Patent Bar New Questions 2

Front 1

Test takers report a question involving whether the reflective qualities of a mirror should be included in the specification. You were to choose from a list of choices that 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 amend the specification.

Back 1

The answer is (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. Whether it is positioned parallel or perpendicular has nothing to do with its reflective qualities, and would likely be obvious. “Special” reflective qualities known to one skilled in the art (if included – this is hypothetical) would be different and should be included for enablement purposes.

The folks over at patentbarquestions.com state “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.”

Front 2

Question asking who can sign a 1.132 petition showing that a previous invention was not by another. The subject matter of the question is “Application A” and “Patent X”. The answer choices included variations of: declarations or statements from:

A) the owner of Application A,
B) the inventor of Application A,
C) the inventor of Patent X,
D) the attorney, and
E) there was another choice.

Back 2

2 answers were accepted because the inventor is in a position to have the best knowledge of ownership of the invention – or something along those lines – but the original correct answer was the attorney can send in a statement.

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30. A registered practitioner receives an Office action for Application X, a patent application filed after November 29, 1999. The action contains a rejection of all the claims as being obvious under 35 USC 103(a) over Patent A in view of Patent B. Patent A is only available as prior art under 35 USC 102(e). Patent B is available under 35 USC 102(b). The practitioner seeks to disqualify Patent A as prior art under 35 USC 103(c). Which of the following would be sufficient evidence to disqualify Patent A as prior art in accordance with the patent laws, rules and procedures as related in the MPEP?
(A) A declaration signed by an employee of Corporation K, who is not empowered to act on behalf of Corporation K, stating that at the time the invention claimed in Application X was made, the claimed invention and Patent A were commonly owned by Corporation K.
(B) A declaration signed by the inventor of Patent A stating that at the time the invention claimed in Application X was made, the invention claimed in Application X and the invention claimed in Patent A were both subject to an obligation of assignment to the same person.
(C) A statement by the inventor Jones, the sole inventor of Application X, saying that at the present time, Application X and Patent A are commonly owned.
(D) A statement by the practitioner stating that Application X and Patent A were, at the time the invention claimed in Application X was made, commonly owned by the same person.
(E) A statement by inventor Jones, the sole inventor of Application X, saying that at the time the invention claimed in Application X was made, Jones owned a majority interest in Patent A.

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30. ANSWER: (B) or (D) is accepted as the correct answer. As to (B) and (D), see MPEP § 706.02(l)(2), under the heading “II. Evidence Required To Establish Common Ownership.” (B) is accepted because applicants, e.g., inventors, have the best knowledge of the ownership of their applications, and because their statement of such is sufficient evidence because of their paramount obligation of candor and good faith to the USPTO. (D) reproduces the example set forth under the foregoing heading. (A) is incorrect because applicants or the representatives of record have the best knowledge of the ownership of their applications, and because their statement of such is sufficient evidence because of their paramount obligation of candor and good faith to the USPTO. (C) is incorrect because the statement does not establish common ownership at the time the later invention was made. 35 U.S.C. § 103(c). (E) is incorrect because it does not establish that the prior art invention and the claimed invention are entirely or wholly owned by the same person. MPEP § 706.02(l)(2).

The reason (C) is wrong in this example is not because the inventor of X cannot make a 1.132 affidavit regarding the invention, rather because he is not establishing common ownership. Answer (E) is likewise wrong because it does not establish common ownership. I believe the question as given above only explains half the concept.

Front 4

There were two PCT questions regarding 102(e) date, one in which the filing date was november 20, 2000 and an identical one in which the filing date was in december 2000. a couple of PCT questions regarding filing dates of PCT aplications in US/RO where applicants are not citizens (one where inventors are from costa rica and one where inventors are from sweden).

Back 4

the answers to the two questions are the same (filing date as of date received at US/RO), but the sweden questions tries to trick you up and make you think they will not be afforded a filing date as of the date received at US/RO).
Quoting 1805:“PCT Rule 19.4 provides for transmittal of an IA to the IB as RO in certain instances. For example, when the IA is filed with the USRO and
[a] the language in which the IA is filed is not accepted by the USRO, or
[b] if the applicant[s] does not have the requisite residence or nationality,
[then] the IA may be forwarded to the IB for processing in its capacity as a RO. See 37 CFR 1.412(c)(6). The RO of the IB will consider the IA to be received as of the date accorded by the USRO.”

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PCT Questions

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1) Filing date is same as filed at RO/US when everything’s right but all apps are non-US citizens
2) There is NO 102(e) date for a PCT national stage patent or publication filed after Nov. 29, 2000 that does not publish in English (even if Fee/Oath/Translation submitted)
3) Pre-Nov. 29, 2000 PCTs get a 102(e) date as of receipt of last of Fee/Oath/Translation
4) When an applicant doesn’t file a complete spec with the International RO, an invitation to correct will be sent, giving between 10 days and 1 month to correct (see PCT rule 26.2). However, the filing date accorded the application, much like with a Notice of Omitted Items, will be when the error is corrected; thus, if the 1-year term from the priority app sought to be claimed in the PCT expires DURING the 1-month period to correct, the latest you can really file the missing spec pieces is the 1-year deadline, regardless of how much time is left in the 1-month invitation. (Again, see PCT Rule 26.2 and MPEP 1810).

Front 6

Test takers report a “Spanish Phone” question involving a design patent.

Design Patent

Fact pattern: a phone was made in Spain. A US application covering the utility of the phone was filed within the appropriate time period. Later, the patent issues for the phone in Spain. Some time later, while the application is still at the USPTO, the inventors realize that they have a great looking phone and they want to get a patent for the design. What can they do?

A. File a design application claiming priority to the US application
B. File a CIP of the utility application
C. Give up
D. File a design application with priority based off the Spanish patent application

Back 6

Answer: The Spanish phone question involves foreign filing in a DESIGN application. The answer is GIVE UP b/c you can’t perfect the claim after 6 months have passed under 102(d). They key is DESIGN v UTILITY foreign filing – patent priority must be claimed within 6 months (versus 1 year for utility). The foreign application becomes a statutory bar after 6 months under 102(d) to the US CIP design application.

Variant – A design patent was applied for in the US with foreign priority to Spanish patent. Later, the applicant alters the keypad design and files CIP for the new design. The key to this variant is the same as for the others: foreign priority and 102(d) is 6 months for design patents.
I got the same version with a similar choice. I also chose the spanish app being to a prior art against the new CIP.
It is important to remember that CIP is the enemy of 102(d).

Front 7

Foreign Prioirty
Three people in Mexico apply for a patent in Spanish at the Mexican Patent Office. Two people are Mexican native, but reside in the U.S. (Mexican nationals), and one is a U.S. citizen, but resides in Mexico. Is the UPSTO the receiving office and why?

Variant – also include an American Company

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* I think the point of that question was that the application was still filed in Spanish to the USPTO, so the PTO would not be able to be the RO regardless of nationality.
* In response to the question about the mexican/corp, I answered that the application would be forwarded to the IB because it was filed in Spanish. Based on the rule that I found, if the application was in English, it would have been ok because at least one inventor was a US resident and the applicant (corporation) was a US national. I’m pretty sure I found that somewhere in Chapter 1800.
* The USPTO can act as R/O if at least one of the inventors is a U.S. National.

Got this Q. Maxican, file PCT to USPTO, in Spanish. The answer is USPTO will not be the receiving office because it is not in English. There was no option related to forwarding to international RO.

Front 8

One question asked about a PCT application that was filed in Germany before Nov 29, 2000 (95 or 96) and asked when to measure the US patent term (I hope it was from the date of the PCT application and not when it entered the national stage).

2701 Patent Term
[...]

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INTERNATIONAL APPLICATIONS
A patent granted on an international application filed on or after June 8, 1995 and which enters the national stage under 35 U.S.C. 371 will have a term which ends twenty years from the filing date of the international application. A continuation or a continuation-in-part application claiming benefit under 35 U.S.C. 365(c) of an international application filed under 35 U.S.C. 363 designating the United States will have a term which ends twenty years from the filing date of the parent international application.

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.

Front 9

One annoying question which was partially mentioned in the forum in the past (as a suspect for one of the beta testing questions), is about John a registered practitioner not of record visiting a client in Germany. John prepares a reply plus declaration and (I think) authorization to charge his account, on the last day of the six month period to reply. The options were:

Mail by regular mail – no good
Mail by German express mail. – no good
File RCE without reply. – no good.
File notice of appeal by fax to buy time and then mail to Smith so he can sign (who the heck is Smith? He was not mentioned in the question. I assume he is the attorney of record).-
Fax it to the patent office before midnight which is 5-6 hours before midnight in Arlington Virginia.

Back 9

I think they were checking if you knew that the registered practitioner signature is good enough and you don’t need the signature of the attorney of record. I was worried about filing a declaration with the reply by fax but I think it is OK.

Had the question regarding the traveling patent attorney in Germany needing to file something just before the expiration of six months. I think the fax is the only way to go.

Front 10

I think the two part broom handle question to which you are referring might be the question about the application containing some ridiculous number of claims, like I think 900 or so. It has to do with multiplicity. I haven’t seen it on an exam, but I have seen it referred to on the boards.

Back 10

I think the correct answer has to do with the examiner calling the practitioner and asking for the claims to be reduced. There is also another part to the correct response but I cannot recall it at this time. Just read the section on multiplicity. I don’t think it is too long.
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.
be careful as there is a similar answer with the telephone element missing. It just says, make a rejection and request a specified number

Front 11

I had a question asking about what situation does the PTO still investigate violotations of 37 CFR 1.56.

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1448 FRAUD, INEQUITABLE CONDUCT, OR DUTY OF DISCLOSURE ISSUES

The Office no longer investigates and rejects reissue applications under 37 CFR 1.56. The Office will not comment upon duty of disclosure issues which are brought to the attention of the Office in reissue applications except to note in the application, in appropriate circumstances, that such issues are no longer considered by the Office during its examination of patent applications.

…Form paragraph 14.21.09 should be used where the examiner becomes aware of a judicial determination of fraud, inequitable conduct or violation of the duty of disclosure on the part of the applicant independently of the record of the case, i.e., the examiner has external knowledge of the judicial determination. Form paragraph 14.22 should be used where, in the application record, there is (a) an explicit, unequivocal admission by applicant of fraud, inequitable conduct or violation of the duty of disclosure which is not subject to other interpretation, or (b) information as to a judicial determination of fraud, inequitable conduct or violation of the duty of disclosure on the part of the applicant. External information which the examiner believes to be an admission by applicant should never be used by the examiner, and such external information should never be made of record in the reissue application.

Front 12

Test takers report a question that dealt with an inventor having possession of an invention prior to death – and whether a legal rep. can file application. The fact pattern looked something like:
• A invented a fishing device but passed away before application is filed;
• The heir is 13 years old and legally incapacitated;

Back 12

Test takers report that the likely correct answer is Barbara, the attorney in living will.

37 CFR 1.42 When the inventor is dead – In case of the death of the inventor, the legal representative (executor, administrator, etc.) of the deceased inventor may make the necessary oath or declaration, and apply for and obtain the patent. Where the inventor dies during the time intervening between the filing of the application and the granting of a patent thereon, the letters patent may be issued to the legal representative upon proper intervention.

Front 13

A second variation of the question is as follows:
• Dead inventor appointed best fried as executor/administrator of will;
• Son thinks that he will be 1 of the heirs of the estate;
• Son wants to go ahead and file for patent application using Dad’s invention;
• The estate is over the minimum sum required by state law for the appointment of administrator.

Back 13

In this case, the executor/legal representative has to be the one to file application (sign oath, etc.). Heirs can file only if there is no will, or no executor appointed in will and the estate was under the sum required by the state for appointing an executor.

MPEP 409.01(a) Prosecution by Administrator or Executor –
One who has reason to believe that he or she will be appointed legal representative of a deceased inventor may apply for a patent as legal representative in accordance with 37 CFR 1.42.
Application may be made by the heirs of the inventor, as such, if there is no will or the will did not appoint an executor and the estate was under the sum required by state law for the appointment of an administrator. The heirs should identify themselves as the legal representative of the deceased inventor in the oath or declaration submitted pursuant to 37 CFR 1.63 and 1.64.

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Another reported variation as of 8/10/2007: Death of inventor AFTER application is filed, and AFTER assignment of all rights, BEFORE allowance

Back 14

MPEP 409.01(e) If Applicant of Assigned Application Dies – When an applicant who has prosecuted an application after assignment, dies, the administrator of the deceased applicant’s estate may carry on the prosecution upon filing letters of administration unless and until the assignee intervenes (MPEP § 402.07).

Front 15

Variation as of 3/18/2008: Inventor dies after filing application and assigning partial interest to patent attorney.

Back 15

The answer is likely that prosecution may continue without any filing by the inventor’s estate.
MPEP 409.01 Death of Inventor – Unless a power of attorney is coupled with an interest (i.e., an attorney is assignee or part-assignee), the death of the inventor (or one of the joint inventors) terminates the power of attorney given by the deceased inventor. A new power from the heirs, administrators, executors, or assignees is necessary if the deceased inventor is the sole inventor or all powers of attorney in the application have been terminated (but see MPEP § 409.01(f)). See also 37 CFR 1.422.

Front 16

One question deals with a maintenance fee that was paid, but the patent was not identified correctly with the payment, so the USPTO mailed the check back.

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. Answer options refer to 37 CFR 1.377. Review of decision refusing to accept and record payment of a maintenance fee filed prior to expiration of patent and 37 CFR 1.378. Acceptance of delayed payment of maintenance fee in expired patent to reinstate patent.

I chose the answer option based on 37 CFR 1.5. Identification of patent, patent application, or patent-related proceeding that covers mail returned by the USPTO for not identifying an application (not sure if correct) [Edit: see MPEP 2580].

Any correspondence not containing such identification will be returned to the sender where a return address is available. The returned correspondence will be accompanied with a cover letter which will indicate to the sender that if the returned correspondence is resubmitted to the Patent and Trademark Office within two weeks of the mail date on the cover letter, the original date of receipt of the correspondence will be considered by the Patent and Trademark Office as the date of receipt of the correspondence.

Front 17

10. Mario Lepieux was a member of a Canadian national hockey team touring Europe. While traveling through Germany (a WTO member country) in December 1998, Mario conceived of an aerodynamic design for a hockey helmet that offered players improved protection while reducing air resistance during skating. Upon Mario’s return to Canada (a NAFTA country), he enlisted his brothers Luigi and Pepe Lepieux to help him market the product under the tradename “Wing Cap.” On February 1, 1999, without Mario’s knowledge or permission, Luigi anonymously published a promotional article written by Mario and fully disclosing how the Wing Cap was made and used. The promotional article was published in Moose Jaw Monthly, a regional Canadian magazine that is not distributed in the United States. The Wing Cap was first reduced to practice on March 17, 1999. A United States patent application properly naming Mario as the sole inventor was filed September 17, 1999. That application has now been rejected as being anticipated by the Moose Jaw Monthly article.
10. Which of the following statements is most correct?
(A) The promotional article cannot be used as prior art because the Wing Cap had not been reduced to practice at the time the article appeared in the regional Canadian magazine.
(B) The regional Canadian magazine article is not prima facie prior art because it was published without Mario’s knowledge or permission.
(C) The regional Canadian magazine article is not prima facie prior art because it appeared in a regional Canadian publication and does not evidence knowledge or use in the United States.
(D) The promotional article in the regional Canadian magazine constituted an offer to sell that operates as an absolute bar against Mario’s patent application.
(E) Mario, as the inventor, can overcome the rejection by filing an affidavit under 37 C.F.R. § 1.132 establishing that he is the inventor, and the article describes his work.

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10. ANSWER: (E). MPEP § 716.10. There is no requirement that a publication describe something that has actually been reduced to practice before the publication can act as a prior art reference. Thus, statement (A) is not correct. With regard to statement (B), there is no requirement under 35 U.S.C. § 102 that a publication be made with an inventor’s knowledge or permission before it constitutes prior art. Statement (C) is incorrect at least because the Wing Cap was “described in a printed publication in…a foreign country” (35 U.S.C. § 102(a)) before Mario’s filing date and is therefore presumptive prior art. (D) is incorrect because even if the promotional article constituted an offer to sell, it was not in this country and was made less than a year prior to Mario’s filing date. 35 U.S.C. § 102(b).

Front 18

11. Which of the following statements is most correct?
(A) In a priority contest against another inventor, Mario can rely on his activities in Canada in establishing a date of invention.
(B) In a priority contest against another inventor, Mario can rely on his activities in Germany in establishing a date of invention.
(C) Mario can rely on his activities in Canada in establishing a date of invention prior to publication of the regional Canadian magazine article.
(D) (A) and (C).
(E) (A), (B), and (C).

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11. ANSWER: (E). Mario may rely on activities in both Germany (a WTO member country) and Canada (a NAFTA country) in establishing a date of invention prior to publication of the Moose Jaw Monthly article or in establishing priority. 35 U.S.C. § 104; see also MPEP § 715.01(c).

Front 19

17. Smith invented a laminate. In a patent application, Smith most broadly disclosed the laminate as comprising a transparent protective layer in continuous, direct contact with a light-sensitive layer without any intermediate layer between the transparent protective layer and the light-sensitive layer. The prior art published two years before the effective filing date of Smith’s application included a laminate containing a transparent protective layer and a light-sensitive layer held together by an intermediate adhesive layer. Which of the following is a proper claim that would overcome a 35 U.S.C. § 102 rejection based on the prior art?
(A) 1. A laminate comprising a transparent protective layer and a light-sensitive layer.
(B) 1. A laminate comprising a transparent protective layer and a light-sensitive layer
which is in continuous and direct contact with the transparent protective layer.
(C) 1. A laminate comprising a transparent protective layer and a light-sensitive layer, but not including an adhesive layer.
(D) (A) and (B).
(E) (B) and (C).

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A recent test taker noted that the question currently asked on teh Prometric exam is a variant. The USPTO added a claim limitation distinction to correct the answer choice. The new question has two choices between using “Comprising” OR “Consisting of”. The correct answer is the same answer from April 00 am practice exam.

ANSWER: (E) is correct because (B) and (C) are correct. (A) does not overcome the prior art because the broad “comprising” language permits the laminate to include additional layers, such as an adhesive layer. MPEP 2111.03. (B) overcomes a 35 U.S.C. § 102 rejection because the claim requires a light-sensitive layer to be in continuous and direct contact with the transparent protective layer, whereas the prior art interposes an adhesive layer between the light-sensitive layer and transparent protective layer. (C) also avoids the prior art by using a negative limitation to particularly point out and distinctly claim that Smith does not claim any laminate including an adhesive layer. MPEP 2173.05(i).

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50. Which of the following is not required in order for a foreign application that has
matured into a foreign patent to qualify as a reference under 35 U.S.C. § 102(d)?
(A) The foreign application must have actually been published before the
filing of an application in the United States, but the patent rights granted
need not be enforceable.
(B) The foreign application must be filed more than 12 months before the
effective filing date of the United States application.
(C) The foreign and United States applications must be filed by the same
applicant, his or her legal representatives or assigns.
(D) The foreign application must have actually issued as a patent or inventor’s
certificate before the filing of an application in the United States. It need
not be published but the patent rights granted must be enforceable.
(E) The same invention must be involved.

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50. ANSWER: (A) is the most correct answer. 35 U.S.C. § 102(d). The foreign application
need not be published, but the patent rights granted must be enforceable. MPEP § 706.02(e).
(B), (C), (D) and (E) are required by 35 U.S.C. § 102(d).

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Question #8 from the April 2003 (AM) patent bar exam is reported by exam takers as a question in the current exam database.

8. Following a restriction requirement and election, a registered practitioner received a first Office action dated Friday, December 1, 2000. The primary examiner indicated that claims 1 to 10 were rejected and claims 11 to 20 were withdrawn from consideration. The first Office action set a 3 month shortened statutory period for reply. On February 28, 2001, the practitioner properly filed an express abandonment in the application and at the same time filed a request for continuing application. In a non-final Office action dated May 1, 2001 in the continuing application, the examiner indicated in that claims 1 to 20, all of the pending claims, are rejected. The practitioner filed a notice of appeal on Monday, July 2, 2001. In accordance with USPTO rules and procedures set forth in the MPEP, which of the following most accurately describes the propriety of the practitioner’s reply to the May 1st Office action?
(A) The notice of appeal is not a proper response because the claims of the continuing application have not been finally rejected.
(B) The notice of appeal is not a proper reply because all of the claims in the continuing application have not been twice rejected.
(C) The filing of a notice of appeal is not a proper reply because not all the claims in the continuing application have been twice rejected.
(D) A notice of appeal is never a proper response to a non-final rejection.
(E) The reply is proper.

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ANSWER: (E) is the most correct answer. MPEP § 1205, under the heading “Appeal By Patent Applicant,” states that “[a] notice of appeal may be filed after any of the claims has been twice rejected, regardless of whether the claim(s) has/have been finally rejected. The limitation of ‘twice or finally…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 will be entitled to file an appeal in the continuingapplication, even if the claim was rejected only once in the continuing application.” (A), (B), (C), and (D) are not the most correct answer because a notice of appeal can be filed in a continuing application where at least one of the rejected claims was twice rejected, and one of the rejections may occur in the parent application.

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12. The Potter patent application was filed on June 6, 2002, claiming subject matter invented by Potter. The Potter application properly claims priority to a German application filed on June 6, 2001. A first Office action contains a rejection of all the claims of the application under 35 USC 103(a) based on a U.S. patent application publication to Smith in view of a U.S. patent to Jones. A registered practitioner prosecuting the Potter application ascertains that the relevant subject matter in Smith’s published application and Potter’s claimed invention were, at the time Potter’s invention was made, owned by ABC Company or subject to an obligation of assignment to ABC Company. The practitioner also observes that the Smith patent application was filed on April 10, 2001 and that the patent application was published on December 5, 2002. Smith and Potter do not claim the same patentable invention. To overcome the rejection without amending the claims, which of the following timely replies would comply with the USPTO rules and the procedures set forth in the MPEP to be an effective reply for overcoming the rejection?
(A) A reply that only contains arguments that Smith fails to teach all the elements in the only independent claim, and which specifically points out the claimed element that Smith lacks.
(B) A reply that properly states that the invention of the Potter application and the Smith application were commonly owned by ABC Company at the time of the invention of the Potter application.
(C) A reply that consists of an affidavit or declaration under 37 CFR 1.132 stating that the affiant has never seen the invention in the Potter application before.
(D) A reply that consists of an affidavit or declaration under 37 CFR 1.131 properly proving invention of the claimed subject matter of Potter application only prior to June 6, 2001.
(E) A reply that consists of a proper terminal disclaimer and affidavit or declaration under 37 CFR 1.130.

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ANSWER: (B) is the most correct answer. See 35 U.S.C. § 103(a); MPEP §§ 706.02(l)(1) and 2145. The prior art exception in 35 U.S.C. § 103(c) is applicable because the Smith reference is only prior art under 35 U.S.C. § 102(e), (f), or (g), was applied in a rejection under 35 U.S.C. § 103(a), and was commonly owned at the time Potter made the invention claimed by Potter. See MPEP § 706.02(l)(1). Answer (A) is not a correct answer in that one cannot show nonobviousness by attacking the references individually where the rejections are based on a combination of references. See MPEP § 2145. Answer (C) is not a correct answer. An affirmation that the affiant has never seen the invention before is not relevant to the issue of nonobviousness of the claimed subject matter. See MPEP 716. Answer (D) is not a correct answer. Invention must be proved prior to the effective filing date of Smith, which is April 10, 2001. See MPEP § 715. Answer (E) is not a correct answer. A terminal disclaimer and affidavit or declaration under 37 CFR § 1.130 are not proper because the Potter application and the Smith reference are not claiming the same patentable invention. See MPEP § 706.02(k).

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A claim in a pending patent application for an electric toothbrush is rejected under 35 USC 102 as being anticipated by a U.S. Patent, which was issued to Lancer, the soel name inventor, for a similar electric toothbrush. The Lancer patent was issue one day before the filing date of the application in question. The claim in the pending application contains a limitation specifying the location of an on/off switch. In accordance with USPTO rules and procedures set forth in the MPEP, which of the following arguments, if true, would overcome the rejection?
(A) The Lancer patent discloses and claims an electric toothbrush, but does not mention whether its toothbrush includes a power supply.
(B) Evidence is submitted to show the electric toothbrush claimed in the application is commercially successful.
(C) The Lancer patent teaches away from the bristles of the claimed toothbrush.
(D) Lancer is one of three named inventors of the claimed toothbrush in the pending application.
(E) The on/off switch in the Lancer patent is on a different side of the body than that recited in the claim for the electric toothbrush in the patent application.

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Some recent test takers have indicated that this question has been rephrased to correct any ambiguity in answer (A) leaving (E) as the only correct answer.

ANSWER: (A) and (E) are accepted as correct answers. Regarding (E), see MPEP §2131. To anticipate a claim, the elements of a reference “must be arranged as required by the claim…” See MPEP §2131, citing In re Bond, 910 F.2d 831, 15 USPQ2d 1566 (Fed. Cir. 1990). In (E), the on/off switch of Lancer’s toothbrush is arranged differently that that of the claimed toothbrush. (A) is accepted as correct because the given facts do not specify the location of the power supply as being within the toothbrush. Though the description of the toothbrush as being electric can imply as inherent source of power, it may also imply an external power source fro the electric toothbrush. Accordingly, (A) is also accepted as a correct answer in the circumstances. (B) is incorrect because evidence of secondary considerations, such as commercial success, is irrelevant to a 36 USC § 102 rejection. See MPEP §2131.04. (C) is incorrect. “’Arguments that the alleged anticipatory priori art…’teaches away from the invention’…[are] note ‘germane’ to a rejection under section 102.’” MPEP § 2131.05 (quoting Twin Disc, Inc. v. United States, 231 USPQ 417, 424 (Cl. Ct. 1986)). (D) is incorrect. “The term ‘others’ in 35 USC 102(a) refers to any entity which is different from the inventive entity. The entity need only differ by one person to be ‘by others.’ This holds true for all types of references eligible as prior art under 35 USC m102(a) including publications…” MPEP §2132. Here, because Lancer is only one of there inventors of the claim, the patent is by others

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37. Applicant properly appealed the primary examiner’s final rejection of the claims to the Board of Patent Appeals and Interferences (Board). Claims 1 to 10 were pending in the application. The examiner did not reject the subject matter of claims 7 to 10, but objected to these claims as being dependent on a rejected base claim. Claim 1 was the sole independent claim and the remaining claims, 2 through 10, were either directly or indirectly dependent thereon. After a thorough review of Appellant’s brief and the examiner’s answer, the Board affirmed the rejection of claims 1 to 6. In accordance with the USPTO rules and the procedures set forth in the MPEP, which of the following is the appropriate action for the examiner to take upon return of the application to his jurisdiction when the time for appellant to take further action under 37 CFR 1.197 has expired?
(A) Abandon the application since the Board affirmed the rejection of independent claim 1.
(B) Convert the dependent claims 7 to 10 into independent form by examiner’s amendment, cancel claims 1 to 6, and allow the application.
(C) Mail an Office action to applicant setting a 1-month time limit in which the applicant may rewrite dependent claims 7 to 10 in independent form. If no timely reply is received, the examiner should amend the objected to claims, 7 to 10, and allow the application.
(D) Mail an Office action to applicant with a new rejection of claims 7 to 10 based on the Board’s decision.
(E) No action should be taken by the examiner since the Board affirmed the rejection of independent claim 1, the application was abandoned on the date the Board decision was mailed.

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ANSWER: (A) is the most correct answer. MPEP § 1214.06, under the heading “Examiner Sustained in Whole or in Part.” Under the heading “No Claims Stand Allowed” it states “Claims indicated as allowable prior to appeal except for their dependency from rejected claims will be treated as if they were rejected.” (B) and (C) are not the most correct answers. These options would apply to applications where the Board reversed the rejection of the dependent claims and affirmed the rejection of the independent claim. (D) is not correct. The Board does not render a decision on objected to claims. See 37 CFR § 1.191(c). (E) is not correct because the mailing of a Board decision does not abandoned an application. See 37 CFR § 1.197(a).

New variant:

Everything is the same except that the Board reversed the rejection of claim 8-10. The correct answer is B (examiner should either convert the dependent claims into independent claims by himself or allow the applicant to make the conversion).

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45. An examiner’s answer, mailed on January 2, 2003, contains a new ground of rejection in violation of 37 CFR 1.193(a)(2). If an amendment or new evidence is needed to overcome the new ground of rejection, what is the best course of action the appellant should take in accordance with the USPTO rules and the procedures set forth in the MPEP?
(A) File a reply brief bringing the new ground of rejection to the attention of the Board of Patent Appeals and Interferences and pointing out that 37 CFR 1.193(a)(2) prohibits entry of the new ground of rejection.
(B) File a timely petition pursuant to 37 CFR 1.181 seeking supervisory review of the examiner’s entry of an impermissible new ground of rejection in the answer, after efforts to persuade the examiner to reopen prosecution or remove the new ground of rejection are unsuccessful.
(C) File a reply brief arguing the merits of the new ground of rejection.
(D) File an amendment or new evidence to overcome the new ground of rejection.
(E) Ignore the new ground of rejection.

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ANSWER: (B) is the most correct answer. MPEP § 1208.01 states: “Any allegation that an examiner’s answer contains an impermissible new ground of rejection is waived if not timely (37 CFR 1.181(f)) raised by way of a petition under 37 CFR 1.181(a).” Thus, to avoid waiver of the right to contest the examiner’s action, the appellant must file a timely petition. (A) is incorrect because the question of whether an answer contains a new ground of rejection is a petitionable, not appealable, matter. See MPEP § 1201. (C) is incorrect because an amendment or new evidence is needed to overcome the new ground of rejection and merely presenting arguments will not succeed. (D) is incorrect because the entry of the amendment or evidence is subject to the provisions of 37 CFR §§ 1.116 and 1.195 and there is no assurance that the examiner will approve entry. (E) is incorrect because it will constitute a waiver on the question of whether an impermissible new ground of rejection has been entered.
I agree with X that the answer is no longer (B), see 1207.03 below. But (C) is worded a little odd: (C) File a reply brief arguing the merits of the new ground of rejection. Or am I just uncomfortable with the word “merits”, I am thinking it should read: (F) File a reply in compliance with 37 CFR 1.111 to request that prosecution be reopened. See (I) and (II) below
1207.03 41.39(a)(2) permitsmailed on or after September 13, 2004. New grounds of rejection in an examiner’s answer are envisioned to be rare, rather than a routine occurrence. For example, where appellant made a new argument for the first time in the appeal brief, the examiner may include a new ground of rejection in an examiner’s answer to address the newly presented argument by adding a secondary reference from the prior art on the record. New grounds of rejection are not limited to only a rejection made in response to an argument presented for the first time in an appeal briefeither reopen prosecution or set forth the new ground of rejection in the answerand § 1207.04. A supplemental examiner’s answer cannot include a new ground of rejection, except when a supplemental answer is written in response to a remand by the Board for further consideration of a rejection under 37 CFR 41.50(a). See MPEP § 1207.05.
and…. In response to an examiner’s answer that contains a new ground of rejection, appellant must either file:
(I) a reply in compliance with 37 CFR 1.111 to request that prosecution be reopened; or
(II) a reply brief that addresses each new ground of rejection in compliance with 37 CFR 41.37(c)(1)(vii) to maintain the appeal.

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42. The primary examiner has rejected claims 1-10 under 35 USC 103(a) as being unpatentable over the Smith patent in view of the Jones reference. Appellant properly argues that there is no motivation to combine the teachings of Smith and Jones. The examiner repeats the rejection of claims 1-10 as being “unpatentable over Smith in view of Jones.” The examiner additionally cites a patent to Brown that was necessary to provide motivation for combining the teachings of Smith and Jones. The examiner does not list Brown in the statement of the rejection. Appellant timely appeals to the Board of Patent Appeals and Interferences, and files a proper appeal brief. The examiner files an examiner’s answer addressing the rejection of claims 1-10 under 35 USC 103(a) as being unpatentable over Smith in view of Jones, and cites Brown in the argument as providing motivation to combine Smith and Jones. In accordance with the patent laws, rules and procedures as related in the MPEP, what will be the most proper decision of the Board?
(A) The Board will affirm the rejection based on Smith and Jones only.
(B) The Board will affirm the rejection based on Smith, Jones and Brown.
(C) The Board will reverse the rejection based on Smith and Jones only.
(D) The Board will reverse the rejection based on Smith, Jones and Brown.
(E) None of the above.

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ANSWER: (C) is the most correct answer. 37 CFR § 1.193(a)(2); MPEP § 1208.01. If the claimed invention is rendered obvious by Smith in view of Jones and Brown, the statement of rejection must include all three references. Reliance on Brown to support the rejection is a different rejection from a rejection relying only on Smith in view of Jones. In accordance with MPEP § 1208.01, the Board will not consider the teachings of Brown because Brown was used to support the rejection, but was not listed in the statement of the rejection. As stated in MPEP § 1208.01, “Even if the prior art reference is cited to support the rejection in a minor capacity, it should be positively included in the statement of rejection. In re Hoch, 428 F.2d 1341, 1342 n.3, 166 USPQ 406, 407 n.3 (CCPA 1970).” Therefore, (B) and (D) are clearly wrong. (A) is incorrect. The decision cannot affirm the rejection since there is no motivation for combining the teachings of Smith and Jones absent the teachings of Brown. Therefore, the rejection must be reversed, not affirmed.

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40. Applicant files a patent application in Japan on January 5, 2000. Applicant files a PCT international application designating the United States on January 5, 2001, based on the Japanese application. The international application is published in English on July 5, 2001. The international application enters the national stage in the United States on September 5, 2001. The USPTO publishes the application on June 6, 2002. The application issues as a United States patent on December 3, 2002. What is its earliest possible 35 USC 102(e) prior art date for the application published by the United States, in view of the amendment to Title 35 by the American Inventors Protection Act of 1999 and the Intellectual Property and High Technology Technical Amendments Act of 2002?
(A) January 5, 2000.
(B) January 5, 2001.
(C) July 5, 2001.
(D) June 6, 2002.
(E) December 3, 2002.

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ANSWER: (B) is the most correct answer. 35 U.S.C. § 102(e)(1) provides that a US published application of a national stage of an international application filed on or after November 29, 2000 has a prior art effect as of its international filing date, if the international application designated the United States, and was published in English. Because in the above fact pattern, the international application designated the United States and was published in English, and was filed on or after November 29, 2000, the USPTO published application is entitled to its international filing date of January 5, 2001 for prior art purposes under 35 U.S.C. § 102(e)(1). See Example 4 of MPEP § 706.02(f)(1). (A) is wrong because the Japanese filing date is relevant under 35 U.S.C. § 119(a) only for priority and not prior art purposes. (C) and (E) are wrong because they recite prior art dates that are later than January 5, 2001. (D) is wrong because the prior art date under 35 U.S.C. § 102(e)(1) is earlier than the application publication date, June 6, 2002.

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18. A registered practitioner filed a design patent application on December 30, 2003. The application was filed with an inventor-executed declaration naming Jon Jones as the sole inventor, who has not assigned the invention and is not under an obligation to assign his invention. The filing receipt was recently received, indicating that the application will be published on Thursday, July 1, 2004. In reviewing the filing receipt the practitioner realizes that the typed name of the inventor contained a typographical error (an “h” was missing) and that the correct spelling was John Jones. Which of the following would be the course of action at the least expense to correct the error in accordance with the patent laws, rules and procedures as related in the MPEP?
(A) The practitioner should file a request under 37 CFR 1.48 to correct the inventorship of the application with a new declaration under 37 CFR 1.63 signed by John Jones (with the correct spelling of this name), a statement by Mr. Jones as to how the error occurred and that the error was without deceptive intention, and the processing fee set forth in 37 CFR 1.17(q).
(B) The practitioner should file a petition under 37 CFR 1.182 and the petition fee set forth in 37 CFR 1.17(h), requesting correction of the spelling of the inventor’s name.
(C) The practitioner should file a request for a corrected filing receipt and a separate letter to the Office explaining that the declaration contains a typographical error, that the correct spelling of the inventor’s name is John Jones, and requesting correction of the Office records.
(D) The practitioner should expressly abandon the application, and file a continuation with a new declaration with the correct spelling.
(E) The practitioner should call the examiner and tell the examiner that the inventor’s name is wrong, and ask for the examiner to change the name on the declaration.

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ANSWER: (C) is the most correct answer. See MPEP § 605.04(b), which states “Except for correction of a typographical or transliteration error in the spelling of an inventor’s name, a request to have the name changed to the signed version or any other corrections in the name of the inventor(s) will not be entertained…When a typographical or transliteration error in the spelling of an inventor’s name is discovered during pendency of an application, a petition is not required, nor is a new oath or declaration under 37 CFR 1.63 needed. The U.S.[PTO] should simply be notified of the error and reference to the notification paper will be made on the previously filed oath or declaration by the Office.” (A), (B) and (D) could result in the spelling of Jon’s name being corrected in USPTO records, but would do so at a higher cost to applicant,and therefore neither one is the most correct answer. Furthermore, (A) is also not correct in that if a request to add John Jones as an inventor was to be filed, another request (and fee) to delete Jon Jones would be required. (B) is wrong because a petition under 37 CFR § 1.182 is not required if the error in the name is a typographical error, and the facts specify that the error in the spelling of “John” as “Jon” is a typographical error. (D) is not correct because not only would filing a continuation create an additional expensive, but filing a new application could also delay examination. (E) is not correct because pursuant to 37 CFR § 1.2, business with the Office is to be conducted in writing, and, even more importantly, because “it is improper for anyone, including counsel, to alter, rewrite, or partly fill in any part of the application, including the oath or declaration, after execution of the oath or declaration by the applicant.” MPEP § 605.04(a).

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22. The Potter patent application was filed on June 6, 2002, claiming subject matter invented by Potter. The Potter application properly claims priority to a German application filed on June 6, 2001. In a first Office action all the claims of the Potter application are rejected under 35 USC 102(e) based on a U.S. patent application publication to Smith et al (“Smith”). A registered practitioner prosecuting the Potter application ascertains that the relevant subject matter in Smith’s published application and Potter’s claimed invention were, at the time Potter’s invention was made, owned by ABC Company or subject to an obligation of assignment to ABC Company. The practitioner ascertains that the Smith application was filed on April 10, 2001 and that the Smith application was published on December 5, 2002. Smith and Potter do not claim the same patentable invention. To overcome the rejection without amending the claims which of the following replies would not comply with the USPTO rules and the procedures set forth in the MPEP to be an effective reply for overcoming the rejection?
(A) A reply that only contains arguments that Smith fails to teach all the elements in the only independent claim, and which specifically points out the claimed element that Smith lacks.
(B) A reply that consists of an affidavit or declaration under 37 CFR 1.131 properly proving invention of the claimed subject matter of the Potter application prior to April 10, 2001.
(C) A reply that consists of an affidavit or declaration under 37 CFR 1.132 properly showing that Smith’s invention is not by “another.”
(D) A reply that properly states that the invention of the Potter application and the Smith application were commonly owned by ABC Company at the time of the invention of the Potter application.
(E) All of the above.

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ANSWER: (D) is the most correct answer. See 35 USC §§ 102(e) and 103(c); MPEP § 706.02(l)(1). The prior art exception in 35 U.S.C. § 103(c) only applies to references that are only prior art under 35 U.S.C. § 102(e), (f), or (g), and that are applied in a rejection under 35 U.S.C. § 103(a). In this situation, the Smith reference was applied in a rejection under 35 U.S.C. § 102(e) and not under 35 U.S.C. § 103(a). See MPEP § 706.02(l)(1). Therefore, the reply in answer (D) would not overcome the rejection. Answer (A) is a proper reply in that it addresses the examiner’s rejection by specifically pointing out why the examiner failed to make a prima facie showing. See MPEP § 706.02(b). (B) is incorrect inasmuch as it is a proper reply. See MPEP § 706.02(b). Answer (C) is incorrect inasmuch as it is a proper reply. See MPEP 706.02(b). Answer (E) is not a correct answer because answers (A), (B) and (C) all are replies that are in accordance with the USPTO rules and procedures set forth in the MPEP.

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12. In accordance with the USPTO rules and the procedures set forth in the MPEP, which of the following is true?
(A) Interferences will generally be declared even when the applications involved are owned by the same assignee since only one patent may issue for any given invention.
(B) A senior party in an interference is necessarily the party who obtains the earliest actual filing date in the USPTO.
(C) Reexamination proceedings may not be merged with reissue applications since third parties are not permitted in reissue applications.
(D) After a reexamination proceeding is terminated and the certificate has issued, any member of the public may obtain a copy of the certificate by ordering a copy of the patent.
(E) None of the above.

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ANSWER: (D) is the most correct answer. See MPEP § 2292. As to (A) see 37 CFR § 1.602(a). As to (B) see 37 CFR § 1.601(m), which provides that the senior party has earliest effective filing date. As to (C), see MPEP § 2285 regarding merger of reissues and reexamination proceedings. As to (E), (D) is true.