U.S. DEPARTMENT COMMERCE UNITED STATES PATENT AND REGISTRATION EXAMINATION FOR PATENT ATTORNEYS AND AGENTS. Au gust 28, 1996

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1 Test Number 014 Test Series 196 NAME U.S. DEPARTMENT COMMERCE UNITED STATES PATENT AND OFFICE REGISTRATION EXAMINATION FOR PATENT ATTORNEYS AND AGENTS Au gust 28, 1996 I\tlorning Section (1 00 Points) Time: 3 Hours DIRECTIONS This section of the exam inmion is an open book examination. You may usc books, notes, or Olher written materials that you believe will be of help to you except you may not usc prior registration examination questions and/or answers. Books, notes or other written materials containing prior rcgisiiation 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. AJI questions must be answered in SECTION 1 of the Answer Sheet which is provided to you by the testadminisiiator. You must usc 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 aji 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 wilj be considered as being incorrectly answered. This section of the examination consists of fifty (50) multiple choice questions, each worth two (2) poims. Do not assume any additional facts not presented in the questions. When answering each question, unless otherwise stated, assume that you are a registered patent practitioner. Any reference to a practitioner is a reference to a registered patent practitioner. The most correct answer is the policy, pructicc, and procedure which must, shall, or should be followed in accordance with the U.S. patent statutes, the PTO rules of practice and procedure, the Manual of Patent Examining Procedure (MPEP), and the Patent Cooperation Treaty (PCT) articles and rules, unless modified by a subsequent court decision or a notice in the OfficiaL Gazette. There is only one most correct answer for each question. Where choices through are correct and choice is "All of the above", the last choice will be the most correct answer. Where a question includes a statement with one or more blanks or ends with a colon, select the answer from the choices given to complete the statement which would make the statement true. Unless otherwise explicitly stated, all references to patents or applications are to be understood as being U.S. patents or regular (non-provisional) utility applications for utility inventions only, as opposed to plant or design applications for plant or design inventions. Where the terms "USPTO", "PTO" or "Office" arc 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 SCORE ATLEAST70 POINTS TO PASS THIS SECTION OF THE REGISTRATION EXAMINATION. DO NOT TURN THIS PAGE UNTIL YOU ARE INSTRUCTED TO CHECK THE CONTENTS OF THIS EXAMINATION BOOKLET

2 1. V, a registered practitioner, previously worked as a patent examiner for the PTO examining bread makers. Years after leaving employment as an examiner, J, a noted patent litigator, approached V and asked V to serve as an expert witness in a patent infringement case involving a patent on a bread maker. J also indicated that ifv did not want to serve as an expert witness at trial, then J would gladly hire V as a consultant for trial preparation purposes and that V would not have to testify at trial. While employed at the PTO, V was the examiner who examined and allowed the application that matured into the patent-in-suit. In addition to V' s full-time patent practice, V is a noted expert in the bread maker art, who often gave speeches concerning the bread making art ~d who wrote a weekly syndicated column on home bread making. V also served as a consultant to a number of multinational appliance manufacturers. V, flattered by J' s interest, told J that V would consider the offer. V should: Accept the offer to serve as an expert witness because 37 CFR only prohibits a former PTO employee from prosecuting patents. Accept the offer to serve as an expert witness because the PTO has no interest in a "former" employee. Accept the offer to serve as an expert witness because Vis a known expert in the field. Decline all.offers because 37 CFR prohibits former public employees from working on matters in which the employee had a personal responsibility. Decline the offer to serve as an expert witness, but accept the offer to work as a non-witness consultant because an undisclosed consultation would not violate any PTO rule. 2. J, a patent practitioner, submitted a patent application to the PTO listing two inventors, A and D. The original application contained 10 claims. The first office action rejected all ten claims under 35 U.S.C J then submitted an amendment canceling claims 5 and 6 and adding claims 11 and 12. Before the amendment was acted on by the examiner, J discovered that in the original application, A was a co-inventor only in claims 5 and 6. D was the sole inventor of the remaining claims. For the two claims submitted with the amendment, D was the sole inventor of claims 11 and 12. What should J do to rectify any inventorship questions? Nothing, because the inventorship question does not affect the validity of the patent and is mainly concerned with ownership rights which implicates state law, not Title 35. Therefore, the PTO does not allow applicants to correct errors in naming inventors. File a petition and amendment with fee requesting deletion of A as an inventor. Abandon the application and file a continuation application listing only A as the inventor. 2

3 Send the PTO a petition with the appropriate fee, after receiving a notice of allowance, explaining the problem and asking the PTO to correc~ the clerical error in the application. Abandon the application and file a continuation application listing only D as the inventor. 3. With regard to her application for a U.S. patent, your client wishes the benefit of the date she filed a patent application for the same invention in another country which affords similar privileges in the case of applications filed in the U.S. Which of the following is the latest you can file a certified copy of the foreign patent application and perfect her claim for foreign priority during the pendency of her application? At the time of filing her application in this country. Within six months after filing an application in this country. Before the patent is granted, with a petition and fee, if after paying a patent issue fee. Prior to paying any patent issue fee. In a reissue application. 4. Which of the following is not a small entity entitled to certain fee reductions? A nonprofit organization. A small business concern. An independent inventor. An institution of higher education. A government agency. 5. After one of your client's claims has been allowed, another stands rejected for double patenting because it is a substantial duplicate of the allowed claim, and you and your client agree that it is a substantial duplicate. Which of the following could NOT overcome the rejection? Canceling the rejected claim to permit issuance of the allowed claim. Canceling the allowed claim to obviate the rejection. Filing a divisional application that includes the rejected claim. Amending the allowed claim consistent with the specification. Amending the rejected claim consistent with the specification. 3

4 6. On March 20, 1992, A invented an environmentally friendly and disposable grocery cart. He filed a continuation-in-part application on December 14, 1995,. that claimed benefit of an earlier copending patent application filed on May 14, 1992, now abandoned. The claims in the December 14, 1995, application are sufficiently supported by the earlier filed application. The examiner rejected the claims in the CIP application citing three references. The first reference was a newspaper article from a small town in Northern Idaho about A on April4, 1993, that discussed his plans and efforts to commercially develop the disposable grocery cart for use in urban settings. The examiner stated that the article anticipated the invention under 35 U.S. C because it was printed one year prior to the application date. The two other references were U.S. Patents issued in Patent #1 disclosed, but did not claim, a grocery cart with inflatable tires for use on roads. Patent #2 disclosed a disposable and environmentally friendly snow sled. Concerning these two patents, the examiner stated the invention was obvious under 35 U.S. C because the two patents, when viewed together, taught all the features on the claimed invention. You are the patent practitioner prosecuting this application and you are preparing a response to the rejection. Your best course of action is to: Petition the Commissioner under 37 CFR 1.18l(a)(3) stating that the examiner improperly relied on an obscure newspaper that is not widely available to many people and that Patent # 1 did not claim the technology upon which the examiner based the rejection. Submit an amendment that avoids the cited references and a statutory disclaimer. Submit a response to the examiner arguing that the claims are patentably distinct from the cited patent references and arguing the newspaper article is not prior art. Submit an affidavit under 37 CFR showing that A's invention predates the April 4, 1993, newspaper article and an affidavit under 37 CFR showing that the two cited patents do not teach all that is claimed by applicant. Submit an affidavit under 37 CFR showing that A's invention predates th~ April 4, 1993, newspaper article. 7. You have filed a patent application on behalf of John Q. Inventor on January 15, You receive an office action from the examiner. The claims have been rejected under 35 U.S.C. 103 in light of a U.S: patent. Your client informs you that the examiner cannot possibly be correct, because he clearly was the sole inventor and the first to conceive of the idea and reduce it to practice in the U.S. in February The U.S. patent had an effective filing date of April13, 1993, but was based on a foreign filing date of January 2, What should you do? Tell your client that there is nothing he can do except to amend the claims. File an antedating affidavit by John Q. establishing reduction to practice prior to Aprill3, File an affidavit by a co-worker establishing that John Q. conceived the idea back in September Refer the examiner to the disclosure document your client filed at the Sunnyvale Center for Innovation, Inventions and Ideas on October 12, Request an interference be declared. 4

5 8. Examiner Conner sent a first office rejection on August 14, 1994, giving a shortened statutory time limit of three months. The five claims in the application were rejected under 35 U.S~C. 112 and under 35 U.S.C On November 1, 1994, the applicant submitted a response that added an additional five claims and addressed the 103 rejection, but failed to address the 112 rejection. On November 23, 1994, the Office sent a n otice to applicant stating that the November 1, 1994, response was nonresponsive to the August 14, 1994 Office action. In the November 23, 1994, letter the Office gave applicant 1 month to correct the deficiency in the November 1, 1994, response. Assuming that applicant never responded to the Office's last notice, the application became abandoned on which date? November 15, November 14, December 24, February 14, February 15, Subsequent to receiving a Notice of Allowance, and prior to paying the issue fee, applicant explained to a practitioner that two additional claims should be included in the patent application. The practitioner immediately prepared an amendment to add the claims to the patent application before the issue fee is paid. Which of the following are true: I. II. III. I. Practitioner may have the amendment entered as a matter of right. II. Practitioner must file a petition showing good and sufficient reasons why the amendment is necessary, III. Practitioner must point out that the new claims are patentably novel. II 6C III. None of the above. 10. In all cases, a petition to revive.an abandoned patent application must be accompanied by all of the following except: A proposed response or a continuation application unless one has already been filed. A statement or showing regarding the delay in prosecution. The appropriate petition fee. A terminal disclaimer. None of the above must be included in all cases. 5

6 11. On March 1, 1996, applicant received an Office action containing a final rejection of the three remaining claims in the application. The examiner gave the applicant six months to respond to the Office action. On May 1, 1996, the applicant submitted a notice of appeal to the Board of Patent Appeals.and Interferences. When is applicant's appeal brief due? Two months from the final Office action. Two months from the notice of appeal. Five months from the final Office action. Six months from the final Office action. Sixty days from the notice of appeal. 12. Hand F, Austrian scientists employed by the U.S. based pharmaceutical company StrongS tuff, Inc., have invented a new class of anabolic steroids at their laboratory in Austria. StrongS tuff, Inc. filed a U.S. patent application on January 2, 1996, which claims the new steroids. On J?ebruary 1, 1996, StrongS tuff received the u. s. filing receipt, which said nothing about the grarit of a foreign filing license. On May 1, 1996, StrongS tuff, Inc. filed patent applications in Japan and Europe claiming priority to the U.S. application. On July 1, the CEO of StrongS tuff, Inc. comes to see you. He is concerned because he had just heard about a U.S. statute that requires applications to obtain a foreign filing license before filing patent applications outside the United States. What advice should you give him? Refile the applications in Japan and Europe. File a petition for a retroactive foreign filing license that includes: (1) a listing each of the foreign countries in which the unlicensed patent application material was filed; (2) the dates on which the material was filed in each country; (3) a verified statement stating: that the subject matter in question was not under a secrecy order at the time it was filed abroad; that it is not currently under a secrecy order; that the license has been diligently sought after discovery of the proscribed foreign filing; and an explanation of why the material was filed abroad through error and without deceptive intent without the required license; and ( 4) the required fee. Do nothing since the invention was made in Austria, not the United States, and therefore no foreign filing license is required. Send a letter to the application branch requesting that the filing receipt be corrected to show the granting of a foreign filing license. Advise him to file a statement in the PTO that the application has a potential violation of35 U.S.C Bill, Mike and Jake invented a new beer cap remover and retained practitioner P to prepare and file a patent application thereon. The application was prepared and filed in the PTO and included a power of attorney naming P as the attorney. Six 11?-onths after the application was filed, P and Jake have a disagreement about strategy and Jake decides he needs a new attorney. Bill and Mike, however, feel that P is doing a great job and that there is no need to change the 6

7 power of attorney. Jake comes to you and requests that you take over prosecution of the application. He wants to revoke P' s power of attorney and have you prosecute the patent application for him. He informs you that Mike and Bill won't agree to revoke the power of attorney; What is the best way for you to proceed on J's behalf to revoke P's power of attorney? File a revocation of P' s power of attorney in the application signed by Jake. File a revocation and a petition pursuant to 37 CFR setting forth a good and sufficient reason why the revocation of the power of attorney signed by Jake should be accepted, including the appropriate fee. File a new power of attorney naming you as attorney and signed by Jake. File a revocation of the power of attorney and a new power of attorney signed by Jake, with Mike and Bill's signatures signed by you, including the appropriate fee. File a document wherein P grants you an associate power of attorney to prosecute the application. 14. On Tuesday, August 30, 1994, a chef who had been developing an automatic kitchen potstirring device became aware of a magazine article published on February 28, The article disclosed a pot stirring-device that was not as good as the chefs invention. The chef rushed to the U.S. Patent and Trademark Office and filed a patent application with a filing date of August 31, The chef also filed a counterpart patent application in a foreign patent office on March 1, On Monday, April3, 1995, the foreign patent office cited the 1993 magazine article in a communication in the counterpart foreign application. On Monday, May 1, 1995, the examiner in the PTO issued an Office action containing only a restriction requirement. On Monday, July 3, 1995, the chef filed an election with traverse in opposition to the PTO restriction requirement. No PTO Office action treated the patentability of the chefs claims before Tuesday, August 1, On August 1, 1995, the PTO issued an Office action withdrawing the restriction requirement and including a Notice of Allowance. On Friday, September 1, 1995, the chef paid the issue fee. On Tuesday, October 2, 1995, a U.S. patent issued to the chef. Sometime in 1995, the chef prepared a package containing: an information disclosure statement fully disclosing the 1993 magazine article; a petition requesting consideration of the 1993 magazine article; a petition for extension of time, citing Rule 136; no certification; and no fee. What was the last day that the chef could have filed the package in the PTO and definitely be entitled to consideration of the 1993 magazine article in the U.S. application filed on August 31, 1994? May 1, June 1, July 3, July31, August31,

8 15. You are a patent agent, and work in-house for a corporation. One of the corporation's employees, L. G., has invented a one-piece bracket for separating items while drying. You drafted a patent application for L.G. and instructed an outside attorney, F.D., to file it in the PTO. The application contains claims 1, 2, and 3. F.D. filed the application, and you will be supervising F.D. 's work in prosecuting the application. L.G. has an obl~gation to assjgn the application to the corporation. L.G. told you that a two-piece bracket was publicly used at a trade show more than one year before the filing date. The two-piece bracket is material to the patentability of claim 2 only. At a company picnic, another employee, L.M., comes to you and credibly claims that L.G. stole the idea for the invention of claim 3 from L.M. Which one of the following actions satisfies your duty of disclosure? Ensure that F.D. cancels claim 2, and instruct F.D. to provide to the PTO the 'information about L.M. Provide to the PTO the information about L.M. Instruct F.D. to provide to the PTO the information about the two-piece bracket. Do nothing. Provide to the PTO the information on the two-piece bracket after L.M. quits the company. 16. You represent a number of different inventors. In which of the following applications should you not file a petition for special status for examination purposes? An application filed by a sole inventor who is 72 years old. An application for an invention that materially enhances the quality of the environment. An application for an invention that involves superconductivity technologies. An application for an invention that involves semiconductor technologies. An application for an invention that involves the treatment of HIV I AIDS or cancer. 17. You mailed a response to a first Office action on the merits to the PTO on April 18, The response is received in the PTO on May 9, On May 10, 1996, you discover a typographical error in one of your claims and mail a supplemental amendment correcting the error to the PTO. The supplemental amendment is received in the PTO on May 20, On that same day, May 20, 1996, the examiner mails a Notice of Allowance in the case. On May 31, 1996, the examiner receives the supplemental amendment. The amendment: Will be entered as a matter of right because the amendment was mailed before the examiner mailed the Notice of Allowance. Will not be entered as a matter of right. 8

9 Will not be entered as a matter of right because the amendment was received by the examiner after the examiner mailed the Notice of Allowance. Will not be entered as a matter of right because the amendment was received in the PTO on the same day that the examiner mailed the Notice of Allowance. Will usually be responded to by way of a supplemental action. 18. You filed in the PTO a patent application on November 20, The application claims a new pharmaceutical compound and a method of using the pharmaceutical compound to treat hypertension. On January 31, 1996, you received a restriction requirement from the examiner requesting election between the following groups of claims: group (I), directed to the product; and group (II) directed to the method of use. Which of the following is not a proper response to the restriction requirement? You file a written response traversing the restriction requirement and setting forth specific reasons why you believe the restriction requirement is improper. You file a written response electing group I for prosecution on the merits, without traverse of the restriction requirement. You file a written response provisionally electing group I, with traverse and set forth the reasons why you believe the restriction requirement is improper. You file a written response electing group I for prosecution on the merits and an amendment canceling the method claims of group II. You file an amendment canceling the product claims of group I. 19. Your client Sam, a U.S. resident, invented the Wigerator, a new device for the manufacture of toupee's. On May 10, 1995, Sam secretly went to Cleveland, Ohio and sold four of his Wigerators to Ted's Big Hair, Inc., a Canadian manufacturer of toupees. No restriction was placed on the use of the machines. On July 5, 1995, Ted started using the Wigerators in his Mexico factory to manufacture his revolutionary new Shag 2000 hairpiece. In order to boost the sales of his new line, Ted has widely publicized in Mexico, Cana~ and the U.S. both the Shag 2000 and the Wigerator. On June 1, 1996, Sam came to your office seeking advice about patenting his machine. Which of the following is the most correct advice? Sam is not barred from obtaining a U.S. patent on the Wigerator because the Wigerator was not publicly sold more than one year before today' s date. Sam is barred from obtaining a U.S. patent on the Wigerator because the Wigerators were sold more than one year before the present date. Sam is not barred from obtaining a U.S. patent on his device because the Wigerator was not publicly used more than one year before today' s date. Sam is barred from applying for a patent on the Wigerator because Ted now owns the Wigerator. None of the above. 9

10 20. In July 1996, a recently registered patent agent, who is not a lawyer, asked a registered patent attorney to help the agent establish a practice. Which one of the following choices best comports with the professional responsibilities of both the agent and the attorney? The agent advertises as a registered practitioner authorized to practice before the Office in patent and trademark cases, and the attorney supervises all the trademark work done by the agent. The agent advertises on television and radio as a registered patent agent and accepts patent cases on a contingent fee basis. The attorney has the agent prosecute trademark applications before the Office and the attorney signs all the papers submitted to the Office without reading the papers. The attorney and agent enter a partnership agreement that has no health or retirement benefits and that specifies that after termination of the partnership, the agent and the attorney will not practice in each other's neighborhoods or accept - each other's established clients. Without receiving anything of value from the agent, the attorney refers patent application clients to the agent, the agent informs the clients that the agent is a registered patent attorney, and the agent competently represents clients in patent cases. 21. The existence of a particular U.S. patent application becomes apparent due to the publication of its foreign counterpart. The application could greatly affect a domestic industry that is at a critical juncture. Public concern, as well as private concern among potential domestic licensees runs high, with the following individuals wanting to know how the prosecution of the application is proceeding. The individuals obtain the following powers and access: U obtains a power to inspect from the applican~ having no time limit. V gets a power to inspect from the Attorney of Record having no time limit. W acquires a power to inspect from the Assignee of Record having no time limit. X, an attorney with the Security and Exchange Commission, acquires a power to inspect from the Assignee of Record having no time limit. Y has a petition for access granted by the Commissioner having no time limit. U, V, W, X, & Y inspect the file. Eighteen months later, no patent has issued. In the interim, U, V, W, X, & Y come back to the PTO to inspect the file for a second time. Which party will not be permitted to inspect the application? U V W X y 10

11 22. E gives a sole power of attorney to Practioner to draft and prosecute an application for an improved powerwidget. E received a first Office action, mailed March 30, 1996, with a shortened statutory response period of three months. On July 30, Practitioner finds that his law firm can no longer represent E on this matter and must withdraw. In addition to contacting the applicant, Practitioner should: File a request for withdrawal and request that the Commissioner approve his request to withdraw him from the case. File a request for withdrawal and ask that the application be immediately forwarded to Office of Petitions for prompt action on his request for withdrawal and pay a one month extension fee. File a request for withdrawal and ask that the application be immediately forwarded to Office of Petitions for prompt action on the request for withdrawal, have all attorneys in the firm request permission to withdrawal, and pay a one month extension fee. File a request 'for withdrawal and ask that the application be immediately forwarded to Office of Petitions for prompt action on his request for withdrawal and pay the fee extension for two months because withdrawal will not be approved unless 30 days remain in the set response period. File a request for withdrawal and ask that the application be immediately forwarded to Office of Petitions for prompt action on his request for withdrawal. 23. Attorney receives a patent application written in the Japanese language on May 3, 1996, from applicant. The applicant, A W, a citizen and resident of Japan, indicates that she offered the invention for sale in U.S. Virgin Islands on May 4, She also published an article describing the invention on May 30, She is concerned about loss ofu.s. rights and wants you to protect those rights. To protect and preserve your client's rights, you should: File the patent application in the Japanese language in the Office on May 30, Request a certified translation from the Translations Branch of the Scientific and Technical Information Center (STIC) and include the appropriate fee under 37 CFR 1.17(k).. Add any necessary fees and the Oath, and file the patent application in the Japanese language at the PTO and follow up with a continuation application as soon as a translation is available. File the patent application in the Japanese language in the U.S. Receiving Office on May 4, 1996, under the Patent Cooperation Treaty and follow up with a U.S. National Stage application claiming it as priority.- File the patent application in the Japanese language in-the Office on May 3,

12 24. Scotty lives and works in a non-nafta country. He files an original U.S. patent application for machinable transparent aluminum on January 4, On January 4, 1996, he files a first Continuation-in-Part patent application (CIP) for a transparent aluminum widget. A preliminary amendment is filed with the CIP that adds a claim to a nuclear transparent aluminum widget. Scotty's Oath contains all of the necessary materials but includes a declaration that he has reviewed and understands the contents of the specification, including any claims, as amended by the preliminary amendment. The first CIP claims benefit of the original U.S. patent application. The original patent application had no information regarding the manufacture and use of widgets. The specification for the first CIP contained no information on the manufacture and use of nuclear widgets. On March 27, 1996, Scotty files a second CIP with a specification that describes both the nuclear transparent aluminum widgets found in the preliminary amendment and an improved version of that nuclear transparent aluminum widget, the hyperwidget. Scotty's Oath follows 37 CFR 1.63 to the letter. The second CIP claims benefit of the first CIP and original patent applications. Widgets were "well known and a matter of common knowledge" to every engineer of any skill in the widget art at least as early as Nuclear widge~s became "well known and a matter of common knowledge" at lea.st as early as January Moreover, any skilled engineer would be able to fabricate a widget, nuclear or otherwise, out of any machinable composition. However, hyperwidgets are a nonobvious variant of the nuclear widget. Scotty asks you to draft new claims for his second CIP application. There is a great deal of art in this area. You must determine the priority dates for each invention in order to draft claims that avoid the prior art. Without filing any affidavits, what are the priority dates for the four claims of the CIP to: (1) a transparent aluminum; (2) a transparent aluminum widget; (3) a nuclear aluminum widget; and ( 4) a hyperwidget. The transparent aluminum has a. priority date of January 4, 1995; the transparent aluminum widget has a priority date of January 4, 1996; the nuclear transparent aluminum widget has a priority date of March 27, 1996; the hyperwidget has a priority date of March 27, The transparent aluminum has a priority date of January 4, 1995; the transparent aluminum widget has a priority date of January 4, 1995; the nuclear transparent aluminum widget has a priority date of January 4, 1996; the hyperwidget has a priority date of March 27, The transparent aluminum has a priority date of January 4, 1995; the transparent aluminum widget has a priority date of January 4, 1996; the nuclear transparent aluminum widget has a priority date of January 4, 1996; the hyperwidget has a priority date of March 27, The transparent aluminum has a priority date of March 27, 1996; the transparent aluminum widget has a priority date of March 27, 1996; the nuclear transparent aluminum widget has a priority date of March 27, 1996; the:hyperwidget has a priority date of March 27, I 996. The transparent aluminum has a priority date of January 4, 1995; the transparent aluminum widget has a priority date of March 27, 1996; the nuclear transparent 12

13 aluminum widget has a priority date of March 27, 1996; the hyperwidget has a priority date ofmarch 27, M invented a computerized voice box for large draft animals and filed an application on May 3, Although the examiner provided helpful suggestions, M refused to follow them, and a fmal rejection was mailed on May 13, 1995, with a shortened statutory response time of three months. M deposited a responsive amendment in a mailbox on July 12, 1995, along with a proper certificate of mailing. The response arrived in the PTO on July 16, The examiner called M the next day, July 17, and suggested an amendment. On August 15, 1995, the examiner and M had another telephonic interview on the subject, but did not come to any agreement. The examiner sent the interview summary along with the advisory action on September 15, Several weeks later, on October 15, the examiner again called M and suggested an amendment. The examiner said that he would give M several days to think about the amendment and would send out a supplemental Advisory Action late the following week. Which of the following would be best form to do on October 15? Fax the examiner and authorize the described examiner's amendment. Fax in a petition for entry of the amendment and authorization to debit his account for the appropriate fee under 37 CFR 1.17(r) and authorize the described examiner's amendment. Fax in a petition for an extension of time and authorization to debit his account for the appropriate fee under 37 CFR 1.17(a) and authorize the described examiner's amendment. Fax in a petition for an extension of time and authorization to debit his account for the appropriate fee under 37 CFR 1.17(b) and authorize the described examiner's amendment. Fax in a petition for an extension of time and authorization to debit his account for the appropriate fee under 37 CFR (c) and authorize the described examiner's amendment. 26. A U.S. patent on a soccer ball was issued to inventor Kick on January 15, In April of 1992, Kick assigned the entire right and interest in the patent to Rubber Company. The assignment was executed on November 30, Rubber Company discovered an error in the patent which would render some of the patent claims invalid. If a reissue application was filed on January 14, 1994, to correct the error by broadening the scope of the claims, the reissue oath had to be signed and sworn to by: Kick. Kick, except as otherwise provided in 37 CFR 1.42, 1.43, 1.47, and must be accompanied by the written assent of Rubber Company. Kick, except as otherwise provided in 37 CFR 1.42, 1.43, 1.47, or Rubber Company. Rubber Company. Kick or Rubber Company. 13

14 27. Jack and Tom invented a nuclear battery and a novel method of attaching it to widgets. After four years of prosecution in the PTO of their joint patent application, Jack and Tom received a patent in July of Jack continued his research and came up with a new and improved widget, the hyperwidget. Jack filed a patent application which described and claimed the hyperwidget in December It issued as a patent on June 8, In October 1994, Jack discovered an improvement, and on June 8, 1995, filed a second patent application claiming benefit of his hyperwidget with the Jack and Tom nuclear battery. Jack's second application contained the following claims: 1) A hyperwidget with extended arms. 2) A hyperwidget with extended arms and a nuclear battery. Claim 1 was an obvious improvement over the hyperwidget. The Examiner rejected claim 1 as obvious on grounds of obvious-type double patenting over the hyperwidget patent and rejected claim 2 as obvious over the hyperwidget patent in view of the Jack and Tom patent. As Jack's patent practitio#er, which would be the best course of action to overcome the rejection? File a terminal disclaimer of only claim 1 and argue that the two patents were from non-analogous arts. File an antedating affidavit explaining that the third invention was invented before the hyperwidget application was filed. File a terminal disclaimer of Jack's second patent application. File a terminal disclaimer of only claim 1 and argue that the Jack and Tom patent was not by another. Claim continuation-in-part status to original application with argument that the original application fully enabled claim 1 and that the Jack and Tom patent was not by another. 28. R, a registered patent practitioner, filed a non-provisional patent application and a filing fee by Express Mail and included a postcard receipt listing "One complete patent application." Accidentally, on the next day, R filed a duplicate copy of the same non-provisional application and a filing fee by Express Mail and once again included a postcard receipt listing "One complete patent application." The PTO returned the postcards for both the original and the duplicate application with an indication that the applications were received with serial numbers for each application. Which, if any, of the following statements is true? The postcard receipt is R's prima facie proof that she filed a complete application. Upon request, the duplicate of the application will be returned tor. Upon request, R is entitled to a full refund of the filing fee for the duplicate of the application. R must immediately inform the Office and expressly abandon the duplicate of the application. None of the above is true. 14

15 29. The following independent claims are filed in an original, non-provisional application: claims 1, 2, 3, and 10. The dependent claims are as follows: claim 5 depends from claims 1 or 2; claim 7 depends from claim 3; claim 8 depends from claims 1, 3, or 7; and claim 9 depends from claims 1, 5, or 10. Which of the following are true? Claim 8 is improper because it depends from multiple dependent claims. Claim 9 is improper because it depends on claim 10. Claim 9 is improper because it depends from a multiple dependent claim. Claim 5 counts as two claims for fee calculation purposes.. All but are true. 30. Which of the following, if any, is NOT an ele~ent of a prima facie case of obviousness under 35 U.S.C. 103? One or more references which are prio.r art within the meaning of 35 U.S.C A suggestion or motivation in the prior art or in the knowledge generally available to one of ordinary skill in the art, to modify or combine the prior art references. A reasonable expectation, based on the applicant's disclosure, that the claimed combination would be successful, supported, if necessary, by secondary considerations. A teaching or suggestion in the referenced prior art of each claim limitation. All of the above are required elements of a prima facie case of obviousness. 31. On November 14, 1994, applicant filed an international patent application under the Patent Cooperation Treaty in the Swedish Receiving Office. The United States was specifically designated in the application. The application claimed priority of an earlier Swedish national application filed on November 15, A copy of the international application was communicated to the United States Patent and Trademark Office under Article 20 of the PCT on May 25, A demand for international preliminary examination, in which the United States was elected, was properly filed on June 12, In order to prevent abandonment of the international application as to the United States, what was the last day on which the applicant may pay the basic national fee? July 15, September 15, November 14, May 15, July 15,

16 32. R, a registered patent practitioner, received a first Office action with a three-month shortened statutory response period for an original application filed after June 8, The case fnvolved a foreign client, so R forwarded a copy of the Office action to the client for translation and comment. Four months later R received a response from the client. After reviewing the response, R realized that the commercial-success portion of the response would be stronger if it included a declaration from an officer of the client. By this time five-and-a-half months had passed from the mail date of the Office action and R knew that it would take another full month to obtain a translated, properly execl,lted declaration. R should: File the response immediately without the declaration and fulfill the requirements for a three-month extension of time. Wait the extra month to obtain the declaration and then fulfill the requirements for a four-month extension of time. Wait as long as necessary to obtain the declaration and then request an appropriate extension of time because there is no statutory response time -for applications filed after June 8, Petition to revive the application because the application went abandoned when he failed to respond after three months. Petition the Commissioner to stay further action until the declaration is completed You have filed an appeal brief for your appeal to the Board of Patent Appeals and Interferences. The primary examiner has furnished you with her examiner's answer dated August 1, 1996, which does not contain new points of argument or a new ground of rejection. On August 15, 1996, the U.S. Court of Appeals for the Federal Circuit entered a decision that directly affects the merits of your appeal-at the Board. You are aware of this decision today. Which of the following answer choices sets forth the appropriate way or ways to make the Board aware of this decision? I. By filing a supplemental appellant's brief with the Board. II. By making a timely request for an oral hearing and presenting the decision at the hearing. III. By addressing it in a reply brief. I and III. II. III. II and III. I and II. 34. C, a registered patent practitioner with a sole practice she operates out of her house, obtained a plant patent for a client on a commercial catnip hybrid. One morning, over four years later, as she was sorting through her cat' s toys, she came across a courtesy notice from the Patent and Trademark Office reminding her that a maintenance fee was due on the patent. Based on the date specified in the notice, the fee was already eight months overdue. C should immediately: 16

17 ... Write the PTO that a mistake has been made and that no maintenance fee is in fact owed. Pay the maintenance fee plus the surcharge for filing a maintenance during the grace period. Tender the maintenance fee and submit a petition (with the required fee) for acceptance of payment where the delay was unintentional. Tender the maintenance fee and submit a petition (with an affidavit blaming the cat and with the required fee) for acceptance of payment where the delay was unavoidable. Do nothing because the patent is irrevocably lost because of the failure to pay the maintenance fee within the grace period. 35. L, a registered patent practitioner, responded to a "written description" rejection under 35 U.S. C. 112, paragraph one, with an amendment with the ~o~lowing remarks: I have attached a corrected drawing showing the structure that the stupid examiner did not know was a necessary part of the invention. This amendment should put the case in condition for allowance unless the examiner wants to make some more ridiculous rejections. L should not be surprised when the amendment is not entered because: Amendments are not permitted in response to a "written description" rejection. An amendatory paper containing objectionable remarks may be returned to the sender. Amendments to drawings that appear to add new matter will not be entered until the new matter question is resolved. Amendments to drawings are not permitted in response to a "written description" rejection. and are both correct. 36. In a reexamination proceeding, an extension of time in which to respond to a first Office action: Will never be granted. Will automatically be granted upon filing a petition for an extension of time and payment of the appropriate fee. Will automatically be granted upon filing a first timely response to the Office action. Will automatically be granted for a period of six months. Will only be granted for sufficient cause, and a reasonable time specified. 17

18 37. Practitioner represents the inventor, a small entity, of an automatic diaper changer. When he had filed the patent application, Practitioner had indicated in his cover letter that the Commissioner was authorized to charge any fees under 3 7 CFR 1.16 and which may be required during the entire pendency of the application to Deposit Account No. 00,000. He has received the Notice of Allowance. Practitioner does not want to have to put forth any more money on this case because his client has not kept his bill current and he currently has $500 in his deposij account. Practitioner should: Do nothing, knowing the issue fee has been authorized. Forward the Notice of Allowance to his client and inform his client he will not pay the issue fee because the client has not kept his bill current. File the notice in the client's file, with an indication on Practitioner's calendar to contact the client within four months to get the matter handled. Return the Notice of Allowance to the PTO with an authorization to charge his deposit account for the issue fee. -File an extension oftime to pay the issue fee.under 37 CFR Joe filed a patent application on June 1, The only description in the application of the best mode is made by way of a reference to a Japanese patent. Joe should: Do nothing because it is acceptable to disclose the best mode by an incorporation by reference. File an amendment which amends the specification to include the material incorporated by reference and file a petition the Commissioner stating that the incorporation by reference was inadvertent and requesting that the application be accorded the original filing date.. File an information disclosure statement that discloses the Japanese patent and is accompanied by a copy of the Japanese patent. File an amendment which amends the specification to include the material incorporated by reference along with an affidavit stating that the included material is the same as the material incorporated from the Japanese patent. Abandon the application and refile a new application that includes a description of the best mode in the specification without incorporating by reference Inventor files an application for a means for supporting a building that dampens structural vibration during earthquakes and claims priority based on an Inventor's Certificate issued by Thailand. Inventor is a citizen of Thailand and is employed by the Thailand National Office of Building Safety. Which of the following statements are true: Inventor will get benefit of foreign priority based on the Inventor's Certificate issued by Thailand. Inventor will get benefit of priority because he is employed by the Thailand government. Inventor will get benefit of priority if he files an affidavit stating that at the time of filing for the Inventor's Certificate he had the option to either file for a patent 18

19 or an Inventor's Certificate on the subject matter fanning the basis of the priority claim. Inventor will not get benefit of priority. Both and. 40. On January 2, 1995, S files a patent application in the U.S. for an improved mousetrap. Prior activities involving the mousetrap during the year 1993 will not be a bar under 35 U.S.C. 102(b) ifthe activity was: Use of the mousetrap ins's warehouse to perfect the mousetrap. Sale of the device to J to ascertain whether there was consumer demand for the claimed invention. Sale of the device to J to ascertain appropriate pricing strategy for future marketing of the mousetrap... Advertisement in a commercial publication with an indication that the device would not be available until Demonstration at a national trade show. 41. Inventor has been prosecuting his own patent application. He has just received a final rejection from the examiner under 35 U.S.C In the spirit of"never say die," Inventor has hired Attorney to handle an appeal. Attorney, sole practitioner in his office, files the appellant's brief. Attorney does an excellent job of explaining how the specific limitations in the rejected claims are not described in the prior art. Upon reading this brief, the examiner maintains the 3 5 U.S. C. 103 rejection and enters a new ground of rejection under 35 U.S. C Attorney is presently tied up in an out-of-state trial which promises to last for two months. What should Attorney do with regard to the Examiner's Answer? File a reply brief which addresses all the arguments she had previously made as well as additional arguments directed to the 112 rejection. Not file a reply brief at all and let the Board decide based on the main briefs and the record. Authorize Attorney's law clerk to prepare and file a reply brief addressing only the new rejection raised by the examiner. File a petition with reasons for an extension of time to file a reply brief four months from the date of the Examiner's Answer. File a reply brief accompanied by an amendment appropriate to the 35 U.S.C. 103 rejection. 19

20 42. On June 9, 1995, J files a Patent Cooperation Treaty (PCT) application designating the PTO as the International Searching Authority (IS A). J' s application contains three claims: ( 1) A process of manufacturing comprising steps A and B, with A differing from B; (2) Apparatus specifically designed for carrying out step A; and (3) An apparatus specifically designed for carrying out step B. The examiner holds a lack of unity and transmits a request for additional fees. J never responds to the request and the examiner examines claims 1 & 2. J then files a National Stage application (application A) containing claims 1, 2, & 3. J, by way of preliminary amendment, cancels claim 3 in application A, and simultaneously files a divisional application (application B) containing claim 3. The examiner sends out a first action allowance for application A but rejects application B for double patenting. J should: Point out that 35 U.S.C. 154 mandates a term of twenty years from filing and so there cannot possibly be an extension of the patent monopoly due to issuance of the patent for B. Explain that 35 U.S.C. 121 precludes the rejection of a divisional application u~ing a patent issuing on an application with respect to which a requirement for restriction was made. File a terminal disclaimer in application B. Argue that under 35 U.S.C. 371, application A was provided the same filing date as application B. Consequently, application B could not be rejected by application A because the A invention was not described before invention B. Argue that the scope of invention B differs from the scope of invention A. Consequently, there could be no extension of the right to exclude use of invention A by the granting of a patent to invention B. 43. You are practicing with a small law firm in Ohio. You assisted a client in prosecuting their patent application, which was originally filed on June 1, In January 1996, you mailed an amendment in response to an examiner's Office action mailed December 6, which set a three month shortened statutory period. In August, you received a Notice of Abandonment of the application. You pull your client's file and see that the postcard you sent with the amendment has been stamped as timely received by the PTO and returned to you. Which of the following is the best course of action? ' Send a letter to the examiner stating there is some mistake because you know the Office received your amendment. Send a petition to the Commissioner setting forth the dates the Office action was received and when you responded, together with a copy ofthe amendment you filed and a copy of the return postcard showing the Office received your amendment. File a continuation application. File a petition to the Commissioner requesting withdrawal of the abandonment based on the. fact that you submitted a timely response. As part of your petition you provide: ( 1) an affidavit from your secretary stating that she put the amendment in the mail in January, together with the postcard and that the usual procedure in the firm is to place the matter on the attorney's docket for six months 20