Final Exam, Fall 1998

Professor Craig Jepson


PPI Final Examination


Instructions:

This examination is to be taken at the time and place regularly scheduled.

Put your student ID number on this booklet and on the Scantron TM answer sheet.

You may use only your own MPEP, course materials, notes and outline.

Use a No. 2 pencil to fill in the bubbles. Make no stray marks. Fill in completely the bubble on your Scantron TM answer sheet that you believe corresponds to the BEST (most correct, precise or accurat
e) choice of the 5 responses.

Not every student is expected to finish. There is no incentive to guess. The score will be the number of correct selections minus the number of incorrect selections divided by four (S=C 1/4).

If you wish to explain any answer, do so in this booklet. Turn in this booklet and the Scantron TM answer sheet.

Good Luck!


Questions 1-7 are based on the following proposed application claim 22

22. A method of competitively bidding on a plurality of items comprising the steps of identifying a plurality of related items, offering said plurality of items to a plurality of potential bidders, receiving bids from said bidders for both individual ones of said items and a plurality of groups of said items, each of said groups including one or more of said items, said items and groups being any number of all of said individual ones and all of the possible combinations of said items, entering said bids, indexing each of said bids to one of said individual ones or said groups of said items, and assembling a completion of all said bids on said items and groups, identifying in said record all of said bids corresponding to said prevailing total price.


1) Proposed claim 22 suffers from the following technical flaws:
a) No antecedent basis; not one sentence; failure to indent each element phrase; misplaced "and".
b) Failure to indent each element phrase; misplaced "and"; failure to separate each element phrase with a semicolon; no colon after the transition; no antecedent basis.
c) No antecedent basis; not one sentence; failure to separate each element phrase with a semicolon; no colon after the transition.
d) Not one sentence; failure to separate each element phrase with a semicolon; no colon after the transition.
e) Inappropriate preamble; failure to separate each element phrase with a semicolon; no colon after the transition.


2) Assume that all technical flaws are corrected but that the term "completion" (penultimate subparagraph) is not defined in the specification. The PTO should
a) Interpret the term to mean a set of prices that are optimal in some mathematical sense.
b) Interpret the term to mean a bid for all of said items at a prevailing total price.
c) Object to the claim as indefinite
d) Reject the claim as indefinite
e) Either (c) or (d).


3) Assume that all technical flaws are corrected and that the term "completion" is defined in the specification. The PTO should
a) Interpret the claim in the broadest sense consistent with the specification.
b) Interpret the claim in the broadest sense consistent with the specification, drawings, and the other claims.
c) Object to the claim as not within any of the statutory classes for claims.
d) Reject the claim as not within any of the statutory classes for claims.
e) Either (c) or (d).


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4) Applicant could increase the likelihood of patentability for this claim by:
a) Adding a Beauregard step
b) Adding product-by-process step
c) Changing to an apparatus claim
d) Adding hardware
e) Adding software


5) Applicant may be able to write claims directed to a programmable apparatus whose actions are directed by software as a[n]
a) machine
b) process
c) article of manufacture
d) composition
e) improvement


6) Applicant may be able to write claims directed to a computer-readable memory that can be used to direct a computer to function in a particular manner when used by the computer as a[n]
a) machine
b) process
c) article of manufacture
d) composition
e) improvement


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7) The term "said record" (last subparagraph) in claim 22:
a) Is unacceptable
b) Is new matter
c) Is duplicative
d) Makes the claim indefinite
e) Lacks an antecedent basis


8) The application for patent, but not the issued patent, must have claims that
a) start on a separate sheet of paper
b) are consecutively numbered
c) are in English
d) have Arabic numerals
e) none of the above


9) A requested Amendment might not be entered if it requires the addition or deletion of more than
a) Five words
b) Four words
c) Six words
d) Five elements
e) Six elements


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10) Claim I recites the patentable combination of elements A, B, C, and D. Claim 2 recites all the same structures of claim I and adds element E. Claim 2 is
a) an improper dependent claim
b) an improper dependent claim if it places further limitations on the remaining elements
c) a proper dependent claim, if it places further limitations on the remaining elements
d) a proper dependent claim, whether or not it places further limitations on the remaining elements
e) a proper independent claim


11) While employed at Shore Company, Joe filed a patent application on August 3, 1990, for a drilling device. The application was assigned to his employer, and became a patent on January 7, 1992. Through merger, on July 1, 1993, OSD Enterprises acquired Shore Company, including the patent to Joe. On December 15, 1994, Dale filed a patent application for a drilling platform in combination with a drilling device. Dale later assigned his application to OSD Enterprises. On April 3, 1998, the examiner sent a first Office action rejecting the claims of the Dale application as unpatentable over a patent to Fran, which discloses a drilling platform, issued on February 2, 1993, in view of the patent to Joe. Which of the following would you do as Dale's best response to overcome the rejection?
a) Present arguments patentably distinguishing the claims of the Dale application from the combination of disclosures of the patents to Fran and Joe.
b) Withdraw from representation and file a statutory disclaimer over the patent of Joe because the patent is owned by OSD Enterprises.
c) Submit evidence that the patent of Joe was commonly owned when the Dale application was filed so it would no longer qualify as prior art.
d) Cancel the subject matter in the claim directed to the drilling platform and argue that the combination of references applied in the rejection would then be moot and thus the application would be allowable.
e) File an amendment adding to the claims a particular hydraulic fluid not previously disclosed in the application.


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12) An application for patent, when filed, may incorporate by reference essential material by reference to
a) United States Patents
b) pending United States patent applications
c) published non-patent publications
d) any of the above
e) Only (a) and (b) above.


13) "Essential material" is what is necessary to
a) describe the claimed invention
b) provide an enabling disclosure of the claimed invention
c) describe the best mode
d) all the above
e) only (a) and (b) above.


14) The limitations on the materials that may be incorporated by reference in United States applications that are to issue as United States patents are not applicable to applications relied on only to establish an effective filing date under 35 USC 119 or 120 because
a) the purpose of the incorporation by reference requirement is to minimize the burden to the public of getting copies of disclosure documents
b) the purpose of the incorporation by reference requirement is to guaranty full disclosure
c) the purpose of the incorporation by reference requirement is to minimize the burden to the patentee of providing copies of disclosure documents
d) all the above
e) none of the above


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15) During prosecution, the proposed patent claims are interpreted according to the meaning
a) understood by the PTO Examiner
b) understood by a person having ordinary skill in the relevant technical art
c) understood by the inventor
d) understood by plain and ordinary people
e) understood by the judge or jury


16) A patent claim generally has three parts the Body, the Transition phrase, and the Preamble. The transition phrases "having ... .. being," and "composed of'
a) limit the claim to the specified materials
b) do not exclude additional unrecited elements
c) limit the claim to the specified materials and to materials that do not materially affect the basic and novel characteristics of the claimed invention
d) must be interpreted in light of the specification
e) none of the above


17) The rule is: "A claim is anticipated only if each and every element as set forth in the claim is found, either expressly or inherently described, in a single prior art reference." But under what circumstances, if any,. may more than one reference be used in a 102 rejection?
a) To prove the primary reference contains an enabled disclosure
b) To explain the meaning of a term used in the primary reference
c) To show that a characteristic not explicitly shown in the primary reference is inherent
d) Any of the above
e) None of the above


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18) The purpose of the enablement requirement is
a) to ensure that the invention is communicated to the interested public in a meaningful way
b) to ensure that the inventor was in full possession of the claimed invention on the filing date
c) to ensure that the inventor has told the full truth about the invention
d) all the above
e) none of the above.


19) A description of a single embodiment is most likely to provide enablement for generic claims, if the claims are directed to
a) A novel bicycle gear
b) A novel automatic transmission for a lunar-lander
c) Novel circuitry for reducing a synthesizer to a chip
d) Novel processes for oil cracking and refinement
e) Novel hybridization procedures for isolation and characterization of DNA


20) Questions of enablement are evaluated against
a) the subject matter
b) the claimed subject matter
c) the disclosed subject matter
d) the embodiments
e) the working embodiments


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21) Claim 8 below: "A Fourier transform processor for generating Fourier transformed incremental output signals in response to incremental input signals, said Fourier transform processor comprising incremental means for incrementally generating the Fourier transformed incremental output signals in response to the incremental input signals. is an example of:
a) A single-means claim
b) A recipe claim
c) A Beauregard claim
d) A product-by-property
e) A Jepson claim


22) Claim 8 above might be made allowable by
a) adding limiting structure
b) adding non-limiting structure
c) adding process steps
d) amending "in response to incremental input signals" to read "in response to certain specified incremental input means"
e) deleting "in response to incremental input signals"


23) If a proposed claim includes within its scope the presence of some inoperative embodiments
a) the proposed claim must be amended
b) the proposed claim is fine if it also covers operative embodiments
c) the proposed claim is fine if a skilled person could determine which embodiments that were conceived, but not yet made, would be inoperative
d) the proposed claim is fine if a skilled person could deten-nine which embodiments that were conceived, but not yet made, would be inoperative with no more expenditure of effort than is normally required in the art.
e) the proposed claim is invalid


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24) The purpose of the best mode requirement is
a) to ensure that the invention is communicated to the interested public in a meaningful way
b) to ensure that the inventor was in full possession of the claimed invention on the filing date
c) to ensure that the inventor has told the full truth about the invention
d) all the above
e) none of the above.


25) The term "consisting essentially of'
a) limits the scope of a claim to the specified ingredients and those that do not materially affect the basic and novel characteristic(s) of a composition.
b) closes the claim to unrecited elements
c) leaves the claim open to unrecited elements
d) has no set meaning, and must be determined from the context of the claim language
e) means whatever the patentee wishes it to mean


26) In Maxwell v.Baker, infringement was avoided by practicing
a) alternative embodiments from the specification
b) unclaimed alternative embodiments from the specification
c) prior art embodiments
d) equivalent embodiments
e) none of the above


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27) As regards compliance with 35 USC 112, the best evidence of what the inventor regards as the invention is:
a) the claims
b) the specification
c) the inventor declaration
d) all the above
e) none of the above


28) Kanine Corporation asked you to represent, before the PTO, some of its employees who have invented an apparatus. On February 17, 1999, you filed a specification, concluding with ten claims. At that time, you neither supplied the names of any of the actual inventors with the specification, nor did you file the required drawings with the specification. The specification refers to the drawings. You sent the drawings by first class mail to the PTO on March 15, 1999, and PTO received them on March 17, 1999. On April 3, 1999, using the "Express Mail Post Office to Addressee" service of the U.S. Postal Service, and so certifying, you deposited with the U.S. Postal Service a declaration pursuant to 37 CFR Section 1.63 signed by all the actual inventors together with the express mail number. On April 4, 1999, the PTO received the declaration. What will be the earliest filing date given to the application by the PTO?
a) February 17, 1999.
b) March 15, 1999.
c) March 17, 1999. April 3, 1999.
e) April 4, 1999.


29) Agreement between the claims and the specification is properly considered on the issue of compliance with 35 USC 112
a) paragraph I
b) paragraph 2
c) paragraph 3
d) paragraph 4
e) paragraph 5


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30) 35 USC 112, 2 nd reads: "The specification shall conclude with one or more claims particularly pointing out and distinctly claiming the subject matter which the applicant regards as his invention." This section has
a) two requirements, both objective
b) two requirements, both subjective
c) two requirements, one subjective and one objective
d) one requirement, which is subjective
e) one requirement, which is objective


31) On July 12, 1994, you filed a patent application containing two independent claims, claims I and 2, directed to methods of forming an integrated circuit. The applicant conceived the methods in Concord, New Hampshire, on November 10, 1992. Commencing on November 10, 1992, the applicant exercised due diligence until he reduced the methods to practice on July 27, 1993. In an Office action dated January 18, 1998, the Examiner rejected claim I as being anticipated by Motie under 35 U.S.C. 102(b). Motie is a French patent filed December 20, 199 1, and issued on June 15, 1993. The Motie patent claims the method of the applicant's claim 1. Claim 2 was rejected as anticipated by Belle under 35 U.S.C. 102(e). Belle is an U.S. patent that was filed on June 10, 1993, and discloses, but does not claim, the method of applicant's claim 2. The Belle patent issued on October 4, 1994. Which of the following would be the most proper course of action to take to respond to the rejections?
a) File an antedating 1.131 affidavit to overcome both rejections.
b) File an antedating 1. 131 affidavit to overcome the rejection of claim 2 and cancel claim 1.
c) File an antedating 1. 131 affidavit to overcome the rejection of claim I and cancel claim 2.
d) File an antedating 1. 131 affidavit to overcome both rejections and request that an interference be declared with the Motie patent.
e) File a response arguing that the rejections are improper because the Belle patent issued after the filing date of your client's application


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32) A application for a patent, which is not a reissue application, is
a) a parent application
b) an original application
c) a provisional application
d) a nonprovisional application
e) a divisional application


33) A proposed claim that fails to interrelate elements may be properly objected to by the PTO as
a) nonenabling
b) failing to particularly point out and distinctly claim the invention
c) failing to include the best mode
d) failing to include subject matter regarded as the invention
e) any of the above


34) The purpose of the definiteness requirement is to
a) ensure that the scope of the claims is clear to the public
b) ensure that the scope of the claims is clear to the PTO
c) primarily "a" and secondarily "b"
d) ensure that the claims are written as precisely and clearly as the subject matter allows.
e) all the above


35) During patent examination, the claims must be interpreted
a) as broadly as reasonable, consistent with the specification
b) so as to uphold their validity
c) so as to uphold their validity over the prior art of record
d) consistent with applicant's intent
e) consistent with the known prior art, the specification, and the applicant's intent


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36) The acceptability of claim language depends on whether
a) The applicant's use is consistent
b) the applicant and the PTO understood what is claimed
c) the PTO Examiner understands what, is claimed
d) one of ordinary skill in the art would understand what is claimed
e) the average jury would understand what is claimed


37) Applicant claimed a blood filter assembly wherein both the inlet and outlet for the blood were located at the bottom end of the filter assembly, and wherein a gas vent was present at the top of the filter assembly. The prior art taught a liquid strainer for removing dirt and water from gasoline and other light oils wherein the inlet and outlet were at the top of the device, and wherein a stopcock was located at the bottom of the device for periodically removing the collected dirt and water. The reference taught that gravity assisted separation.
a) The claim to the blood filter assembly is anticipated
b) The claim to the blood filter assembly is obvious because it would have been obvious to turn the reference device upside down.
c) The claim to the blood filter assembly is obvious for reasons other than because it would have been obvious to turn the reference device upside down.
d) The claim to the blood filter assembly is not obvious because if the prior art device were turned upside down it would be inoperable for its intended purpose.
e) The claim to the blood filter assembly is not obvious because gas and blood are not analogous.


38) Prolix refers to
a) Too many words in a claim
b) Too many claims in a patent
c) Too many unimportant details in a claim
d) Recitation of so many unimportant details that the invention is obscure
e) All the above


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39) The limitations "non- poisonous" and "non-alcoholic" are
a) negative, indefinite, and unacceptable
b) negative but not indefinite because each leaves a single and definite alternative and may be the least cumbersome way to express the limitation
c) negative, too broad, and unacceptable
d) affirmative, but too broad, and unacceptable
e) affirmative, but because each provides too many unacceptable alternatives, unacceptable


40) Applicant's claims are directed to a method of enhancing color effects produced by ambient light through a process of absorption and reflection of the light off a coated substrate. The only reference discloses a glass substrate coated with silver and metal oxides 200-800 angstroms thick and the use of the coated substrate to produce architectural colors. The reference did not disclose the absorption and reflection mechanisms of the applicant's claimed process. The PTO will properly
a) allow applicant's claims to issue
b) allow applicant's claims to issue if amended to include the limitation of enhancing color effects produced by ambient light
c) allow applicant's claims to issue if amended to include the limitation of the absorption and reflection mechanism
d) find that the reference inherently performs the function disclosed in the method and find a prima facie case of anticipation
e) find a prima facie case of anticipation, but give applicant the opportunity to prove that the structure of the reference would not perform the claimed method when placed in ambient light.


41) Multiplicity refers to
a) too many words in a claim
b) too many claims in a patent
c) too-'many unimportant details in a claim
d) recitation of so many unimportant details that the invention is obscure
e) all the above


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42) The claim "The use in a human body of a sustained release therapeutic agent of ephedrine adsorbed on styrene microfibrils" is
a) Indefinite
b) Vague and not 35 USC 101 subject matter
c) Indefinite and not 35 USC 101 subject matter
d) Definite but not 35 USC 101 subject matter Definite and 35 USC 101 subject matter


43) Applicant's claims were directed to a color developer. Applicant's claims to the process of making the developer was allowed. The difference between the inventive process and the prior art was the addition of metal oxide and carboxylic acid as separate ingredients, instead of adding pre-reacted metal carboxylate. The end products, in both the prior art and the allowed process, are identical and contain metal carboxylate. The product-by-process claim is:
a) patentable
b) patentable, unless obvious
c) patentable if the metal carboxylate is produced in situ
d) not patentable because not new
e) not patentable because obvious


44) The preamble of a claim recited a mixer for mixing flowing developer material. The body of the claim recited a means for mixing whereby said mixing means was stationary and completely submerged in the developer material. The PTO rejected the claim over a reference that taught all the structural limitations of the claim for the intended use of mixing flowing developer. However, the mixer in the reference was only partially submerged in, the developer material. The Board would likely hold the amount of submersion I- to the -2- of the mixer and thus the claim would be 3
a) 1) immaterial; 2) structure; 3) properly rejected
b) 1) immaterial; 2) structure; 3) improperly rejected
c) 1) material; 2) function; 3) properly rejected
d) 1) material; 2) function; 3) improperly rejected
e) 1) immaterial; 2) function; 3) improperly rejected


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45) Taking the Adhesive Tape claim drafting disclosure as a patent specification, applicant's proposed claim: "A method for joining with adhesive tape structural parts to provide the effect achieved by scarfing." may be rejected as:
a) a single means claim
b) a use claim
c) an unduly broad claim
d) not within any of the statutory classes
e) any of the above


46) A patent specification need not teach, and preferably omits,
a) alternative embodiments
b) what is set forth in the claims
c) what is shown in the drawings
d) what is well known in the art
e) known equivalents to claimed subject matter


47) A provisional application is automatically abandoned:
a) after 12 months
b) after 18 months
c) after 12 months, but may be restored within the next 6 months
d) after 12 months, but that period may be extended for an additional 6 months, if the petition is filed before expiry of the 12 months
e) upon filing of a nonprovisional application


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48) In Baxter Healthcare v. McGaw, the '554 divisional patent application was not entitled to the filing date of the parent application because:
a) the divisional application did not claim priority to the parent
b) the divisional application did not include a claim
c) the applicant committed inequitable conduct in the underlying application
d) the divisional application was not converted during co-pendency
e) the divisional was filed after the expiry of the parent


49) A new garden shed door was demonstrated at a garden show on June 1, 1988. June 1, 9 1989 falls on a Sunday. The United States patent application on the new garden shed door arrives at the PTO on Monday June 2, 1989, but is timely filed if:
a) Deposited with Federal Express before June 1, 1999.
b) Deposited Sunday with the United States Postal Service and each page of the application carries a properly executed "Certification of Mailing" under 37 CFR 1.8.
c) Deposited Friday, May 30, 1989 with the United States Postal Service and each page of the application carries a properly executed "Certification of Mailing" under 37 CFR 1.8.
d) Deposited Sunday with the Express Mail Service of the United States Postal Service and each page of the application carries a properly executed "Certification of Mailing" under 37 CFR 1.8.
e) None of the above


50) The PTO would properly issue a Notice of Incomplete Application when:
a) the application is obviously missing pages
b) the application lacks a best mode
c) the application needs but has no drawings
d) the application is in French Page 18 of 37 Final Exam, Fall 1998 Student Exam #


e) the application has no filing fee


51) Two competing interests: (1) protecting a patentee from the consequences of the PTO restriction practice; and (2) protecting the public from an unjustified extension of the patent term, animate
a) the best mode requirement
b) the double patenting doctrine
c) the equitable doctrine of equivalents
d) the Freeman-Adelman doctrine
e) the written description requirement


52) Inventors may need to update their best mode disclosure when filing a but not when filing a -2
a) (1) continuation-in-part; (2) continuation
b) (1) divisional; (2) continuation-in-part
c) (1) divisional; (2) continuation
d) (1) provisional; (2) divisional
e) (1) nonprovisional; (2) provisional


53) A picture claim
a) recites in detail all the features of an invention
b) recites in functional language what an invention accomplishes or is used for
c) recites in descriptive terms the functions of an invention without providing the structure or steps
d) recites what an invention does without reciting the steps for doing it Page 19 of 37 Final Exam, Fall 1998 Student Exam #


e) describes that is desired without properly reciting the steps or limitations


54) Where a patent attorney has described patentable subject matter in the specification, but has submitted unallowable claims, the PTO Examiner
a) May NOT offer definite and specific suggestions on how the claims can be fixed
b) May NOT offer legal advice
c) May indicate that the application contains allowable subject matter, but may not advise on the formulation of the patent claims
d) May offer constructive suggestions short of opining on the patentability of unproposed claims or giving advisory opinions
e) May offer constructive suggestions and my offer definite and specific suggestions.


55) Applicant has claims to the following, each of which is separately patentable:
a) A restriction requirement having three groups would be proper
b) A restriction requirement having two groups would be proper
c) A restriction requirement having one group would be proper
d) A restriction requirement would not be proper because the claims do not set out distinct and independent inventions
e) A restriction requirement would not be proper because each of the combinations is capable of separate manufacture use, or sale as claimed.


Page 20 of 37 1. A car, a window 2. A window defogger 3. A fog-resistant glass. defogger system, system and fog-resistant and a fog-resistant glass glass Final Exam, Fall 1998 Student Exam #

56) Applicant has claims to the following, each of which is separately patentable: 1. Apparatus for making a net 2. A method for making a net, comprising the comprising: steps of: means for forming a loosely forming a loosely knotted net; knotted net; means for lowering the thoroughly moistening the loose knots with an loosely knotted net into an adhesive bath; adhesive solution; and tightening the loose means for stretching the net to tighten the knots while the adhesive is still wet. knots while the net is still wet.
a) A two group restriction requirement is proper because the process can be practiced by another materially different apparatus.
b) A two group restriction requirement is proper because the apparatus can practice another materially different process.
c) A two group restriction requirement is proper because the apparatus can practice another materially different process and because the process can be practiced by another materially different apparatus.
d) A two group restriction requirement is improper because the process can be practiced by another materially different apparatus.
e) A two group restriction requirement is improper because the apparatus can be practiced by another materially different process.


57) Applicant has claims to the following, each of which is separately patentable: 1. A bird-trap cat-feeder comprising: 2. A bird, trapped by the bird-trap cat- a bird-lure means; a perch-pivot feeder of claim 1, and packaged for means; a cage means; and means for ready sale for the enjoyment of cats. communicating the bird to the cage.
a) A two group restriction requirement is proper because the product can be made by another materially different apparatus.
b) A two group restriction requirement is proper because the apparatus can be used to make a materially different product.
c) A two group restriction requirement is proper because the apparatus can be used to make a materially different product and because the product can be made by another materially different apparatus.
d) A two group restriction requirement is improper because the product cannot be made by another materially different apparatus. Page 21 of 37 Final Exam, Fall 1998 Student Exam #


e) A two group restriction requirement is proper because the apparatus can be used to make a materially different product.


58) The following claim is objectionable because: 1. A bird-trap cat-feeder comprising: a bird-lure means; a perch-pivot pin means; a cage means; and means for communicating the bird to the cage.
a) It's a kit claim
b) It's a parts list
c) It's a single means claim
d) It's a picture claim
e) It reads on the prior art


59) Which phrase in this claim is most likely a 35 USC 112,16 element:
a) the bird-lure means
b) the pivot pin means
c) the cage means
d) the means for communicating the bird
e) the bird


60) Which means phrase in this claim is least likely a 35 USC 112, 6 element:
a) the bird-lure means
b) the perch pivot means
c) the cage means
d) the means for communicating the bird
e) the bird


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61) The protection of 35 USC 121 does not apply where the claims have been changed in material respects from the claims subject to the restriction requirement. Such claims are not
a) Compliant
b) Consonant
c) Copendant
d) Enforceable
e) Valid


62) Your client writes a Ph.D. dissertation on June I covering the subject matter you claim in a draft application, sends it to Sterling library on June 7, to Science as the manuscript for an article on June 8. The dissertation is cataloged and shelved June 30, published by Science June 15, and received by subscription holders June 18. The effective date as printed material is:
a) June I
b) June 7
c) June 15
d) June 30
e) June 18


63) If the library had miscataloged and misshelved the materials, the effective date as printed material is:
a) June I
b) June 7
c) June 15
d) June 30
e) June 18


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64) An affidavit under 37 CFR 1. 131 may NOT be used to overcome:
a) subject matter made before the applicant made his invention
b) a foreign patent dated more than one year prior to applicant's filing date
c) a printed publication dated more than one year prior to applicant's filing date
d) a United States patent dated more than one year prior to applicant's filing date and disclosing but not claiming applicant's subject matter
e) all these, or any of them


65) The date to overcome using a 37 CFR 1. 131 affidavit is
a) the filing date
b) the issue date
c) the invention date
d) the disclosure date
e) the effective date


66) Applicant claimed a process for preparing a hydrolytically-stable zeolitie aluminosilicate, which included a step of "cooling the steamed zeolite ... at a rate sufficiently rapid that the cooled zeolite exhibits a X-ray diffraction pattern . . . ." All the process limitations were expressly disclosed by a U.S. patent to Hansford except the cooling step. The PTO Examiner states that any sample of Hansford's zeolite would necessarily be cooled to facilitate subsequent handling. The PTO Examiner is justified in issuing
a) A restriction requirement
b) A prima facie objection under 35 USC 112
c) A prima facie rejection under 35 USC 102/103
d) A final rejection under 35 USC 103
e) None of the above is justified


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69) Jay claimed: "A novel Ti alloy containing 0.2-0.4% Mo and 0.6-0.9% Ni and having corrosion resistance." The prior art disclosed a Ti alloy containing 0.25% Mo and 0.75% Ni but was silent as to corrosion resistance. The PTO will properly find applicant's claim
a) anticipated because the percentages of Mo and Ni were squarely within the claimed ranges and what properties the alloys had or who discovered the properties is immaterial
b) allowable because the percentages of Mo and Ni are patentably distinct
c) allowable because the percentages of Mo and Ni are patentably distinct and applicant's alloy shows corrosion resistance
d) allowable because of the percentages of Mo and Ni, or the corrosion resistance, or both
e) allowable because of the corrosion resistance


70) ABC infringes a claim to a toothpaste "having 1-20% nitrate of potassium, or lithium, or sodium." ABC uncovers an obscure text written in AD 77 by Pliny the Elder disclosing a compound having 15% nitrate of potassium for cleaning teeth. The claim ABC infringes is
a) Valid
b) Obvious
c) Enabled
d) Described
e) Sufficient


71) Blackstone conceives of novel bacteria on January 1, 1990; reduces the invention to practice on June 1, 1990; and files a patent application claiming the bacteria on February 1, 199 1. Maitland conceives of the same bacteria on March 1, 1990; reduces it to practice on August 1, 1990; and files a patent application directed towards the bacteria on December 1, 1990. Which party is entitled to priority of invention?
a) Blackstone, if she was diligent from June 1, 1990
b) Maitland, if she was diligent from August 1, 1990
c) Blackstone, if she was diligent from January 1, 1990
d) Blackstone, if she was diligent from February 28, 1990, even if she was not diligent before that
e) No way to say


Page 26 of 37 Final Exam, Fall 1998 Student Exam #

72) On July 4, 1998, Hector conceives of a novel antibody. He sets the project aside until November 25, 1998, and after several weeks of continuous experimenting ultimately reduces the invention to practice on December 25, 1998. Hector then files a patent application with three independent claims directed towards the antibody on January 1, 1998. Nestor conceives of the same antibody on August 1, 1998; reduces it to practice on September 1, 1998; and files a patent application claiming the antibody on October 1, 1998. Which party is entitled to priority of invention?
a) Nestor
b) Hector
c) Hector, but only if had sufficient reason to set the project aside
d) Hector, because he conceived first
e) No way to say


73) Hotspur conceives of a new diagnostic test on March 21, 1993. He never builds a working model of the media, but does diligently file a patent application claiming the diagnostic test on December 1, 1993. Margaret conceives of the identical diagnostic test on April 1, 1993, diligently works on the invention until finally reducing it to practice on May 1, 1993, and files a patent application claiming the diagnostic test on August 15, 1993. Which party is entitled to priority of invention?
a) Hotspur, unless he abandoned, suppressed, or concealed
b) Margaret, because she reduced to practice first
c) Margaret, because her diligence is irrelevant
d) Hotspur, even if he momentarily abandoned, suppressed, or concealed
e) No way to say


74) The first biotech patent in the United States went to:
a) Harvard University
b) UC San Francisco
c) Genentech
d) Louis Pasteur
e) Amanda Chakrabarty


Page 27 of 37 Final Exam, Fall 1998 Student Exam #

75) A combination of prior art references, which in combination includes each and every element of a claim of a patent application, renders the application claim
a) anticipated
b) prima facie obvious
c) prima facie obvious, if there was a motive to combine the references
d) prima facie obvious, if the references contained a suggestion to combine them
e) prima facie obvious, if either "c" or "d", and the prior art provides a reasonable expectation that the combination would succeed.


76) For purposes of determining the obviousness of claims, the content of the prior art is determined
a) at the time the invention was made
b) at the time application was filed
c) at the time the application was allowed
d) at the time the application issued
e) one year prior to the filing date


77) Chugai conceived of a fully degenerate cDNA probe strategy in 198 1. Chugai used that probe technique to isolate the gene for EPO and thus reduced to practice the gene in May of 1984. Chugai was always diligent. Amgen reduced the EPO gene to practice in September of 1983.
a) Chugai wins because it was first to reduce to practice
b) Chugai wins because it was first to conceive of the invention
c) Chugai wins, unless Amgen can show it conceived first
d) Chugai wins, unless Amgen can show it conceived first and was diligent until from at least one day before Chugai concieved
e) Amgen wins because it was the first to invent


Page 28 of 37 Final Exam, Fall 1998 Student Exam #

78) Applicant claims a process for storing refined hydrocarbon in a storage tank having a dead volume between the tank bottom and its outlet port wherein a gelled solution fills the tank's dead volume to prevent loss of stored product. The PTO Examiner has found a reference that discloses a process to improve oil production by reducing the permeability of natural underground hydrocarbon bearing formations using a gel similar to applicant's gel. 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 was 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 dead volume in tanks for refined petroleum by considering a reference dealing with plugging underground formation anomalies.
e) The reference is nonanalogous art if either "c" or "d".


79) Applicant claimed a plural compartment mixing vial having a center seal plug between two compartments for temporarily isolating a liquid-containing compartment from a solids-containing compartment. The claim differed from the prior art only in the selection of butyl rubber with a silicone coating as the plug material instead of natural rubber. This prevented moisture from passing through the rubber plug. The prior art recognized that leakage from the liquid to the solids compartment was a problem, and considered the problem to be a result of moisture passing around the center plug because of microscopic fissures inherently present in molded or blown glass.
a) Applicant's claim is patentable.
b) Applicant's claim is patentable if applicant can swear behind the prior art with a Rule 131 affidavit.
c) Applicant's claim is anticipated.
d) Applicant's claim is obvious.
e) Applicant's claim is obvious if butyl rubber and natural rubber are analogous.


80) During the search the Examiner finds a reference fully describing the claimed invention. The applicant is the author of the reference, which was published less than one year prior to the filing date of the application.
a) The reference cannot be used against applicant.
b) The reference can be used against the applicant under 35 USC 102 (a).
c) The reference can be used against the applicant under 35 USC 102 (b).
d) The reference can be used against the applicant under 35 USC 102 (e).
e) The reference can be used against the applicant under 35 USC 102 (c).


81) During the search the examiner finds a patent fully describing the claimed invention. The applicant is not a patentee on the patent, which was published less than one year prior to the filing date of the application.
a) The reference cannot be used against applicant.
b) The reference may be used against the applicant under 35 USC 102 (a).
c) The reference may be used against the applicant under 35 USC 102 (b). The reference may be used against the applicant under 35 USC 102 (d)
e) The reference may be used against the applicant under 35 USC 102 (c).


82) During the search the examiner finds a reference fully describing the claimed invention. The applicant is not an author on the reference, which was published less than one year prior to the filing date of the application. Applicant may submit either -(I)- to antedate the reference or _(2) _ to show derivation of the reference subject matter from applicant and invention by applicant.
a) (1) a Rule 1. 131 declaration; (2) a Rule 1. 132 declaration
b) (1) a Rule 1. 132 Affidavit; (2) a Rule 1. 131 Affidavit
c) (1) an Amendment; (2) a Rule 1. 131 Affidavit
d) (1) a Rule 1. 132 Affidavit; (2) an Amendment
e) (1) a traversal; (2) a divisional


83) In cases on appeal from Final rejection
a) amendments may not be made without leave
b) amendments may be made as a matter of right
c) amendments may be made as a matter of right, until oral argument
d) amendments may be made as a matter of right, until decision on the merits
e) amendments may be made as a matter of right, until decision is entered


84) Applicant claims "A shrimp having the head and digestive tract substantially removed." The claim is
a) Not statutory subject matter
b) A composition
c) A manufacture
d) An improvement
e) Indefinite


85) When a first application has a broad claim that fully encompasses any invention defined in the claims of a second application
a) the second application must be rejected for double patenting
b) the first application must be rejected for double patenting
c) the first application claim dominates the second
d) the first application has a linking claim
e) the second application claim dominates the first


Page 31 of 37 Final Exam, Fall 1998 Student Exam #

86) You are prosecuting an application that contains references in the specification to a trademark. The trademark has no fixed or definite meaning with respect to the physical characteristics of the invention. The Examiner has objected to its use as being indefinite and required the addition of generic terminology. The inventors' company, the assignee of record for the patent application, also owns the trademark. In order to comply with the examiner's objections, you
a) must capitalize the trademark and put it in quotes.
b) must capitalize the trademark, but you need not provide the generic terminology since the assignee of record owns the trademark in question.
c) must put the trademark in quotes and insert the generic terminonology and a declaration from the inventor attesting to the relationship between the generic terminology and the trademark.
d) may properly rebut on the grounds that the use of generic terminonology would dilute the proprietary nature of the trademark.
e) must capitalize the trademark and provide the generic terminology that is descriptive of the product at the time the application was filed.


87) A rejection based on the statutory type of double patenting can be overcome by
a) A rule 1. 131 affidavit
b) A terminal disclaimer
c) A rule 1.132 affidavit
d) Filing a divisional
e) Cancelling the conflicting claims from all but one application.


88) Applicant described ranges in the original specification of "25%-60%" and had specific examples of "36%" and "50%." Applicant later wants to add new claims having the claim limitation of "at least 35%."
a) The claim will not be entered because it does not meet the description requirement.
b) The claim will not be entered because it cannot meet the enablement requirement.
c) The claim will not be entered because it is indefinite.
d) The claim will not be entered because applicant is required to file a continuation.
e) The claim will be entered.


89) A disclosure in a parent application that renders the later-claimed invention obvious
a) is necessarily sufficient to meet the written description requirement
b) in not necessarily sufficient to meet the written description requirement
c) is necessarily sufficient to meet the enablement requirement
d) is necessarily sufficient to provide support for the later-filed claims
e) none of the above is correct


90) Jack and Jill have invented a bucket with an improved handle. You filed an original patent application containing the independent claim I and dependent claims 2-4 to the bucket and handle combination. The examiner issued a first Office action rejecting claims 1-4 as being unpatentable over Dropin in view of Kick. Which of the following responses would be fully responsive to the rejection, assuming the response is timely filed?
a) File a notice of appeal, followed one month later by an appeal brief.
b) File a petition with the Commissioner requesting waiver of the rejection.
c) File an amendment, without remarks, rewriting the claims to define over Dropin and Kick.
d) File a request for reconsideration specifically pointing out how the language of the claims patentably distinguishes them from Dropin and Kick.
e) File an amendment to claim 2 and specifically point out how the language of claim 2, as amended, patentably distinguishes it from Dropin and Kick.


Page 33 of 37 Final Exam, Fall 1998 Student Exam #

91) Which of the following is acceptable wording for a multiple dependent claim?
a) A device according to claim 3 or 4, further comprising
b) A device according to claims 3 and 4, further comprising
c) A device according to claims 3 and/or 4, further comprising
d) A device as in claims 1, 2, 3, or 4, made by a process of claims 5, 6, 7, or 8
e) A device as in the preceding claims, further comprising


92) In the examination of a patent application, which of the following may be relied upon as prior art other than patents and printed publications?
a) Admissions by an applicant in the specification.
b) Admissions by an applicant in papers other than the specification filed in an application.
c) Affidavit of Examiner's own knowledge.
d) All of the above.
e) B and C.


93) You are prosecuting an application that receives a rejection under 35 U.S.C. 102(b) based on a U.S. patent that claims the same invention. Which of the following, if any, will overcome the rejection?
a) A Rule 132 affidavit or declaration swearing back of the reference.
b) A Rule 132 affidavit or declaration showing commercial success of the invention.
c) A Rule 132 affidavit or declaration containing an argument that the claimed invention provides synergistic results.
d) A Rule 132 affidavit or declaration showing inoperability of the patent.
e) None of the above.


Page 34 of 37 Final Exam, Fall 1998 Student Exam #

94) A Notice of Allowance dated April 4, 1998 was mailed to the patent applicant. In which of the following situations would the issue fee not be considered timely?
a) The issue fee is filed in the PTO three months and one day after the Notice of Allowance.
b) The issue fee is filed in the PTO two months after the Notice of Allowance.
c) The issue fee is filed in the PTO six months after the Notice of Allowance and is accompanied by a three month extension of time and late payment fee.
d) The issue fee is received in the PTO three months and three days after the Notice of Allowance and is accompanied with a certificate of mailing dated July 3, 1998.
e) Both A and C.


95) The take-home lesson from the )Vorth American Vaccine and Exxon cases is:
a) draft a variety of claims using different language
b) draft specific claims designed to cover the infringing product
c) move for summary judgment on claim construction
d) juries should not be allowed to interpret patent claims
e) draft claims that cover the heart of the invention


96) The fatal flaw in the below claim is: A purified DNA sequence consisting essentially of a DNA sequence encoding an amino acid sequence sufficiently duplicative of that of EPO to cause bone marrow cells to increase production of red blood cells and hemoglobin.
a) Transition choice
b) Indefiniteness
c) Lack of enablement
d) Obviousness
e) Anticipation


Page 35 of 37 Final Exam, Fall 1998 Student Exam #

97 Which of the following performed by patent examiners count(s) toward calculating the examiners' production:
a) Conducting a telephone interview;
b) Allowance of a patent application;
c) Preparing a second office action on the merits;
d) Preparing a final office action on the merits;
e) Both (b) and (d).


98 The production system in the U.S. PTO affects the examination of claims by encouraging examiners to conduct more thorough prior art searches.
a) True, because the most important criteria for Examiner evaluation is thoroughness
b) True, even though the most important criteria for Examiner evaluation is not thoroughness
c) True, because the only thoroughly examined cases contribute to production totals
d) True, because of "a" and "c" above
e) False


99. Acceptable strategies for conducting interviews with patent examiners include:
a) making oral arguments to avoid the need to respond in writing per 37 CFR 1. 111.
b) conducting an interview after final rejection so that the examiner must consider new issues without creating unnecessary file wrapper estoppel .
c) "sounding out" the examiner prior to the first office action.
d) proposing claim amendments and explaining the claimed invention
e) all of the above.


Page 36 of 37 Final Exam, Fall 1998 Student Exam #

100. Voyager Metals, Concord, NH, which forges otherwise standard steel parts, using its soon-to-be patented Voyager TM slip-stream process in its soon-to-be patented Voyager TM slip-stream furnace, has learned that similar parts forged by the same process in a similar furnace may soon be imported from Japan. The best claim to prevent such:
a) Steel parts, the improvement being fabrication in a slip-stream furnace.
b) Steel parts, the improvement being fabrication in a Voyager TM slip-stream furnace.
c) Steel parts made in a slip-stream furnace.
d) Steel parts made in a Voyager TM slip-stream furnace.
e) The process of making steel parts comprising forging in a slip-stream furnace.


Page 37 of 37

ANSWERS:


CRAIG'S KEY FOR PPI
1. b
2. d
3. d
4. d,a,c
5. a
6. c
7. e
8. a
9. a
10. e
11. a
12.e
13.d
14.a
15.b
16.d
17.d
18.a
19.a
20.c
21.a
22. a
23.d
24. c
25. a
26. b
27. a
28. c
29. a
30. c
31. b
32. b
33. b
34. c
35. a
36. d
37. d
38. d
39. b
40. e
41. b
42. d
43. d
44. a
45. e
46. d
47. a
48. b
49. e
50. c
51. b
52. a
53. a
54. e
55. a
56. c
57. d
58., b
59. d
60. c
61. b
62. e
63. e
64. e
65. e
66. c
67. e
68. a
69. a
70. b,d
71. d
72. a
73. a
74. d
75. e
76. a
77. e
78. e
79. a
80. a
81. b
82. a
83. a
84. c
85. c
86. e
87. e
88. e
89. b
90. c
91. a
92. d
93. e
94. e
95. a
96. c
97. b
98. b
99. d
100. a