Prof. Jepson Examination No.
Put your Exam number on each of the 16 pages of this exam. Turn in all pages.
This Exam is CLOSED BOOK. You may not use any books, notes, computer or any aid, except a translation dictionary.
On the Drafting and Writing Part, Write Leigiblv and Large. No one will make an effort to decipher your work. THIS IS SOLELY YOUR RESPONSIBILITY. Use the lined paper supplied. Put your Exam Number on every sheet. Identify which question you are responding to.
On the Scantron Part, Erase Completely and Make No Stray Mark. No one will make any effort to fix your work. THIS IS SOLELY YOUR RESPONSIBILITY.
This Examination is worth 200 points (and you have two hours). This Exam has TWO parts. Part ONE, consisting of Questions 1-3, is worth 100 points. Part ONE requires the student to answer short essay questions and to do drafting as if for filing with the PTO. Part TWO. worth 100 points, consists of 33 multiple-choice questions drawn from the assigned reading. class discussions, handouts, emailings, and exercises. There is no penalty for guessing.
Allocate your time any, way you wish. (I would do the M C questions first, definitely, but you do what you like.)
PART ONE Drafting and Short Answers (100 points)
Question ONE (65 points)
carefully the cover page (bibliographic sheet) from the Continuous Ambulatory
Peritonea] Dialysis System (CAPD) patent to Rogers (US Pat. No. 4,551,146).
The CAPD is ambulatory in that a patient may sterilely connect to the dialysis
equipment to refresh the cleansing solution via a catheter inserted through
the patient's abdominal wall. The specification of the '146 patent (not
One primary object is to provide a method of automatically disinfecting the connector between the catheter and the CAPD system each time a connection is made.
The only independent claim of the '146 patent reads just as it did when the application was originally filed:
1. A peritoneal dialysis fluid connecting device for maintaining the sterile integrity of the fluid connection, said device comprising: a sealed enclosure;
an absorbent packing material in said enclosure means, said packing material substantially saturated with a disinfectant solution;
a first tube connecting end for supplying a dialysis fluid;
a second tube connecting end adapted to telescopically mate with and connect to said first tube connecting end;
and a mating mechanism allowing for a water-tight connection of said ends sterilely telescopically inside said enclosure so that the ends are bathed in said disinfectant solution as the connection is being made and throughout use.
During prosecution of the application that lead to the '146 patent, Rogers died. Examiner ("Sloppy") Apley from art group 880 had rejected Claim I as "unpatentable under 35 USC § I 02(b) over the Pfister patent 4,334,55 L" (Cover page of patent enclosed.) There was no other ground of rejection or objection in that Office action dated August 27, 1982. The '146 patent later issued.
In response to the Au ust 27, 1982 Office action, Dave O'Reilly. Roger's patent attorney, 9 fully explained the situation to Faye. Dave knew that Roger's first prototype had consisted of a standard orangelsh-bodied, white-capped, prescription-pill bottle into which Phillip put a sponge. There were two holes punched through the cap for the tubes to pass through.
Faye told Dave that the "pill bottle prototype" no longer existed. She offered Dave a picture that she said Rogers had hand drawn. (See drawing.) Faye told Dave that she had no recollection the pill-bottle model was ever used in a dialysis procedure on her husband, or any patient. She was certain her husband was seeking to obtain opinions on whether the invention was medical],,, sound by writing to doctors and talking to nurses. She recalled that on her son's twelfth birthday, her husband told the family's pediatrician that the connector might be feasible from a medical standpoint.
The Roger boy, Skip, told Dave he remembered his father playing with a prototype. which was hanging from the patio door on May 7, 1979, the day of Skip's twelfth birthday party. The connector of the pill-bottle embodiment leaked all over the place and Skip had asked his father to remove it and himself prior to Skip's guests arriving.
1.Draft as fully and accurately as these materials permit the documents) that Dave must have filed to secure allowance of the '146 patent.
TWO (25 points)
Assume that in January of 1987, Rogers' successors-in-interest sue Baxter, alleging that Baxter's System 11 connection shields infringe claim 1.
You represent Baxter. Baxter would like to have this problem taken care of expeditiously and inexpensively. Baxter makes all the facts from Question ONE available to you.
2. Explain briefly to Baxter what defense(s) it has and why, and what, if anything, you can do for Baxter from the standpoint of actions involving the PTO.
Question THREE (10 points) LOOK at the '146 patent. 3. Explain very briefly, the significance, and the procedure that provided for the material at each of these two sections:
Instructions for Part TWO (Multiple Choice)
Put your Exam number on the Scantron sheet.
Fill in completely the bubble on your ScantronTM answer sheet that you believe corresponds to the BEST choice. Use only a No. 2 pencil.
Make no stray mark. Erase completely. Incomplete erasures and stray marks are counted as incorrect responses by a machine. We will not hand check. THIS IS YOUR RESPONSIBILITY.
Your score will be the number correct. There is no penalty for guessing.
If you wish to explain an answer, do so in this booklet.
1) Examiner mails Final Thursday 16 July 1998 and gives you three months to respond. PTO receives your complete response on Monday 19 October 1998. The response included a proper Notice of Appeal with appropriate fee and a certificate of mailing stating the date of deposit with U.S. Postal Service was Friday 16 October 1998. You mailed in triplicate the Appeal Brief with appropriate fee. The PTO received Appeal Brief on Monday 21 December 1998 - it did not include a certificate of mailing or a petition and fee for an extension of time. What is the status of the application?
a) Pending because the Appeal Brief was timely filed.
b) Pending, because the statutory period for response to the Office action expires on Friday, January 15, 1998.
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.
e) Abandoned because the Appeal Brief did not include a proper certificate of mailing.
2) Max prosecutes a patent application to appeal. On reviewing the application, the Board discovers the Evans patent, issued in 1979 and of record in the application, but not applied in rejecting any claim. The Board reversed all of the rejections made by Examiner and rejected one claim under 35 U.S.C. 102(b) as anticipated by Evans. Max does not agree with the Board. What is the most appropriate action for Max to take?
a) Request that Board enter an amendment of the rejected claim that Max
believes would overcome the Board's rejection.
b) File a petition for an extension of time under 37 CFR 1. 136(a) along with the proper fee and request reconsideration of the rejection by the Board.
c) Recommend to client that she consult another attorney to appeal to the United States Court of Appeals for the Federal Circuit.
d) Submit an argument to Examiner asserting the Board's decision is not well founded.
e) Submit a showing of facts not previously of record, which in Max' opinion overcomes tile new ground of rejection, and request a remand to Examiner.
3) Notice of Appeal:
a) May be filed after the end of the six month period for response to a
Final Rejection and must be signed by the attorney of record.
b) Must be signed by either the attorney of record in the application or the applicant and may identify all rejected claims appealed.
c) Must be signed by the assignee of record and must identify the rejected claims appealed.
d) May be filed after a claim has been twice rejected although the claim has not been given a final rejection.
e) May be filed after the first Office action on the merits provided tile application is not a continuation or substitute application of a prior application.
4) You filed an original application on 23 August 1999. At the same time, you filed all unexecuted declaration that refers to the application and a preliminary amendment that describes the best mode of carrying out the claimed invention, which is nowhere else described. Subsequently, you file a signed declaration in reply to a Notice to File Missing Parts. In the first Office action, Examiner objects to the preliminary amendment as adding new matter. Examiner requires cancellation of the new matter. Which of the following is the best response:
a) File a reply pointing out that the objection is improper because the
declaration filed in reply to the Notice to File Missing Parts is a properly
executed declaration that refers only to the amendment.
b) File a reply to the Office action canceling the new matter.
c) File a reply pointing out that the objection is improper because the declaration filed in reply to the Notice to File Missing Parts is a properly executed declaration that refers only to the application and amendment.
d) File a reply pointing out that the objection is improper because the declaration filed in reply to the Notice to File Missing Parts is a properly executed supplemental' declaration that refers only to the amendment.
e) Appeal to Board of Patent Appeals requesting review of Examiner's objection.
5) A PCT application filed on November 10, 1997 claims priority to a Japanese national application filed December 16, 1996. A copy was communicated to the United States as a designated office oil June 20, 1998. A demand for international preliminary examination, United States elected, was filed on June 5, 1998. Accordingly, the thirty-month period of PCT Article 39(l)(a) expired on June 16, 1999. Applicant submitted the national fee to enter the United States national stage June 12, 1999. On August 13, 1999, applicant timely submitted a translation and a declaration of the inventors in compliance with PCT regulations in reply to a Notice of Missing Requirements. On August 29, 1999, a Notice of Acceptance was mailed. The national stage application issued as a U.S. patent on October 23, 2000. What is the effective date of the U.S. patent as a reference under 35 U.S.C. § 102(e)?
a) November 10, 1997.
b) June 20, 1998.
c)August 10, 1998.
d)August 13, 1999.
e)October 23, 2000.
Your client would like to amend as indicted the claim below through reexamination
or reissue. The amended claim is support by the original disclosure. Disregard
the issues of recapture. novelty, obviousness and usefulness.
1. A ball valve comprising:
i) a fully enclosed housing-,
ii) a valve [member] ball rotatably joined in the housing.
iii) a [flange sealably] engagable with surfaces of the [member] ball, and
iv) a linear spring [means] interposed between the housing and the seal and biasing the seal into engagement with the member ball.
Which of the following statement(s) is/are true?
a) The amended claim would be properly presented in a reissue application
filed on October 14, 1999, and a reissue patent is grantable where reissuance
is sought of a patent granted oil September 9, 1997.
b) The amended claim would be properly presented in a request for reexamination filed oil September 9, 1999, and a certificate of reexamination is grantable where reexamination is sought of a patent granted on October 7, 1997.
c) The amended claim would be properly presented in a reissue application filed on September 9, 1999, and a reissue patent is grantable where reissuance is sought of a patent granted on October 7, 1997.
d) The amended claim would be properly presented in a request for reexamination filed oil October 14, 1999, and a certificate of reexamination is grantable where reexamination is sought of a patent granted on September 9, 1997.
e) The amended claim would be properly presented in a continuation application filed July 27, 1999 on a patent granted July 28, 1998.
7) Which of the following statements, if any, is true regarding an application to reissue?
a) For priority under 35 U.S.C. § 119, it is not necessary to claim
priority in the reissue patent application if a claim for priority was
perfected in the original.
b) Only one reissue patent application is permitted per patent.
c) New matter may be properly added in a reissue application only to correct an error made during the prosecution of the original patent application.
d) A reissue may not recapture claimed subject matter deliberately canceled in an application to obtain a patent.
e) None of the above.
8) You file November 19, 1999 an application to reissue and enlarge the scope of the claims directed to an electrical device in a patent granted January 20, 1998. In the patent, the broadest disclosure of the resistance is "0.07 to 2.1 ohms." Examiner rejects several reissue claims. Your reply presents an amendment to the specification adding the following: "The device can have a resistance of 2.2 to 3.5 ohms." You file no petition and no fee requesting entry of the amendment. The PTO will likely:
a) Enter the proposed amendment, and if Examiner objects to the amendment
as new matter, you should traverse the objection on grounds that the patent
owner is entitled to enlarge the scope of the content of the patent.
b) Not enter the amendment because amending the specification does not enlarge the scope of the claims.
c) Not enter the amendment because the petition and necessary fee were not filed.
d) Enter the amendment, and if the Examiner objects to the amendment as new matter, you should file yet another amendment this time canceling "The device can have a resistance of 2.2 to 3.5 ohms."
e) Enter the amendment, if you amend the claims to included the subject matter.
9) These are ordinarily not open to the public:
a) A reexamination proceeding file.
b) A substitute application.
c) An interference proceeding file involving a U.S. patent.
d) A reissue application.
e) All of the above.
10) A patent issued to Liz on August 1, 1998, on a communication device. Shortly thereafter, Liz assigned 50% of her right, title, and interest to Michael and 25% to Kyle. After Kyle and Michael record their titles, Liz discovers her claims are too narrow. Liz' attorney did not appreciate the full scope of Liz' invention. Today, October 3, 1999, the reissue oath must be signed and sworn to by:
a) the attorney or agent of record.
b) Liz, Michael, and Kyle.
c) Liz only.
d) Liz and either Michael or Kyle.
e) Michael and Kyle only.
11) On a Request for Reexamination of U.S. Patent XXX. All the claims are in independent format, are original claims, and are the only claims that were presented during the original prosecution. All the claims are directed to a polymer separator apparatus. The apparatus is used for separating material, including fibers suspended in a liquid suspension, into a light fraction containing the fibers, and a heavy fraction containing rejects. Assume no issues under 35 U.S.C. §§ 102 103, or 112. Which of the following new claims is properly rejected under 35 U.S.C. § 305?
a) Claim 13. A polymer separator apparatus according to claim 4, wherein
the separator chamber is conical in shape having at the narrow end an outlet
for the heavy fraction and at its wide end an outlet for the light fraction.
b) Claim 13. A polymer separator apparatus according to claim 4, wherein said blades are configured in the form of generally plane surfaces curved in one plane only.
c) Claim 13. A polymer separator apparatus according to claim 4, wherein the outlet duct is in the form of two frustroconical portions joined at their narrow ends.
d) Claim 13. A method of separating polymer material including fibers suspended in a liquid suspension comprising the steps of separating the material into a light fraction containing the fibers and a heavy fraction containing rejects, and converting the light fraction into a pulp and paper stock suspension.
e) Claim 13. A polymer separator apparatus according to claim 4, wherein the outlet duct is in the form of two frustro-conical portions joined at their broad ends.
12) In a reexamination proceeding, which of the following rejections is proper?
a) A rejection under 35 U.S.C. § 102(b) based on an affidavit that
the invention was in public use in this country more than one year prior
to the date of the application.
b) A rejection under 35 U.S.C. § 102(e) that the invention was described in a patent by another filed in the United States before the invention thereof by applicant.
c) A rejection under 35 U.S.C. § 102(b) that the invention was on sale in this country, more than one year prior to the date of the application for patent in the United States.
d) A rejection under 35 U.S.C. § 102(a) based on an affidavit that the invention was known or used by others before the invention thereof by the applicant.
e) A rejection under 35 U.S.C. § 102(f) that the applicant did not himself invent the subject matter sought to be patented.
13) A patent to Max issues on July 23, 1999, on a application filed on January 15, 1997. The cited prior art reference(s) properly support a determination that there is substantial new question of patentability in which of the following circumstances in a reexamination proceeding on the Max patent:
a) Claims 1- 15 are rejected as being anticipated under 35 U.S.C. §
102(a) by the disclosurein the Maria patent. Maria was granted on January
14, 1997. It is the only rejection.During the original prosecution, the
Examiner used Maria in combination with a patent to Smith, granted in 1923,
to reject original claims 1-5 in the application as being obvious under
35 U.S.C. § 103.
b) Claims 1- 15 in the Max patent are rejected as being obvious under 35 U.S.C. § 103 over the Kyle patent in view of the Jack patent. The Kyle patent was granted on December 3, 1996, and the Jack patent was granted in 1994. During the original prosecution, Examiner used the Kyle patent as prior art to reject original claims I and 2 in the Max application. The Jack patent was never before the examiner during the original prosecution.
c) Claims 7-15 are rejected as being anticipated under 35 U.S.C. § 102(a) by the disclosure in the Liz patent. The Liz patent was granted on January 21, 1997. During the original prosecution, the Liz patent was used to reject original claims 1-5 as being anticipated under 35 U.S.C. § 102(a).
d) Newly added claims 16-20 are rejected as being anticipated under 35 U.S.C. § 102(b) by the Isabel patent. The Isabel patent was granted in 1987. It is the only rejection in the reexamination proceeding. During the original prosecution, Examiner cited the Isabel patent against claims 1-7.
e) All of the above.
14) Which of the following, if any, is/are good reason(s) to file narrow claims in the original application?
a) Claims can always be broadened during prosecution.
b) Narrowing claims after filing always causes prosecution history estoppel.
c) Narrow claims are more easily patentable.
d) All the above.
e) None of the above.
15) General speaking, compared to the summary of the invention section of a specification of an application, the summary of the invention section of an Appeal Brief will be:
a) more tightly written, concise, and to the point.
b) more loosely written, vague, and broad.
c) less technical, longer, and understandable by a broader range of readers.
d) more technical, not necessarily shorter or longer, and understandableby persons skilled in the applicable art.
e) more technical, longer, and more expansive and inclusive of background and prior art.
16) Defensive reexamination presents the potential disadvantages of.
a) no duty to disclose.
b) low probability of getting the same Examiner.
c) the opponent gets to explain the art.
d) certainty of being able to stay litigation.
e) none of the above.
17) The term "Rule 172" refers to:
a) 35 USC § 172.
b) 35 USC § 1.172.
c) 37 CFR § 1.172.
d) 37 CFR § 172.
e) MPEP Rule 172.
18) Applicant claims a handpiece for transmyocardial laser surgery having a broad contact surface that does not cause disruption in heartbeats. Reference discloses a fulgurator having an electrode surrounded at its discharge end with a protector to prevent the electrical discharge from jumping laterally from the electrode. The reference and claimed inventions were NOT part of the same endeavor.
a) The reference is analogous art.
b) The reference is nonanalogous art.
c) The reference is nonanalogous art if the reference is not reasonably pertinent to the problem with which the inventor was concerned.
d) The reference is nonanalogous art if a person having ordinary skill in the art would not reasonably have expected to solve the problem of doing cardiac surgery without disrupting the heart beat by considering a reference dealing with a flared protector to contain electrical discharges.
e) The reference is nonanalogous art if either "c" or "d."
19) Read this argument: Sharon discloses previous laser surgical scalpels were difficult to manipulate and aim precisely. Sharon addresses this problem by providing the surgeon with a clear, unobstructed view of the working spot - the point where the laser beam is focused. Sharon discloses that this feature can be achieved by removing a portion of the laser device tip. Consistent with this intent, Sharon describes and illustrates numerous embodiments of the scalpel tip; all the embodiments are tapered and end in a relatively small point. McFee's second embodiment, on the other hand, shows a flaring end is significantly larger in diameter at the terminating end, rather than smaller as in Sharon. Such an enlarged end runs counter to Sharon's explicit recital of an unobstructed field of view and an easily manipulable, precisely-aimed device:
a) The above argument is a teaching a different way argument.
b) The above argument is a teaching away argument.
c) The above argument is designed to counter an anticipation rejection.
d) The above argument is likely to create harmful prosecution history.
e) The above argument is not likely to succeed.
20) The argument above will:
a) not counter a "motivation to combine" assertion by Examiner.
b) counter a "motivation to combine" assertion by Examiner.
c) not counter a "suggested combination" assertion by Examiner.
d) counter a "the proposed combination replicates the claimed invention" assertion.
e) counter an "every elements met" assertion.
21) In prosecuting design patent applications (as opposed to utility patent applications) you need not meet:
a) the particularly and distinctly claimed requirement.
b) the written description requirement.
c) the enablernent requirement.
d) two of the above three.
e) you must meet all three of "a" "b" and "C'
regard to the design patent drawings to the
right, note that Fig 4 appears a bit squashed and
that the weight bar shown in Figs. 2, 3, and 4
appears like it might be of different thickness
one to the other.
the appearance of Fig. 4 results from
a) (1) perspective; (2) invalid.
23) The weight bar matter raises concerns of:
b) best mode.
d) written description.
e) three of the above.
24) A claim of the golf head design patent is:
a) Indefinite, if the appearance and details of the design are not clearly
shown from the views of the drawings.
b) Indefinite, if the appearance and details of the design are not clearly shown frorn just the words of the claim alone.
c) Indefinite, if the claims fail to conform with 35 USC para 1.
d) Not enabled, unless a POSA could not make and use the golf head from the description.
e) Not described, unless a POSA could be found to have been in possession of the golf head based upon a reading of the words of the description.
key consists of a bow, which allows users to
turn the key in a corresponding lock, and a
blade, the portion inserted into the lock's
keyway. When a key is manufactured, the key
blade is "blank," i.e., the blade has not been cut or "bitted" with the combination required to operate the corresponding lock. Although a blank key blade will not operate the lock, the profile of the key blade is manufactured to fit into the corresponding lock's keyway. Subsequently, the blank key blade is cut to match the corresponding lock's combination. Figs. 1-5 are all the design patent drawings from the '636 design patent.
first line of the description of the drawings of the '636 patent should
read: "FIG. I is a
front elevational view of a portion of a key blade blank showing
a) the designs.
b) the design.
c) our designs.
d) our design.
e) our new design.
26) If the application included as drawings color photographs of the actual keys produced, which in fact are made of red metal, then the application:
a) could not result in a valid patent.
b) could not result in a valid patent until amended.
c) could not be processed until the photographs were replaced with ink (black) drawings.
d) may issue with the color becoming an integral component of the claims, if applicant presents a grantable petition stating that the color photos are the only practical medium in which the keys can be shown.
e) may issue with the color not becoming an integral component of the claims, if applicant presents a grantable petition stating that the color photos are the only practical medium in which the keys can be shown.
27) An unlimited number of key blade and corresponding keyway designs are available. But no other shaped key blade will fit into a particular corresponding keyway. The choice of any particular design of bittings is unlimited and arbitrary. The '636 patent is:
a) invalid because the design is not aesthetically pleasing.
b) valid despite the fact that the design is aesthetically pleasing
c) invalid because the design is dictated solely by functional concerns.
d) invalid because the design is not dictated solely by functional concerns.
e) invalid because the design is not seen in actual use.
28) In a Reissue proceeding, after receiving a rejection that was made final:
a) you may amend as to form, by right.
b) you may amend by complying with any requirement of form expressly set forth in a previous Office action, by right.
c) you may not make any amendments without leave.
d) you may cancel any claim, by right.
e) just "b" and "d."
29) The most important step in responding to an Office action is
a) drafting new claims.
b) drafting new drawings.
c) reviewing the Office action with the inventor.
d) understanding the invention.
e) review the drawings and the new claims for conformity.
30) You receive an Office action dated August 13, 1999. Examiner sets a three month response period and rejects all of the claims as indefinite. You discover a recently issued U.S. patent that you think discloses and claims your client's invention. On September 28, 1999, you file amendment copying some of the claims from the patent. In a second Office action dated October 13, 1999, the examiner rejects the copied claims as not enabled. Examiner sets a three month response time.
a) You have no ethical obligation to tell Examiner you copied the claims,
and your First and Second responses was/are due Monday, November 15, 1999,
and Thursday, January 13, 2000, respectively.
b) You have an ethical obligation to tell Examiner you copied the claims, and your First and Second responses was/are due Monday, November 15, 1999, and Thursday, January 13, 2000, respectively.
c) You have no ethical obligation to tell Examiner you copied the claims, and your First and Second responses are due Monday, November 29, 1999, and Wednesday, January 12, 1000 respectively.
d) You have an ethical obligation to tell Examiner you copied the claims, and your First and Second responses was/are due Monday, November 29, 1999, and Wednesday, January 12, 2000 respectively.
e) You have an ethical obligation to tell Examiner you copied the claims, and your First and Second responses was/are due Thursday, January 13, 2000.
31) No personal interview with Examiner to discuss the merits of proposed claims on Reissue may be had by:
a) inventor, even though the registered attorney in attendance.
b) a registered agent having no power of attorney in the reissue case, but known to Examiner as the local representative of the attorney of record in the case.
c) some unregistered general-practice attorney, who has not even passed the patent bar, but is the applicant in the application.
d) some unregistered general-practice attorney who has not even passed the patent bar, but who has been given the associate power of attorney in the particular case.
e) a full-fledged, big-time, registered patent attorney, who has passed the patent bar,but who is not an attorney of record in the case although he brings a copy of the application file to the interview.
32) In responding to a First Office action, the better practice is to:
a) make arguments only.
b) amend the claims to recite structure that distinguishes the cited art.
c) amend the preamble to recite a purpose or an environment.
d) amend to take care of § 112 concerns and argue regarding substantive matters.
e) no way to answer based just on the information given.
33) On appeal to the Board of Appeals and Interferences:
a) the 5 panel members will be from Expert Examiners in the art group.
b) the 3 panel members will be from Expert Examiners in the art group.
c) at least one of the 3 panel members will be an Examiner from the art group.
d) at least one of the 5 panel members will be an Examiner from the art group.
e) life has no guarantees.