PP1 Exam

Patent Practice and Procedure

IPSI 1999

FINAL EXAM

INSTRUCTIONS: This is an open book examination. You may use the MPEP, your class materials, and other written materials. You have 2 hours to complete the 40 multiple choice questions. Using the SCANTRON (R) SCORE SHEET provided, enter your EXAM NUMBER in the appropriate location and answer each of the questions 1-40 by filling in the appropriate letter. No credit will be given for any answers given in blue books or on scratch paper .


1) Based upon the Constitution of the United States, the purpose of the patent system is to:

a) promote the progress of useful arts by securing for limited times to inventors the exclusive right to their discoveries.

b) promote the progress of science by securing for limited times to inventors the exclusive right to their discoveries.

c) promote the progress of science by securing for limited times to authors the exclusive right to their writings.

d) promote the progress of science by granting an exclusive right to inventors.

e) a) and c)

2) A patent confers on the inventor the right to make, use and sell the invention
covered by the patent claims.

a) True

b) False

3) The function(s) of a patent claim is(are) to:

a) Define the exclusive right

b) Enable one of ordinary skill in the art to make and use the invention

c) Provide notice to the public of the exclusive right

d) a), b) and c)

e) a) and c)

For questions 4-6 consider the following claims to an edible food product:

The invention claimed is:

1. An edible food product comprising:

    two slices of bread;

    a meat product made of ground beef and inserted between said two slices of bread; and

    an edible container disposed on the surface of said meat product, said edible container having a concave configuration disposed at the bottom surface having a circular edge portion for causing the edible container to tightly adhere to the meat product; and

    a salad contained in said edible container, wherein the edible container separates said salad from the meat product such    that said salad is maintain in a fresh condition.

2. The edible food product of claim 1 wherein said salad includes lettuce and tomato.

3. The edible food product of claim 1 wherein said meat product is made of ground turkey and not ground beef.

4. The edible food product of claim 3 wherein said container is made from potato, wheat flower, rice, or the like.

5. A method of making an edible food product, said method comprising:

   forming a beef patty;

   heating said beef patty over the open flame;

    melting a piece of cheese on said round beef patty;

    spreading a sauce on at least one of first and second pieces of bread;

    placing said beef patty with said cheese between said first and second pieces of bread;

    placing a salad into the edible container; and placing said edible container with said salad between said beef patty and one of said pieces of bread.

6. The method of claim 5 further including the step of heating said first and second pieces of bread.


4) Claim 3 is:

a) not in proper dependent claim format because it does not refer to the
previous claim 2.

b) an improper dependent claim because it does not specify a further
limitation of the subject matter claimed pursuant to 35 U. S.C. 112,  para 4.

c) is per se indefinite because it includes a negative limitation.

d) a) and b)

e) b) and c)


5) The limitation recited in claim 4 may be found indefinite under 35 U.S. C. 112, 2 nd paragraph, because

a) alternative expressions are per se indefinite.

b) the scope of "or the like" is unclear.

c) alternative expressions will be found indefinite where a Markush group could have been used.

d) "said container" lacks antecedent basis.

e) b) and d)


6) Which of the following statements is true?

a) "the edible container" recited on line 8 of claim 5 has proper antecedent basis in preceding claim 1.

b) "the open flame" recited on line 3 of claim 5 has proper antecedent basis because it is inherent in the heating step.

c) "one of said pieces of bread" recited on line 10 of claim 5 has proper antecedent basis

d) "said round beef patty' on line 4 of claim 5 has proper antecedent basis

e) "at least one of first and second pieces of bread" lacks proper antecedent basis

7) According to 37 CFR 1.75,

a) inferential claiming is expressly prohibited.

b) each element or step of the claim should be separated by a line indentation.

c) Jepson claim format should be used for improvement claims.

d) all of the above e) b) and c)


8) Which of the following sections of the patent statute (Title 35 of the United
States Code) dictate the scope or breadth of patent claims?

a) Sections 102 and 103

b) Section 112, paragraph 1

c) Section 112, paragraph 2

d) All of the above

e) a) and b)


9) Consider the following claim drafted for the adhesive tape assignment:

An adhesive tape comprising:

a core strip having first and second surfaces, a central region and a margin, said central region of said core strip having at least one thicker portion, said at least one thicker portion being thicker than said margin of said core strip; and at least one adhesive layer disposed on at least a portion of each of said first and second surfaces of said core strip, said adhesive layer varying in thickness from proximate said central region to proximate said margin of said core strip, said adhesive layer at said margin being thicker than said adhesive layer at said central region, said adhesive layer consisting of a fabric.


This claim

a) distinguishes over the admitted prior art in the adhesive tape assignment.

b) is overly broad under 35 U. S. C. 112, 1 st paragraph, because the fins are not recited.

c) is unnecessarily narrow because "consisting of a fabric" precludes the adhesive layer from containing a filler in addition to the fabric.

d) a) and c)

e) all of the above


10) Designing around valid patent claims to avoid infringement is

a) illegal.

b) contrary to the constitutional purpose of the patent system.

c) consistent with the constitutional purpose of the patent system.

d) legal but can be prevented by drafting ambiguous claims having a scope that cannot be ascertained by competitors.

e) a) and b)


11) A patent examiner will often reject claims as being unnecessarily narrow.

a) True

b) False


12) The language used in patent claims

a) must always be terms of art known to those of ordinary skill in the technology.

b) must find clear support or antecedent basis in the description so that the meaning of the terms in the claims may be ascertainable by reference to the description.

c) can include new terminology coined by the patent applicant or well known terms given a special meaning by the patent applicant.

d) b) and c)

e) a) and b)


13) The lesson to be learned from the holding in Sage Products, Inc. v. Devon Industries, Inc. is that the claim drafter should draft claims narrowly and rely on the Doctrine of Equivalents to show infringement.

a) True

b) False


14) According to the holding in Ex parte Vollheim, the patent applicant is not required to use the transition word "consisting of' to exclude all inoperative embodiments of the invention provided the scope of the claim is commensurate with the enabling disclosure.

a) True

b) False


15) Which of the following is/are a proper Markush Group:

a) "material selected from the group consisting of aniline, homologues of aniline and halogen substitutes of aniline"

b) "material selected from the group comprising aniline, homologues of aniline and halogen substitutes of aniline"

c) "material including aniline, homologues of aniline or halogen substitutes of aniline"

d) a) and b)

e) all of the above


16)  In re Marosi the limitation "essentially free of alkali metal" was found to be

a) indefinite because the patent applicant did not define "essentially free" by stating the exact cutoff between 4 ppm of sodium ions and 3,819 ppm sodium ions.

b) definite because "essentially" is like other broadening modifiers commonly used in claims.

c) definite because the specification provided a general guideline to determine what is meant by "essentially free of alkali metal" and provided a specific example.

d) indefinite because essentially is inherently ambiguous.

e) a) and d)


17) Functional language can be used in a product claim but Page 7 of 14

a) if used at the point of novelty, is per se indefinite.

b) must comply with 35 U.S.C. 112, first and second paragraphs.

c) may not be given patentable weight by the patent examiner.

d) can only be used in means plus function format.

e) b) and c)


18) A patent application filed with the U.S. Patent and Trademark Office in compliance with 35 U.S.C. 1.53(b) will receive a filing date as of the date

a) the application was deposited in first class mail.

b) the application was transmitted via facsimile.

c) the application was deposited with Express Mail.

d) the application was sent by Federal Express.

e) any of the above


19) Consider the following claim from the prosthesis extractor assignment:

A system for extracting a prosthesis having a stem, a neck, and a head, said system comprising:

a base portion; a pair of spaced jaws extending from said base portion, said pair of spaced jaws converging from a first region to a second region, said first region being adapted to receive the head of the prosthesis and said second region being adapted to grasp the neck of the prosthesis; and an impact providing element for directing an impact force to said base portion and said jaws and along the stem of the prosthesis. The phrase "an impacting providing element"

a) may invoke 35 U.S.C. 112, paragraph 6, because the limitation is drafted as a function to be performed without reciting structure and "means" is not necessary to invoke 35 U.S. C. 112, paragraph 6.

b) is not going to invoke 35 U.S.C. 112, paragraph 6, because "means" is required to invoke 35 U.S.C. 112, paragraph 6.

c) will be rejected by the examiner under 35 U.S.C. 112, Vt paragraph, as a single means limitation.

d) will be rejected by the examiner as indefinite under 35 U.S.C. 112, 2nd paragraph, if it is at the point of novelty.

e) a) and d)


20) In the final graded claim drafting assignment, the original claims were drawn to an inflatable, modular guitar system. If new claims directed to the acoustic grills are added by amendment,

a) they will not be restricted because a restriction requirement can only be made prior to the first Office Action.

b) they will be restricted if the examiner can show that the system claims do not require the particulars of the acoustic grills for patentability.

c) they will be restricted if the examiner can show that the acoustic grills
have a separate utility other than in an inflatable, guitar system.

d) b) or c)

e) b) and c)


21) If an Office Action has a mailing date of December 16, 1998 and a shortened statutory period of 3 months, a response to that Office Action can be filed

a) today with a Petition for an Extension of Time of 4 mos. and a Certificate of Mailing under 37 CFR 1.8.

b) today with a with a Petition for an Extension of Time of 4 mos. and a Certificate of Express Mail under 37 CFR 1. 10.

c) today with a Petition for an Extension of Time of 4 mos. and a Certificate of Facsimile transmission under 37 CFR 1.8.

d) any of the above

e) none of the above

22) A patent application is filed on August 11, 1998. The examiner rejects all of the claims under 35 U.S.C. 102(b) as being anticipated by a published European Patent Application having a publication date of September 1, 1997. The rejection can be overcome by

a) submitting a Rule 131 Affidavit establishing an actual reduction of practice prior to September 1, 1997.

b) arguing that the claims are patentably distinguishable from the invention disclosed in the European Patent Application.

c) amending the claims to patentably distinguish over the invention disclosed
in the European Patent Application.

d) any of the above

e) b) and c)


23) A patent application is filed on August 11, 1998 in the names of inventors Franklin and Pierce. The examiner finds a U.S. Patent issued on October 12, 1998 to Smith and Pierce (the same inventor Pierce) with a filing date of August 4, 1997. Which of the following is/are true?

a) The examiner cannot use this patent as prior art against the application because one of the inventors named in the patent is also named in the application and the patent did not issue more than one year prior to the filing date of the application.

b) The examiner cannot use this patent as prior art against the application because the patent did not issue prior to the filing date of the application.

c) The examiner can use this patent as prior art under 35 U.S.C. 102(e) unless the application is a continuation that properly claims the benefit of the August 4, 1997 filing date.

d) The examiner can use this patent as prior art under 35 U.S.C. 102(b)
because the filing date of August 4, 1997 is more than one year prior to
the filing date of August 11, 1998.

e) a) and b)

24) To make a prima facie case of obviousness when combining patents under 35 U.S.C. 103, the examiner must

a) show that all of the factors inGraham v. John Deere have been satisfied.

b) show that the prior art is capable of being modified to meet the limitations of the claims.

c) show that the prior art suggests the desirability of combining the patents and that the patents, when combined, disclose or suggest all of the claimed elements/limitations.

d) show that the prior art patents are within the field of the inventor's
endeavor and are reasonably pertinent to the particular problem with
which the inventor was involved.

e) show that the claimed invention does not achieve any unexpected results.


25) Consider the following claim drafted for the tissue preservation system claim drafting assignment:

1. A system for preserving living tissue, said system comprising:
a quantity of sterile liquid;
a nutrient biscuit containing tissue preservation materials, said nutrient biscuit adapted to
be substantially uniformly dissolved in said quantity of sterile liquid;
a gas permeable container adapted to receive said living tissue, said quantity of sterile
liquid, and said source of tissue preservation materials; and
a temperature maintenance device for maintaining said living tissue received in said gas permeable container in a temperature range favorable to survival of said living tissue and above the freezing point of said living tissue.

This claim

a) improperly uses functional "adapted to" language to provide interrelationships between the claims.

b) does not distinguish over the prior art because the prior art also maintains the temperature above the freezing point of the living tissue.

c) covers a system sold in an unassembled "kit" form because the "adapted to" language is used to provide interrelationships between the elements.

d) is per se indefinite under 35 U.S.C. 112, 2nd paragraph, because the term it substantially' is vague.

e) is indefinite under 35 U.S.C. 112, 2 nd paragraph, because the claim fails to recite the exact temperature range.


26) For a reference to be properly relied upon under 35 U.S.C. 103, the reference must be within the field of the inventor's endeavor or must be reasonably pertinent to the particular problem with which the inventor was involved.

a) True

b) False

27) Which of the following was not a patent of the day in Patent Practice and Procedure class:

a) Hunting Decoy Apparatus

b) Apparatus for Facilitating the Birth of a Child by Centrifugal Force

c) Force-sensitive, Sound-playing Baseball Hat

d) Annunciator for the Supposed Dead e) Method of Concealing Partial Baldness

28) When multiple references have been combined by the examiner in an obviousness rejection, the applicant can overcome that rejection by

a) arguing that one of the prior art references in the combination expressly "teaches away" from the combination with one of the other references.

b) arguing that the applicant has discovered the source of a known problem.

c) submitting a an affidavit under Rule 131 showing an invention date prior to
the effective date of one of the references, if that reference is prior art
under sections 102(a) or 102(e).

d) all of the above

e) a) and b)


29) In Gentry Gallery, Inc. v. Berkline Corporation, the claims, as originally filed, included the limitation of the recliner controls being on the console between the recliners. During prosecution, the original claims were amended to remove this limitation and the claims that issued did not include this limitation. In light of the holding in Gentry that the claims without this limitation were invalid under Section 112, 1st paragraph, the examiner could have

a) rejected the amended claims under 35 U.S.C. 132 as including new matter since the amended claims were not supported by the written description.

b) rejected the amended claims under 35 U. S. C. 112, 1 st paragraph since the amended claims were not supported by the written description.

c) rejected the claims under 35 U.S.C. 112, 2nd paragraph, because a failure to claim an essential element of the invention results in an indefinite claim scope.

d) rejected the claims under 35 U. S. C. 112, 1 st paragraph, because the specification described the preferred embodiment as having the recliner controls on the console and the claims, as amended, no longer set forth
the best mode of the invention.

e) b) and d)


30) If the examiner gives a general enablement rejection under 35 U.S.C. 112, 1 st  paragraph, because the specification fails to enable any of the subject matter within the claims, the rejection can be overcome by

a) amending the specification to include the details necessary to enable one
skilled in the art to make and use the invention.

b) amending the specification to incorporate a U.S. patent by reference.

c) filing a continuation-in-part application including the details necessary to
enable one skilled in the art to make and use the invention.

d) arguing that the claims are commensurate in scope with the specification.

e) any of the above.


31) If a patent application fails to set forth any credible utility, a rejection can be made under 35 U.S.C. 101 and also under 35 U.S.C. 112, 1st paragraph, because the description cannot teach how to use the invention.

a) true

b) false

32) Inventor Pierce files a patent application on May 22, 1998 with claims to a widget. The examiner finds a patent issued to inventor Franklin on June 1, 1998 with a filing date of May 21, 1997. The Franklin patent discloses and claims the same widget as the widget claimed in the Pierce application. Neither the Pierce application, nor the Franklin patent have been assigned. Which of the following statements is true?

a) The examiner can reject the claims in the Pierce application over the claims in the Franklin patent on the grounds of Double Patenting.

b) The examiner can reject the claims under 102(e) but the rejection can be
overcome by filing an affidavit under Rule 131 showing an invention date
prior to May 21, 1997.

c) The examiner can reject the claims under 102(b).

d) The examiner can reject the claims under 102(a) and the rejection cannot be overcome by filing an affidavit under Rule 131 showing an invention date prior to May 21, 1997.

e) None of the above.


33) According to 37 CFR 1.53, the minimum needed to be granted a filing date at the U.S. Patent and Trademark Office is

a) a specification as prescribed by the first paragraph of 35 U.S.C. 112 and
any drawing required by 37 CFR 1.81 (a)

b) at least one claim pursuant to 37 CFR 1.75

c) an oath or declaration pursuant to 37 CFR 1.63

d) all of the above

e) a) and b)


34) To satisfy the duty to disclose information material to patentability under 37 CFR 1.56, the applicant must

a) list all patents, publications, or other information material to patentability on a PTO form 1449, provide a copy of each patent, publication or other information, and provide a concise explanation of the relevance of each patent, publication, or other information that is not in the English language.

b) list all patents, publications, or other information material to patentability on a PTO form 1449, provide a copy of each patent, publication or other information, and provide a concise explanation pointing out how the claims distinguish over each of the prior art references cited.

c) use Jepson claim format.

d) conduct a patent search.

e) a) and c)


35) A provisional patent application was filed on August 11, 1998. To retain the benefit of the filing date in the provisional application, the applicant can

a) file a regular application under 35 U.S.C. 111 (a) by August 11, 1999 with claims supported by the disclosure in the provisional application pursuant to 35 U.S.C. 112, 1st paragraph.

b) amend the provisional application to include claims and request examination.

c) file a petition to convert the provisional application to a regular application under 35 U.S.C. 111 (a).

d) file a continuation provisional application that claims the benefit of the August 11, 1998 filing date.

e) any of the above.


36) If a continuation-in-part application claims the benefit of an earlier filing date in the U.S. under 35 U.S.C. 120, the patent that issues has two effective patent terms - the 20 year patent term is measured from the earlier filing date for the common subject matter and is measured from the continuation-in-part filing date for the new subject matter added to the continuation-in-part application.

a) True

b) False

37) Claims are more likely to be rejected for indefiniteness by the Patent Office during prosecution than invalidated for indefiniteness by a Court during litigation because there is a presumption of validity once the patent issues.

a) True

b) False


38) A first patent application is filed with a first set of claims 1 -10 to an apparatus and a second set of claims 11-20 to a process. A preliminary amendment is filed with the first patent application canceling the second set of claims 11 -20. A second patent application is later filed with the second set of claims to the process and properly claiming the benefit of the filing date in the first application under 35 U.S.C. 120. Both applications are assigned to the same company. The examiner rejects the claims in the second application over the claims in the first application on the grounds of obviousness type double patenting. This rejection can be overcome by:

a) using the shield provided by the third sentence of 35 U.S.C. 121, since the
second application is a divisional application.

b) filing a terminal disclaimer.

c) arguing that the claims are not obvious over one another.

d) all of the above

e) b) and c)

39) Which of the following is not required to obtain the benefit of an earlier filing date in the United States under 35 U.S.C. 120?

a) a cross-reference to the earlier application b) at least one common inventor

c) the invention was disclosed in the earlier application in the manner
provided by 35 U.S.C. 112

d) a restriction requirement in the earlier application

e) co-pendency with the earlier application


40) A continued prosecution application (CPA) filed under 37 CFR 1.53(d) can

a) add new matter to the prior parent application if a new oath or declaration
is executed.

b) be used to extend the patent term.

c) claim the benefit of a prior provisional application if filed within 12 months of the filing date of the provisional application.

d) be used to file a divisional application where the prior parent application can issue with claims to one invention and the CPA divisional application can issue with claims to another patentably distinct invention.

e) be filed without a specification.


* * * End of Exam * * *