PATENT PRACTICE II
FINAL EXAM



Professor Chris Blank Spring 1998


INSTRUCTIONS:

You will have three hours in which to complete this examination. Please write your exam number on the top of each page. This is an open-book exam. You may bring any reference material with you to this exam. Each question on Part I of this exam is worth three (3) points each. Please mark your answers on the corresponding answer sheet provided.


Part II of this exam is a short-essay format. Each question is worth fifteen (15) points each. Please keep your answers to the one-page maximum.





PATENT PRACTICE II
PROFESSOR C. BLANK SPRING 1998
FINAL EXAM


Blue and Green filed a joint patent application claiming a new crayon composition. A US patent with claims to the new crayon composition was granted to Blue and Green on July 7, 1992. The patent has never been signed. Blue and Green have come to realize, without any deceptive intent, that Purple, who was an active participant in the inventive effort, should have-been included as a joint inventor. Blue, Green and Purple come to you, a registered patent agent, and ask your advice concerning this matter. Which of the following, if any, would be your best advice to correct the inventorship?

(A) Blue should file a reissue application because he is the first named inventor.

(B) Blue, Green and Purple should request a reexamination proceeding.

(C) Blue and Green should file a petition under 37 CFR 1.48 to correct the inventorship.

(D) Blue, Green and Purple should file a petition to the Commissioner with the appropriate petition fee setting forth satisfactory proof of facts regarding the misjoinder of inventorship and requesting a change in the inventorship.

(E) None of the above.



QUESTION NO. 2

On July 10, 1997, your client published an article containing a complete and enabling disclosure of a new pharmaceutical compound he developed. On August 10, 1997, you prepared and filed a provisional application for the client containing an enabling disclosure of the pharmaceutical compound disclosed in the publication. The provisional patent application was filed using the Express Mail Service of the US Postal Service and included a proper certificate of express mailing. On Saturday, August 10, 1998, you deposit a complete (non provisional) US patent application that claims the new pharmaceutical compound and which claims priority to the filing date of the provisional application under 35 U.S.C. 119 (e) with the US Postal Service using the Express Mail Service and include a proper certificate of express mailing. The application is received in the PT Mail room on August 13, 1998.

The claims to the pharmaceutical compound are:

Patentable over your client's article. The effective filing date of the complete application is August 10 1997. Because the article was written by the inventor and was published less than one year before the effective filing date of the complete application, the inventor can swear behind the article's publication date.

Unpatentable. The effective filing date of the complete application is August 12, 1998, and thus the claims to the compound are barred by the publication of your client's article more than one year before the complete application's effective filing date.

Patentable over your client's article. The effective filing date of the complete application is August 10 1998. However, because the article was written by the inventor, the inventor can swear behind the article's publication date.

Patentable over your client's article because the article is not prior art.

Unpatentable. The effective filing date of the complete application is August 13, 1998, and thus the claims to the compound are barred by the publication of your client's article more than one year before the complete application's effective filing date.


You represented Hale before the PTO in conjunction with a patent application filed January 8, 1992, which issued May 4, 1993. That application had a divisional patent application filed December 22, 1992, which issued July 27, 1993. Both applications (parent and divisional) were based upon a foreign application filed December 23, 1991, in France. In the parent application, a claim for benefit of foreign priority was made and the requirements of 3 5 U. S.C. 119 were met before- issuance as a patent. However, a claim for benefit of foreign priority was not made in the divisional application prior to its issuance as a patent. What, if any, is the most appropriate procedure for perfecting this benefit of foreign priority after the divisional application has issued as a patent?

(A) File a substitute patent application and proper fee.

(B) File a petition and proper fee to have the benefit of foreign priority of the parent application entered in the record of the divisional application.

(C) The omission of the benefit of foreign priority may not be corrected in any manner. File a request for a Certificate of Correction and proper fee.

File a request and proper fee for a reexamination of the divisional application.


QUESTION NO. 4

Which of the following class or classes of individuals are excluded from applying for a United States patent?

(A) Convicts in federal prisons

(B) Children

(C) insane persons

(D) Current employees of the PTO

(D) All of the above.


QUESTION NO. 5

You are the only agent of record in a patent application filed on behalf of your client Early. The application is currently under rejection. A response is due on November 10, 1994. You are on vacation and not expected to return to your office until November 14, 1994. Today, November 2, 1994, Early calls your secretary and wants the response to the rejection filed today in order to avoid paying an extension of time fee. Your partner, John, Who is also a registered patent agent, is familiar with the application and tells Early that he will prepare and file the response today. Can John properly prepare and file the response without having a power of attorney from early?

No, because John is not an attorney of record.

No, because you have not authorized John to act on the application.

No, because John would be in violation of the PTO Code of Professional Responsibility.


QUESTION NO. 6

January 4, 1993, applicant filed a patent application in the PTO with the appropriate filing fee. Informal copies of the drawings were submitted with the application papers. However, due to an oversight, Figure 1 of 12 drawing figures and the executed oath were not included with the application when it was filed. On March 1, 1993, the PTO notified applicant that the application had not been accorded a filing date and that Figure 1 of the

Yes, because John is a registered patent agent and his signature on the response constitutes authorization to represent Early.

Yes, because you and John are practitioners in the same firm.


Many of the drawings and also the oath were missing. On April 1, 1993, the applicant filed in the PTO a formal drawing of Figure 1.

Given only the facts set forth above, what filing date will be accorded the patent application?

(A) January 4, 1993

(B) April 1, 1993

(C) The date the executed oath is filed in the PTO along with the surcharge for late filing of the oath.

(D) The date formal drawings of the remaining eleven figures are filed in the PTO along with a surcharge for late filing of the formal drawings.

(E) The date both the executed oath and formal drawings of the remaining eleven figures are filed in the PTO along with a surcharge for late filing of the oath.


QUESTION NO. 7

Applicant filed a patent application claiming a widget which included a "sluiced cotter pin" as a means for holding a wheel to a shaft. The specification contained no details of the sluiced cotter pin and such a pin was not commonly known in the art. However, the specification noted details of such a pin could be found in an article published in a particular issue of a popular magazine. The examiner objected to the specification on the ground that it improperly incorporated the material of the publication by reference. Which of the following actions would accord with proper PTO practice and procedure in overcoming the objection?

(A) File an amendment enclosing a copy of the magazine article.

(B) File an affidavit attesting to the fact that you have personally read the article and that the details of the pin are clearly set forth therein.

(C) Amend the specification to include the material incorporated by reference.

(D) File a declaration executed by a registered practitioner stating that the amendatory material consists of the same material incorporated by reference.


(E) Amend the specification to include the material incorporated by reference, and accompany it with an affidavit stating that the amendatory material consists of the same material incorporated by reference.


QUESTION NO. 8

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 obligation to assign the application to the corporation. He 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

Which one of the following actions satisfies your duty of disclosure?

(A) Ensure that F.D. Cancels claim 2, and instruct F.D. to provide to the PTO the information about L.M.

(B) Provide to the PTO the information about L.M.

(C) Instruct F.D. to provide to the PTO the information about the two-piece bracket.

(D) Do nothing.

(E) Provide to the PTO the information on the two-piece bracket after L.M. quits the company.


QUESTION NO. 9

The claim, "An alloy consisting of 70.5 to 77.5% iron, 15.0 to 17.0% cobalt, 0.5 to 1.0% carbon, up to 2.5% chromium, and at least 7.0% tungsten" is anticipated by a reference disclosing an alloy having:
(A) 76.0% iron, up to 15.0% cobalt, 0.5% carbon, and 8.5% tungsten.

(B) 71% iron, 15% cobalt, 1.0% carbon, 1% chromium, 8% tungsten, and 4% nickel.

(C) 71.3 % iron, 15.2% cobalt, 0.9% carbon, 2.6% chromium, and 10% tungsten.

(D) 76% iron, 15% cobalt, 1.0% carbon, at least 2.0% chromium, and 6% tungsten.

(E) 72.0% iron, 16.5% cobalt, at least 2.0% carbon, 2.5% chromium, and up to 7.0% tungsten.

QUESTION NO. 10

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 0 4 April 4, 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. 102 cause it was printed one year prior to the application date. The two other references were U.S. Patents issued 1988. Patent #1 disclosed, but did not claim, a grocery cart with inflatable tires for use on roads. Patent #2 closed a disposable and environmentally friendly snow sled. Concerning these two patents, the examiner stated the invention was obvious under 35 U.S.C. 103 because the two patents, when viewed together, taught the features on the claimed invention. You are the patent practitioner prosecuting this application and you preparing a response to the rejection. Your best course of action is to:

(A) Petition the Commissioner under 37 CFR 1.181(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.

(B) Submit an amendment that avoids the cited references and a statutory disclaimer.

(C) 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.

(D) Submit an affidavit under 37 CFR 1. 131 showing that A's invention predates the April 4, 1993, newspaper article and an affidavit under 3 7 CFR 1. 113 1 showing that A's invention predates the April 4, 1993, newspaper article.

QUESTION NO. 11

Which of the following, if any, is NOT an element of a prima facie case of obviousness under 35 U.S.C. 103?

(A) One or more references which are prior art within the meaning of 35 U.S.C. 102.

(B) 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.

(C) A reasonable expectation, based on the applicant's disclosure, that the claimed combination would be successful, supported, if necessary, by secondary considerations.

(D) A teaching or suggestion in the referenced prior art of each claim limitation.

(E) All of the above are required elements of a prima facie case of obviousness.


QUESTION NO. 12

On April 1, 1995, you filed a patent application which describes and claims a chemical composition. The specification as originally filed teaches that the composition can contain up to 6% by weight of a required surfactant This is the only reference to the amount of the surfactant in the specification. Original claim 1 recites a composition containing 3 to 6% by weight of the surfactant. On December 5, 1995, the Examiner issues a non- rival Office action rejecting claims I and 2 over a prior art reference that describes the claimed composition containing I to 2% by weight of the same surfactant. In January 1996, your client, while reviewing the application in light of the Office action, informs you that there is a typographical error in the application. The amount of surfactant in the specification should have been up to 60% by weight. The upper limits on *claim 1 and claim 2 should also be 60% by weight. He asks you to correct this error when you respond to the Office action. On February 5, 1996, you file an amendment responsive to the non-final Office action dated December 5, 1995 In addition to arguing the patentability, which of the following courses of action is the most appropriate response to the Office action?

(A)Cancel claim 1. Amend the specification to recite that the surfactant is present in an amount from 3 to 6% by weight.

(B)Amend the specification and claim 1 to recite that the surfactant is present in an amount of up to 60% by weight. Amend claim 2 to recite that the surfactant is present in an amount from 3 to 60% by weight.

(C)Cancel claim 1. Amend the specification to recite that the surfactant is present in an amount between 3 and 60% by weight. Add new claim 3 reciting that the surfactant is present in an amount from 3 to 60% by weight.

(D)Cancel claim 1. Amend the specification to recite that the composition contains up to 60% by weight of the surfactant.

(E)Cancel claims 1 and 2 and present a claim having surfactant present in the amount of 1 to 60% by weight.


QUESTION NO. 13

A registered patent agent, has just received a final rejection of all of the claims in an application directed to an article of manufacture. C files a Notice of Appeal to the Board of Patent Appeals and Interferences.

Nevertheless, he would like to tie up some loose ends by amendment before filing his appeal brief. Which of the following responses may he file without triggering the requirements of 3 7 CFR 1. 1 16(b)?

(A) A response that presents his argument in a more defensible light and adds additional claims.

(B) A response amending the claims into process claims.

(C) A response complying with a formal requirement of the examiner.

(D) A response amending all of the independent claims, accompanied by a declaration from the (E) inventor.

(A) and (D).


QUESTION NO. 14

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 device. The applicant conceived the methods in San Jose, California 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 1 as being anticipated by Morris under 35 U.S.C. 102(b). Morris is a German patent which was filed on December 20, 1991, and issued on June 15, 1993. The Morris patent claims the method of the applicant's claim I for forming integrated circuit devices. Claim 2 was rejected as being anticipated by Bell under 35 U.S.C. 102(e). Bell is a U.S. Patent which was filed on June 10, 1993, and discloses, but does not claim, the method of applicant's claim 2 for forming an integrated circuit device. The Bell 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 affidavit to overcome both rejections.

(B) File an antedating affidavit to overcome the rejection of claim 2 and cancel claim 1.

(C) File an antedating affidavit to overcome the rejection of claim I and cancel claim 2.

(D) File an antedating affidavit to overcome both rejections and request that an interference be declared with the Morris patent.

(E) File a response arguing that the rejections are improper because the Bell patent issued after the filing date of your client's application.


QUESTION NO. 15

Van examiner files an Examiner's Answer in response to applicant's Appeal Brief, applicant,

(A) has an absolute right to file a Reply Brief. (B) may file a Reply Brief only with examiner's permission.
(C) May file a Reply Brief if the Examiner's Answer states a new ground of rejection or raises a new argument.

(D) Must file a Reply Brief.

(E) May file a Reply Brief with permission from the Board of Patent Appeals and Interferences.


QUESTION NO. 16

Which of the following does not have to be included as part of a request for reexamination of a patent filed by Patent owner?

(A) An identification of every claim for which reexamination is requested, and a detailed explanation of the pertinency and manner of applying the cited prior art to every claim for which reexamination is requested.

(B) A statement pointing out each substantial new question of patentability based on prior patents and printed publications.

(C) A copy of every patent or printed publication relied upon as raising a substantial new question of patentability.

(D) Proposed amendments to the patent claims for which reexamination is requested.

(E) The entire specification, claims, and drawings of the patent for which reexamination is requested in cup-up form.


QUESTION NO. 17

During a reexamination proceeding, you propose to amend claim I as follows:

ammended) A [knife) cutting means having a handle portion and a [serrated] blade portion.

All changes in the claim are fully supported by the original patent disclosure. Will the claim as amended be rejected by the examiner?

(A) No, because the claim has been properly amended in accordance with PTO rules.

(B) No, because the amendment does not introduce new matter into the claim.

(C) No, because the claim is fully supported by the original patent disclosure.

(D) Yes, because the amendment broadens the scope of the claim of the patent.

(E) Yes, because deletion of the terms "knife" and "serrated" are improper since, for purposes of reexamination, deletions must be enclosed by parenthesis, not brackets.


QUESTION NO. 18

A requested and has filed a request to initiate a reexamination proceeding. If the examiner issues a decision denying A's request for reexamination, the requester may seek review of the decision

(A) but only if the requester is the patent owner.

(B) by filing a petition to the Commissioner within one month of the mailing date of the decision.

(C) by filing a notice of appeal to the Board of Patent Appeals and Interferences.

(D) by filing a petition to the Commissioner requesting that the Commissioner undertake reexamination on his own initiative.

(E) by filing petition to the Group Director upon condition that a prior request for reconsideration to the examiner has been filed and acted upon unfavorably.


QUESTION NO. 19

Which of the following statements is false?

(A) A request for examination of a patent can be made anonymously.

(B) A request for reexamination will be granted by the PTO solely on the basis that a cited patent or printed publication raises a new question of patentability with at least one of the claims of the patent sought to be reexamined.

(C) When a request for examination has been granted by the PTO, no petition to the Commissioner by the patent owner requesting review of the decision granting the request for reexamination is permitted.

(D) When a request for reexamination of a patent has been granted, a requester who is not the patent owner can file a reply to the PTO arguing reasons why the claim or claims of the patent are not patentable even though the patent owner did not file a statement following the decision of the PTO granting reexamination.

(E) Once a request for reexamination has been granted, the PTO may make a determination that a substantial question of patentability is present as to other claims not identified in the request for reexamination.






PATENT PRACTICE II
Professor Chris Blank
Part II. Short Questions (15 points each)


Short Question 1. The Patent Office received a proper request for reexamination from Fred Smith concerning U.S. patent no. 5,555,555. In the request, Fred raises a new prima facie question of patentability under 35 U.S.C. 103. Fred also points out a newspaper article suggesting that the patentee of 5,555,555 had failed to disclose adverse clinical tests to the FDA while the application was pending. Can the PTO consider the article? Must it consider the article? Answer in the space below.



Short Question 2. Girgle Saltwater has recently found out a printed publication that anticipates his patent on a partial herbal remedy for the common cold that issued May 15, 1996. The reference will not affect the narrow claims, but Girgle is concerned that his exclusive licensee will find out that the narrow claims will not cover the commercial embodiment of the product they are selling. What can Girgle do? Can he fix the patent without notifying his licensee?



Short Question 3. Dweezil and Momo are co-inventors of a pet toy that has become quite successful. Unfortunately, they are foul weather friends. With their new success has come great antipathy, and Momo has left the United States to live in Brazil. Dweezil has continued to prosecute the continuing applications of Momo and himself. One of the applications filed October 23, 1994 is allowable except for a double patenting rejection based upon an earlier issued patent of Dweezil and Momo. What can Dweezil do? What does he need to do to overcome the double patenting rejection?