Patent Bar

Front 1

Claims wood. Specification describes balsa wood. Reference is Pine.
Anticipation?

Back 1

Yes. Here Spec is not defining wood as Balsa Wood,
"reading a claim in light of the specification, to thereby interpret limitations explicitly recited in the claim, is a quite different thing from 'reading limitations of the specification into a claim,' to thereby narrow the scope of the claim by implicitly adding disclosed limitations which have no express basis in the claim."

Front 2

Factor against eligibility?
(1, 2) No/Insufficient express/inherent recitation of a machine/transformation

Back 2

Yes

Front 3

Factor against eligibility?
(3, 9) A law of nature / Involvement of machine/transformation with the steps is merely nominally, insignificantly, or tangentially related to the performance of the steps.

Back 3

Yes

Front 4

Factor against eligibility?
(4) Machine is generically recited such that it covers any machine capable of performing the claimed step(s).

Back 4

Yes

Front 5

Factor against eligibility?
(5) Machine is merely an object on which the method operates.

Back 5

Yes

Front 6

Factor against eligibility?
(6) Transformation involves only a change in position or location of an article.

Back 6

Yes

Front 7

Factor against eligibility?
(7) The claim would monopolize a natural force/patent a scientific fact

Front 8

e.g., by claiming every mode of producing an effect of that law of nature.

Back 8

Yes

Front 9

Factor against eligibility?
(8) A law of nature is applied in a merely subjective determination.

Back 9

Yes

Front 10

Factor against eligibility?
(10) The claim is a mere statement of a general concept.

Back 10

Yes

Front 11

Factor against eligibility?
(11) Use of the concept, as expressed in the method, would effectively grant a monopoly over the concept.

Back 11

Yes

Front 12

Factor against eligibility?
(12) Both known and unknown uses of the concept are covered, and can be performed through any existing or future-devised machinery, or even without any apparatus.

Back 12

Yes

Front 13

Factor against eligibility?
(13) The claim only states a problem to be solved.

Back 13

Yes

Front 14

Factor against eligibility?
(14) The general concept is disembodied.

Back 14

Yes

Front 15

Factor against eligibility?
(15) The mechanism(s) by which the steps are implemented is subjective / imperceptible.

Back 15

Yes

Front 16

T/F
Foreign correspondence / amendment not prohibited from being transmitted by facsimile can benefit from a certificate of transmission

Back 16

T

Front 17

T/F
IDS can benefit from a certificate of mailing or transmission

Back 17

T

Front 18

T/F
RCE can benefit from a certificate of mailing or transmission

Back 18

T

Front 19

T/F
Appeal brief can benefit from a certificate of mailing or transmission.

Back 19

T

Front 20

If Board affirms a rejection of claim 1 and claim 2 was objected to prior to appeal as being allowable except for its dependency from claim 1, the examiner should_________

Back 20

hold the application abandoned.

Front 21

If the Board affirms a rejection against an independent claim and reverses all rejections against a claim dependent thereon, the examiner should_____________

Back 21

(1) Convert the dependent claim into independent form by examiner’s amendment, cancel all claims in which the rejection was affirmed, and issue the application OR
(2) Set 1 month for Applicant to rewrite the dependent claim

Front 22

If one application is pre-AIA and the other application is AIA, how will a contest in the same claimed invention be instituted?

Back 22

Interference

Front 23

If both applications are AIA, how will a contest in the same claimed invention be instituted?

Back 23

Derivative Action

Front 24

If both applications are pre AIA, how will a contest in the same claimed invention be instituted?

Back 24

Interference

Front 25

If the later application is AIA, how will a contest in the same specification be instituted?

Back 25

No contest. The later applicant files Rule 1.130 Affidavit.

Front 26

If the later application is preAIA, how will a contest in the same specification be instituted?

Back 26

No contest. The later applicant files Rule 1.131/1.132 Affidavit.

Front 27

If an assignee does not participate in the prosecution, can the assignee's name still be printed on the patent?

Back 27

Yes, but only if the assignee is listed in the Issue Fee Transmittal form PTOL-85B

Front 28

In general, whose name will be printed on the patent?

Back 28

The Applicant.

Front 29

Does a new assignment document need to be recorded for a divisional or continuation application where the assignment recorded in the parent application remains the same?

Back 29

No

Front 30

If an independent claim is narrower than one allowed in the Office of Earlier Examination (OEE), can the applicant initiate PPH?

Back 30

Yes, but only if applicant can broaden the narrower claim to correspond to the allowed claim.

Front 31

T/F
When the reference relied on expressly anticipates or makes obvious all of the elements of the claimed invention, the reference is presumed to be operable.

Back 31

T

Front 32

T/F
A non-enabling reference may qualify as prior art for the purpose of determining obviousness under 35 U.S.C. 103.

Back 32

T

Front 33

T/F
A reference contains an 'enabling disclosure' if the public was in possession of the claimed invention before the date of invention.

Back 33

T

Front 34

Name 4 incidents when ADS must be filed

Back 34

1. set inventorship when
(a) applicants are not inventors
(b) O/D is not present (and permit postponing O/D until NOA)
(c) joint inventors each signed individual O/D w/o all the joint inventors
2. to claim priority