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

Transcription

1 Test Number 014 Test Series 193 NAME U.S. DEPARTMENT OF COMMERCE UNITED STATES PATENT AND TRADEMARK OFFICE REGISTRATION EXAMINATION FOR PATENT ATTORNEYS AND AGENTS April21, 1993 Morning Section (1 00 Points) Time: 3 Hours DIRECTIONS 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. If 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 SECTION 1 of the Answer Sheet which is 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 mark within the circle. Erase completely all marks except your answer. Stray marks may be counted as answers. No points 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 additional facts not presented in the questions. The most correct answer is the policy, practice and procedure which must, shall or should be followed in accordance with the patent statutes, the PTO niles of practice and procedure, and the Manual of Patent Examining Procedure (MPEP), unless modified by a subsequent court decision or a notice in the Official Gazette. There is only one most correct answer to each question. Where choices (A) through (D) are correct and the last choice is "All of the above", the grouped answer will be the most correct answer. Where a question includes a statement with a blank or ends with a colop, 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 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 Section 1 of your Answer Sheet will be graded. YOU MUST SCO~ AT LEAST 70 POINTS TO PASS TillS SECTION OF THE REGIS1RATIONEXAMINATION. DO NOT TURN THIS PAGE UNTIL YOU ARE INSTRUCTED TO CHECK THE CONTENTS OF THIS EXAMINATION BOOKLET OR TO BEGIN THE EXAMINATION 1

2 1. Which of the following class or classes of individuals are excluded from applying for a United States patent? (A) Convicts in federal prisons (B) Children (C) Insane persons (D) Current employees of the PTO (E) All of the above. 2. In a decision rendered in an ex parte appeal by the Board of Patent Appeals and Interferences, the Board reversed the examiner's final rejection of all of your client's (appellant) claims and included a statement of a new rejection under 35 U.S.C. 103 of all of the claims. You responded to the decision by submitting an amendment to all the claims and arguing that the claims, as so amended, are unobvious under 35 U.S.C The examiner recognizing that the statement of the new rejection by the Board is binding on the examiner, mailed a Supplemental Examiner's Answer to you stating the reasons why the claims as amended did not overcome the Board's new rejection. Which of the following cours es of action would be the most appropriate action to take on behalf of the client? (A) File, within one mon~h, an appropriate Reply Brief directed to the new points of argument raised in the Supplemental Examiner's Answer. (B) File a new ex parte appeal for a review of the new rejection by the Board in view of the amendment and arguments on behalf of your client. (C) _Petition the Commissioner requesting that the claims be either allowed or rejected by the examiner. (D) File a request for reconsideration of the Board's decision traversing the ne'y rejection. (E) Request that the Board again assume jurisdictio_n of the application so that the basis of the new rejection may again be reviewed in view of the amendment and the examiner's reasons for not allowing the claims as amended. 3. On January 4, 1993, applicant filed a patent application in the PTO with the appropriate filing fee. Informal copies of the drawings were submitted with the application papers. However, due to an oversight, Figure 1 of 12 drawing figures and the executed oath were not included with the application when it was filed. On March 1, 1993, the PTO notified applicant that the application had not been accorded a filing date and that Figure 1 of the drawings and also the oath were missing. On April 1, 1993, the applicant filed in the PTO a formal drawing of Figure 1. Given only the facts set forth above, what filing date will be accorded the patent application? (A) January 4, 1993 (B) April 1, 1993 (C) The date the executed oath is filed in the PTO along with the surcharge for late filing of the oath. (D) The date formal drawings of the remaining eleven figures are filed in the PTO along with a surcharge for late filing of the formal drawings. (E) The date both the executed oath and formal drawings of the remaining ~leven figures are filed in the PTO along with a surcharge for late filing of the oath. 2

3 4. Tinker of Toms River, New Jersey is an employee of the Jersey Division of Heart Pumps Inc. (HPI). Tinker invented a new artificial heart pump that is extremely gentle on the blood cells when pumping human blood. Shortly after the invention was reduced to practice, patent counsel. for HPI began preparing a patent application for filing in the PTO. Genius of San Jose, California, an employee in the California Division of HPI, miniaturized Tinker's pump by the inclusion of special valves developed by Genius. Genius neither met nor discussed his invention with Tinker, but was fully knowledgeable about Tinker's invention through an intracompany memorandum. After patent counsel for HPI received the invention disclosure from Genius, he decided to redraft the Tinker application as a joint application of. both Tinker and Genius because the pumps were closely related to each other. The. new draft of the patent application included disclosure of and claims to the pump Tinker invented a:hd disclosure of and claims to the pump Genius invented. At the time Tinker and Genius made their respective inventions, both inventors were under an obllgation to assign their inventions to HPI. The joint inventorship of the new application was (A) proper even though the joint inventors never physically worked together and/or each inventor did not make a contribution to the subject matter of every claim in the application. (B) proper because Genius and Tinker was were under an obligation to assign their inventions to HPI. (C) improper because Tinker and Genius did not physically work together. (D) improper because the inventions of Tinker and Genius are separate and distinct, and cannot be claimed in the same patent application. (E) improper because both Tinker and Genius did not make equal contributions to the claimed subject matter. 5. An Office action was mailed on Thursday, July 16, 1992 in which all of the claims in a patent application were finally rejected over prior art. The Office action set a three (3) month shortened statutory period for response. A complete response to the final rejection was received in the PTO on Monday, October 19, The response included a proper Notice of Appeal with the appropriate fee. The Notice and response included proper certificates of mailing complying with the requirements of 37 CFR 1.8 and stating that the date of deposit with the U.S. Postal Service was Friday, October 16, The Appeal Brief was prepared in triplicate and mailed to the PTO. The Brief with the appropriate fee was received in the PTO on Monday, December 21, 1992, but did not include a certificate of mailing or a petition and fee for an extension of time. What is the status of the patent application? (A) Pending because the Appeal Brief was timely filed. (B) Pending because the six month statutory period for response to the Office action expires on Friday, January 15, (C) Abandoned because a petition for an extension of time with the appropriate fee was not filed with the Appeal Brief. (D) Abandoned because a surcharge for late filing of the Appeal Brief was not submitted with the Brief. (E) Abandoned because the Appeal Brief did not include a proper certificat~ of mailing. 3

4 6. Which one of the following statements is an incorrect reason for holding a patent application abandoned? (A) Failure to respond within the shortened statutory period of response'--set in an Office action or any extension thereof. (B) Failure to file a complete response to every ground of rejection after the examiner has given applicant further time to file a complete response. (C) Failure to appeal an adverse decision of the Board of Patent Appeals and Interferences affirming the examiner even though the examiner's rejection of some of the claims has been reversed. (D) The patent agent or attorney of record files a letter of express abandonment. (E) All of the above. 7. Blue and Green filed a joint patent application claiming a new crayon composition. A U.S. patent with claims to the new crayon composition was granted to Blue and Green on July 7, The patent, has never been assigned. Blue and Green have come to realize, without any deceptive intent, that Purple, who was an active participant in the inventive effort, should have been included as a joint inventor. Blue, Green and Purple come to you, a registered patent agent, and ask your advice concerning this.matter. Which of the following, if any, would be your best advice to correct the inventorship? (A) Blue should file a reissue application because he is the first named inventor. (B) Blue, Green and Purple should request a reexamination proceeding. (C) Blue and Green should file a petition under 37 CPR 1.48 to correct the inventorship. (D) Blue, Green and Purple should file a petition to the Commissioner with the appropriate petition fee setting forth satisfactory proof of facts regarding the misjoinder of inventorship and requesting a change in the inventorship. (E) None of the above. 8. An inventor filed a design patent application on a new type of sneaker/ On July 2; 1991, a patent on the design application was granted claiming the new sneaker design. On July 1, 1992, the inventor filed a utility patent application in the PTO for the new sneaker. The utility application claimed the sneaker shown in the drawing figures of the utility application. The claim in the design patent was for the sneaker as shown in the figures of the design patent. The examiner rejected the claims in the utility application on the ground of the same invention-type double patenting. The examiner established that the patented design and the claimed utility invention cross read (i.e. claim the same thing). The rejection is (A) not proper because double patenting cannot exist between a design patent and a utility patent application. (B) not proper because the inve1_1tor' s design patent cannot be prior art against his utility patent application. (C) proper because the design patent claim abd the utility patent application claims cross read on one another. (D) proper but can be overcome by filing a terminal disclaimer. (E) proper but can be overcome by filing an antedating affidavit. 4

5 9. Edison and Steinmetz both work for the General Plastics Corporation (GPC) where they experiment with plastics that are completely biogradeable. On May 12, 1992, a U.S. patent was granted to GPC on Edison's biodegradable plastic composition. On June 1, 1992, Steinmetz developed a plastic composition which was an obvious modification of Edison's plastic composition and which was not disclosed in the Edison patent. On June 23, 1992, a patent application assigned to GPC was filed in the PTO on behalf of Steinmetz disclosing and claiming only Steinmetz's new composition. On March 31, 1993, the examiner properly rejected all of the claims in the application over the Edison patent on the gromid of obviousness-type double patenting. At the time Edison and Steinmetz made their respective inventions, each was under an obligation to assign any inventions made during their employment to GPC. Assignments for both the E~ison and Steinmetz patent applications were recorded in the PTO when their respective patent applications were filed. As a registered patent agent and patent advisor for GPC, what is your advice to GPC regarding the rejection? (A) The obviousness-type double patenting rejection may be a proper rejection because the Edison patent discloses the composition claimed in the Steinmetz application. (B) A proper terminal disclaimer should be filed to obviate the rejection. (C) The rejection is improper because a double patenting rejection cannot exist unless the named inventive entities in the patent and in the application are the same.. (D) The Edison patent is disqualified as prior art under the patent statutes. (E) The rejection is improper because the examiner should have made an inquiry under the provisions of 37 CPR 1.78(c). 10. You are a registered practitioner and Malcolm Ketcher has come to you to determine whether he has a patentable invention. He discloses to you that he has developed a composition that can be used as bait for a conventional mouse trap. He explains to you that his composition is so effective that one need only wait minutes to lure mice to the trap. You explain to Ketcher that you cannot give a patentability opinion until after a preliminary search has been made of the prior art. You have a search made and find that Ketcher's composition is a well known wheel bearing lubricant that has been in use for over 20 years. What should be your best advice to Ketcher? (A) File a U.S. patent application with claims directed to a method of using the composition as bait. (B) File a U.S. patent application claiming the composition as a lubricant. (C) File a U.S. patent application with claims directed to a conventional mouse trap. (D) File a U.S. patent application with claims to the composition. (E) Do not file a patent application because the invention is not patentable. 11. Which of the following petitions requires a petition fee? (A) Petition to make special due to applicant's advanced age (over 65 years old). (B) Petition to the Commissioner to waive the rules. (C) Petition to the Commissioner to review a restriction requirement. (D) Petition to the Commissioner to withdraw a holding of abandonment of an application. (E) Petition to the Commissioner to invoke supervisory authority. 5

6 Questions below are based on the following paragraph. Unless otherwise indicated, answer each question independently of all other questions. You are a registered patent agent in Philadelphia, Pennsylvania. On March 5, 1992, Britebulb, a resident of Willow Grove, Pennsylvania, came to your office regarding the filing of a U.S. patent application on a new energy saving light bulb. After your initial meeting, you immediately prepared a utility application. Britebulb reviewed the application and executed the oath on April20, You filed the application in the PTO on April23, ~onsider each of the situations presented in Questions below in view of the above facts as well as the additional facts given in the question, and determine, under which paragraph or paragraphs, if any, of 35 U.S.C. 102, Britebulb would not be entitled to a patent on his invention. 12. In May of 1990 while visitin.g.relatives in Bonn, Germany, Britebulb entered into a contract with a German manufacturing firm to make his new energy saving light bulb. In October of 1'990, over 1000 light bulbs incorporating Brite bulb's invention were sold throughout Europe. (A) 35 U.S.C. 102(a) (B) 35 U.S.C. 102(b) (C) 35 U.S.C. 102(a) and 102(b) (D) 35 U.S.C. 102(c) (E) None of the above. 13. On August 31, 1990, Britebulb and Makeit Corporation, a corporation of New York, signed an agreement by which Britebulb assigned his light bulb invention to Makeit who agreed to further develop the invention. As part of the agreement, Britebulb received a $20,000 payment from Makeit. However, after three months, Makeit exercised a termination clause in the agreement and terminated the agreement withou~ making any effort to further develop the invention. (A) 35 U.S.C. 102(a) (B) 35 U.S.C. 102(b) (C) 35 U.S.C. 102(a) and 102(b) (D) 35 U.S.C. 102(c) (E) None of the above. 14. In the first week of February 1991, in an effort to commercialize his invention, Britebulb mailed over 500 printed brochures to potential manufacturers in Germany. The brochure disclosed every detail of the invention, including a full disclosure of how make and use the energy saving light bulb. Despite his efforts, none of the manufacturers expressed any interest in the invention. (A) 35 U.S.C. 102(a) (B) 35 U.S.C. 102(b) (C) 35 U.S.C. 102(a) and 102(b) (D) 35 U.S.C. 102(c) (E) None of the above. 6

7 15. While visiting his brother in Berlin, Germany in July of 1989, Britebulb first learned about the new energy saving light bulb from his brother's neighbor, Fred Fritz. Fritz disclosed every detail of the new light bulb to Britebulb, including how to make and use the new light bulb. Fritz told Britebulb that he had spent his entire life savings to perfect the new light bulb and that he expected to earn millions from his idea. (A) 35 U.S.C. 102(a) (B) 35 U.S.C. 102( ) (C) 35 U.S.C. 102(g) (D) 35 U.S.C. 102(a) and 102(f) (E) 35 U.S.C. 102(a), 102(f) and 102(g) 16. You filed a patent application in the PTO on behalf of your client on an invention which is not subject to a secrecy order. Seven months after the application is filed, your client informs you that he wants to seek foreign patent protection for his invention. Your client is a U.S. citizen living in Nebraska. Which of the following, if any, must you do before you can file a foreign patent application on your client's invention? (A) Pay the maintenance fee for the U.S. application. (B) File a petition with the Commissioner for a license to file a foreign patent application. (C) File a petition for a retroactive license. (D) Review the filing receipt for the U.S. application to determine if a license to file foreign patent application has been granted. (E) None of the above. 17. The invention relates to. a bicycle having a "shaped handlebar" which provides improved aerodynamic properties for the bicycle. The invention is described in a pending U.S. patent application. The "shaped handlebar" is disclosed as being only "Y" shaped. The application as filed, however, contained only a single claim (claim 1) to the bicycle having a "shaped handlebar". Claim 1 was properly rejected under 35 U.S.C. 102(b) as anticipated by the U.S. patent to Smith which discloses a "V" shaped handlebar on a bicycle. Claim 1 was amended to add a bicycle wheel structure not disclosed or suggested by the Smith patent. Dependent claims 2 and 3 were added to add further limitations to the invention. Claim 2 is dependent from claim 1 and further defined the handlebar as being "Y" shaped. Claim 3 is also dependent from claim 1 and further defined the handlebar as being "U" shaped. Which of the following statements is true? (A) Claim 3 would be unpatentable under the second paragraph of 35 U.S.C. 112 as being indefinite., (B) Claim 2 would be unpatentable under the fourth paragraph of 35 U.S.C. 112 because it does not further limit the subject matter of independent claim 1. (C) Claim 3 would be unpatentable under the first paragraph of 35 U.S.C. 112 since the description requirement is not satisfied. (D) Claim 2 would be unpatentable under 35 U.S.C. 132 as being drawn to new matter. (E) Claims 2 and 3 would be unpatentable under 35 U.S.C. 102(b) as being anticipated by 'the Smith patent. 7

8 18. Bill is a chemist employed by XYZ Phannaceuticals, Inc. to develop new compounds for curing headaches. Bill is obligated to assign all inventions related to his employment to XYZ Phannaceuticals, Inc. During his employment at XYZ, and while working at his home, Bill came up with the idea for -an improved handle design for a hammer which is intended to lessen the shock transmitted to the hand of a user of the hammer. He sent drawings and specifications for the handle to his friend, John, who is the shop foreman employed by RRR Plastic Fabrication Company. Using Bill's drawings and specifications, John made a prototype handle. When Bill went to pick up the handle, John suggested that the handle would also be suitable for use as a sledge hammer handle. A few days later, Bill and his neighbor, Bob, mounted the new handle on a hammer head. Both Bill and Bob then spent the next three hours testing the hammer with the new handle. They also tested the handle using a sledge hammer head. At the conclusion of the testing, they both agreed that the new handle did lessen the shock transmitted to their hands. Given only the facts set forth above, who may appropriately be named as the inventive entity in an application for a patent filed in the PTO which has claims directed only to the improved handle, per se? (A) Bill (B) Bill and Bob (C) Bill and John (D) Bill, Bob, and John (E) XYZ Pharmaceuticals, Inc. 19. A reissue application is being prepared for filing in the PTO. The patentee informs you that the original patent gr.ant upon which the reissue is based was destroyed in a fire. However, he has a photocopy of the grant. Which of the following would be the appropriate action to take when the reissue application is filed in the PTO? (A) File the photocopy of the original patent grant with the reissue application. (B) File a cover letter with the reissue application explaining the facts and circumstances surrounding the loss of the original patent grant. (C) Petition the Commissioner to issue a duplicate of the original patent grant. (D) File an affidavit by the patentee explaining that the original patent grant was destroyed in a frre. (E) Do not make an offer to surrender the original patent grant. 20. Under which of the following conditions, if any, may the Commissioner suspend or exclude an individual from further practice before the PTO? (A) The Commissioner has no authority to suspend or exclude an individual from practice before the PTO unless the individual has had an oral hearing before the Commissioner. (B) The Commissioner may, without notice, at his discretion and at any time, suspend an individual from practice before the PTO. (C) The Commissioner may, after notice and opportunity for a hearing, suspend or exclude an individual shown to be incompetent from practice before the PTO. (D) The Commissioner may, without notice and opportunity for a hearing, suspend or exclude an individual guilty of gross misconduct from practice before the PTO. (E) None of the above. 8

9 21. On April 2, 1991, a patent application was filed in the PTO with 19 claims. In the first Office action, the examiner made a restriction requirement and the applicant elected to prosecute claims 1-16, without traverse. In an Office action mailed Novell1-ber 10, 1992, the examiner finally rejected claims 1, 2, 6-14, and 16 and allowed claims 3-5. CHum 15 was objected to as being dependent upon a rejected claim 1, but would otherwise be allowable if amended to include all the limitations of claim 1. The Office action set a shortened statutory period for response to expire three (3) months from the date of the final rejection. On February 10, 1993, applicant filed in the PTO an amendment and a Notice of Appeal with the appropriate fee. The Notice specifies that the appeal is taken from the final rejection of claims 1, 2, 6-14, and 16. Applicant was notified in an Advisory Action mailed March 5, 1993 that the amendment would not be entered. On March 12, 1993, the appellant filed an Appeal Brief with the appropriate fee. Appellant made no request for an oral hearing. Which of the following statements is true with respect to the authority of the Board of Patent Appeals and Interferences in this appeal? (A) The Board may recommend a rejection of allowed claims 3-5. (B) The Board may direct the Clerk of the Board to enter the amendment filed on February 10, 1993 which is viewed by the Board as overcoming the objection to claim 15. (C) The Board must give written notice to the appellant of the opportunity for an oral hearing in this appeal. (D) The Board may enter a rejection of claims based upon prior art _present in the application. (E) The Board may consider the amendment filed on February 10, 1993 in rendering a decision on the appeal. 22. You are a registered patent agent representing a corporate client. An appeal is taken from the examiner' s_ final rejection of claims 1-8 of your client's patent application. Independent claim 1 and its dependent claims 2-4 stand rejected under 35 U.S.C. 102(b). Independent claim 5 and its dependent claims 6-8 stand rejected under 35 U.S.C None of the dependent claims are multiple dependent claims. The subject matter of claims 1, 2, 3, and 5 is very important to your client and you consider each of these claims to be separately patentable over the art applied by the examiner in rejecting these claims. In your Appeal Brief, which of the following courses of action, if any, would be the most appropriate to follow on behalf of your client? (A) Argue in detail the importance of your client's inventive contribution without reference to any specific claims. (B) Specify that dependent claims 4 and 6-8 stand or fall with their respective independent claims 1 and 5, and present reasons as to why independent claims 1 and 5 are considered separately patentable. (C) Focus patentability arguments exclusively on claims 1 and 5. (D) Point out that dependent claims 4 and 6-8 stand or fall with their respective independent claims 1 and 5, and preserit arguments as to the separate patentability of each of claims 1, 2, 3, and 5. (E) Non~ of the above. 9

10 23. On October 8, 1991, John (who lives in Myrtle Beach, South Carolina) built what he believed to be a new ldte frame. In trying it out for the first time, the frame collapsed. After further work, John added an additional brace member. On October 15, 1991, John tested the new frame with the brace member. The kite held together, and he was satisfied that his invention was operative and complete. Happy with the results, John has let his neighbors and their children have unrestricted use of the ldte since October 19, On February 20, 1992, John added a quick release coupling to the frame structure so that the cord attached to the kite could be quickly released. John got the idea for the quick release coupling from a magazine article that he had read on December 5, The magazine was published in June of The article described a quick release coupling attached to a kite frame which was very similar to the frame and brace built by John. It was the quick release coupling disclosed in the magazine article that John attached to his ldte. On November 10, 1992, John filed a patent application in the PTO. Two claims appeared in the application. Independent claim 1 was drawn to a ldte with the frame and brace John had built, while claim 2, dependent from claim 1, added the further limitation of the quick release coupling attached to the ldte frame. Given only the facts set forth above, under which of the following section or sections of the patent statute, if any, would John not be entitled to.a patent for the invention. set forth in claim 2? (A) 35 U.S.C. 102(b) (B) 35 U.S.C. 103 in view of 35 U.S.C. 102(b) (C) 35 U.S.C. 102(f) (D) 35 U.S.C. 103 in view of 35 U.S.C. 102(f) (E) None of the above. 24. A first Office action was mailed to applicant on Monday, September 21, 1992, in which the examiner set forth three separate rejections under 35 U.S.C. 103 of all of the claims in applicant's patent application (the first application). The Office action set a shortened statutory period of three (3) months for response to the rejections. On Tuesday, September 29, 1992, applicant reviewed the Office action and realized that the Harris patent relied upon by the examiner in one of the rejections did not correspond to the copy of the Harris patent received with the Office action. The applicant immediately notified the PTO of the deficiency and requested that a new statutory period for response to the Office action be set. The PTO mailed the correct Harris patent to the applicant and restarted the three (3) month shortened statutory period for response to begin on Friday, October 2, On Monday March 22, 1993, applicant filed a petition and the appropriate fee for a three (3) month extension of time to respond to the outstanding Office action. On Monday, AprilS, 1993', applicant filed a second application under 37 CPR 1.53 along with the appropriate filing fee. Applicant designated the second application as a continuation-in-part of the first application. The second application included a request to expressly abandon the first application. Given only the facts set forth above, on which of the following dates did the first application become abandoned? (A) Monday, March 22, 1993 (B) ~onday,.march 29, 1993 (C) Friday, April 2, 1993 (D) Saturday, April 3, 1993 (E) Monday, April 5,

11 25. On March 1, 1993, Johnson filed a timely payment of the issue fee for a pending patent application. However, upon further review of the application on April 21, 1993, Johnson realized for the first time that Figure 3, which shows the end view of the invention, was somewhat misleading, and that a new Figure 4, a perspective view of the invention, would clarify what was shown in Figure 3. Proposed Figure 4 is fully supported by the patent specification and original drawings. A new sheet of drawings was prepared with Figure 4 thereon. Which of the following statements, if any, best sets forth PTO practice regarding the introduction of Figure 4 into the pending application? (A) An amendment to a drawing after the issue fee is paid is never permitted. (B) An amendment to the specification referring to Figure 4 and the new sheet of drawings will be entered upon payment of the appropriate fee. (C) An amendment to the specification referring to Figure 4 and the new sheet of drawings must be filed in the PTO with a petition and petition fee presenting good and sufficient reasons why Figure 4 is necessary and why it was not earlier presented. (D) An amendment to the specification referring to Figure 4 and the new sheet drawings may be filed and entered into the application as a matter of right. (E) None of the above. 26. Due to circumstances beyond your control, today (April 21, 1993) is the last day on which to file a U.S. patent application on behalf of an Italian client to obtain the benefit of foreign priority based upon an Italian application your client filed in Italy for the same invention. The only document you have received from your client is a copy of the Italian patent application (specification, claims atid drawings) filed in Italy in the name of your client, the inventor. The specification of the Italian application references the drawing figures. What must be filed in the PTO today in order for your client to obtain an April 21, 1993 filing date? (A) A copy of the Italian application. (B) A sketch depicting the idea of the invention and the filing fee. (C) An abstract in English, an English translation of the specification of the Italian application, and the filing fee. (D) An abstract of the invention written in English with a drawing, a single claim, and the filing fee. (E) An English translation of the specification and claims of the Italian application. 27. A final rejection was mailed to the applicant on October 19, A three (3) month shortened statutory period was set for response to the final rejection. An amendment responding to the final rejection was filed in the PTO on December 8, An Advisory Action indicating that the amendment would not be entered was mailed to applicant on February 26, Which of the following dates would be the very last date on which a Notice of Appeal can be filed with a proper petition and fee for a two month extension of time to avoid abandonment of the application? (A) Monday, March 8, 1993 (B) Friday, March 19, 1993 (C) Friday, March 26, 1993 (D) Monday, April 19, 1993 (E) Monday, April 26,

12 28. On January 15, 1993, your client delivers to you five (5) U.S. patents which are relevant to the disclosure of your client's U.S. patent application pending in the PTO. You intend to file patent applications in foreign countries, but have not done< so yet. The U.S. application was filed in the PTO on March 11, You have prepared an amendment to be filed today, April21, 1993, in response to a first Office action on the merits dated December 22, Which of the procedures set forth below, if any, would be most appropriate to have the five patents considered in the pending U.S. application? (A) File copies of the U.S. patents with the amendment, and specifically note the filing of the patents in the "Remarks" section of the amendment. (B) File an information disclosure stateme.nt and the appropriate fee before any final rejection in the application. (C) File an information disclosure statement with the amendment. (D) Wait until after receiving a Notice of Allowance in the application before disclosing the patents to the PTO. (E) None of the above. 29. Bill and Frank are employees of Acme Corporation. They worked together on a project and jointly invented an improved electrode for a battery. Bill and Frank turned over their laboratory notebooks disclosing their invention and tp.eir test reports on the invention to Arthur, their immediate project supervisor. Arthur discussed the invention with Bill and Frank and delivered the documents and test reports to Mary, patent counsel for Acme. Without reviewing the materials she received, Mary gave the notebooks and test reports to an associate, Alan, who is a patent agent for Acme. Alan prepared a patent application. During the preparation of the application, Alan had discussions with Arthur to answer some technical questions that Alan had with regard to the invention. On December 3, 1992, the application was fil~d in the PTO naming Bill and Frank as the inventors. On March 18, 1993, Arthur, while doing some research in the technical library at Acme, discovered an advertising brochure published by a competitor. The brochure was published on May 10, Arthur brought the brochure to the attention of Alan. After reviewing the brochure, both Arthur and Alan agreed that the brochure would clearly render some claims in the patent application unpatentable. Given only the facts set forth above, who must bring the brochure to the attention of the PTO to ~omply with the duty of disclosure? (A) Mary, Bill, Frank, Arthur, and Alan. (B) Mary, Arthur and Alan (C) Mary and Alan (D) Arthur and Alan (E) Alan 30. Claim 1 is independent. Claim 2 depends from claim 1. Claim 3 depends from claim 2. Claim 4 depends from claims 2 or 3. Claim 5 depends from claim 3. Claim 6 depends from Claims 2, 3 or 5. Applicant must pay for one independent claim. How many dependent claims must he also pay for? (A) 5 (B) 7 (C) 8 (D) 9 (E) 11 12

13 31. On December 31, 1990, Inventor Able filed a patent application in the PTO for a triple action widget smasher. On June 4,'/ 1~90, inventor Baker independently and without knowledge of Able's work, conceived in the United States the same invention. On June 10, 1990, Baker discussed his invention with his patent attorney and requested the attorney to prepare a patent application. Baker's application was filed in the PTO on January 4, Given only the facts set forill above, which of the following statements, if any, most accurately describes who is the first inventor and has the right to obtain a patent? (A) Able is the first inventor because he was the first to conceive the invention and the flrst to reduce the invention to practice. (B) Baker is the first inventor because, at the time of he conceived his invention, Able had abandoned, suppressed or concealed his invention. (C) Baker is the first inventor because he conceived the invention before Able's filing date, and unlike_able, exercise~ diligence toward reducing her invention to practice. (D) Able is the frrst inventor because Baker was not diligent in reducing his invention to practice earlier by filing a patent application. (E) None of the above. 32. Which of the following situations would constitute "new matter" under 35 U.S.C. 132? (A) As originally filed, the specification of a patent application states that a certain function may be performed by "any of a large number of known and commercially available circuits". The applicant provides the examiner with a list of publications referring to such circuits that were available on the filing date of the application. (B) As originally filed, the application contains an independent claim and three dependent claims that add various details. The details are not otherwise referred to in the specification. The applicant amends the "Summary of Invention" section of the specification to add the verbatim language of the dependent claims. (C) As originally filed, the application makes no reference to the parent application. The applicant. amends the specification to add that the application "is a continuation-in-part of our co-pending application Serial No. 999,999." (D) As originally filed, the application makes no reference to any other pending application. The applicant amends the specification to add the statement "The disclosure of application Serial No. 56,789 is incorporated herein by reference." (E) All of the above. 33. In a U.S. patent application, a multiple dependent claim cannot properly depend from (A) an independent claim (B) an generic claim.. (C) a dependent claim (D) several independent claims (E) another multiple dependent claim 13

14 34. An international application can be filed in the USPTO as a U.S. Receiving Office by (A) any person, no matter what the person's residence or nationality. (B) only a U.S. resident or U.S. national. (C) a resident of France who is not a U.S. national. (D) only persons who are residents of the Contracting States of the International Patent Cooperation Union. (E) any person who has filed a patent application in the European Patent Office. 35. An amendment filed after a final rejection and touching on the merits of a patent application (A) must always be accompanied by a Notice of Appeal and the appropriate appeal fee. (B) may be made as a matter of right. (C) may be admitted if the amendment places the application in better form for appeal. (D) will always be entered if new prior art is brought to the attention of the examiner. (E) will.not be entered unless accompanied by a petition to withdraw the final rejection. 36. A request for reexamination of a patent based solely on evidence of an insufficient disclosure in the patent to be reexamined (A) may never be granted. (B) may be granted at any time during the period of enforceability of the patent. (C) may be granted only during the frrst two years following the issue date of the patent. (D) may be granted only after a showing that the insufficiency of the disclosure directly relates to one of the patent claims. (ED may be granted at any time during the period of enforceability of the patent, if an application for the reissue of the patent has been filed. 37. The frrst three claims in a pending patent application read as follows: 1. A widget comprising M, N, and A widget as claimed in claim 1, further comprising P. 3. A widget as claimed in claim 1 or 2, further comprising R. The application further discloses elements which can be combined with any combination of elements M, N, 0, P and R to form the widget. Which of the following claims would be a correct form for claim 4? (A) A widget as claimed in claim 1 or 2, further comprising S. (B) A widget as claimed in claims 1, 2 and 3, further comprising S. (C) A widget as claimed in claim 1, 2 or 3, further comprising S. (D) A widget as claimed in claim 2, further comprising P.. (E) A widget as claimed in claim 3, further comprising P. 14

15 38. On Thursday, April 15, 1993, patent agent Smith prepared a patent application in accordance with 35 U.S.C The application included a paper having a certificate of "Express Mail" which he signed stating that the application was being mailed on Friday, April16, 1993 by ''Express Mail". He placed the application and paper having the certificate in an envelope which was addressed to the Commissioner of Patents and Trademarks, Washington, D.C He also affixed the "Express Mail" label to the envelope. The number of the "Express Mail" label, however, was not placed on the applications papers or on the paper included with the application having the certificate of "Express Mail" before Smith sealed the envelope. On April 15, 1993, Smith placed the envelope on his secretary's desk with instructions to mail the envelope by U.S. Postal Service "Express Mail" before the close of business on April 16, On Monday, April 19, 1993, Smith's secretary discovered the envelope with the note and, without informing Smith, immediately deposited the envelope with the U.S. Postal Service. The application was received by the PTO today, April21, 1993,'bearing a U.S. Postal Service Express Mail" label with a "date in" of April 20, The application will be accorded a filing date of (A) April 15, 1993 (B) April 16, 1993 (C) April19, 1993 (D) April 20, 1993 (E) April 21, A U.S. patent issued on June 26, If an application to reissue the patent is filed in the PTO on June 24, 1992, which of the following statements, if any, does not represent a valid basis for filing the reissue application? (A) The original patent claims are too narrow. (B) The original patent claims are too broad. (C) The original patent disclosure contains inaccuracies. (D) The applicant incorrectly made reference in the patent to a prior copending application. (E) None of the above. 40. Which of the following cannot be properly made the subject of a petition to the Commissioner with regard to the prosecution of a patent application? (A) A request that the PTO accept late payment of the issue fee for the application where the petition is filed four months after the date of the Notice of Allowance in the application. (B) A request to revive an abandoned patent application for failure to prosecute, where the request is filed 62 days after the date of abandonment. (C) A request to review the merits of a requirement for restriction filed 11 days after the mailing date of the Notice of Allowance in the application. (D) A request to review a final rejection of all of the claims in the application, where the request was filed two ~onths after the date of the final rejection. (E) A request to suspend a requirement of the rules of practice, which is not a requirement of the statute. 15

16 41. A U.S. patent issued from an application filed on December 12, In order to maintain the patent for the full seventeen year term, when must maintenance fees be paid, if due, without having to pay a surcharge or to file a petition to accept a maintenance fee? (A) During the period extending from 3 years through 3 years and 6 months after the grant of the patent. (B) During the period extending from 3 years through. 3 years and 6 months after the grant of the patent and the period extending from 7 years through 7 years and 6 months after the grant of the patent. (C) During the period extending from 3 years through 3 years and 6 months after the grant of the patent, the period extending from 7 years through 7 years and 6 months after the grant of the patent, and the period extending from 11 years through 11 years and 6 months after the grant of the patent. (D) During the period extending from 3 years through 3 years and 6 months after the grant of the patent, the period extending from 7 years. through 7 years and 6 months after the grant of the patent, the period extending from 11 years through 11 years and 6 months after the grant of the patent, and the period extending from 15 years through 15 years and 6 months after the grant of the patent. (E) No maintenance fees will be due. 42. Smith, while an employee of ABC Corporation, filed a first patent application in the PTO on July 16, 1991 and assigned it to ABC. On May 15, 1992, Smith, while an employee of SSS Corporation, filed a second patent application in the PTO and assigned the second application to SSS. The claims of the second application were provisionally rejected on the grounds of obviousness-type double patenting over the claims of Smith's first application. The assignments for the respective inventions were filed with the patent applications and are of record in the PTO. You are the registered patent agent of record in the second application and you have copies of both of Smith's applications. Given only the facts set forth above, which of the following would be a proper response to the rejection? (A) File a request for reconsideration and argue that the provisional rejection is improper under PTO practice and procedure. (B), File a request for reconsideration and argue that the claims of the two applications are patentably distinct. (C) File a request for reconsideration and argue that the rejection is improper because the filing dates of the two applications are less than one year apart, and therefore, only an interference would be an appropriate action by the examiner. (D) Submit an affidavit by Smith stating that he is no longer employed by ABC Corporation, and therefore, the rejection is improper. (E).Submit an affidavit by Smith showing a date of invention for the claimed subject matter in the first application before the filing date of the second application. 16

17 43.. Mter filing a U.S. patent application on a better mouse trap and receiving a license to file a foreign application, a corresponding patent application is filed in the European Patent Office (EPO) eleven months later. The EPO requests you to better describe the latch mechanism in Figure 3 of the EPO application. You prepare an amendment to the EPO application to be filed in the EPO. The amendment does not contain any new matter or modification of the general nature of the invention. What should you do with the amendment? (A) First obtain approval from Licensing and Review in the PTO by hand carrying the amendment to their office and requesting expedited service in order that the amendment can be timely filed in the EPO. (B) File the amendment in the EPO and at the same time send a letter to Licensing and Review in the PTO to advise them of what you have done. (C) File the amendment with the EPO only. (D) Before filing the amendment in the EPO, first obtain approval from the Office of Legislation and International Affairs in the PTO since the EPO requirement relates to an international matter. (E) File a copy of the amendment with Licensing and Review in the PTO before filing the amendment in the EPO. 44. Your client has found that a headache can be quickly eliminated by administering either a root beerbanana milk shake mixture or an orange marmalade-orange soda mixture.' You filed a patent application on behalf of your client wherein the only claim in the application recited a method for administering either mixture. Soon after the application was filed, your client decided to give up on the orange marmalade embodiment because it is unstable and has too short of a shelf life. You amended the claim to delete the orange marmalade-orange soda mixture. Three months later, your client showed you a French reference disclosing a headache remedy comprising a mixture of orange marmalade and orange soda. The reference does not suggest any other mixture as a headache remedy. Which of the following courses of action, if any, must you do to comply with your duty of disclosure? (A) Submit a copy and a translation of the reference to the PTO since it is material to the patentability of the claim application as amended. (B) Have the inventor mail a copy of the reference to the PTO since he was the one who found it and have him explain how it was just recently discovered. (C) File an information disclosure statement in the PTO with a copy and translation of the reference. (D) Cite the U.S. equivalent of the French patent to the examiner. (E) None of the above. 45. An international (PCT) application is not required to contain which of the following when it is filed? (A) A request. (B) An oath or declaration under 37 CPR (C) A description and one or more drawings (where required). (D) One or more claims. (E) An abstract. 17

18 46. The examiner set forth a final rejection in an Office action dated Thursday, October 1, The action set a three (3) month shortened statutory period for response. An amendment was filed on Thursday, February 18, 1993 in response to the final rejection. The amendment included a petition and fee for a two (2) month extension of time. On Wednesday, March 10, 1993, an Advisory Action was mailed indicating that the amendment had been considered but it was not deemed to place the application in condition for allowance. On March 11, 1993, a Notice of Appeal was filed. On Tuesday, April20, 1993, it was noted that a petition and fee for a third month extension of time had not been filed with the Notice of Appeal. On Apri120, 1993, a petition and fee for an extension of time for the third month was filed in the PTO. On which of the following dates, if any, would the filing of an Appeal Brief in the PTO be considered timely? (A) Monday, May 10, 1993 (B) Tuesday, May 11, 1993 (C) Sunday, June 20, 1993 (D) Monday, June 21, 1993 (E) None of the above. 47. Which of the following statements is true respecting product-by-process claims? (A) A lesser burden of proof is required to make out a case of prima facie obviousness for productby-process claims than is required to make out a prima facie case of obviousness when a product is claimed in the conventional fashion. (B) It is proper to use product-by-process only when the process is patentable. (C) It is proper to use product-by-process claims only when the product is incapable of description in the conventional fashion. (D) Product-by-process claims cannot vary in scope from each other. (E) Product-by-process claims may only be used in chemical cases. 48. You are a regist~red patent agent who prosecuted an original U.S. patent application for a foreign client upon which a U.S. patent has been granted. The U.S. application included a properly executed oath which contained a claim for priority and identified a first filed foreign patent application which had been filed less than one year before the filing date of the U.S. application. When you received the patent grant, you noticed that the front page of the patent did not reflect a claim for priority. Upon review of the patented file, you discovered that even though priority had been claimed, a certified copy of the foreign application referred to in the oath had not been filed in the application. Which of the following would be the most appropriate action to take, if any, on behalf of your client to obtain the benefit of the priority date? I (A) File a request for reexamination. (B) Submit a certified copy of the foreign patent application to the PTO and request that the certified copy be placed in the patented file. (C) File an application for reissue along with a certified copy of the foreign patent application. (D) File a petition with the requisite fee and a certified copy of the foreign patent application requesting that the certified copy of th~ foreign application be placed in the patent file and that the patent grant be reprinted. (E) None of the above. 18

19 49. Which of the following, if any, must be set out in the oath or declaration of an original U.S. patent application? (A) The claims which the inventor believes to be patentable. (B) A statement that the inventor making the oath or declaration acknowledges his duty to disclose to the PTO all information known to the inventor to be material to patentability as defined in 37 CFR (C) The power of appointment of the attorney or agent who will prosecute the application. (D) The attorney's or agent's docket number for the application. (E) None of the above. 50. As a patent agent, you may petition to withdraw from representing a client in matters pending before the PTO. Which of the following circumstances is not an appropriate good cause for petitioning to withdraw? (A) In an interference proceeding when your client insists that you file a paper alleging inequitable conduct on the part of the opposing party when there is insufficient evidence of such conduct. (B) Your client for whom you have filed a first patent application insists, against your professional judgment and advice, that a second application be filed on subject matter you believe to be unpatentable. (C) Your client has not paid his bill of your services for an unreasonable period of time. (D) Your client advises you that in several applications he has filed through your office, he has inadvertently named as joint inventors certain individuals who are not in fact inventors. (E) Your client has refused to provide you with information you must have to respond to an Office action, making it impossible for you to file a proper response. END OF MORNING SECTION 19

20 Test Nwnber 014A Test Series 193 NAME U.S. DEPARTMENT OF COMMERCE UNITED STATES PATENT AND TRADEMARK OFFICE REGISTRATION EXAMINATION FOR PATENT ATTORNEYS AND AGENTS April 21, 1993 Afternoon Section (100 Points) Time: 3 Hours DIRECTIONS 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. If you have such materials, you must give them to the test administrator before this examination begins. This Section of the examination consists of TWO (2) PARTS. Part I is worth 60 points and is directed to. drafting a single independent claim and two dependent claims. You must write your answer to Part I in the Answer Book provided by the test administrator. Part n is worth 40 points and is directed to a response to an Office action. Part n has eight (8) multiple choice questions, each worth five (5) points. Part n includes a YELLOW SUPPLEMENTwhich must be removed from this test booklet before beginning the examination. DO NOT REMOVE THE SUPPLEMENT until you are instructed to do so by the test administrator. All answers to the questions in Part n must be recorded in SECTION 1 of the Answer Sheet which is 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 mark within the circle. Erase completely all marks except your answer. Stray marks may be counted as answers. No points will be awarded for incorrect answers or unanswered questions. Questions answered by darkening more than one circle will be considered as being incorrectly answered. Your answers must conform 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 questions.- Where reference is made in this test booklet to "USPTO","PTO" or "Office", it will mean the U.S. Patent and Trademark Office. You may write anywhere on this examination booklet. Apart from the YELLOW SUPPLEMENT, do not remove any pages from the booklet. Only answers recorded in your Answer Book and on your Answer Sheet will be graded. YOU MUST OBTAIN A SCORE OF AT LEAST 70 POINTS TO PASS TillS SECTION OF THE REGIS1RA TION EXAMINATION. DO NOT TURN THIS PAGE UNTIL YOU ARE INSTRUCTED TO CHECK THE CONTENTS OF THIS EXAMINATION BOOKLET OR TO BEGIN THE EXAMINATION 1

21 PART I (60 Points) DIRECTIONS: This part is directed to claim drafting and consists of three options. Option A below pertains to a mechanical invention, Option B (on page 5) pertains to a chemical invention and Option C (on page 11) pertains to an electrical invention. You must select only one of the options. If you select more than one option, only the first option presented in your Answer Book will be graded. OPTION A: PATIO DOOR WHEEL ASSEMBLY This invention ~ates to a wheel assembly for a patio door. It will be appreciated, however, that the wheel assembly could have many other uses, but it is specifically designed for sliding patio doors. FIG. 1 shows a prior art wheel assembly for a patio door. The assembly includes a pair of side plates 1 and 3 held in spaced parallel relationship by a tubular spring pin 5. A wheel subassembly is shown generally at 7. The subassembly comprises two hardened steel inner ball race members 9 and 11 (one race member being a mirror image of the other) abutting one another and supported on the spring pin 5 by a tubular rivet 25 which holds the two inner race members together. Out-turned portions 27 of the rivet 25 engage comer portions 29 of the inner race members 9 and 11. The inner race members together define an annular track 13 having a semi-circular cross-section within which track the ball bearings 15 are located. An annular steel wheel 17 includes an outer periphery 24, an inner periphery 19, and opposed side surfaces 28 and 30. The wheel17 further has a semi-circular race 21 on i~s inner periphery which provides an outer race for the ball bearings. The outer periphery of the wheel 17 is suitably profiled at 23 to run on a guide rail on the patio door frame (not shown). The wheel is rotatably supported on the ball bearings 15. While the wheel assembly described above has proved to be commercially successful, it has the disadvantage that after continuous use, it becomes worn, with the result that the wheel can float from side to side between the side plates, thus impairing the performance of the sliding door to which it is fitted. Also, it is quite difficult and expensive to assemble the wheel assembly in view of the number of parts and because the subassembly must first be manufactured. The subassembly is located between the two side plates which must be locked together using the tubular spring pin. Furthermore, such a wheel assembly of the prior art has normally incorporated a hardened steel wheel which is relatively expensive. Fig. 1 (PRIOR ART) 2

22 OBJECfS OF THE INVENTION The present invention.seeks to provide an improved wheel assembly for patio doors which is relatively inexpensive and does not suffer from the disadvantages associated with the prior art wheel assembly. Accordingly, the primary object of the present invention is to provide a wheel assembly having side plates rotatably supporting a synthetic resin material wheel upon two spaced sets of ball bearings, with the wheel including annular outer ball races. The wheel assembly is further configured without separate and distinct inner ball race members by using inturned portions of the side plates and the respective plates together to defme annular inner ball races. THE INVENTION FIG. 2 shows a cross-section of a first embodiment of the wheel assembly constructed in accordance with the invention. To reduce the complexity and cost of manufacture, the wheel assembly comprises two substantially parallel side plates 31 and 33, each of which has an aperture therein at 36. The walls, of the plates 31 and 33 defining the apertures are curved inwardly to form annular inturned portions 32 and 34. These annular inturned portions provide, at the junction between the inturned portions 32 and 34 and the respective plates 31 and 33, annular inner ball races 43 and 41 and annular external arcuate faces 44 and 46. Accordingly, the inner ball races 43 and 41 are provided by part of the inturned portions 32 and 34, which means that s~parate inner ball race members of the prior art, 9 and 11 of FIG. 1, are not required. A first set of ball bearings 35 is supported by the inner ball race 43 while a second set of ball bearings 37 is supported by inner ball race 41. As in the prior art construction, a wheel 39 is supported directly by ball bearings. However, as indicated above, in this invention there are two sets of ball bearings. Two annular outer ball races 45 and 47 are formed at the inner periphery of the wheel 39, one race at each side surface of the wheel. Annular outer ball race 45 is for engaging ball bearing set 35, and annular outer ball race 47 is for engaging ball bearing set 37. The wheel is molded from synthetic resin material and has provided on its outer ball races 45 and 47 annular race liners 49 and 51 that are integrally molded with the wheel 39. The liners are fabricated fro~ wear resistant material, such as stainless steel. The presence of the liners is critical since the synthetic resin material of the wheel is not sufficiently wear resistant for use with ball bearings. The wheel 39 is provided on its outer periphery with a proftle 53 of semicircular cross-section which runs on a guide rail on the patio door frame (not shown). 53 Fig. 2 The assembly shown in FIG. 2 is connected by means of a tubular rivet 55, the outer ends of which are turned over and as shown at 57, bear against the annular external arcuate faces 44 and 46, respectively, and thereby confme the wheel and sets of ball bearings. 3

23 FIG. 3 shows a second embodiment of the invention. The side plates 31 and 33, instead of being connected together by a tubular rivet, each have a central web portion 61 which is formed as an extension of the respective intumed portions 32 and 34. The central web portion of each side plate abut one another and are connected by a simple solid rivet (not shown). Furthermore, the wheel 39 is provided with a stainless steel tire 40 which is integrally molded with the semicircular profile 53 on the outer periphery 24 of the wheel. Fig Gl 33 Draft THREE (3) CLAIMS: a single independent generic claim and two dependent claims to a wheel assembly for a patio door. The generic claim (claim 1) must be the broadest claim for the wheel assembly which defines the invention as set forth in the OBJECTS OF THE INVENTION, which includes any critical limitations, and which is not anticipated by the prior art. One dependent claim (claim 2) must cover the specific embodiment shown in FIG. 2. The other dependent claim (claim 3) must cover the specific embodiment shown in FIG. 3, including the. tire~ Your claims must be drawn to a wheel assembly for a patio door, and you must adhere to the following requirements. You may not be your own lexicographer to name the elements or components of the disclosed invention or to rename elements or components of the wheel assembly. Thus, you must use the terminology of the described invention. Any method claim or Jepson claim 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, e.g., language which does not have antecedent basis or which does not positively set forth each element or component; (3) failing to interrelate or incorrectly interrelating the elements or components in your claims in the manner disclosed and shown above; (4) claiming unnecessary limitations in claim 1; (5) presenting a claim that defines an inoperative invention or is anticipated by the prior art; (6) using poor grammar; and (7) failing to follow these directions. GO TO PAGE 14 IF YOU ANSWERED OPTION A 4

24 OPTION B: OPTICAL RECORDING MEDIA Optical recording and reading media enjoy perfect freedom from wear because they do not come into contact with mechanical read and write heads. Information is written on a medium by forming small holes, called pits. The pits are formed by removing or melting off a part of the medium with a recording light, such as a laser. The pits in the recording layer are read by detecting change in the reflection of reading light while rotating the optical recording medium. The recorded information is read by sensing the pits with a reading light. FIG. 1 illustrates the invention. The optical recording medium 30 includes a substrate 12, a film liner 14, and a recording layer 16. The recording layer contains pits 32 in the outer surface 18 of the recording layer FIG. 1 30_./ The substrate 12 is not limited to a particular material, so long as it is substantially transparent to write and read light. Examples of such materials include glass, polymethyl methacrylate, acrylic resin, epoxy resin, polycarbonate resin, polysulfone resin, and polyether sulfone. The fum liner 14 is formed by vapor depositing an optically transparent film of an inorganic material, such as silicon oxide, titanium oxide, zirconium oxide, aluminum oxide, silicon nitride, or silicon carbide. The fllm liner provides a barrier to water and gas, and improves the preservation stability of the recording layer. The recording layer 16 comprises a cyanine dye constituent as the optical recording medium and a quencher, such as a transition metal chelate of a bis(phenyldithiol) compound. The quencher improves the photostability of the cyanine dye by preventing decoloring (reproduction deterioration) caused by reading light. The recording layer is formed by frrst dissolving the cyanine dye and quencher in an organic solvent, such as ethanol or acetone, applying the solution to the fum liner, rotating the substrate to distribute the recording medium over the film liner, and then irradiating the medium with pulses of laser light to form pits in the recording layer surface. The cyanine dye, quencher and solvent mixture may optionally, but not preferably, include a surfactant, antistatic agent, lubricant, flame retardant, stabilizer, dispersant, antioxidant, and crosslinking agent The thickness of the recording layer is in the range of 100 to 1000 A, preferably 300 to 600 A, more preferably 300 to 500 A. The quencher is contained in the recording layer in an amount of 15 to 50 moles per 100 moles of cyanine dye, preferably 15 to 35 moles of quencher per 100 moles of cyanine dye. The amount of quencher is critical. When more than 50 moles of quencher per 100 moles of dye is used, the sensitivity of the dye rapidly deteriorates. The writing light applied to the recording medium is selected according to the wavelength of light absorbed by the cyanine dye contained in the recording layer. Laser light having a wavelength of 760 to 830 A is preferred. 5

25 The cyanine dyes used in the present invention are generally well known. Examples of cyanine dyes suitable for present invention have the following structural formulas (I through V): I Rt 0 0 N >-(CH=CH)n-CH=< N I E9 xe I R2 R2 R1 n R1 s >-(CH=CH)n-CH=< N N 1 9 xe I R2 s R2 Rt m R1 Rt IV 6

26 v s N>-(CH=CH)n-CH=< N I~ xe I R2 R2 s wherein Rt is hydrogen, unsubstituted alkyl, alkoxy, nitro, aryl or halogen; R2 is unsubstituted alkyl, cycloalk:yl, hydoxy~l, or alkoxyalkyl; X is a halide; and n is 1 to 3. The following table lists 29 cyanine dyes used in the present invention having one of the aforesaid structural formulas. Dye No. Fonnula Rt R2 n X 1 I H CH 3 3 Cl 2 I H CH 2 CH 3 3 Cl 3 I H CH 2 CH 2 CH 3 3 Cl 4 I H C 4 H 8 CH 3 3 Cl 5 I CH 3 CH 3 3 Cl 6.n H CH 3 3 Cl 7 n H CH 2 CH 3 3 Cl 8 n H C~CH3. 3 Br 9 II H CH 2 CH 2 CH 3 3 Cl 10 II H C~CH2 CH 3 3 Br 11 II H cyclo-cjf 11 3 Cl 12 II CH 3 0 CH 2 CH 3 3 I 13 m H CH 3 3 Cl 14 m Cl CH 3 3 Cl 15 III Cl CH 3 3 Br 16 m H CH 2 CH 3 3 Cl 17 m phenyl CH 2 CH 2 CH 3 3 Cl 18 III Cl cyclo-c~ 3 Cl 19 III H cyclo-c5~ 2 Cl 20 III H cyclo-c5 ~ 1 Cl 21 m H cyclo-cjf 11 3 Cl 22 Ill Cl cyclo-c 6 H 11 3 Cl 23 III Cl cyclo-cji 11 3 Br 24 m N0 2 c;~och3 3 Cl 25 III c;~oh CH 2 CH 3 3 Cl 26 IV CH 3 3 Cl 27 v CH 3 3 Cl -28 v CH 2 CH 3 3 Br 29 v CH 3 3 I 7

27 The following is the general formula for the quencher used in the present invention: R.3 wherein R.3 represents hydrogen, alkyl or halogen. The preferred embodiment requires the use of cyanine dyes having structural formulas IT and ill wherein R2 is an unsubstituted alkyl or cyclo group due to improved solubility of the dye in the solvent. The most preferred embodiment uses cyanine dyes having structural formula ill wherein Rt is chlorine and R2 is alkyl or cycloalkyl and 25 to 35 moles of the quencher are used per 100 moles of the cyanine dye. The dyes of the most preferred embodiment have outstanding solubility, and provide outstanding reproduction characteristics and repeated reading characteristics. THE PRIOR ART Recording media using cyanine dyes are old in the art. The closest prior art is a patent to Smith issued on August 21, 198?. The patent includes the following disclosure: 3 FIG FIG. 2 shows a pitted optical recording medium having a recording layer 3, a dielectric layer 2, and a transparent substrate 1. The substrate 1 can be any material which is transparent to laser light, such as polymethyl methacrylate or polycarbonate. The dielectric layer 2 can be any inorganic material which is optically transparent to laser light, such as silicon dioxide or titanium dioxide. The dielectric layer is deposited by using a conventional vapor deposition technique. 8

28 The recording layer 3 is formed by dissolving a cyanine dye and a substituted benzenedithiol chelate in acetone, applying the solution to the dielectric layer, spinning the substrate to spread the cyanine dye mixture over the surface of the dielectric layer, and then irradiating the medium with pulses of laser light to form pits in the recording layer surface. The substituted benzenedithiol chelate used by Smith is disclosed as having the general formula: R4 M wherein M is Pt, Pd or Ni and R4 represents hydrogen, an alkyl or halogen. The cyanine dyes used by Smith are described as A-(CH=CH)n-CH=B wherein n is 1, 2 or 3, and A is described as being: R5 R.5 and B is described as being: < N I R6 Rs ( N I R6 wherein Rs is hydrogen, alkyl, and halogen and R6 is unsubstituted alkyl or alkoxyalkyl, and X is a halide. 9

29 Smith discloses that the thickness of the recordin.g layer 3 is between 300 and 700 A. He also discloses that the substituted benzenedithiol chelate is contained in the recording layer in an amount of 40 to 60 moles per 100 moles of cyanine dye, preferably 55 to 60 moles per 100 moles of dye. Smith's preferred embodiment uses 53 moles of the benzenedithiol chelate per 100 moles of the following cyanine dye: Cl CH3 CH3 Cl " -::::::--<CH=CH)3- CH """ 'Gl C!El cyclo-c5h9 cyclo-c5h9 I Draft THREE (3) CLAIMS: a single independent generic claim and two dependent claims to the optical recording medium shown in Figure 1. The generic claim (claim 1) must be the broadest claim for the recording medium which defines the novelty of the invention as described above, which includes any critical limitations, and which distinguishes the invention over the teachings of the prior art. One dependent claim (claim 2) must be for the preferred embodiment which does not read on the teachings of the prior art. The other dependent claim (claim 3) must cover the most preferred embodiment which does not read on the teachings of the prior art. Your claims must be drawn to the recording medium and you must adhere to the following requirements. You may not be your own lexicographer to name or rename components, chemicals or elements of the disclosed invention. You must use the terminology of the described invention. Any composition claim or method claim or Jepson claim 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, e.g., language which does not have antecedent basis or which does not positively set forth each element or component; (3) failing to interrelate or incorrectly interrelating the elements or components in your claims in the manner disclosed and shown above; (4) claiming unnecessary limitations in claim 1; (5) presenting a claim that defines an inoperative invention or is anticipated by the prior art; (6) using poor grammar;- and (7) failing to follow these directions. GO TO PAGE 14 IF YOU ANSWERED OPTION B 10

30 OPTION C: AQUARIUM WATER HEATER CIRCUIT This invention is ~ted to an immersion heater circuit for an aquarium. Because tropical fish are available in an abundant variety of sizes, shapes, colors and markings, they are preferred for home aquariums. In order to keep tropical fish alive, the water temperature in an aquarium must be between 20 and 35 C. The optimum water temperature is empirically 27 C. At higher temperatures, algae grow rapidly and critically diminish oxygen dissolved in the aquarium water. At low temperatures, tropical fish life processes slow down. They become lethargic and consequently increasingly susceptible to diseases. A regulated aquarium heater is essential to maintain the water temperature in the aquarium near or at the optimum temperature (27 C) for long tropical fish life in an aquarium environment. THE PRIOR ART Typical immersion-heater circuits, known in the prior art, are illustrated in FIG. la and FIG. lb. In use, these immersion heater circuits fail, often Within the frrst two years of use. The temperature of the water is controlled by using a bimetallic switch. Almost all failures of the immersion heater occur because the contacts on the bimetallic switch become stuck together after repeated on/off cycles. When this happens, the heater will not shut off and the water temperature rises above the maximum safe limit., =1t0 4, to.3 -to 2 Fig. 1A Fig. 18 FIG. la is an example of one of the earliest immersion heater circuits. In this circuit, the input voltage is connected across a bimetallic switch 1 in series with an immersion heater 2. A later modification of this circuit is illustrated by FIG. lb which includes the addition of a thermistor 3. The thermistor 3 has a negative temperature coefficient of resistance (the resistance decreases substantially as the temperature increases). If the heater control is stuck closed when the water temperature in the aquarium nears its maximum safe operating temperature (35 C), the resistance of thermistor 3 will decrease sufficiently to draw enough current in addition to the current through the heater to open the fuse 4. However, when fuse 4 opens, the heater becomes inoperative and the water in the aquarium can cool to less than the minimum safe operating temperature. 11

31 OBJECfS OF THE INVENTION The primary object of the invention is to provide a low voltage aquarium heater circuit in which a fuse can be always opened. within a very narrow temperature range (±!t2 C), when the temperature of the water in the aquarium nears the maximum operating temperature (35 C) through the use of a divider circuit to trigger operation of a gate which suddenly draws enough current through an auxiliary load resistor to open the fuse instantaneously. Another object of the invention is to provide an audible alarm that is actuated when the fuse is open, as illustrated in FIG. 2. This will alert an ichthyologist that the bimetallic switch and the fuse need replacement. A further object of the invention is to use an unfused back-up heater, actuated by a second bimetallic switch, as illustrated in FIG. 3. If the fuse opens on the primary immersion heater circuit, the back-up heater will only be energized when the temperature of the water in the aquarium decreases to just above the minimum safe operating temperature (20 C). The useful life of the bimetallic switch for the back-up heater is much longer than that of the bimetallic switch for the prill!_ary heater because the back-up immersion heater is infrequently used. THE INVENTION FIGS. 2 (below) and 3 (on page 13) illustrate two separate embodiments of the invention. Electrical codes now require aquarium heaters to operate from a low voltage power source (less than 28 volts) in order to. diminish potential shock hazard. Transformer 5 is used for producing the low voltage input. It is within the skill of the art to incorporate a transformer to provide a low voltage power source. s V AC 24 V AC Fig. 2 FIG. 2 shows a immersion heater circuit having a bimetallic switch 6 as the heater control in conjunction with immersion heater 7. The novel circuit includes a gate 8 and a divider circuit comprising a carbon resistor 9 and thermistor 10. Gate 8 is normally in an off state. Resistor 9 and a negative temperature coefficient thermistor 10 establish voltage and current at point A of the divider circuit to turn gate 8 on when the water in the aquarium nears the maximum safe operating temperature (35 C). Resistor 9 is large enough to make the current through the divider circuit negligible when compared to the heater current. If the water temperature in the aquarium reaches 34±~ C, the thermistor resistance decreases sufficiently to trigger the gate 8 to an on state. If bimetallic switch 6 is closed and gate 8 is on, current is drawn through load resistor 11. The load resistor is designed to draw approximately as much current as the heater 7 does. When this occurs, it is sufficient to cause fuse 12 to open instantaneously. 12

32 The frrst embodiment of the invention illustrated in FIG. 2, uses a 1A watt, 24 volt buzzer 13 connected to the circuit. It is normally shunted by the fuse and consequently, not energized. When the fuse 12 is open, the buzzer 13 is energized by a current which is about 10 milliamperes. This is less than one hundredth of the currep.t required by the immersion heater 7 in normal operation. 5 l 120 V AC 24 V AC Fig. 3 A second embodiment of the invention is illustrated in Figure 3. The circuit is similar to the circuit in FIG. 2, except that a back-up immersion heater is used in place of the buzzer. The back-up immersion heater 15 is energized by low temperature bimetallic switch 14 to maintain the water temperature in the aquarium above the minimum safe operating temperature (20 C). Typically, bimetallic switch 6 is designed to be closed when the water temperature is less than 27 C. In normal operation, heater 7 does all the heating. In this embodiment, the heat output from heater 15 is no more than 60% of the heat output from heater 7. Draft THREE (3) CLAIMS: a single independent generic claim and two dependent claims to an immersion heater circuit for an aquarium. The generic claim (claim 1) must be the broadest claim for the immersion heater circuit which defines the novelty of the invention as set forth in the OBJECTS OF THE INVENTION, which includes any critical limitations, and which is not anticipated by the prior art. One dependent claim (claim 2) must cover the specific embodiment shown in FIG. 2. The other dependent claim (claim 3) must cover the specific embodiment shown in FIG. 3. Your claims must be drawn to an immersion heater circuit for an aquarium and you must adhere to the following requirements. You. may not be your own lexicographer to name the parts or circuits of the disclosed invention or to rename parts or circuits of the aquarium heater circuit. Thus, you must use the terminology of the described invention. Any method claim or Jepson claim 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, e.g., language which does not have antecedent basis or which does not positively set forth each part or circuit; (3) failing to connect or incorrectly interconnecting the claimed parts or circuits in your claims in the manner disclosed and shown above; (4) claiming unnecessary limitations in claim 1; (5) presenting a claim that defines an inoperative invention or is anticipated by the prior art; (6) using poor grammar; and (7) failing to follow these directions. GO TO NEXT PAGE IF YOU ANSWERED OPTION C 13

33 ... -''- --' ~;..-~..;;,;...,..~~-~~ PART IT (40 Points) INSTRUCTIONS AND BACKGROUND: This part of the examination consists of eight (8) multiple choice questions, each worth five (5) points. The questions are based upon the following facts and the information found in the YELLOW Supplement for Part IT. On May 29, 1990, in Silver Springs, New York, inventor Coe Axial, a United States citizen, conceived and reduced to practice a shielded cable invention having a jacket layer made of polyvinyl chloride (PVC) containing carbon black powder or metal powder. On June 10, 1990, Axial filed his own patent application, Serial No. 888,888, in the PTO. On April 30, 1991, in Silver Springs, New York, Axial conceived and reduced to practice an improvement on his earlier invention. He improved the invention by providing the cable with a jacket layer made of polytetrafluoroethylene (PTFE) containing carbon black powder or metal powder. Axial prepared a continuation-in-part (CIP) application covering the improvement. On October 2, 1992, before a first action on the merits in application Serial No. 888,888, Axial filed the CIP application in the PTO and expressly abandoned application Serial No. 888,888. The CIP application was assigned Serial No. 999,999. In an Office action dated March 3, 1993 and received by Axial, the claims in the CIP application were rejected, and objections were raised about the CIP declaration and specification. Axial hired you last week to prepare a response to the March 3rd Office action, and he provided you with supporting evidence for the foregoing facts. He gave you a copy of the CIP specification, as filed in the PTO, a copy of relevant portions of the March 3rd Office action, and a copy of the prior art cited in the March 3rd Office action, all of which are reproduced in the YELLOW Supplement. The CIP specification contains all of the disclosure and claims which appeared in application Serial No. 888,888. For purposes of this examination, subject matter added to the CIP application, but which was not in the application Serial No. 888,888, is presented in italics in the YELLOW Supplement. Answer questions 1-8 below in SECTION 1 on your Answer Sheet, and answer each question independently of all other questions. See the Directions on page 1 of this test booklet for instructions for recording your answers on the Answer Sheet. Each of the following questions pertain to the content of a response to the March 3rd Office action. Each numbered question below corresponds to the numbered answer in SECTION 1 of your Answer Sheet. For each question, mark in SECTION 1 the letter you chose as your answer. If choice (E) is "None of the above", your selection of choice (E) denotes your intent to not select any of the previous choices. 1. In a written response by you to the March 3rd Office action, which of the following statements in the response, if any, would conform with proper PTO practice and procedure in responding to the objection under 35 U.S.C. 112, first paragraph, pertaining to the specification? (A) Amend the specification by inserting --or polyvinylidene fluoride (PVDF)-- after "polyethylene". (B) Before "polyethylene", insert --polyvinylidene fluoride (PVDF) or--. (C) After "polyethylene" on line 20 of the specification, insert --or polyvinylidene fluoride (PVDF)--. (D) Amend the second line in the third paragraph of the specification, before "polyethylene" insert --polyvinylidene fluoride (PVDF) or--. (E) None of the above. 14

34 2. Claims 1 and 2 were rejected as being clearly anticipated by Smith. Assume that your written response to the March 3rd Office action would include directions to cancel Claims 1 and 2, and to add the following new claim: 7. A shielded cable for suppressing electromagnetic interference comprising a center conductor, a ftrst insulating layer overlying said center conductor, a frrst shielding layer overlying said frrst insulating layer, a second insulating layer overlying said frrst shielding layer, a second shielding layer overlying said second insulating layer, and a polymer jacket layer overlying said second shielding layer, wherein said center conductor is copper clad aluminum, each of said insulating layers is selected from the group constituting of polyethylene and polyvinylidene fluoride (PVDF), and said polymer jacket layer contains 15 to 65% by weight of an electrically conductive metal powder dispersed therein. Which of the following proposed arguments conforms with proper PTO practice and procedure and should be included inthe response as properly explaining how the rejection has been overcome? (A) The rejection over Smith is now believed to be overcome by the cancellation of claims 1 and 2 and the presentation of new claim 7. The new claim defmes a shielded cable which is now believed to be patentable over Smith. The new claim is directed to a shielded cable requiring, in addition to each insulating layer being either of polyethylene or polyvinylidene fluoride (PVDF) as in canceled claim 2, a copper clad aluminum conductor and a polymer jacket having an electrically conductive metal powder dispersed therein. The cable disclosed by Smith contains neither a copper clad aluminum conductor nor an electrically conductive metal powder. (B) The. Smith patent is directed to a radio frequency transmission cable and is, therefore, nonanalogous art. Applicant's invention is directed to a shielded cable which includes an external jacket having electrically conductive particles. The jacket disclosed by Smith does not contain electrically conductive particles. Thus, the patent does not anticipate Claims 1 and 2. Accordingly, the Examiner is requested to withdraw the rejection. (C) The rejection over Smith is now believed to be overcome by the cancellation of claims 1 and 2 and the presentation of new claim 7. The claims as amended defme a patentable invention which is not anticipated by Smith. The Examiner is requested to withdraw the rejection. (D) The rejection over Smith is now believed to be overcome by the cancellation of claims 1 and 2 and the presentation of new claim 7. Smith discloses a conventional cable wherein an insulated conductor is surrounded by two sheaths of braided copper wire which are separated by an insulator. The cable includes a jacket made of polyethylene without electrically conductive particles, and therefore is incapable of suppressing EMI. Thus, the patent does not anticipate new claim 7. Accordingly the examiner is requested to withdraw the rejection. (E) The rejection over Smith is now believed to be overcome by the cancellation of claims 1 and 2 and the presentation of new claim 7. The new claim avoids Smith because Smith does not disclose the use of a polytetrafluoroethylene (PTFE) polymer for the jacket layer. Polytetrafluoroethylene (PTFE) provides unexpected results in that it is more resilient and frre resistent than polyvinyl chloride (PVC) and it can be extruded onto the second shielding layer at much lower temperatures. Support for this is found in lines 32 to 34 of applicant's specification. For these reasons, new claim 7 defmes a patentable invention over Smith. 15