DEPARTMENT OF COMMERCE UNITED STATES PATENT OFFICE EXAMINATION FOR REGISTRATION TO PRACTICE JANUARY 15, Questions on Law and Practice

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1 --~ ~ DEPARTMENT OF COMMERCE UNITED STATES PATENT OFFICE EXAMINATION FOR REGISTRATION TO PRACTICE JANUARY 15, 1957 Paper No._ 1 Time: 3 hours Questions on Law and Practice Make your answers brief and to the point. Number each answer and leave at least two lines between answers. Write on only one side of the Eaper. 1. Kirby filed an application on February 9, 1953 containing claims to an automobile tire and the process of making it. Pursuant to a requirement for restriction, Kirby aleoted to prosecute claims to the tire and obtained a patent thereon on January 17, On January 16, 1956, he filed a second application containing the process claims which were rejected in the first Office action on the ground that they recited only the necessary and ob~ious manner of making the tire claimed 1n the patent. Describe in general terms th~ statutory provision which Kirby can assert in response to this rejection. 2. Brady's application contained a generic claim and claims specific to two different embodiments of the invention. The generic claim waa rejected by the examiner and a requirement to elect one of the two claimed species was made. Would an election of one of the species, without more, constitute a complete response to the examiner's action? Why? 3 An application for patent became abandoned because of failure to prosecute within the 8tatutory period following an examiner 1 s rejection. Applicant filed a peti ti<!>n to :reviv'e the application which petition was denied by the Comm1 ssi oner of Patents. Is the action of the Comndssioner appealable to the u. S. Court of Cus~oms and Patent Appeals? 4. Upon reexamination, the examiner allowed all the claims in Victor's application and the notice of allowance waa mailed June 25, State the dates on 9r before which (l) the final fee is due and (2) a delayed payment of the final fee may be received upon petition to Commissioner. Paper No, 1 Page One

2 5 One month after an application for a pencil was filed, applicant desires to present a claim for matter originally shown and deseribed but not embraced in the claims or in the statement of the invention in the application. Is 1t necessary to file any paper other than the amendment which includes the new claim? If so, what will be 1ts general content? If not, why not 7 6. Attorney Wilson ~s requested by his client to ascertain whether patentee Kaiser, a competitor, has applied for a reissue of his patent. How may Wilson ascertain this fact? 7v Could inaction by an applicant during a period of thirty-five days result in the abandonment of his applioa tion? Why Z What would be your answer if the period were twenty-five days? 8. The Thomas patent issued with one limited claim. Prompted by the restricted scope of the Thomas patent, Lewis produced a similar article without infringing the patent. Subsequently, Thomas reissues his patent with broadened claims whioh are infringed by the artiole produced by Lewis. Can Lewis continue with impunity to manufacture his article? 9 Before paying the final fee on an application wbioh has been allowed and passed to issue, Smith, the agent of record, decides that oertain changes are desirable in the claims. (a) If the changes would, in his opinion, not require a new search, what oan Smith do? (b) If the examiner rules that a new search is required, what oan Smith do within the period for payment of the final fee without saorifioing the benefit of applicant's filing date? 10. Doe, principal attorney in a patent application, appoints Roe as associate attorney. Due to the press of previously assumed obligations, Roe desires to be relieved of the duty of prosecuting the appl1oation. (a) Can Roe withdraw as associate attorney? If so, how? (b) Instead of withdrawing, could Roe appoint another associate attorney aa his substitute? Why? Paper No. 1 ~ Page TwQ

3 11. An interference was declared between an application filed by White on August 3 1 November 15, 1954 Within the motion period, White filed a motion to dissolve the interfe~enoe on the ground that Black's disclosure will not support the interference count and an application filed by Blaok en (a) Before whom will this motion be heard? (b) If the interference is dissolved as the result of White's motion, how may Black proceed to assert his right to make the claim 'f 12. If the entire interest of a patent is assigned and the patentee is dead, who may execute the application for a reissue, (1) which does not aeek to enlarge the scope of the olaima of the original patent, and (2) which does seek to enlarge the scope of the original claims? 13. Andrews filed an application for a design patent for a term of 7 years. Subsequent thereto, Andrews deai~es to change the term of his design patent to 14 years. Can the term be changed? If so, how and within what period in the prosecution of the appl1oa ti on? J.l+, Howard's applioati.on was finally rejected on March 1, 1954 with some claims allowed. An appeal was taken April l, ~954, the brief filed May 3, 1954, and a hearin~ requested. The Examiner 1 s Answer was written June 1, 1954 and the appeal set for hearing on September.1, 1954 On August 2, 1954, Howard decides not to prosecute the appeal but wishes his appl1oat1on to issue with the previously allowed olaima. State one way in which he may proceed, 15. All the claims in Peterson's application were rejected January 29, On March 3, 1952, Peterson copied ola1ms from Sullivan's patent and an interference was deolared on April 1, Priority was awarded to Peterson on April 18, 1955 On December l2, 1955, Peterson filed an amendment fully responsive to the rejection of January 29, applioa. tion abandoned? Wby? Is Peterson's 16. Garvey files a sole application and assigns the entire interest to Holmes. Thereafter, it is discovered that the invention was the joint invention of Garvey and Kramer. Does the present patent statute offer a remedy short of tbe filing of a new application? If so, how? Paper No. 1 - Page Three

4 ~~~--~ ~ ~- 17. Do the present patent statutes permit an applicant to file an appeal from the decision of the Primary Examiner to the Board of Appeals before a final rejection has been entered in the case? If so, when? 18. All the claims in Carter's application were finally rejected on March 1, 1955 On April Carter filed an appeal and an amendment cancelling no claim but adding a s.ingle similar and well drawn claim. Does this amendment qualify under Rule 116 as "presenting claims in better form for consideration on appeal?" 19. Under what condition may a claim of a patent be copied in an application for interference purposes more than one year after the date of issue of the patent? 20. An application of Jones, assigned in its entirety to Smith and prosecuted by attorney Brown appointed by Jones, is involved in an interference. Who could properly sign eaoh of the foll~wing papers: (a) Preliminary statement (b) Concession of priority (c) Motion to dissolve (d) Revocation of power of attorney 21. A and B filed a joint application on April l, 1955 and assigned it to X on the same day. After filing several amendments in response to Office actions, X decides to expressly abandon the application and files a letter of abandonment signed by himself. Is this letter effective as a formal abandonment? If so, why? If not, why not? 22. An application is filed with twenty olaims. Is there any penalty for adding ten claims to the application by an amendment prior to the first action by the examiner? 23. Gill filed two applications for patent, each of which related to a pump. The first application was filed June 8, 1953 The second appl1oat1on, filed February 2, 1954, did not refer to the first application but contained a claim to subject matter disclosed in both applications. This claim was rejeoted on a French patent published August 4, 1953 Without amending the claims, how may this rejection be overcome? Paper No. 1 - Page Four

5 24. Emile invented a dress design and filed an application in France on May 3, 1954 for a design patent. On April 4, 1955 Emile filed an application in the United States Patent Office for the same dress design. On April 11, 1955, the French design patent was issued to Emile. Can a valid U.- S" design patent be issued? Why: 25. Jaoke and Jille filed a joint application for a baby carriage, which application included a disclosure of a apeoifio brake invented by Jacka. A patent was obtained by Jaoke and Jille with claims drawn to the baby carriage. Prior to the i5suanoe of the patent» Jaoke filed an application for the specific brake. The examiner now rejects Jaoke s claims as being met by the brake disolo.sed in the Jacka and Jille patent. What is the proper response to this aotion? Paper No. l - Page Fi~e

6 DEPARTMENT OF COMMERCE UNITED STATES PATENT OFFICE EXAMINATION FOR REGISTRATION TO PRACTICE JANUARY 15, 1957 Paper No. 2 Time: 3 hours This paper is in two parts and requires the drafting of six olaims as indioqted. PART NO. l APPARATUS CLAIMS Draft three olaims of substantially varying scope oovering the "Gasoline Nozzle" shown in the attached drawing. Assume that the novelty in the device lies in the operator for the valve shown Designate the,.broadest," the "intermediate," e.nd the "narrowest" claim. The claims should not distinguish from each other by merely immaterial limitations. Paper No. 2 - Part No. l - Page One

7 GASOLINE NOZZLE Paper No. 2 - Part No. 1 - Page Two

8 PART NO. 2 PROCESS CLAIMS Draft three claims covering the process of enameling diaolosed in the following specification. The claims should not distinguish from eaoh other by merely immaterial limitations. PROCESS OF ENAMELING This invention relates to a process of applyp ing white porcelain ena:mel to a metal surface such as iron or steel. The primary object of my invention is to provide a practical and controllable process for applying a white porcelain: enamel aurating directly upon iron or steel. In the past, in applyjng a white ftnish porcelain enamel coatjng to iron or steel structures, it hasbeen customary, first to apply and fuse a dark porcelain ground coat to the metal. Attempts to apply the white porcelain enamel coating directly upon the tron or steel have not been success~ ful for generally these coatings were defective, having blister and black speck. type of detectli, which apparently were caused by min~,jte quantities of gases ln the iron or steel. It is not known deftnitely what these gases are but it is thought they may be either hydrogen or carbon monoxide or carbon dioxide, or possibly some nitrides. As one specific example of my invention, the piece or structure which it is desired to coat wltb white porcelain enamel, is first heated in a non-oxidizing atmosphere of nitrogen main~ tained at a temperature of about l60o F. for about one hour. The heated structure is then cooled in the same or similar atmosphere to a.pproxima.tely room temperature. The structure is preferably made of commercial enameling iron, but it may also be steel or other metal capabl? of withstanding the temperatures necessary for fusing the porcelain. Thls procedure prepares the metal for the porcelatn coating, It ts believed that gases in or formed in the iron or steel are removed by thi.s process. lar form containing boric oxide, alumina and slllca, ls mixed with water, clay, and opaclfters. This mixture is ground until all particles will pass a 200 mesh screen. This mixture, usually called milled white enamel or slip, is ln the form of a liquid suspension and is applied directly to the metal structure after the cooling mentioned in connection with the previous heating operation. It may be applied to the metal structure either by dipp!ng the metal structure into the 60 liquid suspension or by. spraying or by flowing the liquid suspension onto the metal structure. This liquid suspension coating ls then dried in any suitable manner. Thereafter, the metal structure with the driect 5tJ Thereafter, the metal structure is co~ted with a finish coat of whi~ porcelain enamel 1n tbe usual manner. For example, the frit which ts essentiej.ll~' an alkali borosilicate glass in granucoating is put into a furnace having al'.:l. air atmosphere m-a.intained at a temperature of be-- ~ween 1500 and " F. and kept therein!o:t two minutes, so tbat the coating will fuse into ~ white porcelain enamel, providing a coatingwhich ls free from defects. and h&<j a satis:fac:- tetry white opaque appearance. Other non-ox1diz1ng, or reducing BJtmq>sp~ rna:y. be used. such as, for example, hydroge~ fltp 10 a. cracked gas containing nitrogen, hydrogen, carbon monoxide and perhaps a small amount of carbon dioxide. Carbon monox1de or carbon dioxide alone may likewise be used, While excellent results have been obtained by 1~ maintaining the furnace atmosphere at 1600 F. for one hour, otner temperatures and other periods of time mjght be used. I! a higher temperature is used, a somewhat shorter period of time is permissible, If the lower temperatures 20 are.used a longer period of time is generauy required to obtain equivalent results. In general, it does not appear desirable to perform this op~ eration at a temperature of less than about 1400 F., no matter what length of time is used, and 25 it does not appear desirable to reduce the i,>erlod of time below 24 minutes. Preferably, 30 minute:i is the mtnimum time. Any suitable finish white porcelain coa.t1n~j material or sllp may be used. The temperature an and length of time of the porcelain coating operation will depend upon the particular material used. For some coatings a temperature of 1540 F. for three minutes is required. By this process I am able to provide a smooth, :i5 satisfactory White porcelain enamel coating directly upon the usual oommerclal enameling- Iron or steel or other metal material which will be uniformly free from defeats as long as the above mentioned conditions or their equivalents are 40 maintained. These conditions can be readily maintained w1th modern industrial equipment so th&t a whie porcelain coated product can be produced at a low cost without serious dl1ilculty. 45 Paper No. 2 - Part No. 2 - Page One