J. Richard Roe copied the clai~s of a patent for the purpose of

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1 Paper No. 1 DEPlffiTMEWl 1 OF COI'v1MERCE UNITED STATES PATENT OFFICE EXfu~INATION FOR REGISTRATION TO PRACTICE MARCH 27, 1950 Time: 3 hours ~uestions on Law and Practice Make your answers brief and to the point. Number each answer and leave at least two lines between answers ~--W r_i_t_e on ~nly one side of the paper. l, G files a reissue application containing claims copied from a patent to H, which matured from an application which was copending with G's original application. The patent claims so copied for the purpose of interference are substantially the same as cla.ims cancelled by G in his original application in response to a rejection. In what respect does G's reissue application meet or fail to meet the requirements of the reissue statute? 2. X assigns his patent toy. At the time this assignment was made, Z had a license under the patent which was not re-vocable by assignment. The license was not recorded and Y had no knowledge of it. What rights does Y obtain by the assignment? J. Richard Roe copied the clai~s of a patent for the purpose of interference. The Examiner held that Roe could not make the patent claims. Roe amended those claims and again requested an interference with the patent. The claims, as amended, were not identical with the patent claims. The Examiner allowed the claims, but refused to set up the interference. Roe appeals to the Board of Appeals from such refusal. What should the decision be? Give reasons. 4. You, as attorney {or agent), are prosecuting an application filed October 10, On June 10, 1949, you discover a patent which issued July 6, 1948, on an application filed February 6, The application you are prosecuting will support some of the claims of the patent, although the claims you have adva;"lced in the application were not drawn to this aspect of the invention. Knowing that the applicant conceived the invention expressed in the clai~s of the patent and reduced it to practice prior to February 6, 1947, what action should you take? When? 5. Under what conditions can an interference be dissolved on the Primary Examiner's own motion? 6. An application is fi.led with twenty claims.. What is the penalty for adding ten claims to the application by amendment prior to the first action by the examiner?

2 7.. In an infringement suit the following facts were developed: The plaintiff filed an application on a pocket-book in the United States Patent Office on March 2, The application became abandoned on August 5, 1944, for failure to respond to an office action within the statutory period. On December 8, 1944, plaintiff filed another application in the United States Patent Office disclosing and clai~ing the same subject matter as in the first application. A patent based on the second application was granted on June 5, The defendant, as a defense, urges that the patent is invalid because of evidence showing that pocket-books corresponding to the subject matter clatmed in plaintiff's patent were sold in a department store in Paris, France, on October 15, What should the court rule with. respect to such defense? Explain why. 8. A publication discloses a device which, as a whole and only as a whole, is clearly inoperative. State why the publication might nevertheless be a good reference against (a) claims that read on a part of the device, and (b) claims that read on the whole device. 9. What is the effective date, as a reference, of a patent issued December 27, 1949, on an application filed June 12, 1948, as a continuation of an application filed February 15, 1946, and abandoned on August 20, 1948? 10. How would you, during the prosecution of an application for patent, reinsert a paragraph of the specification that had previously been cancelled? 11. In an interference between an application of John Doe and a patent to Richard Roe, priority was awarded to Richard Roe as to all the counts. In addition to the invention covered by said counts, the patent disclosed, but did not claim, another divisible invention. How may John Doe, as the junior party to the interference, obtain claims to this other divisible invention? 12. The Court of Customs and 'Patent Appeals reverses a decision of the Patent Office Board of Appeals affirming the final rejection by the examiner of all the claims of X's application as unpatentable over a patent toy. Under what circumstances could any claim of the same X application again be rejected by the examiner?

3 - ~- ~~--- - ~~--- -~--- -~-~-~-~~ ~ ~~~ 13. Under what circumstances may a party to an interference move to add, substitute, or include another application owned by him to the interference? 14. If a party to an interference desires to obtain the benefit of the filing date of a prior foreign application, what papers must be file? When? 15. (a) What motion for dissolution may not be brought by a party to an interference who is under an order to show cause? (b) What motion for dissolution may not be brought by a patentee who is a party to an interference? 16. (a) Under what circumstances, if any, may a drawlng be returned after filing with an accepted application for patent? (b) If an attorney is appointed in an application earlier filed by the inventer, may be append his signature to the drawing in addition to that of the inventor? (c) When should the drawings of a patent application be drawn to scale? (d) What drawings not made with India ink are acceptable to the Patent Office for all purposes? 17. One of the original claims of an application is drawn to a species which was not illustrated, and which was not described in the specification. On what basis may Lhe specificatl.on and drawing be amended to include this species? 18. After the inventor has executed his application, but before it has been filed in the Patent Office, his attorney discovers that an important element of the actual device is not described in the specification nor illustrated in the application drawings. What action should the attorney take? 19. After an application has been filed, but before an action is received, applicant's attorney discovers that an essential feature of applicant's invention has been inadvertently omitted and is not disclosed in the specification, drawings or claims. What procedure should the attorney suggest to the applicant? 20. Arkwright, a British citizen residing in London, England, files an application in the United States on October 12, 1949, based on and ref~rring to a British application filed October 13, Arkwright, who has never been in the United States, did not actually construct or test the device to which both applications are drawn. All the claims of the United States application are rejected as being fully met by an article published by Arkwright on October 15, How may Arkwright effectively meet such rejection?

4 21. Claims of an application are rejected as unpatentable over a cited pete~t. At an interview subsequent to said rejection, the aprlioant suggests additional limitations to the claims and convinces the examiner that the claims as so limited are allowable. What refer0nces :.o the J_nterview are required in a formal ~endment incorporating these lin~.i tations thereafter filed by the applicant? 22. C files a sole application. Thereafter, C informs his attorney that the device disclosed in that application was invented by him jointly with D. What remedial measures should the attorney suggest? 23. In an application containing claims to a combination and claims tc one element of thf.lt combination, division is required between the combination claims and the element claims. (a) What ree.son could be presented to show why division was improper? (b) When must an election be made? (c) What right is lost if an election is made without traversing? 24. An application of John Doe, filed July 18, 1949, includes the following claim: "The method of making one-piece pleated paper cups, consisting of operating upon a blank to simultaneously form a plurality of pleats therein, closing the pleats to bring the blank into cup form and applying an adhesive to said pleats to hold the same in position." A patent was issued to John Doe on July 19, 1949, containing the following claim: "In a cup making machine, comprising means for operating upon a blank to start the formation of pleats therein, means for closing the pleats to bring the blank to cup form, and means for applying an adhesive to said pleats to hold the same in position." What rejection is indicated by the recited facts? 25. Certain claims in an application filed by James Smith are rejected as not being patentably distinct from specified claims of a patent issued to the same James Smith. If James Smitil asked you, as his attorney, whether he should disclaim the specified claims of his patent, what advice, very briefly, would you give him? 26. An application for a design patent on a doll shows a figure of a normal child about one year old, standing with a nursing bott~e in the right hand and applying a watch to its ear with the left hand, and apparently listening intently to the watch. Why must a design patent be refused on said application?

5 27. Upon rece1v1r~ their joint patent, Burke and Hare ascertain that as to the divisible subject matter covered by two claims of that patent, Burke is the sole inventor. Burke immediately files a reissue application containing those two claims. Discuss briefly whether a reissue patent can be issued to Burke. 28. You are the attorney of record in an application filed by Joseph Clark, which he has never assigned. An amendment is due in that application on October 10, On October 5, 1949, you discover that Joseph Clark died on that day. How would you proceed with the prosecution of Joseph Clark's application in order to avoid its abandonment? 29. What mistakes may be corrected by a certificate of correction? 30. After a simple assignment of "all right, title and interent" in a patent, who is entitled to damages arising out of various infringements which occurred prior to the assignment? 31. After the award of priority in an interference;has become final, what is the status of the claims in the application of the losing party which correspond to the counts of the interference? )2.. How many different species may be prosecuted in an a.pplicati.on having an allowable generic claim? What limitation,.if any, is placed on claims drawn to species in addition to the _preferred species? 33. In response to a nal rejection dated February 28, 1950: (a) What is the date of the last day on which an appeal can be filed? (b) What re1"erence to claims must be included in the appeal.-? (c) When will appellant's brief be due? (d) How can appellant obtain an oral hearing? 34. A and B filed a joint application on June 1, 1949, and on the same day assign it to X.. Who would have to sign an express, :formal abandorunent of the application to be filed on June 8, 1949? 35. A patent is issued to John Knox on March 5, 1940, which discloses and broadly claims a complete radio antenna to be mounted on an automobile.. Another patent is issued to Martin Luther on March 6, 1945, on specific- improvements to Knox's antenna and specifically claims an antenna with such improvements. How free is Knox to make and sell Luther's antenna? How free is Luther to make and sell his own antenna?

6 Paper No. 2 DEPARTMENT OF COMMERCE UNITED STATES PATENT OFFICE EXAMINATION FOR REGISTRATION TO PRACTICE MARCH 27, 1950 This paper is in two parts and requires the drafting of six claims as indicated. Time: 3 hours PART NO. 1 APPARATUS CLAIMS Draft three apparatus claims of substantially varying scope covering the "Drinking Bowl for Animals" shown in the attached drawings. Assume that a stock wat~ring device with a valve actuated by the animal to be watered is broadly old. Claims should not distinguish one from the other by merely immaterial limitations. Designate the "broadest," the "intermediate," and the "narrowest" claim.

7 PART NO. 2 PROCESS CLAIMS Draft three claims covering the process of treating wheat germ, described below. The first should be broad. The second and third cla:b:ns should be directed to distinct species under the broad claim. TREATING AND STABILIZING WHEAT GERM This invention relates to new and useful improvements in processes of treating wheat germ so as to make it useful in tbe manufacture of bakery and other food products. In the process of the manufacture of flour from the wheat. grain or berry it has been found that unless the wheat germ is wholly or to a large extent removed in the process of grinding, the resultant flour is not satisfactory for production of bread and other products. The mode we have followed in practicing our invention is: First.--By grinding the fresh wheat germ as released in the flour mill in the process of milling the wheat berry to a fineness as closely approximating that of flour as the nature of the material permits with the primary object of disseminating to the greatest degree the moisture and the fatty constituents contained in the germ and with the secondary object of permitting the easy blending of the ground product with flour in subsequent bak~ng operations. In practicing the invention we have f ound that this grinding operation should be carried on in a hammer or nutmeg grinder, i.e., a grinder in which the article is pulverized by impact. We have also found that good results are obtained by grinding the wheat berry so fine that it will pass a 120 mesh screen. Second.--The admixture with the wheat germ either prior to, during, or subsequent to the process of grinding of sodium. chloride or dry corrmercial baker's or dairy salt in suitable proportions, 5 to 8% by weight, of salt having been found effective. The purposes of admixing sodium chloride or possibly some other substance having the required characteristics are (a) To provide a ready absorbent for moisture which might otherwise be attracted by the ground germ and tend to promote rancidity;

8 (b) To inhibit a too rapid diastatic action of the yeast used in baking due to the presence of the known enzymes in the wheat germs and to compensate for the action of the enzymes of. the germs. Third.--By thereafter adding to the mixture of the fin~ly ground wheat germ and sodium chloride or salt an inert non-tatty filler, similarly finely ground, such as potato flour. The proportion of the filler to the germ is 15-20% by weight and its purpose is: (a) To absorb the fatty constituents of the wheat germ released by the grinding; (b) Thereby to disseminate to a greater extent the said fatty constit~ents; (c) So to occlude the said fatty constituents as to minimize exposure to oxidizing agents causing rancidity. Rice flour, rice polishings or corn flour may also be used as a filler though we have found potato flour best. Fourth.--By heating the resultant mixture without free access of air or in a current of inert gas at a temperature and for a time sufficient thoroughly to dry it, the object being to remove such pe~centage of moisture as would promote rancidity. In practice, heating to a temperature.of F. and preferably of 212 F. for twenty minutes in a closed oven has proved effective. The dehydration may also be performed prior to the adding of filler. Fifth.-- By packaging the said mixture as pr-omptly as practicable, preferably while still warm, in containers being either (a) airtight; or (b) proof against free air circulation; or (c) airtight or proof against free air circulation b,ut with the interstices filled with an inert gas such as carbon dioxide, nitrogen, etc.

9 DRINKING BOWL FOR ANIMALS J/ r! 7S ~,\ ---~ ~--~ ~-- CORK~~v-~~.11'-~