U.S. DEPARTMENT OF COMMERCE UNITED STATES PATENT AND TRADEMARK OFFICE REGISTRATION EXAMINATION FOR PATENT ATTORNEYS AND AGENTS.

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1 Test Number 014 Test Series 294 NAME U.S. DEPARTMENT OF COMMERCE UNTED STATES PATENT AND TRADEMARK OFFCE REGSTRATON EXAMNATON FOR PATENT ATTORNEYS AND AGENTS November 2, 1994 Morning Section (100 Points) Time: 3 Hours DRECTONS This section of the examination is an open book examination. You may use books, notes, or other written materials that you believe will be of help to you except you may not use prior registration examination questions and/or answers. Books, notes or other written materials containing prior registration examination questions and/or-answers cannot be brought into or used in the room where this examination is being administered. f you have such materials, you must give them to the test administrator before this section of the examination begins... All questions must be answered in SECilON 1 of the Answer Sheet whi~h ~provided to you by the test administrator. You must use a No. 2 (or softer) lead pencil to record your answers on the Answer Sheet Darken completely the circle corresponding to your answer. You must keep your made Within ihe circle. Erase completely all marks except your answer. Stray marks may be counted as answers. No p<>lnts will be awarded for incorrect answers or unanswered questions. Questions answered by darkening more than one circle will be considered as being incorrectly answered. This section of the examination consists of fifty (50) multiple choice questions, each worth two (2) points. Do not assume any additiopal facts not presented in the q(jestions. When answering each question, unless otherwise stated, assume that you are a registered patent agenl The most correct answer is the policy,_practice and procedure which inust; shall or should be followed in accordance with the U.S. patent statittes, ihe.pio rules of practice or procedure, the M.3.nual of Patent Examining Procedure (MPEP), and the.patent Cooperation Treaty (PC) articles and rules; unless modified by a subsequent court decision or a notice in the Official Gazette. There is only one most correct answer for each question. Where choices (A) through (D) are correct and choice (E) is "All of the above", the last choice (E) will be the most correct answer. Where a question includes a statement with one or more blanks or ends with a colpn, select the answer from the choices given to complete the statement which would make the statement true. Unless otherwise explicitly stated, all references to patents or applications are to be understood as being U.S. patents or applications for utility inventions only, as opposed to plant or design inventions. Where the terms "USPTO". "PTO" or "Office" are used in this examination, they mean the U.S. Patent and Trademark Office. You may write anywhere on this examination booklet However, do not remove any pages from the booklet. Only answers recorded in SECTON 1 of your Answer Sheet will be graded. YOU MUST SCORE AT LEAST 70 PONTS TO PASS TillS SECfiON OF THE REGSTRATON EXAMNATON. DO NOT TURN THS PAGE UNTL YOU ARE NSTRUCTED TO CHECK THE CONTENTS OF THS EXAMNATON BOOKLET OR TO BEGN THE EXAMNATON 1

2 1. Which of the following does not have authority to sign a terminal disclaimer in a patent? (A) The patentee. (B) The assignee of the entire interest in the patent. (C) An attorney not of record in the patent. (D) A patent agent of record in the patent. (E) The legal representative of the patentee, if the patentee is deceased. 2. A petition and fee for an extension of time cannot be granted for filing (A) a response to a Quayle action (B) a notice of appeal (C) an appeal brief (D) a reply brief (E) a response to a final rejection 3. Jones filed a first patent application in the PTO on November 4, The application contained five claims directed to a coating apparatu_s. Jones conceived his invention in Boston, Massachusetts on May 21, 1993.and reduced it topractice on)uly JS, 1993.,n an Office action datedjuly 28, 1994, the examiner properly objected to the specification under the fi.rst paragraph of 35 U.S.C for failing to provide an enabling disclosure, and properly.rejected all of the claims in the application under the first paragraph of 35 U.S.C Also, the examiner rejected all of the claims in the application over an article published on July 30, The ex.aminer set a three month shortened statutory period for response. On October 28, 1994, Jo~es filed a second application with additional subject matter added to the specifi~ation to support the coating.apparanis claims... The second application contained a specific reference to the first application and contained the five.apparatus claims as originally_.presented in the first application and six new claims directed to a coating composition. Are the apparatus claims in Jones' second application entitled to the November 4, 1993 filing date of the first application? (A) No, because the second. application.includes new claims to a new statutory class of invention..(b) N9, because the disclosure or' the:.frrst. application is non-enabling.. (C) No, because there _was :nq copen4ency with the first application since the first application became abandoned on October 28, (D) Yes, because Jones did not amend the original apparatus claims. (E) Yes, because the first and second applications were copending, both applications were filed by Jones, and the second appiication contained a specific reference to the first application. 4. n a reexamination proceeding, claims may be amended and new claims may be added, subject to certain requirements. n order to amend claims or to add new claims in a reexamination proceeding: (A) Brackets may not be used in amending claims and the amended claims must place the patent in a condition where all the claims, if amended as proposed, would be patentable. (B) f copies of the printed.patent copies are used, additions to the claims are indicated by carets. (C) Additions to amended claims are indicated by underlining, and new claims may be added, if and only if, an equal number of existing claims are canceled. 2

3 (D) New claims should be submitted unnumbered so that the PTO can assign a claim number when the reexamination claims, if any, are ultimately allowed and the patent is reissued. (E) A full copy of the text of any claim which is amended to enlarge the scope of the original patent claims must be presented. 5. You are prosecuting a patent application on behalf of your client. All of the claims in the application were finally rejected under 35 U.S.C. 103 over a combination of two patent references. The rejection has been appealed to the Board of Patent Appeals and nterferences (Board) and is awaiting a decision. Three months after the examiner ft.led his examiner's answer, you received a letter from your client who informs you that sales of his invention have skyrocketed. The letter included a signed declaration by your client attesting to the commercial success of the invention. Since you strongly feel that this declaration has a significant bearing on the patentability of the claims, you want it considered by the Board or the examiner. Which of the following, if any, would be the most appropriate action to take to have the declaration considered? (A) File the declaration and include a showing of good and sufficient reasons why the declaration was not earlier presented and request that the Board immediately remand the application to the examiner for consideration of the declaration. (B) File the declaration and a petition with the appropriate fee for a four month extension of time to the Board and request the Board to consider the declaration. (C) File the declaration and a petition with the appropriate fee to the Commissioner requesting that the Board remand the application to the examiner to consider the declaration. (D) Wait until after the decision of the Board to submit the declaration. (E) Advise your client that prosecution is closed and that amendments, affidavits or declarations cannot be filed after the application has been forwarded to the Board. 6. You filed an application containing three claims drawn to two properly divisible inventions, claims l and 3, linked by claim 2. Claim 1 is directed to a process of smelting ores, claim 2 is directed to a smelting process for making a high grade nickel alloy, and claim 3 is directed to a high grade nickel alloy. The examiner makes a restriction requirement stating that "claim 2links the smelting process and the nickel alloy" and requires you to elect between the inventions defined by claims 1 and 3. Which of the following would be the most appropriate response to the restriction requirement? (A) Traverse the requirement and ask for reconsideration and withdrawal of the requirement because claim 2 links both claims 1 and 3 together.. (B) Traverse the requirement and amend claim 1 to limit the claim to a smelting process for making a high grade.nickel alloy. (C) Elect the invention defined by claim 1 or claim 3 and point out that since claim 2 is a linking claim, it is included with the elected invention. (D) Elect the invention defined by claim 2 and argue that you want the choice of using a smelting process for making nickel alloy so that the restriction would be moot since all of the claims would be included. (E) File a petition requesting review of the requirement for restriction because the inventions defined by claims 1 and 3 are not properly divisible where a proper linking claim exists. 3

4 7. Which of the following statements regarding a request for an oral hearing at the Board of Patent Appeals and nterferences is true? (A) f the examiner's answer states a new ground of rejection, the request for an oral hearing must be filed no later than the filing of the appeal brief. (B) The request must be in writing. (C) The request will be granted if filed three months from the date of the examiner's answer without requesting an extension of time. (D) The time period for requesting an oral hearing can be extended by filing a request and fee for an extension of time six months from the date of the examiner's answer. (E) f the request for an oral hearing is filed within one month of the date of the examiner's answer, there is no fee required to request the oral hearing. 8. You are prosecuting a U.S. patent application in the USPTO on behalf of your client Hans. The U.S. application was filed on August 11, The U.S. application corresponds to a German application Hans filed in the German Patent Office on August 10, n addition, Hans also filed a corresponding application in France on September 2, 1992 and in Japan on September 18, The examiner rejected all of the claims in the U.S. application under 35 U.S.C. 102(a) as being anticipated by a U.S. patent to Muller which discloses, but does not claim, Hans' claimed invention. The patent to Muller was granted on June 22, 1993, and is based on an application filed in the PTO on September 2, Which foreign application or applications, if any, can be used to remove the Muller patent as a reference if a claim for priority is made by Hans? (A) German application. (B) German and French applications. (C) French application. (D) French and Japanese applications. (E) None of th~ above. 9. On March 5, 1989, inventor Smart built what he believed to be a new 3-D picture tube for a television set His picture tube used two electron guns. However, when he tested the tube, it failed. Jones, a co-worker of Smart's, suggested that Smart add a third electron gun to his picture tube. Smart added a third electron gun to his picture tube and, on April 1, 1993, he tested the improved picture tube and was satisfied that it worked as he had envisioned. On May 5, 1993, Smart entered into an agreement with Multi-Dimensional Company (MDC) to manufacture and sell the improved picture tube. By the end of 1993, MDC had sold over 10,000 of the improved picture tubes to television manufacturers. However, due to a rapid decline in sales, MDC stopped the production of the tubes on May 31, On May 4, 1994, Smart filed a patent application in the PTO disclosing and claiming the improved picture tube with the three electron guns. Which of the following sections, if any, of the patent statute would bar Smart from being entitled to a patent on the improved picture tube? (A) 35 U.S.C. 102(b) (B) 35 U.S.C. 102(f) (C) 35 U.S.C. 102(a) and 102(g) (D) 35 U.S.C. 102(b) and 102(f) (E) None of the above. 4

5 to. You represent the patent owner in a reexamination proceeding. n a second Office action dated January 14, 1994, the examiner rejected some of the patent claims over the prior art cited in the request for reexamination. The examiner made the rejection final and set a two month shortened statutory period for response. On March 14, 1994, you filed a response to the final rejection. The response included a proposed amendment of the rejected claims. n an advisory action dated March 18, 1994, the examiner indicated that the amendment would not be entered because it raised new issues and considerations and she extended the period for response to the final rejection to run three months from the date of the final rejection. t is necessary for you to obtain more time in which to submit a second proposed amendment and an affidavit to show that the second proposed amendment at least reduces the issues for any eventual appeal. n order to avoid termination of the reexamination proceeding: (A) Continue the proceeding by filing a continuation application on or before April 14, 1994, so as to provide more time to identify the issues or resolve issues and avoid appeal. (B) On or before April 14, 1994, file a request for a three month extension of time to respond. The request must contain a showing of sufficient cause for granting the request. (C) At any time up to six months after the date of the second Office action, file a second proposed amendment accompanied by an affidavit, a request and appropriate fee for an extension of time, a notice of appeal and the appropriate appeal fee. (D) At any time up to six months after the date of the second Office action, file a second proposed amendment accompanied by an affidavit, a request for an extension of time containing a showing of sufficient cause for granting the request, the appropriate fee for the extension of time requested, and a notice of appeal and the appropriate appeal fee. (E) On or before May 14, 1994, file a notice of appeal accompanied by the appropriate appeal fee, a second proposed amendment enlarging the scope of a rejected claim, an affidavit, and a request and fee for a two month extension of time. ll. A patent application was filed on April 1, 1994 on an invention which was conceived on February 28, 1992 and reduced to practice with due diligence on August 8, The examiner rejected all.of.. the claims in the application under 35 U.S.C. 103 as being obvious over Hoppe in view of Goodman. The examiner stated that it would be obvious to modify the structure disclosed and claimed by Hoppe as suggested by Goodman. Hoppe is a Canadian patent which issued on January 5, 1993, and is based on a Canadian application filed. on March 18, Goodman is a U.S. patent whichissued September 20, 1994, and is based on a U.S. application filed on February 5, Which of the following would be a proper response to the rejection? (A) Argue that because Goodman issued after the filing date of the application, it is not prior art and therefore cannot be used in combination with Hoppe. (B) File an antedating affidavit to swear behind Hoppe and request allowance of the claims. (C) Argue the patentability of the claims with regard to the teachings of Hoppe and Goodman individually and in combination. (D) Present only arguments as to why Hoppe does not teach the claimed invention since the rejection of the claims will stand or fall with the outcome of the argument presented as to the primary reference. (E) Present an argument that one of ordinary skill in the art would not be able to modify Hoppe with Goodman as suggested by the examiner because Goodman issued after Hoppe, and thus would not have been available at the time Hoppe became a patent. 5

6 12. You recently filed a patent application for a client on a new widget. Your client has just informed you that he has a manufacturer who wants to manufacture the widget as soon as possible. Upon further inquiry he tells you that the manufacturer presently has $100,000 of capital and the machines to begin producing widgets at a rate of 100 units per day. Although the client is an expert in the widget art, he did make a search of the prior art before the application was filed, but he did not find any relevant prior art. However, the prospective manufacture provided your client with a patent which your client was not previously aware of. The client tells you that some of the claims in the application may not be patentable over the patent. You have reviewed the patent and you have advised your client that the patent should be disclosed to the PTO. Which of the following representations, if any, would violate the PTO Code of Professional Responsibility, if presented in an affidavit signed by you in support of a petition to make special? (A) The applicant has made a careful and thorough search of the prior art. (B) The prospective manufacturer has sufficient presently available capital and facilities to manufacture the invention in quantity. (C) The applicant believes all of the claims in the application are allowable. (D) The applicant has a good knowledge of the pertinent prior art. (E) None of the above. 13. You are prosecuting an application in which the patent examiner rejected all of the claims under 35 U.S.C The Office action is dated March 11, 1994 and set a three month shortened statutory period for response. On June 10, 1994, you prepared a complete response to an Office action and personally deposited it with the U.S. Postal Service using a proper certific ate of mailing. Today, November 2, 1994, you received a notice of abandonment for failure to prosecute the application. Which of the following would be the most appropriate response to the notice ofabandonment? (A) Promptly notify the PTO that a response was mailed and include a copy of the response with the certificate of mailing and a proper declaration attesting to the fact that you deposited the response with the U.S.. Postal Service on the date indicated on the certificate. (B) nform your client that the application is abandoned and blame the Postal Service for losing the amendment. (C) File a petition and proper fee to revive the abandoned application and include a copy of the response and a statement that the delay was unintentional. (D) File a petition and proper fee to revive the abandoned application and include a copy of the response and a statement that the delay was unavoidable. (E) File an original copy of the response along with a petition and fee for a four month extension of time. 14. Which one of the following is not required to obtain an international filing date for an application filed under the Patent Cooperation Treaty (PCT)? (A) A part which appears to be a claim. (B) That the application be in a prescribed language. (C) The designation of a PCT contracting state. (D) The name of the inventor. (E) An indication that the application is intended as an international application. 6

7 15. You have been approached by a representative of a chemical manufacturing fmn. The representative shows you evidence that a competitor filed a patent application in early 1994 claiming an important chemical compound which the representative's firm is currently producing. The representative provides you with ample evidence to show that the chemical compound has been sold in the United States since at least Can you properly file a protest on behalf of the manufacturing fmn? (A) No,. because only members of the public can file a protest. (B) No, because information to be submitted with a protest is limited to prior patents and printed publications. (C) No, because the protest program was replaced by statutory reexamination. (D) Yes, but the initial submission should be complete and contain all of the evidence relied upon by the protestor. (E) Yes, and the protestor is entitled to receive copies of all Office actions issued after the protest is filed so as to protect the rights of the chemical manufacturing firm against the competitor. 16. Which of the following statements is false? (A) Compliance with the best mode requirement can exist when an inventor discloses his or her preferred embodiment of the invention. (B) Whether or not a specific disclosure is adequate for best mode purposes is determined by comparing the disclosure with the facts concerning the invention known to the inventor at the time the application was filed. (C) The inventor's failure to disclose particular materials, sources, or a particular method or technique of manufacture beyond information sufficient for enablement does not automatically result in a best mode violation. (D) The absence of a specific working example is not necessarily evidence that the best mode has not been disclosed. (E) f the best mode contemplated by the inventor at the time of filing an application is not disclosed, such defect can be cured by submitting an amendment adding the required subject matter to the specification of the application. 17. Applicant filed a patent application with 28 claims. Claims 1, 5, 23 and 27 are independent. Claims 2-4 depend from claim 1, and claims 6-22 depend from claim 5. Claim 24 depends from claim 23. Claim 25 depends from claims 23 or 24. Claim 26 depends from claim 25. Claim 28 depends from claims 1, 23 or 27. n addition to the basic filing fee, how many additional claims must applicant also pay for? (A) 6 (B) 8 (C) 11 (D) 12 (E) 24 7

8 18. You filed in the PTO a continuing application on behalf of your client. Soon after the continuing application was filed under 37 CFR 1.53, you expressly abandoned the parent application. The parent application included an affidavit showing comparative test results. However, it was not included in the continuing application. Today, November 2, 1994, you received an Office action rejecting all of the claims in the continuing application. You noticed that the examiner did not consider the affidavit which was filed in the parent application. Which of the following would be the most appropriate response to the Office action to have the affidavit considered? (A) File a response requesting that the examiner withdraw the rejection and consider the affidavit in the parent application. (B) File a response which includes a copy of the original affidavit and presenting arguments as to why the claims are patentable in view of the affidavit. (C) Abandon the continuing application and revive the parent application. (D) File a petition to the Commissioner requesting the Commissioner to exercise his supervisory authority and require the examiner to consider the affidavit. (E) Request that Application and Processing Division of the PTO transfer the original affidavit to the continuing application. 19. You are the only agent of record in a patent application filed on behalf of your client Early. The application is currently under rejection. A response is due on November 10, You are on vacation and not expected to return to your office until November 14, Today, November 2, 1994, Early calls your secretary and wants the response to the rejection filed today in order to avoid paying an extension of time fee. Your partner, John, who is also a registered patent agent, is familiar with the application and tells Early that he will prepare and file the response today. Can John properly prepare and file the response without having a power of attorney from Early?. (A) No, because John is not an attorney of record. (B) No, because you have not authorized John to act on the application. (C) No, because John would be in violation of the PTO Code of Professional Responsibility. (D) Yes, because John is a registered patent agent and his signature on the response constitutes authorization to represent Early. (E) Yes, because you and John are practitioners in the same firm. 20. You are preparing a patent application for your client. The invention is disclosed in the specification as a device comprising A, B and means C for performing a function. The specification discloses two specific embodiments for performing the function defined by means C, namely C' and C". The specification also discloses that components D ore may be combined with A, B, and means C to form A, B, means C, and D or to form A, B, means C and E. The specification further discloses that component G may be used with only means C'. The first three claims in the application are as follows : 1. A device comprising A, B and means C for perfonning a function. 2. A device as claimed in claim 1, wherein means C is C'. 3. A device as claimed in claim 1 or 2 further comprising D. Which of the following claims would be a proper claim 4 and be supported by the specification? 8

9 (A) A device as claimed in claim 1, further comprising D. (B) A device as claimed in claim 1, 2 or 3, further comprising G. (C) A device as claimed in claims 1 and 2, further comprising G. (D) A device as claimed in claim 2, further comprising E. (E) A device as claimed in claim 2 or 3, wherein means C is C", and further comprising G. 21. You have filed a proper divisional application under 37 CFR 1.60 for your client. A verified statement claiming small entity status signed by the client was filed in the parent application. Which of the following is the simplest correct course of action to take to have the inventor maintain his small entity status in the divisional application? (A) File a new verified statement over your signature that the application is owned by a small entity. (B) File a letter over your signature in the divisional application referencing the verified statement in the parent application. (C) Send a letter to the Small Business Administration requesting the Small Business Administration notify the PTO that the inventor qualifies as a small entity. (D) Have the inventor execute a declaration stating that the invention has not been assigned, granted, conveyed or licensed to a person who would not qualify as a small business entity. (E) Do nothing because a verified statement is of record in the parent application. 22. Today, November 2, 1994, you filed a notice of appeal in a patent application. What would be the very last date on which an appeal brief could be filed if a proper petition and fee for an extension of _ time is filed with the brief? (A) Monday, January 2, 1995 (B) Wednesday, February 2, 1995 (C) Wednesday, March 2, 1995 (D) Monday, April 4, 1995 (E) Monday, May 2, You filed a patent application on behalf of your client, Mary Doe. Recently, Mary married and changed her name to Mary Doe-Smith. Which of the following would be the most appropriate procedure changing her name on the application? (A) File an amendment in the application requesting the examiner to change the applicant's name on the application to Mary Doe-Smith. (B) File a petition with the appropriate fee directed to the Office of the Assistant Commissioner for Patents requesting the name change and include an affidavit signed with both names setting forth the procedure whereby the change of name was effected. (C) File a certificate of correction with the appropriate fee while the application is pending requesting that Mary Doe be changed to Mary Doe-Smith. (D) Expressly abandon the application and then the following week file a continuation application naming Mary Doe-Smith as the inventor. (E) File a petition in the Application and Processing Division of the PTO requesting that Mary Doe be changed to Mary Doe-Smith. Q

10 24. You filed a patent application in the PTO today, November 2, The application as filed consisted of a specification containing a description in accordance with 37 CFR 1.71, necessary drawings, ten claims, and the name of the actual inventor. The inventor is on vacation and is unavailable to execute the oath. He is expected to return on November 16, 1994 to execute the oath so that it can be filed in the PTO on November 17, After filing the application, you realize that you failed to include two claims directed to an embodiment of the invention which was not claimed, and which is neither illustrated and shown in the drawings nor described in the specification. You have prepared an amendment to add these new claims to the application, and to add drawing figures and a description of the embodiment to the specification. Which of the following procedures, if any, will result in the new claims being entitled to a filing date of November 2, 1994, without the claims being new matter? (A) File the amendment today. (B) File the amendment today and then, on November 17, 1994, file an original oath which properly references the amendment. (C) On November 17, 1-994, file the amendment and an original oath which properly references the amendment. (D) On November 16, 1994, have the inventor execute an original oath and a supplemental oath which properly references the amendment and then file the amendment along with the original and supplemental oaths in the PTO on November 17, (E) None of the above procedures are acceptable because without an original oath, the application is not entitled to a filing date of November 2, Your client is from ndia and wants to file a U.S. patent application corresponding to a patent application he has filed in ndia. ndia is a member of the United Nations, but it is neither a member of the Paris Convention nor has a bilateral treaty with the United States. Which of the following circumstances, if any, would perfect a claim for priority? (A) File the U.S. application within 12 months of the filing of the ndian application. (B) File a request for priority in the U.S. application. (C) File a request for priority and include a certified copy of the ndian application in the U.S. application. (D) Petition the Commissioner to waive the rules and request foreign priority and include a certified copy of the ndian application. (E) None of the above. 26. A U.S. patent on a soccer ball was issued to Kick on January 15, n April of 1992, Kick gave a non-exclusive license to Rubber Company to manufacture and sell the soccer ball throughout the USA. The license was executed on November 30, Rubber Company discovered an error in the patent which would render some of the patent claims invalid. f a reissue application was filed on January 14, 1994 to correct the error by broadening the scope of the claims, the reissue oath had to be signed and sworn to by (A) Kick (B) Kick and must be accompanied by the written assent of Rubber Company (C) Kick or Rubber Company (D) Rubber Company (E) the legal representative of Rubber Company

11 Questions 27 and 28 below are based on the following factual pattern. Unless otherwise indicated, answer each question independently of the other. You represent XYZ Corporation which has developed an electro-mechanical iris and lens combination which significantly improves the vision of a celestial telescope. The iris and lens combination was invented by a team of engineers: Mary Fixit, Joe Lenz and Red Eye, all of whom are employees of XYZ Corporation at the time the combination invention was conceived and made. On July 6, 1993, you filed a patent application in the PTO with claims to the electro-mechanical iris and lens combination naming Mary, Joe and Red as the co-inventors. All rights to the c01nbination invention have been assigned to XYZ Corporation by the inventors. The assignments were recorded in the PTO on July 28, n later discussions with the inventors, you discover that the lens itself was invented by Mary alone on January 15, 1992, while she was self-employed and living in London, England. Although Mary never filed a patent application on the lens either in the U.S. or in England, she did have a sales brochure printed and distributed in England to prospective manufacturers, describing the lens in detail. To the best of her knowledge, none of the sales brochures were ever distributed in the United States. Her brochures resulted in one sale to a celestial telescope manufacturer located in London, England on June 30, On July 6, 1993, Mary assigned all rights to her lens invention to XYZ Corporation. On September 7, 1993; you filed on behalf Mary, Joe and Red a proper information disclosure statement in the patent application in which you disclosed the sales activity including a copy of the sales brochure~ f n his first Office action mailed March 31, 1994, the examiner rejected in the application all of the claims under 35 U.S.C. 103 as being obvious over the sales brochure in view of a patent to Smith which discloses an electro-mechanical iris identical to that claimed in the application, but employing a different type of lens. The sales brochure can be properly combined with the patent to Smith. The examiner asserts that it would have been within the skill of the art to substitute the lens described in the brochure for the lens disclosed in the Smith patent. 27. n December of 1993, Mary decided that she wanted to file a patent application claiming the lens she invented. s Mary entitled to a U.S. patent for her lens invention? (A) No, because the sales brochure is a statutory bar. (B) No, because her lens is obvious in view of the Smith patent. (C) No, because the lens was on sale more than one year prior to the filing of the application. (D) Yes, because her lens was not known or used by others or described in a printed publication before January 15, (E) Yes, because the sales activity did not occur in the United States. ~- 28. May the rejection of the claims under 35 U.S. C. 103 be overcome? (A) No, because the sales brochure cannot be disqualified as prior art. (B) No, because the rejection is a statutory bar. (C) Yes, because Mary's lens is not prior art inasmuch as she is named as a joint inventor in the application. (D) Yes, by the filing of an affidavit executed by you averring common ownership by XYZ Corporation of the invention to the lens invented by Mary and of the invention to the iris and lens combination invented by Mary, Joe and Red. (E) Yes, by filing a terminal disclaimer. 1 1

12 29. You are prosecuting a patent application on behalf of Smith who recently assigned his entire interest in a patent application to X Corporation. The assignment was properly recorded in the PTO. During the course of prosecution, X Corporation and Smith had a falling out. Today, November 2, 1994, X Corporation filed a paper in the PTO revoking all previous powers of attorney in the application and requesting that Smith be excluded from access to the application. The application is presently under final rejection. The rejection is dated May 10, Given only the facts above, can X Corporation revoke your power of attorney and seek to limit access to the application by Smith? (A) No, because the revocation must be granted by the Commissioner before it is effective. (B) No, because there is less than 30 days left in the statutory period for response to the final rejection. (C) Yes, because X Corporation may intervene and appoint its own attorney and X Corporation may request that the patent applicant be excluded from access to the application. (D) Yes, unless Smith files a disclaimer to revoke the assignment. (E) Yes, but only if X Corporation provides a showing that such action is in the best interests of Smith to conserve his rights. 30. Smith filed a parent application containing three independent claims: claim 1 to species X, claim 2 to species Y, and claim 3 to species Z. The examiner required a three way restriction between species X, Y and Z. Smith elected claim 1 without traverse to be prosecuted on the merits and canceled claims 2 and 3. Smith filed a first divisional application of the parent application with a claim directed to species Y. Both the parent and first divisional applications were allowed by the examiner. Prior to paying the issue fees in the parent and divisionru applications, Smith prepared and filed a second divisional application which has a claim drawn to only species Z. After the parent and the first divisional applications issued as patents, applicant amended the second divisional application to add a genus claim which covers species X, Y and Z. n the second divisional application, the examiner allowed the species claim to Z, but rejected the genus claim on the. grounds of obviousness-type double patenting. Which of the following would be a proper response to overcome the rejection and provide the client with the greatest patent protection to which he is entitled? (A) Cancel the genus claim because the parent and first divisional application have already been allowed. (B). Argue in the response to the rejection that the double patenting rejection is improper because all the applications have the same inventive entity and are commonly owned by Smith. (C) File a petition and the appropriate fee to vacate the double-patenting rejection. (D) Argue in the response to the rejection that PTO policy permits presenting a genus claim covering species X, Y, and Z in an application after issuance of copending applications claiming species X and Y. (E) File a terminal disclaimer and the appropriate fee. Jl. Micromania is a company which qualifies as a small entity. You are representing Micromania and you are currently prosecuting a patent application which includes a proper small entity statement. Micromania markets nuclear waste filters. On July 29, 1994, Micromania acquired Filterama Company, which would not qualify as a small entity. On September 14, 1994, you filed a timely amendment in response to a final rejection dated June 16, The amendment resulted in the allowance of the application. A notice of allowance was mailed on September 30, Do you need to notify the PTO of a change in small entity status? 1/

13 (A) No, because the prosecution of the application was closed when the notice of allowance was mailed. (B) No, because once small entity status has been established, the reduced fees may be paid without regard to change in status until any maintenance fee is due. (C) No, because the fact that Filterama does not qualify for small entity status does not have any effect on Micromania's status as a small entity. (D) Yes, on or before the date the issue fee is paid. (E) Yes, but the notice was required to be given on or before the date the amendment was filed. 32. You are representing a client in an interference proceeding. During the proceeding, you become aware of information concerning the conduct of opposing counsel in the interference which you believe would be a.violation of the PTO Code of Professional Responsibility. Do you have a duty to disclose this infonnation to the PTO? (A) No, because it would be unethical to "snitch" on a fellow practitioner. (B) No, because there is no such duty under the PTO Code of Professional Responsibility. (C) Yes, if the information is not privileged. (D) Yes, because any alleged unethical misconduct would be material to the determination of patentability by the examiner-in-chief in the interference proceeding. (E) Yes, but only if the opposing cou nsel refuses to infonn the Office of Enrollment and Discipline concerning the.alleged misconduct Lars and Olaf worked together in the basement of their home to develop a series of new electronic games. Lars worked on high speed circuits for hand-held controllers. Olaf worked exclusively on a solid-state game chip for processing information interactively on conventional television monitors, coupled through a game cartridge to orie or more of Lars' controllers. On May 5, 1993, a patent application was filed by Lars claiming his.controller circuits for interactive electronic games for use with a solid-state game {;hip. This application disclosed, but did not claim, Olaf's game chip. On August 5, 1993, a patent application was filed by Olaf and Lars, disclosing and claiming Olaf's game chip in combination with one or more of Lars' circuits. The examiner provisionally rejected all of the claims in the Olaf and Lars application under 35 U.S.C. 102(e)/103 as being obvious.over the controller disclosed in the Lars application in view of a game chip disdosed in a patent to Superchip which was granted in The game chip disclosed in the Superchip patent is patentably indistinguishable from the game chip forming part of the claims in the Olaf and. Lars application. The Superchip patent, however, does not describe the controller circuits needed to use the chip for electronic games. Can the rejection be overcome without amending the claims in the Olaf and Lars application or filing a 37 CFR and/or affidavit? (A) No, because the claimed invention is a joint invention of Olaf and Lars. (B) No, because the Lars application is not disqualified as prior art under 35 U.S.C (C) Yes, by arguing that the rejection is improper because the invention is directed to the game chip in combination with a circuit which is not disclosed by Superchip. (D) Yes, because the subject matter developed by Lars and by Olaf is commonly owned.. (E) Yes, by arguing that the Lars' application is not a patent. 13

14 34. You filed a notice of appeal in an application you are prosecuting on behalf of your client. The application contains ten claims. Claims 1-8 were finally rejected while claims 9 and 10 were indicated by the examiner as being allowable. You are appealing the final rejection of claims 1-8. You filed your appeal brief and the examiner entered his examiner's answer. The application is awaiting decision at rhe Board of Patent Appeals and nterferences. Today, Nove1nber 2, 1994, your client informs you that he no longer desires to prosecute claims 5-8 and asks you to drop these claims from the pending appeal. f you file a request to withdraw the appeal of claims 5-8, the withdrawal of the appeal will (A) result in the abandonment of the application. (B) have no effect on the status of the application before the Board because claims 5-8 must be canceled by amendment. (C) operate to cancel claims 5-8, but will not affect the appeal of claims 1-4 or the status of the application. (D) have no effect on the status of the claims or the application before the Board because the application contains claims which the examiner has indicated to be allowable. (E) operate to dismiss the appeal as to all rejected claims in the application. ~5. You are prosecuting an application with ten claims. Claims 2-5 are dependent on independent claim l while claims 7-10 are dependent on independent claim 6. On M ay 10, 1994, the examiner finally rejected claims 1-5 in the application. The remaining five claims were indicated by the examiner as being allowed. The examiner set a three month shortened statutory period for response. A proposed amendment to the final rejection was filed in the PTO on August 1, The amendment proposed ro rewrite claim 1 to add a limitation not suggested by the prior art. Today, November 2, 1994, you received an advisory action dated October 28, 1994 in which the examiner refused to_ enter the proposed amendment. Given only these facts, which of the following actions, if any, taken on November 9, 1994, will prevent the application from becoming abandoned? (A) File an amendment. canceling the rejected claims and include a request for a three month extension of time with the appropriate fee. (B) File a file wrapper continuation of the application with the appropriate filing fee and the proposed amendment. (C) File a notice of appeal and a request for a one month extension of time along with the appropriate fees. (D) File a petition to the Commissioner to waive the six month statutory period and request a four month extension of time. (E) File a supplemental response arguing the patentability of the claims as proposed to be amended in the response filed on August 1, ~6. You prepared a patent application for Sloe. On September 30, 1993, Sloe reviewed the application papers and signed the oath. The oath was notarized by your secretary. After Sloe executed the papers, he said he wanted to take one last review of the specification and claims to check for accuracy. You gave him the application papers and the oath. After a few weeks you attempted to reach Sloe regarding the status of his review. You found out that Sloe had taken the papers with him on an extended trip to Asia and that he would not be returning until February, Upon his return on February 3, 1994, he returned the papers to you without any changes and the application was filed in the PTO on February 7, n a first Office action on the merits dated October 20, 1994, the examiner indicated that the 14

15 oath was defective because the four month lapse of time between the execution of the oath and the filing of the application was unreasonable. The examiner required a new oath. Which of the following courses of action would be effective to overcome the examiner's requirement? (A) File a petition to suspend the rules requesting that the original oath be accepted in view of the extenuating circumstances surrounding the execution of the oath and the filing of the application. (B) Submit a new oath executed by Sloe identifying the application by serial number and filing date. (C) Submit a new oath executed by Sloe with a certificate from your secretary giving the actual date the oath was executed and a statement setting forth the circumstances surrounding the time lapse between the execution of the oath and the filing of the application. (D) File a supplemental oath executed by Sloe and your secretary. (E) File a copy of the oath reexecuted by Sloe. 37. On January 14, 1994, you filed. an application containing two independent claims directed to a smelting process for a nickel alloy. The applicant conceived the process in Chicago, llinois on November 20, 1992, and worked diligently to reduce it to practice on April2, n an Office action October 6, 1994, the examiner rejected claim 1 as being anticipated by Lois under 35 U.S.C. 102(b). Lois is a German patent which was filed on August 17, 1991, and issued on December 9, The German patent claims the smelting process. Claim 2 was rejected as being anticipated by Clark under 35 U.S.C. 102(e). The Clark patent is a U.S. patent which was filed on May 4, 1992, and discloses, but does not claim, the smelting process. The Clark patent issued on November 23, Which of the following would be the.most proper course of action to take to respond to the rejections? (A) File an antedating affidavit to overcome the rejection of claim -1 and cancel claim 2. (B) File an antedating affidavit to overcome the rejection of claim 2 and cancel claim 1. (C) File an antedating affidavit to overcome both rejections. (D) File an antedating affidavit to overcome both rejections and request that an interference be declared with the German patent. (E) File a response arguing that the rejections are improper because the Clark patent issued less than one year before the filing date of your client's application. 38. While looking through the most recent Official Gazette, you noticed a patent directed to a device similar to that claimed in your client's pending application. You obtained a copy of the patent and discovered that the patent is a divisional application of a parent application. The patent only gave the serial number of the parent application. You want to know the status of the parent application. Can you obtain the status of the application from the PTO? (A) No, unless the parent application has issued as a patent. (B) No, because all patent applications are preserved in confidence by the PTO. (C) Yes, but only if a petition for access is filed. (D) Yes, by filing a "Waiver of Secrecy. Order" form to get access to the parent application. (E) Yes, by submitting a written request for the status of the parent application which includes a copy of the patent. 15

16 39. n the first Office action dated October 7, 1994, the examiner rejected claim 1 under 35 U.S.C 103 and objected to claim 2 as being dependent upon a rejected claim. The examiner stated that claim 1 would be allowable if the subject matter of claim 2 was incorporated into claim 1. On October 25, 1994, after consulting with your client, you filed an amendment canceling claim 2 and incorporating the subject matter of claim 2 into claim 1. Today, November 2, 1994, your client changed his mind and now desires to traverse the rejection of claim 1 without incorporating the subject matter of claim 2 into claim. Which of the following would be the most appropriate procedure to take under the circumstances? (A) mmediately file a supplemental amendment traversing the rejection of claim 1 and requesting that claim 2 be reinstated. (B) mmediately file a petition to expunge the amendment filed on October 25, 1994 from the application file. (C) mmediately file a supplemental amendment adding a new claim 3 which is identical to original claim 2, amend claim 1 to delete the subject matter added by the October 25, 1994 amendment, and traverse the rejection of claim 1. (D) Advise your client to abandon the pending application. (E) Advise your client that there is nothing you can do because PTO procedures do not permit amending amendments once the amendment has been filed in response to an Office action. 40. Yotl filed an application in the PTO naming Smith and Jones as inventors. Smith and Jones have assigned their application to Nawak Corporation. You are representing Nawak:. Two moriths after you filed the application, Nawak: sends you a letter to inform you that the joint inventorship of the invention claimed in the application is incorrect. Through an inadvertent oversight, it was discovered that Mary needs to be added as a coinventor. Which of the procedures set forth below would be the most proper procedure to correct the inventorship in the application? (A) File a new oath signed by Mary, Smith and Jones, and file an amendment adding Mary as an inventor along with the written consent of assignee and a petition with the appropriate fee giving a statement of facts verified by Smith and Jones noting that the omission of Mary was without deceptive intent and establishing when the inventorship error was discovered and how it occurred. (B) File a new oath signed by Mary, and file an amendment adding Mary as an inventor along with a petition with the appropriate fee giving a statement of facts verified by Mary noting that the omission was without deceptive intent and establishing when the inventorship error was discovered and how it occurred. (C) File a new oath signed by Mary, and file an amendment adding Mary as an inventor along with a petition with the appropriate fee giving a statement of facts verified by the assignee noting that the omission of Mary was without deceptive intent and establishing when the inventorship error was discovered and how it occurred. (D) File a new oath signed by Mary, Smith and Jones and file an amendment adding Mary as an inventor along with a petition with the appropriate fee giving a statement of facts verified by Mary noting that the omission was without deceptive intent and establishing when the inventorship error was discovered and how it occurred. 16

17 (E) File a new oath signed by Mary, Smith and Jones, and file an amendment adding Mary as an inventor along with the written consent of assignee and a petition with the appropriate fee giving a statement of facts verified by Mary noting that the omission of her as an inventor was without deceptive intent and establishing when the inventorship error was discovered and how it occurred. 41. John discovered that a small amount of a lithium salt in the electrolyte of a nickel-cadmium battery will significantly improve the life of the battery. He asked you to prepare and file a patent application on his invention as soon as possible. While you were preparing the application, John attempted to market his invention. John informed you by letter that a potential licensee contends that prior art for the invention may exist in Class 429. You decided against conducting a prior art search in Class 429 because you were anxious to start a long planned vacation with your family. You filed the application on February 15, When you returned from vacation on March 21, 1994, you decided that you could not ignore the fact that prior art might exist in Class 429. Accordingly, you had a search made in Class 429. The search report listed two U.S. patents and a French patent, all of which are material to the patentability of the claims in John's application. You want to make these patents of record in the application. You have prepared a proper information disclosure statement (DS) and cite the patents in accordance with PTO regulations. No Office action has been made in the application. Based only on the facts given above, the examiner would consider the patents, if today, November 2, 1994, you file the (A) DS. (B) DS along with a fee. (C) DS with a certification. (D) DS with a certification and fee. (E) DS with a certification and a petition and petition fee. requesting consideration of the information disclosure statement. 42. You are prosecuting a patent application on behalf of your client B. You received a final rejection dated September 10, 1993 rejecting all of the claims in the application. The examiner set a three month shortened statutory period for response. B is frustrated with the patent prosecution process. B has decided not to pursue getting a patent and instructs you not to file a response to the Office action and to abandon the application. Today, November 2, 1994, B calls you and wants you to revive the abandoned application because he has recently had tremendous commercial success with the invention. Which of the following would be the most appropriate advice to B? (A) t is not too late to revive the abandoned application because the abandonment was unavoidable. (B) File a response traversing the rejections along with a petition for an extension of time which includes a showing that the delay in filing response was due to applicant's frustration with the patent prosecution process and his desire to test the commercial value of his invention. (C) File a substitute application and reference the abandoned application. (D) File a petition with the appropriate fee requesting revival of the abandoned application and include a statement that the abandonment was unintentional and a proposed response to the Office action. (E) File a continuation application and a petition with the appropriate fee requesting revival of the abandoned application for unavoidable delay and include a statement to the effect that the delay was unavoidable. 17

18 43. Which of the following statements regarding a reexamination proceeding is true? (A) The patent owner has a right to file any response prior to the order for reexamination. (B) The patent owner is entitled to enlarge the scope of the claims during reexamination. (C) The order for reexamination wij set a period of not less than two months from the date of the order. (D) Even though a request for reexamination is granted, the PTO may not make a detennination that a substantial question of patentability is present as to other claims not identified in the request for reexamination. (E) All of the above. 44. You are prosecuting a utility application claiming a mechanical device in which the written description of the device in the specification refers to three figures of drawing. n her first Office action, rhe examiner objected to the drawing as failing to illustrate every feature of the invention recited in the claims. Specifically, a lever recited in dependent claim 3 was not illustrated in the figures of the drawing. She required a correction of the drawing. Also, attached to the Office action was a Notice of Draftsman's Patent Drawing Review, Fonn PT0-948, indicating that certain infonnalities are present in the drawing. n particular, the lines of the drawing were pale and descriptive matter was present on the drawing. After receiving the Office action and Form PT0-948, you reviewed the drawing and further observed that a link illustrated in each of the three figures is depicted in Figure 2 in a manner inconsistent with the written description and inconsistently with Figures 1 and 3. Which of the following would be the proper procedure for correcting the figures in the drawing? (A) Submit a corrected sheet of drawing to the examiner with an explanation of the changes being made to the figures of the drawing. (B) File a timely response to the Office action and include a copy of the drawing showing in red ink the changes to be made to the figures and an authorization for a bonded draftsman to correct the deficiencies noted on Form PT (C) File a copy of drawing changes, in black ink, to the Office Draftsman. (D) File a timely response and instruct the examiner to cancel claim 3. (E) Telephone the examiner and ask the examiner to make the changes to the drawing by an examiner's amendment. 45. An application you are prosecuting has been allowed. n the notice of allowability dated August 4, 1994, you were notified that formal drawings are now required and that the drawings must be submitted. The notice of allowability set a shortened statutory period of three months to submit the drawings. On August 8, 1994, you received a notice of allowance indicating the due date of the issue fee as being November 4, Today, November 2, 1994, your draftsman called you and said that he was behind in his work and that he will not have the drawings ready until November 18, Which of the following would be the most appropriate course of action to take under the circumstances to insure issuance of the patent application? (A) On November 18, 1994, pay the issue fee and submit the drawings along with a petition and proper fee for a one month extension of time. (B) Pay the issue fee on or before November 4, 1994, and submit the drawings on November 18, 1994 along with a petition and proper fee for a one month extension of time. 18

19 (C) Pay the issue fee on November 8, 1994 and submit the drawings along with a proper petition and fee for an extension of time when the drawings are received from the draftsman. (D) On November 4, 1994, file a petition to the Commissioner requesting a delay of payment of the issue fee for one month in order to comply with the drawing requirement. (E) On November 18, 1994, pay the issue fee and submit the drawings along with a petition and proper fee to the Commissioner requesting a waiver of the rules for submitting the drawings after the three month shortened statutory period. 46. On February 3, 1994, you filed in the PTO an application on a laminate in the name of the actual inventor. The application contained a specificat~on complying with the first paragraph of 35 U.S.C.112, seven claims, and an unsigned declaration. n a notice from the PTO dated February 25, 1994, you were advised that the declaration filed on February 3, 1994 was unsigned and that the filing fee and a surcharge were due. On March 30, 1994, you submitted a signed declaration and remitted the appropriate fees to the PTO. n an Office action from the examiner dated September 20, 1994, the examiner required a drawing since the nature of the invention admitted of illustration by a drawing, although a drawing was not necessary for an understanding of the invention. n the action, the examiner also required an election between claims 1-4 and claims 5-7. The examiner set a two month period for response to the action. Today, November 2, 1994, you elected, without traverse, claims 1-4 to be prosecuted on the merits and submitted a drawing along with an. amendment to. the specification as necessary to describe the drawing.. The description and the drawing are fully supported by the original disclosure. The filing date accorded the application would be (A) February 3, 1994 (B) February 25, 1994 (C) March 30, 1994 (D).September 20, 1994 (E) November 2, During a reexamination proceeding,. you propose to amend claim 1 as follows: l.(amended) A [knife] cutting means having a handle portion and a [serrated] blade portion. All changes in the claim are fully supported by the original patent disclosure. Will the claim as amended be rejected by the. examiner? (A) No, because the claim has been properly amended in accordance with PTO rules. (B) No, because the amendment does not introduce new matter into the claim. (C) No, because the claim is fully supported by the original patent disclosure. (D) Yes, because the amendment broadens the scope of the claim of the patent. (E) Yes, because deletion of the tenns "knife" and "serrated" are improper since, for purpos~s of reexamination, deletions must be enclosed by parenthesis, not brackets. 19

20 48. You are prosecuting a design patent application on behalf of Smith for a running shoe. After receiving a first Office action rejecting the claim in Smith's application over prior art, you requested an interview with the examiner. Smith wants to participate in the interview. At the interview, Smith would like to show a video tape which demonstrates the manufacturing process involved in making the claimed running shoe. Smith tells you that the tape is shown to salesmen to learn how the shoe is made. He says, "t has been a very effective training tool for our sales staff because sales have doubled since using the tape." The actual finished product which is the subject of the design patent is only shown briefly at the end of the 45 minute tape. Which of the following would be the best advice to give Smith regarding whether the content of the tape should be viewed by the examiner? (A) Advise Smith thathaving the examiner view the tape is a great idea as it will give the examiner a much better understanding of the complexity of the technology of making running shoes. (B) Advise Smith that the tape should be viewed by the examiner, however, viewing the tape will require written approval from the Director of the design group. (C) Advise Smith that the tape should be viewed by the examiner, but there will be a fee for using PTO video tape viewing equipment and the examiner must agree to viewing the tape. (D) Advise Smith that the tape should not be viewed by the examiner because the content of the tape has no bearing on the rejection and will not advance the prosecution of the design application. (E) Advise Smith that the tape should not be viewed by the examiner at this time because it is better to wait until you rec~ive a final rejection in the design application. 49. Which of the following, if any, is required for a petition to make special in order to advance the examination based on the health of the patent applicant? (A) An affidavit or declaration that the applicant has caused to be made a careful and thorough search of the prior art. (B) Copies of each of the references deemed most closely related to the subject matter of the claims. (C) A detailed discussion of the references pointing out how the claimed subject matter is distinguishable over the references. (D) Payment of a petition fee. (E) None of the above. 50. On January 4, 1994, you filed a U.S. national patent appjication under 35 U.S.C. 111 for your client. The application issued as a U.S. patent on September 20, Today, November 2, 1994, your client came to you and indicated that he was interested in obtaining patent protection in several foreign countries. Given the options below, which one is the best way to proceed? (A) File a PCT application before the expiration of 12 months from the U.S. filing date and claim foreign priority based upon the U.S. application. (B) Advise your client that the U.S. patent is a bar to foreign filings. (C) Petition for an extension of tin:te for filing a new PCT application. (D) File a PCT application and submit a statutory disclaimer of the claims in the U.S. patent indicating that it is being replaced by a PCT application. (E) File directly in each desired foreign country and do not claim foreign priority. 20

21 Test Number Ol4A Test Series 294 NAME U.S. DEPARTMENT OF COMMERCE UNTED STATES PATENT AND TRADEMARK OFFCE REGSTRATON EXAMNATON FOR PATENT ATTORNEYS AND AGENTS November 2, 1994 Afternoon Section (100 Points) Time: 3 Hours DRECTONS This section of the examination is a CLOSED book examination. You MAY NOT use any books, notes, or other written materials during this section of the examination. This section of the examination is ~ted to drafting one or more claims. You must write your answers in the Answer Book provided by th~ test administrator. When writing your answers in the Answer Book, USE BOTH SDES OF EACH PAGE and DO NOT SKP ANY PAGES. You are pennitted to use only one Answer Book in which to write your answers. Your answers must confonn to the policy, practice and procedure which must, shall or should be followed in accordance with the patent statutes, PTO rules of practice and procedure, and the Manual of Patent Examining Procedure (MPEP). Do not assume any additional facts not given in the disclosures of the inventions. You may write anywhere on this examination booklet. However, do not remove any pages from the booklet. Only answers recorded in your Answer Book will be graded. YOU MUST OBTAN A SCORE OFA T LEAST 70 PONTS TO PASS THS SECfiON OF THE REGSTRATON EXAMNATON. DO NOT TURN THS PAGE UNTL YOU ARE NSTRUCTED TO CHECK THE CONTENTS OF THS EXAMNATON BOOKLET OR TO BEGN THE EXAMNATON

22 DRECTONS: This part is directed to claim drafting and consists of three options: mechanical, chemical and electrical. The mechanical option below is directed to a modular telephone plug and crimping tool, the chemical option (on page 8) is directed to imidazole derivatives, and the electrical option (on page 16) is directed to a chasing circuit. You must select one of the options. l f you select more than one option, only the first option presented in your Answer Book will be graded. The directions for each option follow the fact pattern for each option. MECHANCAL OJYfiON: Modular Telephone Plug and Crimping Tool The present invention relates to a modular plug with an improved strain relief member which is able to secure electrical cables of varying thicknesses. Also the invention relates to a crimping tool for use with the modular plug having the improved strain relief member. THE PROR ART s F G. 2 FG. Referring first to FGS. 1 and 2, prior art modular telephone plug 1 comprises an integral, nonconducting body 2 having an interior chamber (not shown) opening at the: rear end 2a of body 2 for receiving a cable 3.. Jbe cable 3 in<;;.ludes an.outer. insulation.4 surro~nding a p~urality of wires comprising individually insulated conductors. For simplicity, FGS. 1 and 2 depict Just a single wire 5 comprising a conductor 10 surrounded by insulation 9. Body 2 includes manually depressible locking rab 2b for locking plug 1 into a receptacle (not shown), front end 2c having a plurality of dividers 6 with smooth walls 6a forming slots, each slot 6b being sized to receive a wire 5 and a contact 7, and cable strain relief member 2d. Plug 1 is provided with a plurality of contacts, each contact 7 being frictionally held between each pair of smooth walls 6a forming each slot 6b at the upper portion of each slot 6b, thereby permitting the plurality of wires of cable 3 received by plug 1 to be allocated one wire 5 to each slot 6b at the lower portion of each slot 6b directly beneath each respective contact 7. The plurality of contacts frictionally held in the slots form a subassembly with body 2 for insertion into a crimping tool as described below. Each contact 7 has two claws 8 which penetrate through insulation 9 of wire 5, contacting the upper surface of inner conductor 10, establishing an electrical connection. Since claws 8 have very sharp tips to penetrate through insulation 9, they are also apt to damage or distort conductor 0, causing a circuit break within plug 1. Further, each contact 7 is likely to separate, with time, from the smooth walls 6a of dividers 6 as a result of low frictional binding force between them. 2

23 A cross section of the prior art strain relief member 2d is shown in FG. 3A. lt includes a hinge portion 11, a frangible portion 12, and a locking tooth 13. FG. 3B depicts a cross section of the prior art strain relief member 2d showing engagement of the cable 3 by the strain relief member 2d after crimping. Locking tooth 13 latches under a locking surface 14 to securely hold the cable 3 within the interior chamber of body 2. This prior art strain relief member makes no allowance for varying sizes of cable. f02 FG. JA- FG. 3 B 106 FG.4 An example of a conventional modular plug crimping tool is shown in FG. 4. This tool comprises an upper member 102 and a lower member 103, having front ends pivotably connected to each other by a pivot pin 106, and having a restoring spring 113 biasing members 102 and 103 apart from each other. ntegral extensions of the members 102 and 103 form respective hand levers 102a and 103a. A pressing portion 116 and a guide post 115 are integrally formed on and protrude downward from the underside of upper member 102. Guide post 115, in cooperation with guide holes 114 provided in the upper side of lower member 103 is used to guide the relative movement.of upper member 102 toward or away from lower member 103. A receiving groove 104 in lower member 103 is vertically aligned with pressing portion 116, and opens from one side surface of lower member 103 to removably receive an interchangeable crimping anvil 105, which is properly configured for receiving plug 1. Two through holes 109 and 110 are formed in a top wall104a of receiving groove 104 for guiding vertical movement of a strain relief crimping punch 107 and a contact crimping punch 108, which are installed partially rhrough the through holes 109 and 110, respectively.. Both of these crimping punches 107 and 108 are supported by a plate spring 111 secured to the lower member 103 and are vertically aligned with pressing portion 116. Thus, strain relief crimping punch 107 is pushed downward by pressing portion 116 when hand levers 102a and 103a are squeezed together. Upper member 102 is moved toward lower 3

24 member 103, forcing strain relief member 2d of modular plug 1 downward, securing cable 3 within body 2 by means of a lower portion of strain relief member 2d engaging outer insulation 4. Contact crimping punch 108 is pushed downward in a similar manner, forcing each contact 7 downward so as to cut through insulation 9 of each wire 5. Electrical connections are thus formed between each contact 7 and its respective wire conductor 10. Once the downward operating force with respect to hand lever 02a is released, upper member 102 will restore to its original position under the action of restoring spring 113 and crimping punches 107 and 108 will also return to their original position under the action of plate spring 111 for subsequent use. The prior art crimping tool, while allowing replacement of the crimping anvil and the crimping punches, requires two separate crimping punches, which is unnecessary because the relative size and shape of the two punches are always fixed, i.e., each contact punch configuration always has the same corresponding strain relief punch configuration. Also, a completely separate cable stripping tool is required to prepare r he end of the cable for modular plug attachment. n order to overcome the disadvantages of the prior art, the present invention involves a modular plug with improved contacts that ensure reliable contact with the individually insulated conductors of a cable, as well as a cable strain relief member which accepts different sizes of cable. The invention also involves a crimping tool for a modular plug which has a crimping punch with integrally fonned contact and strain relief punch portions, and also has means for effecting stripping and trimming of the cable end before its tenninal connection to the modular plug. OBJECTS OF TilE NVENTON t is a primary object of the invention to provide a modular telephone plug characterized by improved conductor contacting reliability. This is accomplished by employing contacts with twisted tips for capturing respective wire conductors in contrast to the prior art contacts with tips that directly impinge on the wire conductors. Another object of the invention is that the strain relief member is adapted to grip a variety of cables having different sizes. A further object of the invention is to provide a modular plug crimping tool with a pair of body parts connected by a flexible member and a hand lever pivotally connected to one of the body parts for actuating the tool. A still further object of the invention is to provide a roller, mounted on the pivot pin of the hand lever, for engaging the crimping punch. Another object of the invention is that the crimping punch comprise contact and strain relief punch portions which are integral. t is still a further object of the invention to provide a guide pin to assist in maintaining the body parts in substantially parallel alignment during use. t i$ still a further object of rhe invention to provide a crimping punch and a crimping anvil, both of which are interchangeable.with crimping punches and anvils corresponding to different configurations of modular plugs. THE NVENTON Referring to FG. 5, the modular telephone plug 21 of the invention comprises a body 22 which must be nonconducting and integrally molded from a thermoplastic material. Body 22 has an interior chamber 22e open at rear end 22a, and a front end 22c. Rear end 22a receives cable 23, which has outer insulation 24 encasing a plurality of wires comprising individually insulated conductors. For simplicity, FGS. 5 and 6 depict just a single wire 25 comprising a conductor 30 surrounded by insulation 29. An improved strain relief member 22d having a means for gripping different sizes of cable 23 is provided on an upper surface of body 22 adjacent rear end 22a. A plurality of dividers 26 forming a plurality of pairs of confronting side walls 26a is provided on the upper surface of body 22 adjacent front end 22c. 4

25 -----~~ -- --~--~---~ ~- A plurality of contacts, one of which being shown at 27, is provided between the pairs of confronting side walls 26a, each contact 27 being frictionally held between each pair of confronting side walls 26a. Dividers 26 are critical since they provide confronting side walls 26a, each pair defining a slot 26b which is sized to receive, at a lower portion thereof, the end of a respective wire 25, and also to receive ' at an upper portion thereof, a respective contact 27. Now referring to FG. 6, the contact 27 of the invention has two claws 28 having a pair of oppositely inclined surfaces which can closely clamp the inner conductor 30 for electrical contact without penetration of conductor 30 when inserted through insulation 29 of wire 25. Thus, the damage to conductor 30 and the risk of a circuit break is minimized. A tang 28a is between claws 28 to pierce insulation 29 and enhance the association of contact 27 with conductor 30. Further, two or more upwardly inclined projecting detents 27a are defined at the median position of each contact 27 to frictionally contact respective side walls 26a of dividers 26, thereby resisting disengagement of each contact 27 from modular plug ~ FG. 6 Z3 JO FG. 7 B FGS. 7 A and 7B are cross-sectional depictions of strain. relief member 22d "before" and "after" crimping, respectively. Strain relief member 22d includes a hinge portion 31, a frangible portion 32, and a plurality of locking ratchet teeth 33. These teeth latch against locking surface 34 when frangible portion 32 is broken during crimping of the plug body 22 onto cable 23, as described below. t is readily apparent that the plurality of locking ratchet teeth 33 permits different sizes of cable 23 to be gripped by plug 22. 5

26 .J40 F/&.8 F/6.9 The modular plug crimping tool of the invention is illustrated in FGS. 8 and 9. First and second body parts 310 and 312 are _generally parallel to one another. Body parts 310 and 312 are connected at one end by a flexible U-shaped portion 314 which maintains them in relative positions. Midway along the lengths of body parts' 310 and 312, a guide pin 316 ext~nds in aligned bores in body parts 310 and 312 so as to assist in maintaining them generally parallel to one another in their relative movement. A hand lever 340 is provided with a roller 342 mounted on a first pivot: pin 341 forming a pivotal connection with first body part 310. Guide pin 316 is fixed in body part 312. by means of a screw head 336 at one end of pin 316, and is fulcrumed by a second pivot pin 338 to hand lever 340 at the opposite end of pin 316. Cap 343 may be attached to hand lever 340 to cover pin 316. Spring 350 is trapped between body parts 310 and 312 to provide a return action. An interchangeable crimping punch 344 is removably seated in first body part 310 and is guided relative to an interchangeable crimping anvil346 removably seated in second body part 312. FG. 9 is a typical cross-sectional configuration for the punch. 344 and anvil 346 designed to suit a particular cable rennination operation. The crimping punch 344 and crimping anvil 346 may be changed by replacing them with a punch and anvil appropriate to the modular plug being terminally connected. Crimping punch 344 must include an integral contact punch portion 344a for contacting the top surfaces of each contact 27, and an integral strain relief punch portion 344b for contacting.the strain relief member 22d. First and second stripping blades 318 and 320 are provided at the free ends of body parts 310 and 312, respectively, i.e., the ends opposite to flexible portion 314, for the purpose of stripping the outer insulation 24 from the end of cable 23 prior to its terminal connection to plug 21. The design of stripping blades 318 and 320 is selected to permit complete penetration of outer insulation 24 without damaging the plurality of wires encased in cable 23 when body parts 310 and 312 are squeezed together and the tool is in a closed position. Stripping blades 318 and 320 are readily detachable for replacement with different ones appropriate to the desired cable. Thus, in FG. 8, blade 318 is held in position by 6

27 screw 322, and blade 320 is held in position by screw 324. Screw 322 is located in a slot 326 so that rhe position of blade 318 can be adjusted. Blade 320 can be spaced appropriately on body part 312 by the use of packing washers located behind it. Between stripping blades 318 and 320 and guide pin 316 is one or more severing blades 328. n the illustrated embodiment, severing blade 328 and severing anvil 330 are held in cooperating relationship by screws 332 and 334, respectively, extending through slots in their respective body parts. n operation, cable 23 is inserted between body parts 310 and 312 from their free ends towards pin 316. The tool is then grasped and squeezed in such manner that hand lever 340 moves in the direction of arrow A towards the integral handle formed on second body part 312, thereby moving the respective stripping and severing blades to their functional position, a position obtained when the tool is in the closed position. The cable end is then pulled away from the tool while the tool is in the closed position, r hereby stripping insulation 24 from the cable end. The stripped cable end is then inserted into the interior chamber 22e of plug 21 through rear end 22a, and the resulting assembly is inserted into crimping anvil 346. Hand lever 340 is then operated for a second time in the same manner as when performing the severing and stripping operation. This time, however, pressure is applied by means of roller 342 abutting crimping punch 344. Crimping punch 344 cooperates with crimping anvil 346 to rerminally connect the modular plug to the cable. NSTRUCTONS FOR THE MECHANCAL OPTON: Draft FOUR (4) CLAMS: a single independent claim and a single dependent claim to the modular plug, and a single independent claim and a single dependent claim to the modular plug crimping tool. Claim 1 must be the broadest claim for a modular plug which defines the invention as set forth in the OBJEC'S OF THE NVENTON, which includes any critical/imitations, and which is not anticipated by the prior art. One dependent claim (claim 2) must cover the strain relief member shown in FG. 7 and include the hinge portion, the frangible portion, the locking ratchet teetfz, and the locking surface. The independent claim (claim 3) for the crimping tool must be the broadest claim which defines the invention as set forth in the OBJECTS OF THE NVENTON, which includes any critical/imitations, and which is not anticipated by the prior art. The dependent claim (claim 4) for the crimping tool must include the first and s.econd stripping blades, the severing blade, and the severing anvil. ndependent claims 1 and 3 are worth 40 points each, and each dependent claim is worth 10 points. You may not rely on inherency to support language having no literal antecedent basis, nor be your own lexicographer to name or rename elements or components of the invention. Any method claim or Jepson (37 C.C.R (e)) claim or any claim anticipated by the prior art will receive no credit. Points will be deducted for ( 1) claiming subject matter not within the scope of the invention disclosed above, (2) using claim language which is vague or indefinite, (3) using claim language which does not have literal antecedent basis or which does not positively set forth each element or component, (4) failing to interrelate or incorrectly interrelating the elements or components set forth in your claims, (5) claiming unnecessary limitations in independent claims 1 or 3, (6) presenting a claim that defines an inoperative invention or is anticipated by the prior art, (7) misspelled words or using poor grammar, and (8) failing to follow these directions. 7

28 CHEMCAL OPTON: midazole Derivatives The present invention relates to imidazole derivative compounds which are herbicidally active, to agrochemical compositions containing these compounds, and to a method for controlling weeds, preferably for selectively controlling weeds in crops. The invention also relates to a process for the preparation of imidazole derivatives and imidazole intermediates. The following Table sets forth some of the compounds of the invention having formula. ~J-L () 0 Compound Rt R2 R3 R4 L 1 H H H H C0 2 CH 3 2 OCH 3 H H Cl C0 2 CH 3 3 OCH 3 CH 3 H N0 2 C0 2 CH 3 4 CH 3 CH 3 OCH 3 CN C0 2 CH 3 5 CH=CH 2 H H CH 3 C0 2 CH 3 6 OCH 3 H H Cl CONHCH 3 7 CH 3 H H CH 3 CONHCH 3 8 H H H H CONHCH 3 9 CH=CH 2 CH 3 OCH 3 CN CONHCH 3 10 H H OCH 3 N0 2 CONHCH 3 11 CH 3 CH 3 H N0 2 COOH 12 H CH 3 H CH 3 COOH 13 CH=CH 2 H OCH 3 CN COOH 14 H H H H COOH 15 OCH 3 H H Cl COOH 16 CH 3 CH 3 OCH 3 CN CONH 2 17 H H H H CONH 2 18 CH=CH 2 CH 3 OCH 3 N0 2 CONH 2 19 OCH 3 H H Cl CONH 2 20 H CH 3 OCH 3 CH 3 CONH 2 Compounds 2, 6, 15 and 19 in the Table are the preferred compounds. 8

29 The following imidazole derivative compounds are also part of this invention and may be used in the same manner as formula.,, ~ L ""N/ ~J-L ~J-L Rl R2 R3 0 0 ~J-L Rl R R 1, R 2, R 3, R 4 and L are the same substituents as shown in the Table on page 8 for fom1ula. t is understood that R 1 can be hydrogen, alkyl, alkoxy or alkenyl; R 2 can be hydrogen or an alkyl group; and R 3 can be hydrogen or an alkoxy group. The alkyl groups must be limited to any straight chain or branched alkyl group having one to four carbons, such as methyl, ethyl, n-propyl, isopropyl and the four butyl isomers. The alkoxy group must be limited to groups having one to four carbon atoms, for example, methoxy, ethoxy, propoxy, isopropoxy and the four butoxy isomers. Only alkenyl groups having two to four carbon atoms are within the scope of the invention, for example, vinyl, 1-methylvinyl, 3-butenyl, 2-butenyl, 1-butenyl, 1-propenyl, allyl, methallyl or 2-methyl-1-propenyl, with vinyl, allyl and methallyl being preferred. Although chlorine is a preferred substituent for R 4, other halogens can be substituted for chlorine, namely fluorine, bromine and iodine. 9

30 The imidazole compounds of the invention have strong herbicidal properties which allow the control of weeds. This property gains importance by the fact that some crops are not damaged by treatment with the compounds of the invention or that very slight damage to a crop occurs only when treated with the compounds at very high dosages. Consequently, the compounds are valuable selective herbicides in crops of useful plants, such as sugar beets, rape, soybeans, cotton, cereals, rice, and maize. A wide range of application rates can be used, particularly in rice crops, especially when the rice crops are transplantec and the compounds of the invention are applied after transplantation. n maize crops, selective herbicidal action is observed both at preemergence and at post emergence treatment. The imidazole compounds of the invention are normally applied at application rates of from 0.01 kg to 5.0 kg of the imidazole compound per hectare. Where environmental conditions require it, the application rates may in suitable cases exceed the limits indicated above, i.e. in any amount which is herbicidally effective. The preferred application rates are between 0.05 kg and 1.0 kg of the imidazole compound per hectare. The invention also relates to herbicidal compositions that contain the imidazole compounds of the invention. The imidazole compounds can be formulated into emulsifiable concentrates, directly sprayable or dilutable solutions, dilute emulsions, wettable powers, dusts, granulates and also encapsulations in, for example, polymer substances. As is common with the nature of herbicidal compositions, the methods of application, such as spraying, atomizing, dusting, scattering or pouring, are chosen in accordance with the intended objectives and the prevailing circumstances. The following imidazole derivative compounds of the instant invention ~J-L ~J-L N 0 0 JLL "'N

31 are prepared by first synthesizing intermediate compounds of formulas or ~J-L (T) () and then subjecting the intermediate compounds to a rearrangement. Substituents R\ R 2, R 3, R 4 and L have the same meanings as set forth above. The following example illustrates the method of synthesizing the intermediate compounds of formulas li or. The starting material is an amine having formula V NH 2 (V) OH fn formula N, the ring represents a benzene ring or a cyclohexane ring. Substituents R\ R 2, R 3, and R 4 in formula V have the same meanings as set forth above. For purposes of this example, R 1, R 2, R 3, and R 4 are hydrogen in formula V. An amine having formula N, wherein R 1, R 2, R 3, and R 4 are hydrogen, is condensed in a conventional manne_r by reacting the amine in a polar solvent, such as dimethylformamide or dimethylacetamide, at a temperature between 20 C. to go C. with a N-cyanoimidoformic acid ester (e.g. CH 3-0-CH=N-CN or C:zH 5-0-CH=N-CN). The reaction produces a N-cyanoformamidine compound of formula V CN-N=CH-NH (V) 11 OH

32 n the presence of a base, the compound of formula V is alkylated with a haloacetic acid. having the general formula Hal-CH 2 -L where L has the same meaning as set forth above and Hal is chlorine, bromine or iodine. n this example, a chloroacetic acid methylester, Cl-CH 2 -COOCH 3, is reacted with rhe compound of formula V in the presence of an alkali metal hydroxide or an alkali metal carbonate, ro form a compound of formula V (V) i J The reaction is carried out in a polar solvent, such as those previously mentioned. The reaction must be in the presence of a base to prevent the formation of a.salt. The reaction temperature is generally from o C. to so C., preferably from 10 C. to go C. The compound of formula V is heated with an alkali metal alcoholate in the presence of a base in a polar solvent, such as dimethyl sulfoxide, to form a 4-aminoimidazole compound of formula V (V) For cyclization of the compound of formula V to occur, the reaction must be in a polar solvent and the reaction temperature must be between 60. C.. and 140. C. The 4-aminoimidazole of formula V is rhen treated with tertiary butyl nitrate in tetrahydrofuran, dioxane or dimethylformamide to form the following intermediate compound which is within the scope of formulas or ill ~)-cooc~ 12 OH

33 The intermediate compounds of formulas or can be converted to one of two imidazole derivative forms, the imidazole derivative compound of formula X or the imidazole derivative compound of formula X, as illustrated below. ~JLL "'N Rt R2 ( or ) ~ ) l OH ~)-L Rt Rz (V) (X) 0 ~ ~)-L. (X) R Rz ~OH > 0 (X) } l' The intermediate compound or is oxidized by conventional methods, for example by heating the compound in aqueous potassium permanganate or by dehydrogenation over copper at 200" C. to 40<r C. to form the compound of formula V. The resultant imidazole derivative compound of formula V. can be converted to the imidazole derivative compound of formula X by treating the compound of formula V in peracid, such as acetic peracid. The resultant compound of formula VH also can be converted to the imidazole derivative compound of formula X if the compound of formula V is. reacted with hydroxylamine in the presence of an acid, such as sulfuric acid, to form an oxime (formula X) which is then converted to the imidazole derivative compound of formula X by the action of an acid 13

34 PROR ART t is known in the art to prepare herbicidally active imidazole derivatives and salts thereof according to the following process. An amine, Q-NH 2, is reacted with a haloacetic ester, haloacetic amide or haloacetic acid in the presence of a base to form Q-NH 2 -CH 2 -COR 5 which is then reacted with formic acid in the presence of acetic anhydride to form formula X 0 CH-N-CH -COR 5 2 Q (XD Substituent R 5 is an amine, alkoxy, alkylamine, or hydroxy group. Substituent Q is or 0 where G is oxygen, sulfur, or NH. The substituents R 6 and R 7 may be the same or different, and each may be hydrogen, alkyl, alkenyl or alkoxy. Substituents R 8 and R 9 may be. the same or. different and each may be hydrogen, halogen, alkyl, cyano, nitro, amino or alkoxy. The compound of formula Xll is then condensed with a C 1 -C 4 alkyl ester of formic acid in sodium hydroxide to form a compound of formula X /ON a 0 CH f CH-N-C-COR 5 Q (X) The compound of formula X is treated with an alkali metal isothiocyanate in the presence of an acid to obtain a compound of formula XV SH~J-COR 5 Q (XV) 14

35 1---- The compound of formula XV is then converted to an imidazole compound of formula XV ~J-COR 5 Q (XV) by reaction with Raney-nickel in the presence of a lower aliphatic alcohol, preferably ethanol, at a temperature between 40 C. to so C. The imidazole compounds of formula XV and their salts have herbicidal properties without destroying the crops. These compounds are useful for the controlling weeds in crops of useful plants such as cereals, corn, tobacco, cotton, horse beans, rape, rice, sunflowers, and turf. The active ingredient, formula XV, is usually applied at an application rate of kg to 6.0 kg of active ingredient per hectare to be herbicidally effective. NSTRUCTONS FOR THE CHEMCAL OPTON: Draft FOUR (4) CLAMS. Claim 1 must be an independent claim and must be directed to the method of making the intermediate imidazole compounds having formulas and ll starting with formula V amines. Claim 2 must be an independent claim and must be directed to the method of preparing only the preferred imidazole compounds set forth in the Table on page 8. Claim 3 must be directed to the novel herbicidal imidazole derivative compounds of the invention. Claim 4 must be directed to the method of using the imidazole derivative compounds of the invention. You must present the broadest claims which are not anticipated by the prior art, and which are inclusive of the preferred embodiments. Your claims must include generic formulas or expressions within the scope of the disclosure whenever possible. Claims 1 and 2 must include reaction conditions and ingredients which are not descr)bed as being conventional. Claims 1 and 3 are each worth 30 points and Claims 2 and 4 are each worth 20 points. You may not be your own lexicographer to name or rename components or materials already named. A product-by-process claim or Jepson claim will receive no credit. Any claim anticipated by the prior art will receive no credit. Points will be deducted for ( 1) claiming subject matter not within the scope of the invention disclosed above; (2) using language which is vague or indefinite; (3) using claim language which does not have antecedent basis or language which does not positively set forth the requisite parts, components, or materials; (4) using claim language directed to means or using means plus function language; (5) reciting process or method step(s) in claim 3; (6) failing to interrelate or incorrectly interrelating the steps, components, or materials in the manner disclosed and shown above; (7) claiming unnecessary limitations; (8) presenting a claim that is incomplete or that defines an inoperative invention; (9) misspelling words or using poor grammar; and ( 10) failing to follow these directions. 15

36 ELECTRCAL OPTON: CMOS Chaser Light Display Devices The present invention relates to chaser light display devices which use "lamps" (either light-emitting diodes (LED) or incandescent bulbs) for chaser light systems which sequentially actuate the lamps for merchandising and decorative displays. The earliest chaser light display devices relied on mechanical contact of brushes driven by ganged, motorized rotary switches to produce visual effects of a pattern of light in motion on the marquees of movie theaters. Modem chaser light display devices use integrated circuits (C) in which on/off switching of lamps is electronically controlled. To date, these modem display devices have been perceived to move in an only one direction and are only used for small scale applications with low total light output. n this disclosure, the word "display" refers to all lamps used in a chaser light display device, while the word "array" refers to lamps controlled by any one C. t is known that one can control the rate at which an array of lamps which are flashed (rapidly turned on and turned off) to produce the perception of light in repetitive motion, moving at a controlled speed. Typically, flash repetition rates up to sixty (60) times per second are used. When a lamp is flashed at a rate exceeding 60 times a second, the flickering light is virtually undetectable to the human eye. Chaser light display devices are capable of flashing dozens of LEDs at relatively high repetition rates with very low power consumption because they use complementary metal oxide semi-conductor (CMOS) lcs which have moderately high speed and high input impedance. CMOS Cs are so superior to any. other means of electronically controlling LED chaser lights that they are now exclusively used in this application. TilE PROR ART AC POWER SOURCE 1 ~2 /4 5 DC POWER SUPPLY _L - Vss ~ R1 R2 R3 8 8 R4 9 8 C1 8 OF LED'S 8 C3 8 8 G 8 9 G 1'\ Voo DSPLAY COUNTER/DECODER Voo AST Vss C2 MULTVBRATOR Q CLK RCC C Rf\ C4 s/e~ 7 3 Fig. 1 16

37 ._, 1 Throughout the discussion of prior art and also of the present invention, reference will be made to pins V 00, Yss, AST, Q, RCC, C, R, ENA, ENB, RSTA, RSTB, CLKA, CLKB, Q3, Q4, CLK, U/D, N and PLS. This pin nomenclature is part of an industry standard which identifies the function and/or position of certain pins on Cs discussed below. The Cs used in chaser light display devices in Figs. 1, 3 and 5 include other pins which are not discussed. Some display device circuits use C pins not discussed in this disclosure and some display device circuits do not use them. fn the prior art, an AC power source 1 supplies power to a DC power supply 2 which provides bias to the components of the prior art chaser light display device as illustrated in Fig. 1. The device has a basic repetition rate set by an astable multi-vibrator 3 generating an output timing signal at pin Q. This signal drives a counter/decoder 4 which includes dual binary to dual one-of-four decoders. The counter/decoder provides eight decoded output signals at the decoder outputs Rl to R4 and Cl to C4. The signal from each of the R outputs is inverted within the C. The R outputs are applied to row inputs in an array of LEDs labeled Rl to R4 respectively in Fig. 2. The C outputs are applied to column inputs of the same LED array labeled C1 to C4 respectively in Fig. 2, C outputs being switched after row R4 is flashed. The decoded output signals sequentially flash single LEDs in the LED array as follows Dl, D2, D3, D4, D5, D6, D7, D8, D9, D10, Dll, D12, D13, D14, D15, 016. After the LED, D 16, has been switched on and off; the sequence starts anew at D 1. Fig.2 shows the array of 16 LEDs, D1 to D16, used in the display of Fig. 1. C1 C2 Fig. 2 C3 C4 These LEDs have been sequentially arranged around the border of the display 5. Although the number of LEDs controlled by the counter/decoder 4 is illustrated and discussed as an array of 16 the output of this same C may alternatively be configured to operate a chaser light display device sequentially lighting every third, forth, sixth, eighth, ninth, twelveth or sixteenth lamp as is well known in the prior art. Chaser light sequences of 4, 8, 12, or 16 are preferred for (4 sided) rectangular displays. Lastly, although the border of the display in Fig. 1 is illustrated as one sequence of 16 LEDs, multiples of the selected number of lamps in a sequence can be used to increase the number of LEDs around the border, either to.increase the length of the border or its width or both. The prior art device increases border length or width by directing the output timing signal at pin Q to the CLK input pin of each of two or more counter/decoders, where each counter/decoder has its own LED array to form part of the display border. This prior art application of the display device to make enlarged arrays is not illustrated. The astable multi vibrator 3 is made to operate in a free running mode with both the V 00 input, the astable input pin (AST) and the positive voltage output of DC power supply 2 arranged as shown in Fig. 1. n both the prior art device and in the invention discussed below, both the output of DC power supply 2 which is not the positive voltage output and all the Yss pins are always grounded. The LED flash repetition rate depends on an external capacitor 6 which is between pin C and pin RCC and an external variable resistor 7 between pin Rand pin RCC. 17

38 The output timing signal at pin Q is fed to the clock input (CLK) pin of counter/decoder 4 causing the counter/decoder to count. With the pins of the counter/decoder in Fig. 1 as shown, the counter/decoder only counts in one direction. With this prior art display device, the light is perceived to be moving in only one direction which may become monotonous. The prior art display device uses extra counter/decoders to increase the number of lamps in the display device. The use of more C counter/decoders for large arrays significantly increases the cost and complexity for display devices using large numbers of lamps. Further, the prior art display device operates, even when no-one is present, and must be manually started and turned off. THE NVENTON The invention is directed to two embodiments: the LED embodiment and the musical integrated circuit embodiment. n the LED embodiment of this invention, limitations of the prior art chaser light display devices are overcome. First, the direction of the perceived light movement is periodically reversed. Second, the circuit is simplified and uses fewer counter/decoder Cs for chaser light display devices controlling large LED arrays. Third, this embodiment employs a control device, associated with a power supply, to remotely and automatically tum itself and the LED array off when no one is present and tum itself and the LED array on when someone comes into the vicinity of the display device. n the musical integrated circuit embodiment of this invention, extension cords with multiple sockets for incandescent Christmas tree lamps (called, "strings") may be controlled directly from an AC power source. These strings sequentially flash,- one string at a time, synchronously with a rhythm which is pre-stored in a musical integrated circuit. n the musical integrated circuit embodiment described below, lamps requiring about 100 watts can be controlled on each of several strings. CMOS Cs lamp power output to LEDs, in the LED embodiment, is much less than 100 watts. n the LED embodiment of the invention, one configuration is illustrated in Fig. 3, with Cs 11, 12, 13A, 138 and 13C. An astable multivibrator 11 has an output timing signal at pin Q which is an input to a binary up-counter 12. The repetition rate of the. astable multi vibrator is controlled by a capacitor 18 and a variable resistor 19 as explained in the discussion of the prior art. The signal at pin Q of the astable multi vibrator 11 is also a simultaneous input to auto-reverse counter/decoders 13A, 13B and 13C. The binary up-counter 12 is used as a divider in this circuit. The Enable A pin (ENA) of the binary upcounter 12 is joined to the positive voltage pin V 00 which receives positive voltage from the DC power supply. The clock A input pin (CLKA) of the binary up-counter 12 is driven by the output timing signal at the Q pin of the astable multivibrator 11. The pin at Q3 and the pin for Enable B, (ENB), both in the binary up-counter, are electrically at a common potential. The pin for clock B, (CLKB), and the A and B reset input pins, RSTA and RSTB, respectively, and the Vss pin are grounded. With this configuration, the timing output at the Q4 pin will change its binary state at 1/128th the frequency of the output timing signal at the Q pin from the astable multivibrator 11. n this manner, the binary upcounter 12 will switch the direction of the count every 128 cycles of the output timing signal at the Q pin from the astable multi vibrator 11. Because of industrial standardization, all commercially available CMOS C up-counters will function as the divider circuit in this application only at the 1 to 128 ratio. The auto-reverse counter/decoders 13A, 138 and 13C, shown in Fig. 3, include four binary R decoder outputs as described for the prior art device. The output C is invarient. The output timing signal at the Q pin of astable multi vibrator 11 is fed into the clock input (CLK) of each auto-reverse counter/decoder. Upon receipt of the output.timing signal, the auto-reverse counter/decoder begins counting as described for the prior art display device. When the change of state of the timing output from the Q4 pin is received by the U/D input pin of the auto-reverse counter/decoder, the auto-reverse counter/decoder 18