Patent Practice & Procedure - I

1999 Fall

Closed Book Final Examination

Prof Jepson

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

Your score will be the number correct.

Put your student ID number on this booklet and on the ScantronTm answer sheet. Turn in both.

CLOSED BOOK.

Fill in completely the bubble on your ScantronTm answer sheet with a No. 2 pencil. Stray marks will be marked wrong by an uncaring machine. No person will follow after you on this. THIS IS YOUR RESPONSIBILITY.
Respond with the BEST choice of the 5 possible responses. If you wish to explain how an ambiguity in a question prevented you from correctly choosing the best response, describe in this booklet what your other choice would have been and how the ambiguity made the choice unclear.
Good Luck!



Click here for Key to Answers or Scroll to End

Answer Questions 1-10 based on: A student drafted the claim below as the broadest allowable "prosthesis extractor" claim (Assignment 6).


1) The draft suffers from (at least) 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 or absent "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; multiple transitions.

2) Assume that I corrected all the technical flaws. Assume further that the term "theta angle" is not defined in the specification. The PTO should

a) Interpret the term to mean the angle between the shaft and the jaws.
b) Interpret the term to mean the angle between the jaws.
c) Interpret the term as broadly as reasonable, consistent with the limitation of "about 45 degrees."
d) Object to the claim as indefinite
e) Reject the claim as indefinite.

3) Assume that I corrected all the technical flaws and any "angle" issue. Assume further that the term "sterilizable and resistant to damage" is NOT defined in the specification. The PTO should

a) Allow the claim.
b) Object to the claim as nonstatutory subject matter.
c) Object to the claim as indefinite.
d) Reject the claim as nonstatutory subject matter.
e) Reject the claim as indefinite.

4) Applicant has greatly increased the likelihood of allowability of this claim by:

a) Specifying functions.
b) Specifying unnecessary elements.
c) Specifying necessary components.
d) Specifying unnecessary limitations.
e) Specifying necessary materials.

5) These phrases: "which is" and "whose upper end" and "whose lower end pivotally depends" and "whose theta angle is" and "is made of' serve to make this draft

a) Too narrow.
b) Too wordy.
c) Too difficult to infringe.
d) Too indefinite.
e) All the above.

6) Applicant would be better off rewriting "a stop that prevents further upward motion" as

a) "A stop to prevent further upward motion."
b) "A stop for preventing further upward motion."
c) "A stop."
d) Any of the above.
e) None of the above.

7) The phrase with the term "a stop"

a) Is correctly drafted.
b) Is incorrectly drafted because inferential.
c) Is incorrectly drafted because inferential and lacking an antecedent basis.
d) Is incorrectly drafted because its lacking an antecedent basis.
e) Is incorrectly drafted because relative.

8) The phrase "distally tapering base portion whose theta angle is about 45 degrees" is incorrect because

a) Its inferential.
b) It lacks an antecedent.
c) It contains relative terms.
d) It contains unanchored relational terms.
e) Its indefinite.

9) The first component applicant claims inferentially is
a) The base.
b) The weight.
c) The shaft.
d) The slide.
e) The prosthesis.

10) The first phrase missing from the draft is

a) said extractor."
b) the extractor."
c) The colon.
d) The preamble.
e) The transition.

11) Applicant goes on to draft: "4. The prosthesis extractors of claims 1, 2, and 3 wherein the distal base portion is thick." This claim uses correctly

a) Dependency.
b) The wherein clause.
c) Relative terminology.
d) All the above.
e) None of the above.

12) If applicant submits claims with the application for a patent, the claims must

a) Start on a separate sheet of paper.
b) Be consecutively numbered.
c) Be in English.
d) Have Arabic numerals.
e) All the above.

13) Applicant wants to amend a claim. Applicant rewrites the claim underlining words
to be I and bracketing words to be 2 The Examiner will go along with this
scheme if it involves 3

a) 1) Added; 2) deleted; 3) no more than five elements.
b) 1) Added; 2) deleted; 3) no more than five words.
c) 1) Deleted; 2) added; 3) no more than five elements.
d) 1) Deleted; 2) added; 3) no more than five words.
e) 1) Deleted; 2) added; 3) any number of words.

14) 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.

15) A claim that does not interrelate essential elements of the invention (as defined by applicant's specification) can be properly rejected for

a) Failure to point out and distinctly claim the invention.
b) Lack of a written description.
c) Lack of enablement.
d) Being a kit claim.
e) All the above

16) The goal with regard to functional and operational language in mechanical claims is to

a) Describe where every component is, how it works, and with what it interacts.
b) Keep it to a minimum.
c) Avoid it unless necessary.
d) Provide enough to make the claim definite without limiting the claim scope.
e) Tie the elements together like islands connected by bridges

17) 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.

18) "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.

19) 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.

20) 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.

21) During litigation, the issued patent claims are interpreted according to the meaning

a) Understood by the PTO Examiner for purposes of allowance.
b) Understood by a person having ordinary skill in the relevant technical art at the of allowance.
c) Understood by the inventor at the time the claims were written.
d) Understood by plain and ordinary people at the time of trial.
e) Understood by the judge or jury at the time of trial.

22) In a word, the overriding concern that distinguishes mechanical from chemica claim drafting is
a) Difficulty.
b) Predictability.
c) Enablernent.
d) Definiteness
e) Scope.

23) Applicant's specification describes his new wrench that ratchets solely because of its shape. Applicant adequately describes only one embodiment of the wrench. Applicant does not describe how to use or how to construct the wrench.

a) Applicant's method of use claims are not enabled.
b) Applicant's method of construction claims are not enabled.
c) Applicant's method of construction claims and method of use claims are not enabled, but the apparatus claims are.
d) Applicant's apparatus claims also are not enabled.
e) None of the above.

24) Applicant's specification describes his new wrench that ratchets solely because of its shape. Applicant adequately describes only one embodiment of the wrench. Applicant does not describe how to use or how to construct.

a) Applicant's method of use claims are not supported by a written description.
b) Applicant's method of construction claims are not supported by a written description.
c) Applicant's. method of construction claims and method of use claims are not supported by a written description, but the apparatus claims are.
d) Applicant's apparatus claims also are not supported by a written description.
e) None of the above.

25) If applicant presents some claimed subject matter only in the original claims and not in the description, the Examiner will ____1____  for lacking the requisite ____ 2 ____

a) 1) Object to the specification; 2) written description.
b) 1) Reject the specification; 2) written description.
c) 1) Object to the specification; 2) enabling disclosure.
d) 1) Reject the specification; 2) enabling disclosure.
e) 1) Reject the application; 2) complete specification.

26) Questions of enablement are evaluated against

a) The claimed subject matter.
b) The disclosed subject matter.
c) The specification.
d) The embodiments.
e) The working examples.

27) Claim 8 below:

8. A transgenic nonhuman mammal having germ cells and somatic cells containing recombinant DNA introduced at an embryonic stage.
is a:
a) A singlemeans claim.
b) An product-by-process claim.
c) A 35 USC 112, para 6 claim.
d) A Jepson claim.
e) A rodent-by-process claims.

28) The class of claim with the most case law interpretation

a) Jepson.
b) Manufacture.
c) Process.
d) Machine.
e) Composition of matter.

29) The proposed claim: "11. 1,3-dichloro-2,4-dibromo-phenyl napthene."

a) True compound claim.
b) Composition of matter subject matter.
c) Improper format.
d) All the above.
e) Just "a" and "b."

30) The proposed claim
 

"I. Artificial alizarine, produced from anthracine or its derivatives by either of the methods herein described, or by any other method which will produce a like result."
a) Jepson claim.
b) Omnibus claim.
c) Peripheral claim.
d) Stoichiometric claim.
e) Compound claim.

31) The proposed claim "I. The ornamental condom holder as shown and described."

a) Jepson claim.
b) Omnibus claim.
c) Peripheral claim.
d) Design claim.
e) Manufacture claim.

32) In the proposed claim:

9. An acetabular prosthesis consisting essentially ofa body extending generally longitudinally and terminating in front and rear surfaces extending substantially transversely to said body; and at least one fin.


a) The transitional phrase is incorrect; it belongs in composition of matter claims.
b) The transitional phrase is incorrect; it belongs in a composition of matter claim or a process claim.
c) The transitional phrase limits the scope of a claim to the specified elements and those that do not materially affect the basic and novel character of the prosthesis.
d) The transitional phrase closes the claim to unrecited elements.
e) The transitional phrase leaves the claim open to unrecited elements.

33) Applicant claimed:
 

A laundry cleaner consisting essentially of.- a dispersant; cationic fabric softener; sugar; sequestering phosphate; and brightener.
Examiner rejected the claim over a primary reference that taught all the claim limitations except sugar, and secondary references that taught the addition of sugar as a filler or weighting agent in compositions containing cationic fabric softeners. Appellant argued that sugar is responsible for the compatibility of the cationic softener with the other cleaner components. Applicant's - 1 - is - 2

a) 1) Compound; 2) primafacie obvious from the purpose in the references.
b) 1) Composition; 2) primafacie obvious from the purpose in the references.
c) 1) Composition; 2) NOT prima facie obvious from the purpose in the references.
d) 1) Compound; 2) NOT prima facie obvious from the purpose in the references.
e) 1) Cleaner; 2) NOT prima facie obvious because the function of the sugar is different.

34) In the Hair Laser Tattoo case, applicant could not claim

1. A method of hair depilation using a photon pulser, the method comprising: aligning a photon pulser substantially vertically over a follicle; and applying to a follicle a pulse of photons to damage the follicle and prevent hair regrowth, thereby effectively removing the hair.

a) Because it was known to use a laser in the same way.
b) Because rat hair is equivalent to human hair.
c) The preamble term is not limiting.
d) The preamble term is limiting.
e) The wrong transitional phrase was used.

35) Claris Starling applies for a patent having claims to a well-known compound, and to a new process, both for treating baldness. Her specification describes hair growth on only five subjects. To overcome a utility rejection, Starling submits her declaration confessing that the subjects were all viral young A cademy friends. The PTO should

a) Reject all the claims for lack of utility.
b) Reject the process claims for lack of utility.
c) Reject all the claims for prima facie lack of utility, allowing Starling to rebut if she can.
d) Reject the process claims for prima facie lack of utility, allowing Starling to rebut if she can.
e) Consider the utility requirement satisfied.

36) The declaration Starling submitted is termed a

a) Rule 112 Declaration.
b) Rule 132 Declaration.
c) Rule 131 Declaration. d) Rule 312 Declaration.
e) Rule 30(b)(6) Declaration.

37) Assume Starling can overcome the utility obstacle, she will likely be allowed

a) No claims, because she has other obstacle(s).
b) The process claims.
c) The compound claims.
d) The compound claims and the process claims.
e) Claims to a process for making the compound

38) The Examiner construes the claims of an application

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.

39) Applicant claimed a blood filter assembly wherein both the inlet and outlet for the blood 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.

a) The claim to the blood filter assembly is anticipated by inherency.
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 because of inherency.
d) The claim to the blood filter assembly is not obvious because if the prior art device was 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.
 

40) The limitations "non-ferrous" and "non-wettable" 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 alternatives, unacceptable.

41) The claim: "A machine according to claims 3 and 4, further comprising

a) Is permitted.
b) Is not permitted because of multiple dependency.
c) Is not permitted because cumulative.
d) Is not permitted because of redundancy.
e) Is not permitted because of prolixity.

42) Applicant claims 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 oxide 200-800 angstroms thick and the use of the coated substrate to produce iridescent sunglasses. The reference did not disclose how the iridescence is accomplished. The PTO will properly

a) Require applicant to submit a Rule 312 Declaration.
b) Find anticipation through inherency and issue a rejection based on prima facie anticipation.
c) Require amendment to include the limitation of enhancing color effects produced by ambient light, and then allow the amended claims.
d) Require amendment to include the limitation of the absorption and reflection
mechanism, and then allow the amended claims to issue.
e) Allow the claims.

43) For purposes of judging the applicability of 35 USC 102(b), public use or on sale activity must take place in this country. "In this country" means

a) The United States of America.
b) The United States of America and its WTO and NAFTA partners.
c) The United States of America and any WTO country. d) The United States of America, Canada, Mexico, and any WTO country.
e) both manufacture and delivery may occur in a foreign country.

44) For purposes of 3 7 CFR 1. 131 "in this country" means

a) Completion of the invention must occur in the United States of America.
b) Completion of the invention must occur in the United States of America and after December 8, 1993, in a NAFTA country, or after January 1, 1996, in a WTO member country.
c) The barring event must have occurred in the United States of America.
d) The barring event must have occurred in the United States of America or after December 8, 1993, in a NAFTA country, or after January 1, 1996, in a WTO member country.
e) Both manufacture and delivery may occur in a foreign country.

45) The PTO prefers Applicants leave out of the Specification

a) Alternative embodiments.
b) What is well known in the art.
c) Known equivalents to claimed subject matter.
d) What is adequately set forth in the claims.
e) What is shown in the drawings.

46) If Applicant fails to file all of the pages of the specification, but files something that can be construed as a I at least one drawing, if one is needed, and, in a nonprovisional application, -2-, the PTO will mail -3-.

a) 1) Written description; 2) a claim; 3) a Notice of Omitted Items.
b) 1) Specification; 2) a claim; 3) a Notice of Omitted Items.
c) 1) Written description; 2) an oath; 3) a Notice of Incomplete Application.
d) 1) Specification; 2) a claim; 3) a Notice of Incomplete Application.
e) 1) Claim; 2) an oath; 3) a Notice of Omitted Items.

47) When Applicant receives a -I- it means that she -2- and that -3-.

a) 1) Notice of Omitted Items; 2) has no filing date; 3) can not be fixed.
b) 1) Notice of Omitted Items; 2) has a filing date; 3) Applicant need do nothing.
c) 1) Notice of Incomplete Application; 2) has no filing date; 3) cannot be fixed.
d) 1) Notice of Incomplete Application; 2) has no filing date; 3) can be fixed.
e) 1) Notice of Incomplete Application; 2) has a filing date; 3) can be lost.

48) The best way to establish that the PTO lost whatever is missing:

a) Certificate of Mailing.
b) Date-stamped postcard receipt .
c) Retain a full copy of the complete submission.
d) Rule 183 Petition.
e) Affidavit from Registered Patent Attorney.

49) In Baxter Healthcare v. McGaw, the divisional application was not entitled to the filing date of the parent application because:

a) The divisional application did not claim 120 priority to the parent.
b) The divisional application did not claim 119 priority to the parent.
c) The divisional application did not co-pend with the parent.
d) The applicant committed inequitable conduct in the underlying application.
e) The divisional application was filed after the expiry of the parent.

50) In Baxter Healthcare v. McGaw, the divisional application was not entitled to filing date of the parent application because:

a) The claims of the parent were invalid.
b) The claims of the divisional application were anticipated by the publication of Baxter's PCT application.
c) The divisional application was filed without claims when the claims of the parent had been cancelled.
d) Applicant did not comply with the restriction requirement.
e) Applicant traversed but failed to elect after the restriction requirement.

51) From the standpoint of the client, the best way to correct a failure to claim benefit of a 119 priority date is:

a) Certificate of Correction.
b) Reissue.
c) Reexamination.
d) CPA.
e) Petition to Commissioner.
 

52) If Applicant files a nonprovisional application without at least one claim, the filing date will be I receipt of at least one claim. But, Applicant may be able to -2-, which would effectively give Applicant the original filing date.

a) 1) The date of; 2) convert the application into a provisional.
b) 1) Restored upon; 2) Petition for the original date.
c) 1) The date of-, 2) Petition for the original date.
d) 1) Restored upon; 2) convert the application into a provisional.
e) 1) Lost and not regained upon; 2) convert the application into a provisional.

53) On the one hand, we want to shield patent applicants against an Examiner's understandable urge to issue restrictions. On the other hand, we want to shelter society from unjustified extensions of patents. Thus, we have

a) The consilience requirement.
b) The written description requirement.
c) The shearshank redemption.
d) The double patenting doctrine.
e) The equitable doctrine of equivalents.

54) According to Ms. Henderson, a patentee wants to assert

a) A picture claim.
b) An infringed picture claim.
c) A meansplus-function claim.
d) An infringed means-plus-function claim.
e) A paper claim.

55) According to Mr. Carroll, if the application describes a patentable invention, but not patentable claims, the Examiner

a) May offer constructive suggestions short of opining on the patentability of unproposed claims or giving advisory opinions.
b) May offer constructive suggestions and my offer definite and specific suggestions.
c) May NOT offer definite and specific suggestions on how the claims can be fixed.
d) May NOT offer legal advise.
e)  May indicate that the application contains allowable subject matter, but may not advise on the formulation of the patent claims.

56) The following claim is for the extractor you did as a claim drafting final:

1. Apparatus for extracting a femoral head prosthesis, said apparatus comprising: a housing means; a bearing surface means; a femoral head extractor means; and a shaft member.
a) It's a kit claim.
b) It's a picture claim.
c) Its indefinite.
d) It's a parts list.
e) It's a single means claim.

57) Which phrase in this claim is most likely a 35 USC 112, 6 element:

a) The shaft member.
b) The housing means.
c) The bearing surface means.
d) A femoral head extractor means.
e) The femoral head.

58) Which phrase in this claim is least likely a 35 USC 112, 6 element:

a) The shaft member.
b) The housing means.
e) The bearing surface means.
d) A femoral head extractor means.
e) The femoral head.

59) 35 USC 121 protects claims

a) Consiliant.
b) Consonant.
c) Copendant.
d) Elected.
e) Restricted.

60) 35 USC 121 protects claims that.

a) Have the same scope as the group elected.
b) Have the same scope and the nonelected group.
c) Are alive when then related application is filed.
d) Are chosen for continued prosecution.
e) Are set aside for later prosecution.

61) The first biotech patent claims in the United States issued to:

a). Harvard University.
b) UC San Francisco.
c) Genentech.
d) Louis Pasteur.
e) GE as assignee to Amanda Chakrabarty.

62) Applicant claimed a two compartment mixing vial having a center seal plug 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. 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.

a) Applicant may be able to claim patentable, but anticipation will be the major problem.
b) Applicant may be able to claim patentable, but obviousness will be the majorproblem.
c) Applicant's claim is clearly anticipated.
d) Applicant's claim is clearly obvious.
e) Applicant's claim is obvious only if butyl rubber and natural rubber are analogous.

63) Examiner's primary reference fully describes the claimed invention. Applicant authored the reference, which published less than one year prior to the filing date of the application.

a) The reference might be used against applicant under 35 USC 102 (a).
b) The reference might be used against applicant under 35 USC 102 (b).
c) The reference might be used against applicant under 35 USC 102 (c).
d) The reference might be used against applicant under 35 USC 102 (e).
e) The reference might be used against applicant under 35 USC 102 (g).

64) Will and Grace improve charades. You filed an original patent application containing independent claim I and dependent claims 2-4. The examiner issued a first Office action rejecting claims 1-4 as being unpatentable over Jack in view of Helen. Which of the following is fully responsive to the rejection?

a) File a notice of appeal, followed one month later by an appeal brief.
b) Petition the Commissioner to waive the rejection.
c) File an amendment, without remarks, rewriting the claims to define over Jack in view of Helen.
d) Request reconsideration specifically pointing out how- the language of the claims patentably distinguishes them from Jack in view of Helen.
e) Amend claim 2 and specifically point out how amended claim 2 distinguishes it from Jack in view of Helen.

65) Which of the following may be prior art?

a) Admissions by an applicant in the specification.
b) Affidavit of examiner's own knowledge.
c) An admission by an applicant in papers other than the specification.
d) All of the above.
e) Just "b" and "c".

66) The take-home lesson from the North American Vaccine and Exxon cases is:

a) Draft a variety of claims of different scope.
b) Do not use "a", always use "at least one."
c) Draft claims that cover the heart of the invention.
d) Draft specific claims designed to cover the infringing product.
e) Do not use recipe claims.

67) Interviews just to learn Examiner's impressions regarding the application

a) Are never permitted.
b) May be had only with a local attorney acting for an out-of-town attorney, where it is clear that the local attorney has no power to bind the client.
c) May be had only with a local attorney acting for an out-of-town attorney, where it is clear that the local attorney has no power to bind the principal attorney.
d) May be had only with a local attorney acting for an out-of-town attorney.
e) Are permitted.

68) Applicant may interview Examiner

a) Concerning applicant's application at any time upon advance notice.
b) Never before the First Office Action.
c) After hours at a fine DC restaurant when the Commissioner comes along.
d) About the patentability of applicant's subject matter before the First Office Action.
e) Never after the Final Rejection.

69) If Applicant requests reconsideration because of an Examiner interview that went really well

a) Examiner must submit a complete written statement of the reasons presented at the interview as warranting favorable action.
b) If Examiner submits a complete written statement of the reasons presented at the interview as warranting favorable action, Applicant need not reply to the Office Actions.
c) Applicant may submit a complete written statement of the reasons presented at the interview and need not reply to the Office Action.
d) Applicant must file a complete written statement of the reasons presented at the interview and need not reply to the Office Action.
e) Applicant must file a complete written statement of the reasons presented at the interview but still needs to reply to the Office Action.

70) The approach recommended by Mr. Toedt and Arnold, White, and Durkee to claim drafting is for the attorney to sit down with the inventor and to ask her

a) To tell the attorney about the science verbally.
b) To write a fairly complete explanation of the science.
c) To explain what commercial products might result from the invention.
d) To put the invention in context in terms of the history of the specific relevantscience.
e) Tell the story of the discovery and its significance.

71) Mr. Toedt and AWD also recommend that at the initial inventor interview

a) The inventor and attorney draft claims together.
b) The inventor tell the story of the invention as if in a children's science book.
c) The interview should be tape-recorded and transcribed.
d) The inventor tell the story of the invention as she would at a conference.
e) All the above are satisfactory.

72) Consider this claim language:

"a jet driving device so constructed and located on the rotor as to drive the rotor * * *",
a) "Jet driving" modifies "device" and makes it more definite and specific.
b) The language falls within the scope of 112, para6.
c) The language does not fall within the scope of 112, 6.
d) The language is improper.
e) Both "a" and "b" are correct.

73) If Examiner writes that the above claim language raises an inference of equivalence drawn from a prior art reference, Applicant may:

a) Provide reasons why the prior art element should not be considered an equivalent.
b) Point to teachings in the specification that particular prior art is not equivalent.
c) Point to teaching in the prior art reference itself that may tend to show nonequivalence.
d) Submit an affidavit with of facts tending to show non-equivalence.
e) All the above.

Applicant's claims are drawn to self-locking, screw-threaded fasteners in which a crystallizable thermoplastic polymer is bonded to a portion of the threads, resulting in a tighter bond between the threads and those of a complementary member. (Figs. 4&5) The specification discloses that the locking fastener is made by heating the metal fastener to melt the thermoplastic, which has been poured or blown onto the metal. After the thermoplastic adheres to the metal, quenching in water cools the product. Claim I below stands rejected over Barnes:
 


 

1. A self-locking metal screw-threaded fastener comprising:

a metallic fastener element having a threaded portion; and a patch of crystallizable thermoplastic polymer having a lower crystallization rate than polyethylene directly bonded to said threaded portion, said polymer having a maximum crystallization shrinkage of about 3% or lower by volume.
 

 
 

Barnes (Figs. 1-3 below) teaches a self-locking fastener in which a patch (18) of thermoplastic is made by depositing thermoplastic powder on a metallic fastener, which is then heated. The specification includes several examples of thermoplastics. The product is cooled in ambient air, by flowing cool air, or by contacting the fastener with a

In response to a 35 USC 102 rejection, Applicant submitted an affidavit stating that its shrinkage rate was different than Barnes' because it is well known that polymer crystallization shrinkage rate is dependent on the cool down rate and that the cool down rate of Bames appears much slower than Applicant's.

74) Applicant's claim is a

a) Product-by-process claim.
b) Product claim.
c) Process claim.
d) Product claim with process limitations.
e) Process claim with product limitations.

75) After the Examiner considers the above referenced affidavit, he will likely, and properly

a) Issue a notice of allowance.
b) Issue a rejection under 103.
c) Issue a rejection under 102.
d) Issue a rejection under 112,
e) Ask for more evidence.

76) As compared to Applicant, Barnes: (1) heats the fastener after the thermoplastic is deposited; (2) cools the melt slowly; and (3) may involve a different thermoplastic.

a) Together these differences should make claim I allowable.
b) The first difference alone should make claim I allowable.
c) The second difference alone should make claim I allowable (as it is supported by affidavit).
d) The third difference alone should make claim I allowable.
e) These differences are patentably insignificant.

77) Claim I specifies: "crystallizable thermoplastic polymer having a lower crystallization rate than polyethylene directly bonded to said threaded portion, said polymer having a maximum crystallization shrinkage of about 3% or lower by volume". If Examiner again rejects claim I after considering Applicant's affidavit, the most likely reason is:

a) The above limitation is inherent in Barnes.
b) The above limitation is merely a function with no structure to distinguish over Bames.
c) The above limitation is merely a choice of materials limitation.
d) Where the performance of a compound is comparable to that of the prior art, the PTO may properly refutably conclude that the structures are identical.
e) The Examiner is using Hindsight.

78) If Examiner again rejects claim I after considering Applicant's affidavit, Applicant should:

a) Appeal.
b) Submit evidence comparing Applicant's cool-down rate to those of Bames.
c) Submit evidence that Barnes cooling rates do not result in crystallization. shrinkage of about 3% or lower.
d) Amend the claims specifying that the fastener is heated before the plastic is added.
e) Amend the claims specifying the water quenching.

79) Whatever the outcome of the above, Applicant probably would be allowed

a) Claims to the method of making the fastener of claim 1.
b) Claims to the method of using the fastener of claim 1.
c) Product-by-process claims.
d) Claims having the limitation that substantially the entire threaded surface of the nut is coated in thermoplastic.
e) Any of the above.

80) In regards CPA applications, which of the following is WRONG:

a) Applicant gets the same application number.
b) Applicant may fax the request for a CPA.
c) Priority to the parent is granted only if reference is made in the first paragraph.
d) No Continuation-inpart is permitted.
e) The CPA uses the same file wrapper.

81) Which of the below correctly completes: "In establishing obviousness

a) A suggestion to modify the prior art may be inherently or implicitly taught in one of the references.
b) A suggestion to modify must be found expressly in one of the references.
c) A suggestion to modify the prior art is necessary only when applicant presents evidence of nonobviousness.
d) A suggestion to modify must be expressly found in all the prior art combined to show obviousness.
e) A suggestion to modify may come from recent nonanalogous art.

82) The members of a Markush group ordinarily must _1_, BUT IF the Markush group is in a claim to a process or combination rather than a compound, THEN -2-.

a) 1) Be homologs; 2) the members of the group must be closely related homologs.
b) 1) Be analogs; 2) the members of the group must be closely related analogs.
c) 1) Be homologs; 2) the members of the group must be analogs.
d) 1) Be belong to a recognized physical, chemical, or art-recognized class; 2) the members of the group must be disclosed in the specification to possess at least one property in common which is mainly responsible for their function in the claimed relationship, and, it must be clear from their very nature or from the prior art that all of them possess this property.
e) 1) Be analogs; 2) the members of the group must be disclosed in the specification to possess at least one property in common which is mainly responsible for their function in the claimed relationship, and, it must be clear from their very nature or from the prior art that all of them possess this property.

83) "Selected from the group consisting of amino, halogen, nitro, chloro and alkyl"

a) Is permitted because it's a Markush group.
b) Is not permitted even thought it's a Markush group.
c) Is an impermissible Markush because "chloro" is already included in "halogen."
d) Is an example of the per se impermissible double inclusion rule.
e) Is a permitted alternative because it presents no uncertainty or ambiguity with respect to the question of scope or clarity of the claims.

84) A claim containing a negative limitation that does not have a basis in the original disclosure

a) Should be permitted when it presents no uncertainty or ambiguity with respect to the question of scope of the claims.
b) Should be rejected under 35 USC 112 2.
c) Should be rejected under 35 USC 11211 (written description).
d) Should be rejected under 35 USC 112 1 (written description), only if there is no literal basis .
e) Should be rejected under 35 USC 112 1 (enablement).

85) The use of trademarks in claims is problematic.

a) Whenever the patent applicant does not own the trademark.
b) Because the relationship between a trademark and the product it identifies is sometimes indefinite, uncertain, and arbitrary.
c) Because the trademark owner can claim that a government sanctioned document infringes.
d) Because trademarks identify sources never products.
e) Because trademarks cannot be limitations.

86) One of you offered the below claim on your claim drafting final:

1. Apparatus for extracting the stemmed component of a prosthesis from a bone in which it is implanted, said apparatus comprising:

this claim is

a) Elegant
b) Indefinite
c) Wordy
d) Awkward
e) Unacceptable

87) The whereby clause is

a) Incorrect, it should be a wherein clause.
b) Incorrect, it is unnecessary and therefore too limiting.
c) Incorrect, it describes function for which there is no structure.
d) Correct, but it would be better as a "wherein" clause.
e) Nice.

88) The phrase "generally in the direction of elongation of the component" in the last subparagraph is

a) Necessary, but not unduly limiting.
b) Unnecessary, but not unduly limiting.
c) Unnecessary, functional, and unduly limiting.
d) An attempt to claim functionally what has not been claimed structurally.
e) Awkward, unnecessary, and unduly limiting.

89) In the subparagraph: "a femoral head extractor having an undercut lip adapted to surround the neck of the component and to grasp the head of the component on a side thereof,"

a) The undercut lip is improperly claimed inferentially.
b) The undercut lip is properly claimed.
c) The use of "adapted" is indefinite.
d) The use of "adapted" is unacceptable, but not because its indefinite.
e) The inconsistently uses both "the" and "said."

90) The claim drafter should look at the claim to see that each element is introduced with -Iand should note whether that element is being acted upon or is acting upon another object, in which case the element should be the -2- of that clause.

a) 1) An indefinite article; 2) subject.
b) 1) An indefinite article; 2) object.
c) 1) A definite article; 2) subject.
d) 1) A definite article; 2) object.
e) 1) An active verb; 2) subject.

91) There is/are ___1___  workpiece(s), referred to by different words.
a) 1)One; 2) Two.
b) 1) Two; 2) Two.
c) 1) Three; 2) Two.
d) 1) One; 2) Three.
e) 1) Two; 2) Four.

7. A method for constructing an activity mat over a foundation comprising the steps of

92) In claim 7 above, in the underlined element, the verb "spreading" probably recites ___ 1 ___, however, if examination reveals that it recites only -2- then -3-.

a) 1) An act; 2) a function; 3) 112,16 applies.
b) 1) A function; 2) an act; 3) 112, 16 applies.
c) 1) An act; 2) a function; 3) the claim is indefinite.
d) 1) A function; 2) an act; 3) the claim is indefinite.
e) 1) An unnecessary function; 2) an act performed by someone; 3) the claim is not made more narrow thereby.

Key to Answers


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