Patent Bar New Questions

Front 1

Can an examiner make an obviousness rejection where prior art cites chemical amounts of 34.9% and the applicant’s range starts at 35%?

Back 1

MPEP 2144.05 “A prima facie case of obviousness exists where the claimed ranges and the prior art ranges do not overlap but are close enough that one skilled in the art would have expected them to have the same properties.”

Got this question yesterday, but it was based of old exam with prior art range of 35-55 and applicant claimed 34.9-55.1 and unless they can show that this range has different properties it IS obvious because it is so close,

Front 2

31. Reexamination has been ordered following receipt of a request for reexamination of U.S. Patent X, filed by the patentee. Patent X contains independent claims 1 through 4, each directed to a hydrocyclone separator apparatus. They are the only claims that were ever presented during prosecution of the application that matured into Patent X. In the first Office action during reexamination, claims 1 through 4 are rejected as being obvious under 35 USC 103 over U.S. Patent Z. The apparatus is used for separating material, including fibers suspended in a liquid suspension, into a light fraction containing the fibers, and a heavy fraction containing rejects. Assume there are no issues under 35 USC 102, 103, or 112, and that any dependent claim is properly dependent. Recommend which of the following claims, if any, would be subject to rejection under 35 USC 305 for improperly enlarging the scope of the original claim in accordance with the patent laws, rules and procedures as related in the MPEP.
(A) Claim 5. A hydrocyclone separator apparatus according to claim 4, wherein said blades are configured in the form of generally plane surfaces curved in one plane only.
(B) Claim 5. A hydrocyclone separator apparatus according to claim 4, wherein the outlet duct is in the form of two frustro-conical portions joined at their narrow ends.
(C) Claim 5. A method of separating material including fibers suspended in a liquid suspension comprising the steps of separating the material into a light fraction containing the fibers and a heavy fraction containing rejects, and converting the light fraction into a pulp and paper stock suspension.
(D) Claim 5. A hydrocyclone separator apparatus according to claim 4, wherein the separator chamber is conical in shape having at the narrow end an outlet for the heavy fraction and at its wide end an outlet for the light fraction.
(E) None of the above.

Back 2

31. ANSWER: (C). 35 U.S.C. § 305; MPEP §§ 2258 and 1412.03. MPEP § 2258, under the heading “Claims In Proceeding Must Not Enlarge Scope Of The Claims Of The Patent,” states “[w]here new or amended claims are presented . . . the claims of the reexamination proceeding should be examined under 35 U.S.C. 305, to determine whether they enlarge the scope of the original claims. 35 U.S.C. 305 states that ‘no proposed amended or new claim enlarging the scope of the claims of the patent will be permitted in a reexamination proceeding…’.” Under the further subheading “Criteria for Enlargement of the Scope of the Claims,” MPEP § 2258 states “A claim presented in a reexamination proceeding ‘enlarges the scope’ of the claims of the patent being reexamined where the claim is broader than each and every claim of the patent. See MPEP § 1412.03 for guidance as to when the presented claim is considered to be a broadening claim as compared with the claims of the patent, i.e., what is broadening and what is not. If a claim is considered to be a broadening claim for purposes of reissue, it is likewise considered to be a broadening claim in reexamination.” MPEP § 1412.03, under the heading “New Category of Invention Added In Reissue – Broadening,” states “[t]he addition of process claims as a new category of invention to be claimed in the patent (i.e., where there were no method claims present in the original patent) is generally considered as being a broadening of the invention. See Ex parte Wikdahl, 10 USPQ2d 1546, 1549 (Bd. Pat. App. & Inter. 1989).” MPEP 2258, under the further subheading “Rejection of Claims Where There Is Enlargement,” states “[a]ny claim in a reexamination proceeding which enlarges the scope of the claims of the patent should be rejected under 35 U.S.C. 305.” Since no claims drawn to a method were ever presented during prosecution of Patent X (claims 1 through 4 “are the only claims that were ever presented during prosecution of the application that matured into Patent X”), the claim recited in (C) is not directed to “the invention as claimed.” (A), (B), and (D) are all incorrect because each of their claims are directed to a hydrocyclone separator apparatus, i.e., “the invention as claimed,” and they do not enlarge the scope of the claims in Patent X. (E) is an incorrect answer because (C) is the correct answer.

Front 3

“I remember there was a question asking if there are three claims which claim 1 is an independent claim and claims 2-3 are dependent claims and the judge affirms the examiner rejection of claim 1, but not claims 2-3, then what is the next process. ”

Back 3

The answer was claim 1 will be cancelled, and claims 2-3 can be rewritten as an independent claim by the examiner writing an examiner’s amendment to be allowed or the examiner will let the appellant to do it.
1214.06 Examiner Sustained in Whole or in Part
I. NO CLAIMS STAND ALLOWED
Claims indicated as allowable prior to appeal except for their dependency from rejected claims will be treated as if they were rejected. The following examples illustrate the appropriate approach to be taken by the examiner in various situations:
(A)If claims 1-2 are pending, and the 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 hold the application abandoned.
(B)
If the Board or court affirms a rejection against an independent claim and reverses all rejections against a claim dependent thereon, ** after expiration of the period for further appeal, >the examiner< should proceed in one of two ways:
(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 a 1-month time limit in which appellant may rewrite the dependent claim(s) in independent form. Extensions of time under 37 CFR 1.136(a) will not be permitted. If no timely reply is received, the examiner will cancel all rejected and objected to claims and issue the application with the allowed claims only.

Front 4

If you facsimile to file CPA and no fee

Back 4

201.06(d)
II (F) Filing date:
If an applicant filing a CPA by facsimile does not include an authorization to charge the basic filing fee, search fee, and examination fee to a deposit account or to a credit card using PTO-2038 (See MPEP § 509), the application will be treated under 37 CFR 1.53(f) as having been filed without the appropriate fees (as fees cannot otherwise be transmitted by facsimile).

Front 5

45. John filed a nonprovisional patent application in the USPTO claiming two distinct inventions, a combination and a subcombination. At the time of filing the nonprovisional application, he recorded an assignment of all right, title, and interest in the inventions claimed in the application to ABC Corporation. In the first Office action, the examiner required restriction, and John elected the combination. A year later, during the pendency of the nonprovisional application, John filed a divisional patent application claiming the subcombination. At the time of filing the divisional application, John assigned all right, title, and interest in the inventions claimed in the divisional application to XYZ Corporation, and the latter party recorded the assignment within three months of the assignment. Following recordation of the assignment to XYZ Corporation, which of the following statements is false?
(A) The Office should treat John as having no ownership rights in the combination.
(B) The Office should treat John as having no ownership rights in the subcombination.
(C) ABC Corporation has no ownership rights in the subcombination.
(D) XYZ Corporation has no ownership rights in the combination.
(E) XYZ Corporation has no ownership rights in the subcombination.

Back 5

ANSWER: (C) is a false statement and therefore the correct answer. Under 35 U.S.C.§ 261, “An assignment, grant, or conveyance shall be void as against any subsequent purchaser or mortgagee for a valuable consideration, without notice, unless it is recorded in the Patent and Trademark Office within three months from its date or prior to the date of such subsequent purchase or mortgage.” (C) is correct because ABC Corporation acquired all of John’s ownership rights in the original patent application, including the subcombination claimed in the original nonprovisional and divisional patent applications. The assignment of the rights to ABC Corporation was recorded in the USPTO prior to the subsequent acquisition of the subcombination by XYZ Corporation. U.S.C. § 261. ABC Corporation’s recordation of its assignment gave constructive notice to XYZ Corporation. MPEP § 306 recites that in the case of a division…application, a prior assignment recorded against the original application is applied to the division…application because the assignment recorded against the original application gives the assignee rights to the subject matter common to both applications. (A) and (B) are true statements and therefore wrong answers. John gave up his ownership rights when he executed the assignment to ABC Corporation. The assignment to ABC Corporation carries with it the transfer of the bundle of rights associated with subject matter common to the original patent

Front 6

Is restriction proper for combination? subcombination? protest?

I had this question. It asks about the standard for imposing a restriction requirement where combinations/subcombinations are involved. I was able to eliminate a couple answers based on the MPEP but can’t remember any specifics.

Back 6

806.05(c):
To support a requirement for restriction >between combination and subcombination inventionsthere would be a seriuos search burden as evidenced byanother materiallycombination.

When these factors cannot be shown, such inventions are not distinct.

Front 7

A third party submission question is in 2002 Oct AM.
46. Which of the following statements relevant to a third party submission in a published patent application accords with proper USPTO practice and procedure?
(A) A submission of patents by a member of the public must be made within 2 months of the date of publication of the application.
(B) A submission of patents by a member of the public must be made prior to the mailing of a Notice of Allowance.
(C) A submission of patents by a member of the public must be made within 2 months of the date of publication of the application or prior to the mailing of a Notice of Allowance, whichever is later.
(D) A submission of patents by a member of the public must be made within 2 months of the date of publication of the application or prior to the mailing of a Notice of Allowance, whichever is earlier.
(E) Any submission not filed within the period set forth in the patent rules will be accepted provided it is accompanied by the processing fee set forth in 37 CFR 1.17(i).

An index search of “third party submission” leads you to 1134.01 (CFR 1.99). Verbatim.

Back 7

Q) TP Submissions / October 16, 2002 AM, #46

46. ANSWER: (D) is correct. 37 C.F.R. §1.99(e). (D) is correct because 37 C.F.R. § 1.99(e) provides, “A submission under this section must be filed within two months from the date of publication of the application (§ 1.215(a)) or prior to the mailing of a notice of allowance (§ 1.311), whichever is earlier.” Therefore, answer (D) is correct and answers (A), (B), and (C) are incorrect. (E) is wrong because 37 C.F.R. § 1.99(e) recites, “A submission by a member of the public to a pending published application that does not comply with the requirements of this section will be returned or discarded.”

Front 8

An Examiner can make both 102/103 rejections. When shouldn’t he make both?

Back 8

ANSWER: When cumulative (see 700).
FROM MPEP 706.02
Prior art rejections should ordinarily be confined strictly to the best available art. Exceptions may prop¬erly be made, for example, where:
(A) the propriety of a 35 U.S.C. 102 or 103 rejec¬tion depends on a particular interpretation of a claim;
(B) a claim is met only in terms by a reference which does not disclose the inventive concept involved; or
(C) the most pertinent reference seems likely to be antedated by a 37 CFR 1.131 affidavit or declara¬tion.
Such rejections should be backed up by the best other art rejections available. Merely cumulative rejections, i.e., those which would clearly fall if the primary rejection were not sustained, should be avoided.
See also MPEP § 707.05.

Front 9

A test taker reports a question about publication of a PCT application under PCT rules if the application is filed with the US receiving office and ONLY designates the US.

That’s not the same question. It wanted to know if it would be published as an IA and/or under 122. The choices were it would be published once, under each, not at all, etc.

Back 9

Answer – MPEP 1803 (if the US is the only contracting state in an IA, IA will not be published at 18 months). Otherwise, the application is published 18 months from the priority date of the IA.
PCT 1803 Reservations Under the PCT Taken by the United States of America
[...]It has also declared that, as far as the United States of America is concerned, international publication is not required (PCT Article 64 (3)). Accordingly, under PCT Article 64(3)(b), if the United States is the only PCT Contracting State designated in an international application, the international application will not be published by the International Bureau (IB) at 18 months. Even though the United States Patent and Trademark Office has begun pre-grant publication under 35 U.S.C. 122(b), the United States has not removed its reservation under PCT Article 64(3) because not all United States patent applications are published. See 35 U.S.C. 122(b)(2). The application will, however, be published under 35 U.S.C. 122(b) if it enters the national stage in the United States. It will be published again if it is allowed to issue as a United States patent.

The correct answer is that it would not be published as an IA, since the US was the only designated state, but it would be published when it entered the national stage.

Front 10

Another question on the exam: whether there is a different standard for patents vs. publication when it comes to showing enablement for anticipation purposes. (i.e. a prior art reference has to be enabling).

Back 10

I though that US patents were presumed enabling, but I read in the MPEP that for prior art purposes all art requires the same showing of enablement.
2121 Prior Art; General Level of Operability Required to Make a Prima Facie Case [R-6]
>II. < WHAT CONSTITUTES AN "ENABLING DISCLOSURE" DOES NOT DEPEND ON THE TYPE OF PRIOR ART THE DISCLOSURE IS CONTAINED IN
The level of disclosure required within a reference to make it an "enabling disclosure" is the same no matter what type of prior art is at issue. It does not matter whether the prior art reference is a U.S. patent, foreign patent, a printed publication or other. There is no basis in the statute ( 35 U.S.C. 102 or 103) for discriminating either in favor of or against prior art references on the basis of nationality. In re Moreton, 288 F.2d 708, 129 USPQ 227 (CCPA 1961).

Front 11

It has been reported that a question involves what an examiner can cite on a form PTO-892. See MPEP 707.05(a)-(e) and Form PTO-892 (found at the end of the section 707.05(a)).
I got this too. The other form was 1449. Mine was a “which is incorrect” question. I wasn’t positive after searching MPEP, but the answer I chose was something about the examiner lists references cited by applicant in an IDS on an 892, because I think those go on a 1449.

Back 11

I was able to eliminate a few wrong answers, one I remember was that the examiner can cite prior art references in an examiner’s amendment or statement of reasons for allowance, which would then be attached to notice of allowance (or something like that).

I also chose something about the examiner lists references cited by applicant in an IDS on an 892, because I think those go on a 1449.

Front 12

One question asks whether you have to file an English translation of a foreign-language reference.

Back 12

(3)(i) A concise explanation of the relevance, as it is presently understood by the individual designated in § 1.56(c) most knowledgeable about the content of the information, of each patent, publication, or other information listed that is not in the English language. The concise explanation may be either separate from applicant’s specification or incorporated therein.
(ii) A copy of the translation if a written English-language translation of a non-English-language document, or portion thereof, is within the possession, custody, or control of, or is readily available to any individual designated in § 1.56(c).

Front 13

Who cannot sign the oath/declaration:
a: practitioner retained by inventor, then inventor cannot be found
b: inventor died, his legal representitive
c: inventor died or cannot be found, the court appointed a legal representitive
d: joint inventor when the other inventor can not be found
e: the CEO of a company which bought the invention

Back 13

e: the CEO of a company which bought the invention, the inventor can not be found

Front 14

A new question I encountered:
102(d)
Which of the following is in accordance with the MPEP102(d)?
A. 102(d) establishes NASA
B. 102(d) stopped the oil leak in the gulf
C. Foreign patent can be combined with other prior art to bar a U.S. patent in an obviousness rejection based on 35 U.S.C. 102(d)/103
D. An application must always be filed on or before the 1 year anniversary of a foreign application for the same invention by the same applicant to prevent a 102(d) bar
E. A&D

Back 14

Obviously I don’t recall what A&B were but I was able to eliminate them fairly quickly.
C is what I chose since it is the last sentence in section 2135.01 (I)(B)
D wasn’t correct b/c if no patent has issued there is no bar under 102(d)

Front 15

Q1: multiple reference 35 USC 102 rejection:
(A) Examiner must only rely on a single reference to make 102 rejection
(B) Multiple references may be used by the examiner to prove that the primary reference contains an “enabled disclosure;”
(C)Examiner may use other references to expand the meaning of a term used in the primary reference;
(D) Multiple references may be used but only to show that a characteristic not disclosed in the primary reference is inherent
(E) Multiple references may be used to prove that the primary reference contains an “enabled disclosure” and to expand the meaning of a term used in the primary reference;

Back 15

Answer: B

Front 16

Q2: A design patent was filed in France in June 7, 2003, applicant wanted to file a US design patent application and claim the priority of French filing. How can the applicant make such claim?
a: file US application within 6 months
b: file US application with 12 months
c: file application within 12 months and claim the priority within 16 months
d:….
e: None of the above

Back 16

I believe the answer to Q2 is A though SP based on:
35 U.S.C. 172 Right of priority.
The right of priority provided for by subsections (a) through (d) of section 119 of this title and the time specified in section 102(d) shall be six months in the case of designs. The right of priority provided for by section 119(e) of this title shall not apply to designs.

Front 17

Q3: Practitioner paid full application fee, later found that the application may assert small entity status, how can he get refund?

Back 17

Answer: assert small entity status and make a refund request within 3 months from the payment of the filing fee.

Front 18

Q4: what amendment made on or after notice of appeal but before appeal brief will be accepted
a: request an unoffice review by the examiner
b: convert dependent claim into independent claim
c: rewrite the claim to make it more persuasive without accepting examiner’s advice
d: add new matter …
e: …..

Back 18

Also think B is the correct answer on Q4 based on:
37 CFR 41.33. Amendments and affidavits or other evidence after appeal.
(b)Amendments filed on or after the date of filing a brief pursuant to § 41.37 may be admitted:
(1)To cancel claims, where such cancellation does not affect the scope of any other pending claim in the proceeding, or
(2)To rewrite dependent claims into independent form.

Front 19

Q5: calculate the number of dependent claims for fee: Claim 1 is independent claim; Claim 2 depends on Claim 1; Claim 3 depends on Claim 2, Claim 4 depends on Claims 2 and 3; Claim 5 depends on Claim 3; Claim 6 depends on claims 2, 3 and 5
a: 5
b: 7
c: 8
d: 9
e: none of above

Back 19

Answer: I selected c

Front 20

Q6: US provisional design patent application filed on D1, applicant filed a non-provisional design patent D2, applicant wanted to file a continuing application to claim priority of both applications,
a: filed on D3
b: filed no later than D4
c: …
d:…
e: can’t claim priority of provisional application

Back 20

Answer: e (119(e) is not available to design patent)

Front 21

Reported on the test: 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.

Back 21

For the Chemical Claim question I made the decision before going into the test to go with “Examiner should withdraw enablement rejection, but keep written description as the application does not show how to make said chemical.” which was B on my test. I read up on what everyone posted here and on patentbarquestions and tried to verify with the MPEP but I could not find anything I thought was definitive. Nothing that I thought was significantly different than what has been posted jumped out in the actual question during the test. So I was at least able to spend very little time on the question because I had predetermined my answer even if I missed it.

Front 22

Another question I hadn’t seen had to do with exparte reexamination and extension of time under 37 CFR 1.550(c). It was a which one of these is not correct type questions.

Back 22

I chose A and it’s the only answer I remember. It said something like “There is statutory no time limit for for a 1.530(b) statement to a be filed under the provisions of 37 CFR 1.550(c).” All the other answers except E had something about 1.550(c), i was able to look up b,c,d and find what I thought supported them. I believe the relevant MPEP section is 2265 Extension of Time.

Front 23

Question I had not seen b/f had to do with what to file with a request for an accelerated examination. The answers mapped directly to 708.02(a)Accelerated Examination (I.)(I)(1-5) and was E all of the above.

Back 23

708.02(a)Accelerated Examination (I)
(I)At the time of filing, applicant must provide in support of the petition an accelerated examination support document.
(1)An accelerated examination…
(2)For each reference cited…
(3)The accelerated examination…
(4)The accelerated examination…
(5)The accelerated examination…

Front 24

Protest question I had not seen b/f:
Corporation XYZ has you a practicing patent attorney file a protest on patent application A that has already been published but has not received a first office action.

Back 24

A. The protest will not be considered b/c Corporations cannot file protest.
B The protest will not be considered for some odd reason
C. The protest will be considered even though the application was published because a final action has not been sent yet
D. The protest will not be considered for some odd reason
E. The protest will not be accepted or considered

I picked C based on the information from the cited passage below.

1901.04 When Should the Protest Be Submitted
… a protest under 37 CFR 1.291(a)must be submitted prior to the date the application was published … or the mailing of a notice of allowance … whichever occurs first, and the application must be pending…in order to be ensured of consideration… A protest submitted after the mailing of the notice of allowance will not knowingly be ignored if the protest includes prior art documents which clearly anticipate or clearly render obvious one or more claims. However, the likelihood of consideration of a protest decreases as the patent date approaches.

Front 25

PCT question:
PCT app filed on 11/20/00 (before the 11/29/00 date) claims US and published in English
IB sends copy to USPTO
Applicant files national stage fee date X
USPTO sends a Notification of Missing Requirements
Files declaration in accordance with 37 CFR 1.497 on date Y (within 2 months from notice)
What is the 102(e) date?

Back 25

I picked date Y.

Front 26

Continuation App Question:
File an app
Get a final office action
On the last date of the 6 month period for extension file a continuation
The continuation app requests that the original app be extended under 136(a)
It is now two days after the 6 month period has expired. What is the status of the apps?

Back 26

I chose the answer that said something about the original app being abandoned and the continuation not being filed since the app was abandoned at the time the continuation was filed and not properly extended.

I believe relevant passage is 710.02(e) Extension of Time:
Applicants are cautioned that an extension of time will not be effected in the prior application by filing a petition for an extension of time, extension fee, or fee authorization, in the continuing application. This is because the petition for an extension of time (or constructive petition under 37 CFR 1.136(a)(3)) must be directed toward and filed in the application to which it pertains in accordance with 37 CFR 1.4 and 1.5.

There may have been an appeal brief filed after the final office action. In either case the date the continuation app was filed was the final day a response was due along with an extension of time under 136(a) in the original application. Either at the end of the 6 (in the case of final) or 7 (in the case of the NoA) month period.

Front 27

Someone file PCT in Australia and finally went to national stage. On the expiration day of 30 months, he file the fee and specification and maybe drawing or else of application with express mail properly. What’s the result?
a. Allowed
b. Disallowed
c. Allowed but need substitute specification
d. 371 treated as a 111
e. Abandoned

Back 27

If he mailed the fee via express mail on the date of the 30 month expiration, then the fee was not properly received *prior* to the expiration. Therefore the application is abandoned.

Front 28

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

I had this question but I don’t remember anything about a preliminary amendment. It was basically you had a CoC that was properly filed after issue and now you want to file a reissue app.

Back 28

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 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.

The answer I chose had to do with the above section “without using underlining or brackets’.

Front 29

One question about best mode.

Back 29

One of the answer choices is: If applicant doesn’t designate a best mode, but puts forth several embodiment – the application does not require a statement which specifically points out the best 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.

Front 30

Which documents don’t need a signature; the options included, an appeal brief, and an assertion claiming small entity status

Back 30

Appeal WRONG (Needs sig)
Small entity, written Wrong (Needs Sig)
Small entity(paid) DOES NOT need sig

Front 31

The question asked for the situations in which a piecemeal examination is proper.

Back 31

MPEP 707.07(g)
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. See MPEP § 702.01;
(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. See MPEP § 2173.05(n);
(C) Where there is a misjoinder of inventions and there has been no successful telephone request for election. See MPEP § 803, § *>810<, § 812.01;
(D) Where disclosure is directed to perpetual motion. See Ex parte Payne, 1904 C.D. 42, 108 O.G. 1049 (Comm’r Pat. 1903). However, in such cases, the best prior art readily available should be cited and its pertinency pointed out without specifically applying it to the claims.

Front 32

App assigned 40% to co. A, 40% to co. B, inventor retains 20%, who can sign terminal disclaimer?

Back 32

In 37 CFR 1.321 and 1490:
The terminal disclaimer, to be recorded in the Patent and Trademark Office, must:
(1)be signed:
(i)by the applicant, or
(ii)if there is an assignee of record of an undivided part interest, by the applicant and such assignee, or
(iii)if there is an assignee of record of the entire interest,
by such assignee, or
(iv)by an attorney or agent of record;

Front 33

Who can claim small entity status? Questions dealing with small entity status can ask you to pick out an organization that can never have small entity status. An example would be: Which of the following can never be considered a small entity?

A. A University with 500 students that receives 37% of its funding from grants from large entity companies
B. A small business with net sales of $2 million/year
C. A small business with 200 employees and gross sales of $5.2 million/year
D. The US government
E. A taxi service that employs 520 people, and of those employees, 247 of them are independent contractors

Back 33

Answer “E” – This is one of those types of questions that if you get tricked you will most likely waste heaps of time looking for obscure rules regarding independent contractors that simply don’t exist in the MPEP. Remember 1) independent inventor, 2) small businesses (< 500 employees), 3) nonprofit organizations, 4) the government, and 5) universities, which are all listed in the MPEP, qualify for small entity.

Front 34

Who can sign the assertion of small entity status?

Back 34

509.03 Claiming Small Entity Status (2) Parties who can sign and file the written assertion. The written assertion can be signed by: (i) One of the parties identified in § 1.33(b) (e.g., an attorney or agent registered with the Office), § 3.73(b) of this chapter notwithstanding, who can also file the written assertion; (ii) At least one of the individuals identified as an inventor (even though a § 1.63 executed oath or declaration has not been submitted), notwithstanding § 1.33(b)(4), who can also file the written assertion pursuant to the exception under § 1.33(b) of this part; or (iii) An assignee of an undivided part interest, notwithstanding §§ 1.33(b)(3) and 3.73(b) of this chapter, but the partial assignee cannot file the assertion without resort to a party identified under § 1.33(b) of this part. […] (g)(1) New determination of entitlement to small entity status is needed when issue and maintenance fees are due. Once status as a small entity has been established in an application or patent, fees as a small entity may thereafter be paid in that application or patent without regard to a change in status until the issue fee is due or any maintenance fee is due.

1) the attorney/agent, 2) inventor or 3) assignee. Maybe I am just tired but the partial assignee is not making sense to me. Can someone clarify?

Front 35

What happens when small entity status changes before issuance? In particular, one question asked about an inventor that filed as small entity then assigned the rights to a large entity company. The company paid the small entity issue fee although they knew they were supposed to pay a large entity fee. Then the assignee came to the agent for advice about repercussions.

Back 35

If, as the question stated, SES is inappropriate but small entity fees are still paid, the answer is found in 509.03. This could mean they lose the ability to enforce their patent.

VIII. IMPROPERLY ESTABLISHING SMALL ENTITY STATUS

37 CFR 1.27(h) indicates that any attempt to fraudulently establish status as a small entity or pay fees as a small entity will be considered as a fraud practiced or attempted on the Office… In addition, improperly and with intent to deceive establishing status as a small entity or paying fees as a small entity will be considered as a fraud practiced or attempted on the Office.

Front 36

The applicant accidentally paid large entity filing fee even though entitled to small entity status. Can he get a refund and how long does he have to apply?

Back 36

37 CFR 1.28(a). Refunds when small entity status is later established; how errors in small entity status are excused. (a) Refunds based on later establishment of small entity status. A refund pursuant to § 1.26, based on establishment of small entity status, of a portion of fees timely paid in full prior to establishing status as a small entity may only be obtained if an assertion under § 1.27(c) and a request for a refund of the excess amount are filed within three months of the date of the timely payment of the full fee. T he three-month time period is not extendable under § 1.136. Status as a small entity is waived for any fee by the failure to establish the status prior to paying, at the time of paying, or within three months of the date of payment of, the full fee.

Front 37

Must small entity status be reasserted in a continuing application?

Back 37

Yes – this is covered in Chapter 500. Scan the exploded headings and you will find “509.03 Claiming Small Entity Status.” Skim that section and you will find the rules under “Assertions required”.

Front 38

Q13 in the 2002 AM exam: which one does never qualify as small entity:

(A) A nonprofit organization.
(B) A two-person business concern with a $4,000,000 income.
(C) A federal government agency.
(D) A university in Canada.
(E) A person.

Back 38

Answer key says C) A federal government agency. Explains that although under sec 41(e) Director may waive fees under certain circumstances for federal agency, this does not make a federal agency a small entity under CFR 1.27.
Probably, the conditions given in choice E) of the question quoted in the very beginning, would create a situation where the taxi business would qualify as small entity.

Front 39

One question i got was that a practitioner files design patent app with a base connected to a fan connected to a lamp.

They are connected in their center. The drawing is shown as three saucers connected to each other.

Examiner finds reference with same design. Practitioner argues that the size of the saucers shown in the reference are not the same as that in his drawing.

Back 39

Applicant provided specific measurements but the prior art does not. Specifically, the was “silent” as to the dimensions.
In MPEP 2125 Dawings as Prior Art,
PROPORTIONS OF FEATURES IN A DRAWING ARE NOT EVIDENCE OF ACTUAL PROPORTIONS WHEN DRAWINGS ARE NOT TO SCALE
When the reference does not disclose that the drawings are to scale and is silent as to dimensions, arguments based on measurement of the drawing features are of little value. See Hockerson-Halberstadt, Inc. v. Avia Group Int’l, 222 F.3d 951, 956, 55 USPQ2d 1487, 1491 (Fed. Cir. 2000) (The disclosure gave no indication that the drawings were drawn to scale. “[I]t is well established that patent drawings do not define the precise proportions of the elements and may not be relied on to show particular sizes if the specification is completely silent on the issue.”). …

Thus, the answer where examiner must maintain the rejection because the scale of drawing does not have to be the same is likely the best answer.

Front 40

On January 19, 1999, inventor B filed a patent application in the PTO claiming invention X. Inventor B did not claim priority based on a foreign application filed by inventor B on April 3, 1998, in the Patent Office in Japan. In the foreign application, inventor B disclosed and claimed invention X, which inventor B had conceived on August 11, 1997, and reduced to practice on November 5, 1997, all in Japan. The U.S. patent examiner issued an Office action where all the claims in the patent application were properly rejected under 35 USC §102(a) and (e) as being anticipated by a U.S. patent granted to inventor Z on September 1, 1998, on a patent application filed in the PTO on December 5, 1997. There is no common assignee between Z and B, and they are not obligated to assign their invention to a common assignee. Moreover, inventors Z and B, independently of each other, invented invention X, and did not derive anything from the other. The U.S. patent to Z discloses, but does not claim, invention X. Which of the following is/are appropriate reply (replies) which could overcome the rejections under §§102(a) and (e) when timely filed?
(A) File an antedating affidavit or declaration under 37 CFR §1.131 showing conception on August 11, 1997, and actual reduction to practice on November 5, 1997, all in Japan.
(B) File a claim for the right and benefit of foreign priority wherein the Japanese application is correctly identified, file a certified copy of the original Japanese patent application, and argue that as a result of the benefit of foreign priority, the U.S patent is no longer available as a prior art reference against the claims.
(C) Amend the claims to require particular limitations disclosed in inventor B’s application, but not disclosed or suggested in inventor Z’s patent, and argue that the limitations patentably distinguish the claimed invention over the prior art.
(D) (A) and (C).
(E) (B) and (C).

Back 40

D is the correct answer. Why is B incorrect? Is it because it does not state to use an oath or declaration?

Front 41

Applicant filed Japanese app. Then file PCT app, correctly claiming priority. Then file USA national stage app. But there is prior art against USA app. The prior art may be overcome if applicant can make a claim of priority to the Japanese National app. Can the claim of priority be made?

Back 41

I said Yes, so long as verified copy of Japanese National App is filed. There may have been a 16-month requirement too, for claim of priority from the National(?) or PCT (?) app. Or was that a different question? Sorry, there were 3 to 4 different Japanese app questions. There definitely was a question that wanted to know about the 16-month (or was it 17?) requirement for PCT apps, for correcting ..something..

7/18/07 — Sounds like MPEP1828, Priority Claim and Document, may be relevant.

Effective July 1, 1998, applicant may correct or add a priority claim by a notice submitted to the Receiving Office or the International Bureau within 16 months from the priority date, or where the priority date is changed, within 16 months from the priority date so changed, whichever period expires first, provided that a notice correcting or adding a priority claim may in any event be submitted until the expiration of 4 months from the international filing date.