PPII Final Examination 1999

Instructions:

Put your Student ID number on this booklet and on the ScantronTM answer sheet. Turn in both.

This Exam is CLOSED BOOK You may NOT use the MPEP, course materials, notes, outline, or anything else.

This exam has two parts. Part I is a multiple-choice exam. Part 2 is a performance exam. Each Part is worth 50 percent. You may divide your time any way you wish.

Instructions for Part I

Fill in completely the bubble on your ScantronTm answer sheet that you believe corresponds to the BEST choice.

Use only a No. 2 pencil to fill in the bubbles. Make no stray mark. Erase completely. Incomplete erasures and stray marks are counted as incorrect responses by a machine. We will not hand check. THIS IS YOUR RESPONSIBILITY.

Your score will be the number correct. There is no penalty for guessing.

If you wish to explain an answer, do so in this booklet.

Instructions for Part 2

You will revise, edit, and comment on a draft response to an Office action. Confirm that you have: (1) the Office action (pages 16-18), a prior art reference (page 19), and the draft response (pages 20-23).

The draft response is based on the TV cart specification (as actually filed) that you worked on this semester. The draft response is not in condition to be filed. Assume that you are the training partner correcting and helping an associate. Give the associate guidance on how to improve the draft response. Be as helpful as possible; hold nothing back.

Your performance as a trainer depends on complete corrections and meaningful explanations. The more instructive and helpful your directions, the more points you score. For example (not necessarily applicable in this problem), if you suggest amending a claim, you might receive more points for more helpful and meaningful guidance along the following lines:

1 pt.: ""Amend claims."

2 pts.: ""Amend claims to incorporate

3 pts.: ""Amend claims to incorporate which is not shown in the prior art and will make the claim allowable."

5 pts.: "Amend claims to incorporate -, which is not shown in the - prior art of record and will make the claim allowable because not anticipated. This time, because we are not on final, let us try adding the amendment only to the preamble, because there it may be less limiting. Moreover, lets follow through by adding a

10 pts "'Amend claims to incorporate ---, which is not shown in the prior art of record and will make the claim allowable because not anticipated. This time, because we are not on final,, lets try adding the amendment only to the preamble, because there it may be less limiting. Moreover, * * * lets follow through by adding a * * * " Here is my suggestion:

'"1. (Amended) A TV cart for transporting IV dinners * * * comprising * * *."


Thus, the more your guidance to the associate demonstrates your command of patent prosecution fundamentals, the better you will do on this exam. Proposed language will get you more points than bare suggestions. Explanations win get you more points than bare directions. Detail and precision will be rewarded!

Write legibly - we will make no effort to figure out your writing and will not give you the benefit of any doubt.

Write all comments, suggestions, and rewrites only on the draft response papers. NOTHING else will be read. You may use both sides of the paper. Feel free to do a. complete redraft on the backside of the pages, if you wish. Write legibly.

Good Luck!





Part I - Multiple Choice - place answers on Scantron sheet.

1) Which is/are good reason(s) to file narrow application claims initially

a) claims can be broadened in reissue
b) the narrowing of claims in response to prior art causes prosecution history estoppel
c) claims can be broadened during prosecution, after the Examiner reveals the prior art
d) narrow claims are more easily patentable
e) all the above


2) Woodsie, in Georgia Pacific's lab in Manitoba, reads intranet email on Johns' earlier work at the Georgia Pacific lab in Georgia. Woodsie, conceives a patentable improvement on John's work.

a) Woodsie and John can be co-inventors even if they have not met
b) Woodsie and John can be co-inventors only if they have met
c) Woodsie and John can be co-inventors only if they have communicated
d) Woodsie and John cannot be co-inventors unless they have communicated
e) Woodsie and John can be co-inventors only if John's work is contemporary


3) Applicant receives a Provisional Rejection based on 'X' in view of a 1969 patent. The effective date of "X" is its

a) publication date
b) filing date
c) issue date
d) foreign priority date
e) filing day less one year


4) Defensive reexamination presents the potential disadvantage(s) of

a) the duty to disclose
b) the probability of getting the same Examiner
c) the opponent gets one attempt to explain the art
d) the difficulty of staying litigation
e) all the above


5) After seeing an article in H&G dated 10 Aug 97 on a similar but inferior garden-hoe, inventor files on 30 July 98 in the PTO. Inventor also filed a foreign counter-part on 9 Aug 98. The foreign patent office cites the H&G article in a search report dated 10 Sep 98. PTO issues first Office action 31 Oct 98 containing only a restriction requirement. What (was/is) the last day to file an IDS without paying a fee.

a) October 31, 1998
b) October 30, 1998
c) the mailing date of the first of either a final action or a notice of allowance
d) the date of payment of the issue fee
e) None of the above


6) Which of the following Office actions terminates only the first IDS time period.

a) Mailed 50 days after filing; containing only a restriction requirement.
b) Mailed 50 days after filing; allowing all dependent claims.
c) Mailed 100 days after filing; containing only a restriction requirement.
d) Mailed 100 days after filing; allowing all dependent claims.
e) Mailed 100 days after filing; containing a final rejection.


7) The recapture doctrine reflects what function or role of patent claims:

a) fairness to the patentee
b) public notice
c) description of inventive concept
d) description of supported invention
e) incentive to innovate


8) In view of the Warner-Jenkinson presumption, and the Sextant decision, you should amend in response to multiple grounds of rejection and multiple references

a) to avoid identifying any particular amendment as resulting from a particular reference
b) to avoid identifying any amendment as resulting from prior art concerns on the one hand, or as not resulting from prior art concerns on the other hand
c) to identify each particular amendment resulting from a particular reference as resulting from said reference
d) to identify each amendment as either resulting from prior art on the one hand, or as not resulting from prior art on the other hand
e) to more clearly point out and distinctly claim what the applicant regards as the invention


9) Conception can be proven only by

a) the inventor's testimony
b) disclosure
c) reduction to practice
d) written documents
e) collaboration


10) The recapture doctrine applies to

a) Doctrine of equivalents (DOE)
b) Reexamination (reexam)
c) DOE and reexam
d) DOE and reissue
e) DOE, reexam, and reissue


11) An applicant's reply to an Office action MUST:

a) specifically point out the errors in the Examiner's action
b) point out the specific distinctions that make any claim patentable over any applied reference
c) appear throughout to be making a bona fide attempt to advance the application
d) All the above
e) Just "a" and "b"


12) During Reissue, in an amendment in response to a rejection, the applicant MAY:

a) make a general allegation that the claims define a patentable invention without specifically pointing out how the language of the claims patentably distinguishes them from the references
b) point out clearly the patentable novelty the claims present in view of the state of the art disclosed by the references cited or the objections
c) show how amendments avoid such references or objections
d) All the above
e) Just "b" and "C',


13) The most important step in drafting the Specification is

a) drafting the claims
b) drafting the drawings
c) reviewing the Specification with the inventor
d) understanding the invention
e) conforming the drawings, claims, and description


14) An affidavit under 3 7 CFR 1. 131 may NOT be used in Reexamination to overcome:

a) subject matter made before the applicant made his invention
b) a foreign patent dated less than one year prior to applicant's filing date
c) a printed publication dated less than one year prior to applicant's filing date
d) a United States patent dated less than one year prior to applicant's filing date and disclosing but not claiming applicant's subject matter
e) all these


15) The date to overcome using a 3 7 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


16) 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 dead volume to prevent loss of stored product. Reference 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 is not reasonably pertinent to the problem with which the inventor was concerned.
d) The reference is nonanalogous art if a person having ordinary skill in the art would not reasonably have expected to solve the problem of 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".


17) A reference fully describes the claimed invention. 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).


18) A patent fully describes the claimed invention. 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).
d) 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).


19) A patent fully describes the claimed invention. Applicant is NOT a patentee on patent, which was published MORE than one year prior to filing date of application.

a) The reference cannot be used against applicant.
b) The reference may be used against the applicant under 35 USC 102 (b).
c) The reference may be used against the applicant under 35 USC 102 (d).
d) The reference may be used against the applicant under 35 USC 102 (c).
e) The reference may be used against the applicant under 35 USC 102 (e).


20) In responding to a Final rejection

a) amendments may not be made without leave
b) amendments canceling claims may be made as a matter of right
c) amendments as to form may be made as a matter of right
d) amendments complying with any requirement of form expressly set forth in a previous Office action may be made as a matter of right
e) just "b" and "d"


21) On appeal from a Final rejection in Reexamination

a) amendments may not be made as a matter of right
b) amendments canceling claims may be made as a matter of right
c) amendments as to form may be made as a matter of right
d) amendments may be admitted upon a showing of good and sufficient reasons why they are necessary and were not earlier presented.
e) just "A" and "d"


22) 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 in the specification.
b) Admissions in papers other than the specification filed during prosecution.
c) Affidavit of Examiner's own knowledge.
d) All of the above.
e) Just "a" and "b".


23) Application is rejected under 35 U.S.C. 102(b) based on a U.S. patent that claims and describes the same invention. Which, 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 terminal disclaimer.
d) A Rule 132 affidavit or declaration showing inoperability of the patent.
e) None of the above.


24) Abe, Butch, Carey, and Don work for the ABC Corp. Abe directs research engineer Butch to develop an improved snowboard boot. Butch studies the various products on the market and conceives of a removable stiffening stay housed in a pocket on the upper portion of the boot. He then instructs Carey to construct such a boot with a stiffening stay. Carey and Don construct the boot following Abe's instructions, chose stiffening materials, test the boots, and demonstrate their improved quality. Abe directs that a patent application be filed. Who should be named as inventor(s)?

a) Don
b) Don, Carey, and Butch
c) Abe
d) Butch
e) Carey


25) In the ABC situation above Paul the attorney has Butch, Carey, and Don review the application. Butch later finds a file of sales brochures he believes anticipate some of the pending claims and tells Abe. Who is/are the Rule 1.56c individual(s)?

a) Paul
b) Butch and Abe
c) Paul, Butch, Carey, and Don
d) Abe, Butch, Carey, Don, and Paul
e) ABC, Abe, Butch, Carey, Don, and Paul


26) Application is rejected under 35 U.S.C. 102(b) based on a U.S. patent that claims, but does not describe 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 showing nonenablement of the patent.
d) A terminal disclaimer.
e) None of the above.


27) In 1970, in a scifi magazine, Dean suggested combating mosquitoes using genetically engineered pond microflora. Applicant claims a method of combating plant insect pests utilizing plant-colonizing bacteria genetically modified to produce a mosquitokilling toxin. DNA encoding for the protein toxin is inserted in the bacteria chromosome. The Examiner wants to reject based upon Dean.

a) No prima facie case is made out
b) The Examiner may not make this nonobviousness rejection, because it is based nonanalogous art.
c) Appellant's argument is nonanalogous art, but it is unlikely to prevail
d) A prima facie case is made out, but may be overcome by facts and evidence.
e) A showing of secondary indicia may rebut the prima facie case.


28) A design patent on an "Icon for a wastebasket" may be

a) reissued
b) reexamined
c) continued
d) the basis for a priority claim
e) all of the above


29) On Final, during prosecution based on a Reexam, you feel there are certain substantive amendments that you could have made earlier during prosecution on reexam that would benefit your client. You prefer to interview the Examiner. You should

a) just make the amendments; no interview is needed.
b) just make the amendments; an interview is not proper.
c) just make the amendments, showing good and sufficient reasons why necessary, and why they were not earlier presented.
d) just telephone; you have a right to an interview.
e) just telephone, even though the rules do not provide for an interview on Final.


30) On Final, during prosecution on Reexamination, you have which ways to avoid abandonment:

1. Submit Examiner-approved amendments
2. Cancel the rejected claims
3. Appeal to the Board
4. Convince Examiner to withdraw final
5. Petition to the Commissioner


a) 1, 2, and 3
b) 1, 3, and 4
c) I and 3
d) 2, 3, and 5
e) 1, 4, and 5


31) A Notice of Appeal to Board of Patent Appeals and Interferences.

a) May be filed after the end of the six month period for response to a Final Rejection and must be signed by the attorney of record.
b) Must be signed by either the attorney of record in the application or the applicant and may identify all rejected claims appealed.
c) Must be signed by the assignee of record and must identify the rejected claims appealed.
d) May be filed after the first Office action on the merits provided the application is not a continuation or substitute application of a prior application.
e) May be filed after a claim has been twice rejected even though the claim has not been given a final rejection


32) Mr. Denko's stated reason for a change in the Title of the Roys application:

a) There was more prior art in the field of the requested title
b) There was less prior art in the field of the requested title
c) The title was too long
d) Changes to the claims made the requested title more appropriate than the original
e) The title change made the Stillwell reference non-analogous art


33) The doctrine of * * * is intended to prevent a patentee from obtaining a time-wise extension of patent for the same invention or an obvious modification thereof

a) equivalents
b) recapture
c) claim differentiation
d) double patenting
e) prosecution history estoppel


34) The '756 application is a continuation of the application that issued as the '0 13 patent. The '0 13 patent (expired) is a division of the application that issued as the '748 patent. The '013 and '748 patents, and the '756 application all entitled to the benefit of the same filing date, but they do not claim identical subject matter. A third party requested reexam of the '748 patent. During reexam, Examiner rejects claims of the '748 patent for double patenting over claim 1 of the '0 13 patent.

a) Examiner may be correct in asserting same invention double patenting
b) Examiner may be correct in asserting obviousness-type double patenting
c) Examiner cannot be correct; the '0 13 patent cannot be prior art to the '748 patent because the two patents have the same filing date.
d) Examiner cannot be correct; double patenting is not a valid basis for rejection in reexamine
e) Examiner may be correct in asserting obviousness-type double patenting, but the rejection can be overcome with a terminal disclaimer


35) In the Buzak Appeal Brief, the description of the invention was

a) More extensive and at a lower technical level than the description in the Responses, yet the same Buzak Declaration was used
b) Less extensive and at a lower technical level than the description in the Responses, yet the same Buzak Declaration was used
c) More extensive and at a lower technical level than the description in the Responses, therefore different Buzak Declarations were used
d) Less extensive and at a lower technical level than the description in the Responses, therefore different Buzak Declarations were used
e) More extensive and at a higher technical level than the description in the Responses, yet the same Buzak Declaration was used


36) For purposes of the on-sale bar, the primary meaning of "invention" is

a) The idea
b) The physical embodiment of the idea
c) The conception of the inventor
d) The claim
e) The count







S/N 07/628,410
Art Unit 317

Applicant's paper dated 3 Feb 1998 presenting arguments going only to anticipation is acknowledged. Applicant's paper was responsive but unconvincing. This action is made final.

Applicants claim I reads:

1. A traveler cart for securely transporting and supporting articles, comprising:
a safety strap for harnessing an article to be transported;
a support surface having a guide channel recessed therein for slideably receiving a lockable anchor member positioned therein;
set means attached to the lockable anchor member for locking the anchor member to the guide channel; and
extending means on the lockable anchor member for adjustably cinching thereto one end of the safety strap.


Anticipation

The following is a quote from 35 USC 102(b):

A person shall be entitled to a patent unless --

(b) the invention was patented or described in a printed publication in this or a foreign country or in public use or on sale in this country, more than one year prior to the date of the application for patent in the United States

Applicant's preamble limitation to a "traveler cart" is a design choice of no patentable significance, which applicant admits is anyway used "for securely transporting and supporting articles" as in Jesse '978.
Applicant's argument that its claimed "safety strap" is for "harnessing an article to be transported" rather than a retaining means for a tarp is likewise without patentable significance as there is no distinct structure.
Applicant claims a "support surface having a guide channel recessed therein for slideably receiving a lockable anchor member" as shown in Jesse '978. There guide 18 includes surface 12 for the slideable retention of anchor 28. Alternatively, the bed of the pick up is a support surface.
Applicant has not shown that anchor 28 cannot be made lockable by either a combination of the interaction of rails 24 and 26 and track 34, or, hook 30.


SIN 07/628,410
Art Unit 317
Applicant's "extending means on the lockable anchor member for adjustably cinching thereto one end of the safety strap" is the same as hook 30 of Jesse '978.

Claim 8 is rejected for the above reasons and those already of record.
Obviousness
The following is a quote from 35 USC 103:
103. Conditions for patentability; non-obvious subject matter

A patent may not be obtained though the invention is not identically disclosed or described as set forth in section 102 of this title, if the differences between the subject matter sought to be patented and the prior art are such that the subject matter as a whole would have been obvious at the time the invention was made to a person having ordinary skill in the art

Jesse '978 differs from applicant's claim device only in that anchor 28 is not necessarily lockable. It would be obvious to make anchor 28 lockable. Thus, claims I and 8 are also separately rejected on the basis of obviousness, even if not on the basis of anticipation.
This rejection is made final. 3 7 CFR 1. 13 6(a).
Mailed this day, March 3, 1999.

William M. Heinz
Primary Examiner




IN THE OFFICE OF THE COMMISSIONER OF
PATENTS


Docket No. 07/628,410 Art Unit. No.: 410
Appl. No. 16297/3         Examiner:' Brown
Inventor: Jeffery Title: TV Cart


Attorney: Stoel Rives Boley Jones and Grey

TRAVERSE OF INTROPER FINAL REJECTION


Box Reexam
Assistant Commissioner of Patents
Crystal City, Virginia, 20231


Sir:
I have twice told the Examiner that Claim I is completely different from Jesse. He just doesn't get it.
For example, the Examiner writes:

Applicant's preamble limitation to a "traveler cart" is a design choice of no patentable significance, which applicant admits is anyway used "for securely transporting and supporting articles" as in Jesse '978.

That's wrong. What I mean by "travel cart" is a wheeled perambulator, for example like the audio-visual carts used in high schools to transport projectors and the like. Such carts are pushed about on four wheels, they are not self propelled like a car.

EXPRESS MAIL CERTIFICATION
This office certifies that this paper was timely emailed to the United States Patent and Trademark Office, digital signature certified by clipper chip, on the Third day of May, 1999. This hardcopy followed.

"Supporting articles" means a platform larger than the foot print of the supported article.
The Examiner also ignores the fact that applicant's "safety strap" is used for a completely different purpose (i.e., not holding down a tarp) than Jesse's item 30.
As I explained during our short phone calL before the Examiner abruptly hung up, there are solid arguments distinguishing numerous other elements of Claim I from Jesse, which I hereby incorporate by reference.
In case, and only in case, the Examiner again refuses to allow my claims in view of the above arguments, I amend as follows. Additions in bold, deletions in strikethrough

1. A traveler cart for securely transporting and supporting articles, comprising:
a nylon-web safety strap for harnessing an electronic article to be transported;
a support surface having a guide channel recessed therein for slideably receiving a lockable anchor member positioned therein;
set means a thumb screw attached to the lockable anchor member for locking the anchor member to the guide channel; and
extending means on the lockable anchor member for adjustably cinching thereto one end of the nylon-web safety strap.


Although this amendment is not necessary, and I am not hereafter in anyway limited thereby, it is fully supported by the specification:

One or more decks of the traveler cart, and in particular the upper-most support platform, includes a recessed guide channel. The guide channel lies in a groove in the deck and is preferably flush with the deck. The guide channel is preferably shorter than, or the same length as, the support surface, but in certain applications could protrude beyond the sides of the deck at either end of the recessed channel.


Specification page 2

Each of the anchoring devices includes a slidelocking thumb screw or other locking device and a strap-receiving eyelet. The thumb screw functions to lock the anchor in place, assuring taut retention and immobility of the article being transported. The eyelet is cinched to a loop formed of one end of the safety strap to secure the strap to the eyelet.

Specification page 3.
I am changing the title of the application to "AnthroTM Hitech Item Relocator."
Lastly, I submit herewith the statement of the inventor proving that he conceived of the subject matter of claim I on September 1, 1989. The statement elaborates on an item by item and element by element basis how the inventor thought of exactly the same thing before.


Thanks
Ace Associate

April 3, 19W


ANSWERS

1. b
2. a
3. b
4. a
5. c
6. b
7. b
8. c
9. b
10. e
11. d
12. e
13. d
14. a
15. d
16. e
17. a
18. b
19. b
20. e
21. e
22. d
23. e
24. d
25. d
26. c
27. a
28. e
29. e
30. b
31. e
32. d
33. d
34. b
35. a
36. c