements, or any earlier filing date to which such an international application claims benefit or priority. The reference may be applied under 35 U.S.C. 102(a) or (b) as of its publication date, or 35 U.S.C. 102(e) as of any later U.S. filing date of an application that properly claimed the benefit of the international application (if applicable). (3)If the international application has an international filing date prior to November 29, 2000, apply the reference under the provisions of 35 U.S.C. 102and 374, prior to the AIPA amendments: (a)For U.S. patents, apply the reference under 35 U.S.C. 102(e) as of the earlier of the date of completion of the requirements of 35 U.S.C. 371(c)(1), (2) and (4) or the filing date of the later-filed U.S. application that claimed the benefit of the international application; In Q1: IA was filed prior to 11/29/2000, and Applicant fulfilled National Stage requirement of Inventorship (37 CFR 1.497 See PCT Rules Appendix T) on Date 4, I answered Date 4. In Q2: IA was filed after 11/29/2000 but not in English, I answered E - none of the above.
Suspended Practitioner
9 von 31
3/17/2009 10:31 PM
http://patentbarquestions.com/Questions_reportedly_asked_in_the_Patent...
Question on suspended practitioner. Is one of the "which one is incorrect" type. Know that the USPTO will not "ad litem" appoint a new practitioner if the one in the power of attorney is suspended. 105 Suspended or Excluded Practitioner Cannot Inspect [R-2] U.S. Patent and Trademark Office (USPTO) employees are forbidden to hold either oral or written communication with an attorney or agent who has been suspended or excluded from practice by the USPTO regarding an application unless it *>is< one in which said attorney or agent is the applicant. Power to inspect given to such an attorney or agent will not be accepted.
10 von 31
3/17/2009 10:31 PM
http://patentbarquestions.com/Questions_reportedly_asked_in_the_Patent...
(3) An assignee as provided for under 3.71(b) of this chapter; or (4) All of the applicants ( 1.41(b)) for patent, unless there is an assignee of the entire interest and such assignee has taken action in the application in accordance with 3.71 of this chapter. 10.18 only says that something filed by a practitioner must be signed by that person; any of the parties in 1.33 can sign the oath. If you would like to debate this, please provide a cite. It's hard to say for sure without reading the actual question and answer choices, but I think you guys are missing the point of this question. I would caution anyone against relying too heavily on this submission.
11 von 31
3/17/2009 10:31 PM
http://patentbarquestions.com/Questions_reportedly_asked_in_the_Patent...
in an application exceeds 100 pages in length, where a table page is a page printed on paper in conformance with paragraph (b) of this section and 1.58(c).
724 Trade Secret, Proprietary, and Protective Order Materials [...] That wherever possible, trade secret law and patent laws should be administered in such manner that the former will not deter an inventor from seeking the benefit of the latter, because, the public is most benefited by the early disclosure of the invention in consideration of the patent grant. If a patent applicant is unwilling to pursue his right to a patent at the risk of certain loss of trade secret protection, the two systems will conflict, the public will be deprived of knowledge of the invention in many cases, and inventors will be reluctant to bring unsettled legal questions of significant current interest . . . for resolution. On 8/10/2007 the trade secret question related to what happens to the trade secret information in reexam if the Examiner finds it material to the patentability of the invention, and what if there is/or isn't a request to expunge the info. see MPEP 724.04 Any materials submitted under MPEP 724.02 in a reexamination file open to the public under 37 CFR 1.11(d) will be treated in the following manner: (A) >Materials submitted under MPEP 724.02 will only be released to the public with any other papers in the reexamination file if no petition to expunge (37 CFR 1.59) was filed prior to the mailing of a Notice of Intent to Issue Reexamination Certificate (NIRC), or if a petition to expunge was filed and the petition was denied.< The submitted information will be maintained separate from the reexamination file and will not be publicly available until a determination has been made as to whether or not the information is important to a reasonable examiner in deciding whether or not a claim is patentable. (B) >Prior to the mailing of a NIRC, the examiner will review the reexamination file and determine if a petition to expunge is in the reexamination file but not acted upon.< The examiner, or other appropriate Office official who is responsible for considering the information, will make a determination as to whether or not any portion or all of the information submitted is important to a reasonable examiner in deciding whether or not a claim is patentable. (C) If any portion or all of the submitted information is found important to a reasonable examiner in deciding whether or not a claim is patentable, **>the petition to expunge will be denied and the information< will thereafter become a permanent part of the reexamination file and open to the public. (D) If any portion or all of the submitted information is found not to be important to a reasonable examiner in deciding whether or not a claim is patentable,>the petition to expunge will be granted and the information expunged.< (E) >If a petition to expunge is not filed prior to the mailing of the NIRC, the materials submitted under MPEP 724.02 will become a permanent part of the reexamination file and open to the public under 37 CFR 1.11(d).<
Supplemental Oath
Oct '03 AM Q#26 Question when is a supplemental oath or declaration treated as an amendment? Answer: After Notice of Allowance in reissue application. 714.16 Amendment After Notice of Allowance, 37 CFR 1.312 [...] 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. See MPEP 603.01. A supplemental reissue oath or declaration is treated as an amendment under 37 CFR 1.312 because the correction of the patent which it provides is an amendment of the patent, even though no amendment is physically entered into the specification or claim(s). Thus, for a reissue oath or declaration submitted after allowance to be entered, the reissue applicant must comply with 37 CFR 1.312 in the manner set forth in this section.
Best Mode
Probably November 3, 1999 AM 49 One question about best mode. One of the answer choices is: If applicant doesnt designate a best mode, but puts forth several embodiment - the application does not require a statement which specifically points out the best
12 von 31
3/17/2009 10:31 PM
http://patentbarquestions.com/Questions_reportedly_asked_in_the_Patent...
mode. 2165.01 Considerations Relevant to Best Mode [...]III. DESIGNATION AS BEST MODE IS NOT REQUIRED There is no requirement in the statute that applicants point out which of their embodiments they consider to be their best; that the disclosure includes the best mode contemplated by applicants is enough to satisfy the statute.
13 von 31
3/17/2009 10:31 PM
http://patentbarquestions.com/Questions_reportedly_asked_in_the_Patent...
FOREIGN PRIORITY Foreign priority under 35 U.S.C. 119(a)-(d), 365(a), or 365(b) is not considered in determining the term of a patent. Accordingly, an application claiming priority under 35 U.S.C. 365(a) or 365(b) has a term which ends twenty years from the filing date of the application in the United States and not the prior international application.
Reissue/Filing Amendment
If you had a Certificate of Correction in the parent, and want to file preliminary amendment in a reissue application, what do you do type of question 1411.01 Certificate of Correction or Disclaimer in Original Patent [R-2] The applicant should include any changes, additions, or deletions that were made by a Certificate of Correction to the original patent grant in the reissue application without underlining or bracketing. The examiner should * make certain that
14 von 31
3/17/2009 10:31 PM
http://patentbarquestions.com/Questions_reportedly_asked_in_the_Patent...
all Certificate of Correction changes in the patent have been properly incorporated into the reissue application. Certificate of Correction changes and disclaimer of claim(s) under 37 CFR 1.321(a) should be made without using underlining or brackets. Since these are part of the original patent and were made before the reissue was filed, they should show up in the printed reissue >patent< document as part of the original patent, i.e., not in italics or bracketed. If the changes are extensive and/or applicant has submitted them improperly with underlining and brackets, a clean copy of the specification with the Certificate of Correction changes in it may be requested by the examiner.
3/17/2009 10:31 PM
http://patentbarquestions.com/Questions_reportedly_asked_in_the_Patent...
This question has to do with experimental use and a 102(b) rejection. Know that experimental use doesn't start the 1 year for a 102(b), but using it in a non-experimental way, even in a stupid way, starts the 1 year for 102(b). It doesn't matter if no one knew or could tell that the use was "public"
Broadening Reissue
When an oath stating non-broadening is filed before two-year date, and then inventors decide to broaden it, right on the two-year anniversary. In one variant, they failed to use a Certificate of Mailing. And then the answers were still obscure (which statute should the examiner invoke, and should he consider it a broadening or non-broadening, when their broadening request came in non-timely?) 1412.03 Broadening Reissue Claims [...] Where any intent to broaden is indicated in the reissue application within the two years from the patent grant, a broadened claim can subsequently be presented in the reissue after the two year period. >Thus, a broadened claim may be presented in a reissue application after the two years, even though the broadened claim presented after the two years is different than the broadened claim presented within the two years.<
16 von 31
3/17/2009 10:31 PM
http://patentbarquestions.com/Questions_reportedly_asked_in_the_Patent...
01 September 2008 - See October 16, 2002 PM Q50. I did not encounter this question on the test yet it seems that this request would not be timely if received by the PTO on the 2 year anniversary date since a Certificate of Mailing was not used and since the parent reissue applcation did not indicate broadening. See MPEP 1412.03 IV: In re Graff, 111 F.3d 874, 877, 42 USPQ2d 1471, 1473-74 (Fed. Cir. 1997) (Broadened claims in a continuing reissue application were properly rejected under 35 U.S.C. 251 because the proposal for broadened claims was not made (in the parent reissue application) within two years from the grant of the original patent and the public was not notified that broadened claims were being sought until after the two-year period elapsed.);
17 von 31
3/17/2009 10:31 PM
http://patentbarquestions.com/Questions_reportedly_asked_in_the_Patent...
you are more than six months out after the final Ofice action issued, once the Notice of Appeal is withdrawn the application is abandoned (unless file cont/RCE on the same day). I don't see any reason why you can't file a regular continuation instead of an RCE on or before the day Notice of Appeal is withdrawn. RDS (Dec 9, 07) See Q36 AM, Oct 2003 EDIT 2/12/2009 Several variant questions were asked today. Facts: Some claims twice rejected, some claims objected to for dependency on rejected claims but otherwise allowable and some claims allowed. Q1. What if applicant files an appeal but no appeal brief, what will happen to the application; Q2. During appeal, applicant files RCE but no submission and/or fee, what happens to his application and various claims .................one of the correct answers to one variant Question was Apeal is abandoned and application goes to the Examiner for review.
18 von 31
3/17/2009 10:31 PM
http://patentbarquestions.com/Questions_reportedly_asked_in_the_Patent...
One had to do with a Continuation of an application where a restriction requirement had been made, and the applicant had ignored the requirement and filed with all the original claims. 804.01 Prohibition of Double Patenting Rejections Under 35 U.S.C. 121 [...]Note that a restriction requirement in an earlier-filed application does not carry over to claims of a continuation application in which the examiner does not reinstate or refer to the restriction requirement in the parent application. Reliance on a patent issued from such a continuation application to reject claims in a later-filed divisional application is not prohibited under 35 U.S.C. 121.
35 U.S.C. 112, paragraph 6: An element in a claim for a combination may be expressed as a means or step for performing a specified function without the recital of structure, material, or acts in support thereof, and such claim shall be construed to cover the corresponding structure, material, or acts described in the specification and equivalents thereof. 2173.05(i) Negative Limitations
19 von 31
3/17/2009 10:31 PM
http://patentbarquestions.com/Questions_reportedly_asked_in_the_Patent...
The current view of the courts is that there is nothing inherently ambiguous or uncertain about a negative limitation. So long as the boundaries of the patent protection sought are set forth definitely, albeit negatively, the claim complies with the requirements of 35 U.S.C. 112, second paragraph. [...] 6/3/07- Actually, this is Oct '03 AM Q#24 Negative limitation is usually OK, but here is "new matter" so negative limitation is wrong answer here. Correct answer is (D) An amendment to the claim substituting for the term "means for pulling the door open" the structure of a handle and a knob. From the Answers Explanation: 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, paragraph 6 for examination purposes. Thus, (D) overcomes the lack of novelty rejection under these circumstances.
20 von 31
3/17/2009 10:31 PM
http://patentbarquestions.com/Questions_reportedly_asked_in_the_Patent...
21 von 31
3/17/2009 10:31 PM
http://patentbarquestions.com/Questions_reportedly_asked_in_the_Patent...
The new ground of rejection raised by the Board does not reopen prosecution except as to that subject matter to which the new rejection was applied. If the Board's decision in which the rejection under 37 CFR 41.50(b) was made includes an affirmance of the examiner's rejection, the basis of the affirmed rejection is not open to further prosecution. If the appellant elects to proceed before the examiner with regard to the new rejection, the Board's affirmance of the examiner's rejection will be treated as nonfinal for purposes of seeking judicial review, and no request for reconsideration of the affirmance need be filed at that time. Prosecution before the examiner of the 37 CFR 41.50(b) rejection can incidentally result in overcoming the affirmed rejection even though the affirmed rejection is not open to further prosecution. Therefore, it is possible for the application to be allowed as a result of the limited prosecution before the examiner of the 37 CFR 41.50(b) rejection. If the application becomes allowed, the application should not be returned to the Board. Likewise, if the application is abandoned for any reason, the application should not be returned to the Board. If the rejection under 37 CFR 41.50(b) is not overcome, the applicant can file a second appeal (as discussed below). Such appeal must be limited to the 37 CFR 41.50(b) rejection and may not include the affirmed rejection. If the application does not become allowed or abandoned as discussed above, once prosecution of the claims which were rejected under 37 CFR 41.50(b) is terminated before the examiner, the application file must be returned to the Board so that a decision making the original affirmance final can be entered. Know this section very well. 1/27/09 - I got 3 questions that were ver batim from this section. Really, just know where to look.
22 von 31
3/17/2009 10:31 PM
http://patentbarquestions.com/Questions_reportedly_asked_in_the_Patent...
If the foreign office notification was dated, say, Sept. 10, and the allowance was dated Sept. 20, AND the applicant became aware of the foreign office notification for the first time on Sept. 25, you would technically have until Oct. 25 to submit the IDS (30 days from the applicant's receipt of the information). However, if you choose to file no later than Oct. 10 (30 days from the sending), you inherently meet the 30-days-after-receipt requirement, AND lose no accumulated PTA time. EDIT: the above statement is slightly wrong. The date in which the 30 days starts from is the date the foreign offices sends the notice not the date which the applicant receives the information.
3/17/2009 10:31 PM
http://patentbarquestions.com/Questions_reportedly_asked_in_the_Patent...
Edit: Under 607.02 "II. Time Period for Requesting a Refund" the MPEP states: Any request for a refund which is not based upon subsequent entitlement to small entity status (see 37 CFR 1.28(a)) must be filed within the two-year non-extendable time limit set forth in 37 CFR 1.26(b). 12/07/08: This question is on the April 01 AM exam, question 38. The correct answer is D), which is a date that is three months from the payment of the large entity fee.
Multiplicity
Multiplicity question - applicant has one utility claim and more than 900 claims covering small ornamental differences. Answer is that the examiner should call the applicant and have him select a few claims for examination. M.P.E.P. Section 2173.05(n), Specific Topics Related to Issues Under 35 U.S.C. If a rejection on multiplicity is in order the examiner should make a telephone call explaining that the claims are unduly multiplied and will be rejected on that ground. Note MPEP Section 408. The examiner should request selection of a specified number of claims for purposes of examination.
24 von 31
3/17/2009 10:31 PM
http://patentbarquestions.com/Questions_reportedly_asked_in_the_Patent...
Anticipation
25 von 31
3/17/2009 10:31 PM
http://patentbarquestions.com/Questions_reportedly_asked_in_the_Patent...
Invention has 2 layers (layer x and layer z). Layers are parrallel and "in continuous, direct contact" with one another. Prior art has 2 layers (layer x and layer z) in which there exists an epoxy/adhesive layer in between the layers. Which claim is anticipated by prior art(if anaylized independently) A) Claim 1: An article comprising layers x and z stacked horizontally. B) Claim 2: An article comprising layers x and z stacked horizonatally, in which layers are in continuous and direct contact. C) Claim 3: An article comprising layers x and z stacked horizonatally, but not including an adhesive/epoxy layer. D) A and B D) All of the above Answer: A) claim 1 is anticipated because the prior art reference includes all claimed limitations. Note: B & C avoid anticipation by providing a limitation. B provides an affirmative limitation that is mutually exclusive with the prior art. Can't have continuous and direct contact and also have an adhesive layer. C provides a negative limitation which explicitly distinguishes it from the prior art. One variant of this question appears as Q17 April 2000 AM. These two questions are very similar. The answer is different though!! The Apr 00' question is asking which claims avoid the prior art. The above question is asking which question is anticipated. Be sure to read this question carefully and see what it is asking for. Avoid the knee jerk response of skimming and answering from memory. 10/13/2008 - saw this question on my test today
Number of Rejections Required for Appeal purposes when count from parent to continuation
Have X # of claims. All rejected. File continuation with same X claims. rejected in continuation. Can you appeal to board? Answer choices: Yes, b/c there has been ONE rejection. Yes, b/c there has been TWO rejections. Other 3 choices are "not appealable". Correct Anwswer? Look it up. :) MPEP 1204 The limitation of "twice 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 can choose to file an appeal in the continuing application, even if the claim was rejected only once in the continuing application. >Applicant cannot file an appeal in a continuing application, or after filing a request for continued examination (RCE) under 37 CFR 1.114, until the application is under a rejection.
Divisional Reissue
26 von 31
3/17/2009 10:31 PM
http://patentbarquestions.com/Questions_reportedly_asked_in_the_Patent...
A patent containing claims 1-10 has issued. The subject matter of claims 1-5 was invented by inventor A, who has assigned his rights to your client, company C. The subject matter of claims 6-10 was invented by inventor B, who refuses to cooperate with company C unless he is the sole named inventor of his own patent. Company C wishes to divide the claims such that one patent contains only claims 1-5 and has inventor A as the sole inventor, and another patent contains claims 6-10 and has inventor B as the sole inventor. How should you advise your client? a) this is impossible b) use a certificate of correction to cancel claims 6-10 and remove inventor B from the patent, and file a divisional application on claims 6-10 listing B as the inventor c) file a reissue, cancel claims 6-10, and remove B as an inventor d) file a reissue of the original application along with a divisional reissue, cancel claims 1-5 and remove inventor A from the first reissue, move claims 6-10 and inventor B to the divisional reissue e) file two simultaneous reissue applications from the same patent, cancel claims 1-5 and remove inventor A from the first reissue, cancel claims 6-10 and remove inventor B from the second reissue. This is a tough one, but, based on the description above I think the likely answer is E and not D. D sounds more like what would happen if the Examiner restricted out claims that you added when you filed the reissue, and you wanted to pursue them. Even so, I'm not sure how you "move" claims to the divisional reissue. E sounds more straightforward. See the rules below. MPEP 1451 37 CFR 1.176(b) permits the examiner to require restriction in a reissue application between the original claims of the patent and any newly added claims which are directed to a separate and distinct invention(s). See also MPEP 1450. As a result of such a restriction requirement, divisional applications may be filed for each of the inventions identified in the restriction requirement. Applicant may initiate a division of the claims by filing more than one reissue application in accordance with 37 CFR 1.177. The multiple reissue applications which are filed may contain different groups of claims from among the original patent claims, or some of the reissue applications may contain newly added groups (not present in the original patent). 01/31/08: However, remember that reissues cannot be filed solely for the purpose of "dividing claims". Ther must be an error in the patent that must be fixed in order for a reissue to proceed. Office also has the option of merging the two reissues you filed back into one reissue app! 02/19/08: So I think you are misreading 37 cfr 1.177 (c) "No reissue application containing only unamended patent claims and not correcting an error in the original patent will be passed to issue by itself." .... There must be an error corrected in each reissue app in order to receive a reissue patent. 02/28/08: Take a look at 35 U.S.C. 251 - "The Director may issue several reissued patents for distinct and separate parts of the thing patented, upon demand of the applicant, and upon payment of the required fee for a reissue for each of such reissued patents." However - this is based on fixing the patent. A friend in the Patent office sent me that for a reissue there must be something that does not make the patent 'wholly or partly inoperative or invalid,' as required by the statute." 04/01/08:Update from previous - I took the Pbar last month and this question was on it. Got it wrong and went to DC for a review. I talked to the PO attorney about the answer - The statutory error that allows reissue is that if there 2 separable inventions by tow separate inventors, there should have been two separate patents. Thus D is a correct method of reissue. 04/14/08: GS - I don't agree with 04/01/08 poster. He must be mistaken because answer (e) perfectly comports with 1451, which says "Applicant may initiate a division of the claims by filing more than one reissue application in accordance with 37 CFR 1.177" 6/3/08: Even if there are two separate inventions because there is no overlap in the claims of the invention, wouldn't E still be the correct answer? Why would D be correct? 6/3/08: could someone explain what "mistake" is being corrected that warrants reissue apps? Is B's refusal to corporate w/ company C a "mistake" that warrants a reissue? Is the invention by A and B claiming different subject matter that makes a dvisional reissue an acceptable route? If we don't have a mistake to fix, then C's wish to separate the issued patent into two patents is
27 von 31
3/17/2009 10:31 PM
http://patentbarquestions.com/Questions_reportedly_asked_in_the_Patent...
impossible which makes (a) the answer. 06/03/08: "The correction of misjoinder of inventors in divisional reissues has been held to be a ground for reissue." (MPEP 1402--Grounds for Reissue). Accordingly, (D) is the correct answer. 07/25/08 DHG: I still don't buy it that D) is correct. If you "remove inventor A from the first reissue" and "move[...]inventor B to the divisional reissue" Then there is no inventor for the first reissue. Or at the very least inventor B "owns" both reissues. Can anyone explain what is wrong with answer E)? 07/27/08: The Longacre blog posting of June 26 (Jim's Practice Question of the Day #169) says the answer is A, as there is no mistake in the patent and thus nothing to fix. 08/09/08: I have this questions on my today's test. There is no choice of "a) this is impossible" available. All 5 choices is related to petition and reissue. I chose (D) above, with the correct wording "claims 1-5 and inventor A on the first reissue, claims 6-10 and inventor B with second divisional reissue. 10/07/08: I think it is simply a matter of reading the answers carefully. If you do as it says in D and cancel claims 1-5 and remove inventor A in the first reissue, that leaves you with inventor B and claims 6-10. Likewise, if you move claims 6-10 and inventor B to the divisional reissue, that also leaves you with inventor B and claims 6-10. Neither reissue would have claims 1-5 and inventor A. Therefore, E has to be the correct answer. 10/13/08: I just passed and got home. This was the last question on my exam. The answers written above ARE NOT REPRODUCED RIGHT. First, there is no answer for "this is impossible". Second, there is only one answer that comports with answers (D) and (E)... so it was easy. File a reissue and then a divisional of that reissue.
Hairgel Question
I have not seen this question myself -- but I'm trying to patch something together from comments of others: "One where a hairdresser find his competitor gets a patent but has an advertisement that he was selling the patented product one year before the competitor got his patent to that product." "Hairgel question, someone gets a patent application in 99 and it issues as a patent in 01. A couple years later, a competitor realizes that it is the exact same hairgel he had advertised in 98. The question asks what can he do to correct it, petition for a correction, ex parte reexam, inter parte reexam, reissue or certificate of correction." My thoughts: Reissue and certificates of correction have to be requested by the inventors or the assignee (consent of inventors needed for broadening reissue). A competitor can request rexam (either inter partes or ex parte) only if there is a patent or printed publication raising a substantial new question of patentablility. Thus, unless the advertisment constitutes a printed publication (with sufficient disclosure to raise substantial new question of patenability), the competitor is SOL. If the advert qualified, then ex parte reexam would be available to the competitor, based on facts above. Inter partes reexam would be available only if the application was filed on or after Nov 29, 1999 (MPEP 2609). It would probably be ex parte since it happened 98/99 and there was a printed ad. (edited Jul 16, 2007) This sounds just like the Einstein/Weisman football pads question from April 2002 PM #37 where the ex parte reexamination option was correct. (edit -- yes, it is very similar. The hairgel question is a bit tougher though, in that it does not spell out (to my recollection), like Q37, that the advertisements raise a substantial question of patentability.) EDIT: 2/12/2009 Appeared today. Appl was filed after Nov 29, 1999. Inter Partes reexam would qualify using printed brochure/Ad.
28 von 31
3/17/2009 10:31 PM
http://patentbarquestions.com/Questions_reportedly_asked_in_the_Patent...
Office action as to why the prior art element is an equivalent. Factors that will support a conclusion that the prior art element is an equivalent are: (A) the prior art element performs the identical function specified in the claim in substantially the same way, and produces substantially the same results as the corresponding element disclosed in the specification. ... (B) a person of ordinary skill in the art would have recognized the interchangeability of the element shown in the prior art for the corresponding element disclosed in the specification... (C) there are insubstantial differences between the prior art element and the corresponding element disclosed in the specification... (D) the prior art element is a structural equivalent of the corresponding element disclosed in the specification... 10/13/2008 - had this question today. 1/27/09 - Another question on Means Plus Function involves the 3 charistics of MPF claims from Ch. 2100. Know those 3.
Chemical Claim
I had a question where an application had claimed a chemical that was useful for relieving headaches. The application did not disclose how to make said chemical. Examiner rejects claim on enablement and written description. Applicant shows that a PHOSITA would know how to make said chemical and points formulas and technical data in the spec. A. Examiner should withdraw both rejections in light of applicant's submissions. B. Examiner should withdraw enablement rejection, but keep written description as the application does not show how to make said chemical. C. Examiner should withdraw both rejections as neither were proper to begin with, Look at 2164.04 last 2 paragraphs "In accordance with the principles of compact prosecution, if an enablement rejection is appropriate, the first Office action on the merits should present the best case with all the relevant reasons, issues, and evidence so
29 von 31
3/17/2009 10:31 PM
http://patentbarquestions.com/Questions_reportedly_asked_in_the_Patent...
that all such rejections can be withdrawn if applicant provides appropriate convincing arguments and/or evidence in rebuttal. Providing the best case in the first Office action will also allow the second Office action to be made final should applicant fail to provide appropriate convincing arguments and/or evidence.... In other words, the examiner should always look for enabled, allowable subject matter and communicate to applicant what that subject matter is at the earliest point possible in the prosecution of the application. The applicant will probably need to show evidence to rebut other than an argument. But if the evidence of Phosita knowledge is available the rejections should be removed. I would think the key is in the rejection language. 06/03/08: MPEP 2161 "the Federal Circuit reaffirmed that under 35 U.S.C. 112, first paragraph, the written description requirement is separate and distinct from the enablement requirement and gave an example thereof.). An invention may be described without the disclosure being enabling (e.g., a chemical compound for which there is no disclosed or apparent method of making), and a disclosure could be enabling without describing the invention (e.g., a specification describing a method of making and using a paint composition made of functionally defined ingredients within broad ranges would be enabling for formulations falling within the description but would not describe any specific formulation)." This means that by showing that a Phosita can make and use the chemical, the enablement requirement is satisfied and so that rejection should be dropped. However, the above facts do not tell us if the written disclosure requirement is satisfied, so that rejection may stay. So B is the correct answer.
30 von 31
3/17/2009 10:31 PM
http://patentbarquestions.com/Questions_reportedly_asked_in_the_Patent...
You can find the old exams on the USPTO (http://www.uspto.gov) website. The questions marked with "" reportedly appeared in a 2006 Oct exam. The questions marked with "" reportedly appeared in a 2006 December exam. The questions marked with "^" reportedly appeared in a 2007 December exam. Retrieved from "http://patentbarquestions.com/Questions_reportedly_asked_in_the_Patent_Bar_Exam" This page was last modified 13:02, 28 February 2009. Content is available under Attribution-Share Alike 3.0 .
31 von 31
3/17/2009 10:31 PM