Q) Tommie and Jo (4.00.23a/4.00.24a)

by patentbar on July 2, 2007 · 34 comments

in Exam Questions

Questions #23 and #24 from the April 2000 (AM) patent bar exam are in the Prometric database.

Please answer questions 23 and 24 based on the following facts. Jo invented a new and unobvious technique for inexpensively manufacturing a chemical that has been used in paper mills for years to bleach paper. Tommie developed a new and unobvious technique to clean-up toxic waste spills. Jo and Tommie collaborated to invent a method to clean-up toxic waste spills using the chemical made according to the unobvious technique invented by Jo. The inventions have been assigned to your client Dowel Chemical Company. You prepared a single patent application fully disclosing and claiming each invention. Claims 1-9 were directed to the method of manufacturing; claims 10-19 were directed to the method of cleaning up toxic waste spills; and claim 20 was directed to a method of cleaning up toxic waste spills using the chemical manufactured in accordance with claim 1. Both inventors approve the application, but Tommie is unavailable to sign an oath before an upcoming statutory bar. Accordingly, you are instructed to immediately file the application without an executed oath. On June 1, 1999, you file the application along with an information sheet to identify the application. However, you do not notice that Tommie was inadvertently left off the list of inventors on the information sheet, which listed Jo as the sole inventor. After receiving a Notice to File Missing Parts, you submit an oath executed by both Jo and Tommie. No paper was filed to change the named inventive entity. You later receive an Office action requiring restriction between Jo’s invention and Tommie’s invention. In reply to the restriction requirement, you elect Jo’s invention, cancel claims 10-20, and immediately file a divisional application directed to the invention of claims 10-19. Claim 20 was omitted from the divisional application. The divisional application includes a specific reference to the original application and is files with an inventor’s oath executed by Tommie only. The divisional application incorporated the original application by reference.

23. Which of the following statements is correct?

(A) Because the original application as filed only named Jo as an inventor, Tommie’s divisional application is not entitled to the filing date of the original Application because there is no common inventor between the original application and the divisional application.

(B) The incorrect inventorship listed on the information sheet of the original application was never properly corrected and, therefore, any patent issuing on that application will be invalid under 35 U.S.C. § 116 unless the inventorship is later corrected.

(C) After canceling claims 10-20, it is necessary to change the named inventive entity in the original application by filing a petition including a statement identifying Tommie as being deleted and acknowledging that Tommie’s invention is no longer being claimed in the application and an appropriate fee.

(D) Written consent of the Dowel Chemical Company is required before Tommie can be deleted as an inventor in the original application.

(E) It is necessary in the divisional application to file a petition including a statement identifying Jo as being deleted as an inventor and acknowledging that Jo’s invention is not being claimed in the divisional application.

24. Which of the following statements is most correct?

(A) Since claim 20 was omitted from the divisional application as filed, it cannot be added to the divisional application by subsequent Amendment because such an Amendment would constitute new matter.

(B) It was improper to include Tommie and Jo as joint inventors in the patent application.

(C) The examiner may properly make a provisional obviousness-type double patenting rejection in the divisional application based on the parent application, but that rejection may be readily overcome with the filing of a terminal disclaimer.

(D) Because the inventive entity of the amended parent application is different than the inventive entity of the divisional application, the examiner may reject the claims of the divisional application under the provisions of 30 U.S.C. § 102(e).

(E) Statements (A), (B), (C) and (D) are each incorrect.

23. ANSWER: (C). The original mistake in omitting Tommie from the list of inventors was automatically corrected by filing the oath executed by both Jo and Tommie. 37 C.F.R. § 1.48(f)(1). Under 37 C.F.R. § 148(b), a change to the inventive entity is thereafter required upon cancellation of the non-elected claims. (B) is wrong because inventorship was automatically corrected with the filing of the corrected oath, (A) is wrong because Tommie was properly named as a co-inventor in the parent application, and 35 U.S>C. § 120 requires, inter alia, only one common inventor. (D) is incorrect because an assignee’s written consent is not required if an inventor is being deleted because the prosecution of the application results in the cancellation of claims so that fewer than a;; of the currently named inventors are the actual inventors of the inventions being claimed in the application. 37 C.F.R. §148(b). (E) is incorrect because the divisional application never named Jo as an inventor so there is no need to correct the inventorship.

24. ANSWER: (E). Statement (A) is incorrect at least because the parent application, which included claim 20, was incorporated by reference. Therefore, adding claim 20 does not constitute the addition of new matter. Statement (B) is wrong because at least claim 20 is properly viewed as a joint invention (“JO and Tommie collaborated to invent a method to clean-up toxic waste spills using the chemical made according to the unobvious technique invented by Jo.”) MPEP §§ 605.07, item (E), and 2137.01. Under 35 U.S.C. § 116, inventors map apply for a patent jointly even if they did not make the same type or amount of contribution and did not each make a contribution to the subject matter of every claim in the patent. Statement (C) is wrong because 35 U.S.C. § 121 precludes such a rejection. Statement (D) is wrong at least because Tommie is entitled to the filing date of the parent application.

1 SeanNo Gravatar March 28, 2009 at 7:30 pm

So, eventually, what’s in the original app (Jo and his claims) is not in the divisional app, and what’s in the divisional app (Tommie and his claims) is not in the original app. Apparently, that is okay. And also, does the original app become defunct after filing of the divisional app? Thank you.

2 triedandtestedNo Gravatar May 20, 2009 at 10:18 pm

No – both remain alive unless deliberately or otherwise abandoned

3 SolNo Gravatar March 25, 2012 at 11:44 pm

Of note, this statement is not really correct:
“what’s in the original app (Jo and his claims) is not in the divisional app, and what’s in the divisional app (Tommie and his claims) is not in the original app”

The difference lie in “claims” not the disclosure. What is there is still there. Indeed, divisionals are exactly the same as their parents, only different claims.

4 SeanNo Gravatar March 28, 2009 at 7:46 pm

So, eventhough claim 20 was canceled from the original app, it can still be used as a reference in the divisional app?

5 triedandtestedNo Gravatar May 20, 2009 at 10:19 pm

no – it was incorporated by reference in the div app, so AT LEAST for this reason claim 20 won’t qualify as prior art ref

6 SeanNo Gravatar March 30, 2009 at 1:17 am

I’m sorry, I just don’t get this question – why was Tommie’s invention filed in the divisional application after electing Jo’s invention and canceling claims 10-20 (essentially Tommie’s contribution) in the original application? Any help? Thank you in advance.

7 triedandtestedNo Gravatar May 20, 2009 at 10:20 pm

You can disclose anybody’s inventions (in this case both Tommie and Jo), it’s what (or rather whose) invention that you CLAIM that matters. Inventorship is determined by the claims, not by what is disclosed.

8 JuanNo Gravatar March 30, 2009 at 8:17 am

Since a Restriction Requirement was filed, Jo’s invention was elected. The divisional application was then filed to cover Tommie’s invention claims 10-19. The restriction basically says that the patent application contains more that one invention so it allows for the applicant to choose what claims (invention) they want to prosecute in the current application, and at the same time allows for the non-elected claims to be used in a divisional. Claim 20 was omitted from the application.

9 SeanNo Gravatar March 30, 2009 at 2:41 pm

Thank you very much Juan. I knew about restrictions and divisional apps, but had a block that was cleared up after reading your response.

10 studierNo Gravatar December 5, 2010 at 6:46 pm

For question 24, I’m wondering why (D) isn’t right.

The answer from the question is just wonderful…

“Statement (D) is wrong at least because Tommie is entitled to the filing date of the parent application.” — thank alot! (sarcasm)

One requirement for all continuing applications is “at least one common inventor”. If Tommie was deleted as an inventor from the parent, and ONLY Tommie’s invention was claimed in the divisional, then there is no common inventor… right?

11 TomNo Gravatar January 22, 2011 at 3:47 pm

D is wrong because the original application would not have a 102(e) date prior to the effective filing date of the divisional, since “Tommie is entitled to the filing date of the parent application.” As for common inventorship, at the time the divisional was filed, Tommie had not yet been removed. They canceled claims 10-20 and “immediately” filed the divisional. He was removed from the original application later.

12 SolNo Gravatar March 25, 2012 at 11:50 pm

Tom, what if the Tommie got removed before filing the divisional? Is a divisional still possible?

13 MirandaNo Gravatar March 31, 2012 at 10:39 am

i would like to know the answer to Sol’s question as well. If Tommie was removed before the divisional was filed, the divisional would face a 102(e) rejection based on the parent, correct? Would he then be able to overcome that rejection with a 1.132 affidavit stating that the anticipating disclosure in the parent was based on his own work?

14 mojoNo Gravatar June 24, 2012 at 1:01 pm

Does the fact that it was assigned to DOW make a difference in Sol’s question?

15 PotentialNo Gravatar June 27, 2012 at 2:29 am

201.06Divisional Application [R-2]
A later application for an independent or distinct invention, carved out of a pending application and disclosing and claiming only subject matter disclosed in the earlier or parent application, is known as a divisional application or “division.” >A divisional application is often filed as a result of a restriction requirement made by the examiner.See MPEP § 201.11 for the conditions for receiving the benefit of the filing date of the prior application. The divisional application should set forth at least the portion of the earlier disclosure that is germane to the invention as claimed in the divisional application.
I did not like the explanation on D either. So I read about the definition of a Divisional Application. Divisional is one part of the parent, they don’t reject each other.

16 Has DesignsNo Gravatar June 27, 2012 at 4:36 pm

Maybe just for my own clarity on this. The priority date of Tommie’s divisional is the file date on the Tommie and Jo invention. The 102(e) date of the Jo invention (…now doing work as a reference) and Tommie’s divisional priority date are the same, i.e., the file date on the Tommie and Jo invention. I am fine with 24. D being wrong.

As to the timing of the Tommie removal, … the structure of the original filing is “the Tommie and Jo invention;” I do not see the timing of the removal of Tommie as having any impact on the filing of the divisional. Unless of course there is no pending application with the same Spec. at the time of the filing of the Tommie divisional.

Dear Potential,
You are right, Juris Prudence’s posting of questions is terrific. Many thanks to JP and especially to Mambo and Bfusion. I would be lost without you, if I am not already,
Best,

17 AndersNo Gravatar May 9, 2011 at 7:01 pm

Got both of these today.

18 mmmNo Gravatar June 8, 2011 at 11:23 am

got both of these questions on June 2nd

19 BigbadvoododaddyNo Gravatar July 13, 2011 at 9:40 pm

Tried and True
Showed up yet again on July 12,2011

20 Top GunNo Gravatar July 26, 2011 at 5:27 pm

# 24 on 7/26

21 RemandedNo Gravatar September 18, 2011 at 8:44 pm

Got this fact pattern today, but different answer choices than either 23 or 24.

22 KenNo Gravatar October 9, 2011 at 8:07 am

Got both of these 10/8. I wish I didn’t skim through these when studying. I had forgotten the answer on test day an was so pissed at myself, because the answer choices were verbatim. Had to gruel it out in the end . . .

23 AnonNo Gravatar October 12, 2011 at 12:05 am

Repeat for q 24, same fact pattern on 10/11/11

24 RemandedNo Gravatar January 20, 2012 at 7:52 pm

Saw 24 on 20 January 2012.

25 MirandaNo Gravatar January 20, 2012 at 11:54 pm

remanded- how many repeat Qs were on the jan 20th test?

26 MnGirlNo Gravatar March 20, 2012 at 11:15 pm

I got the second variant of this on 3/19/12. Wished I’d reviewed this question more. Answer choice B throught me off-I didnt’ choose that. I think i got it right though. I passed!

27 GDBNo Gravatar April 20, 2012 at 12:17 am

I got two variants of Tommie and Jo on the same exam in the same afternoon session. I can’t remember exactly what they were but they went on the same lines as above. Read the questions carefully!!
04/19/12

28 RTNo Gravatar May 11, 2012 at 12:49 pm

Got it 5-10-12

29 JAYNo Gravatar June 26, 2012 at 2:53 am

I got the second variant (anwser=(E)) 06/25/2012.

30 Churning Away NoMoreNo Gravatar July 1, 2012 at 2:23 pm

Got the second variant. 06.30.2012

31 MCPNo Gravatar October 9, 2012 at 3:11 pm

Regarding Q24 answer B.

If claim 20 (Jo’s contribution) is not beging claimed in the divisional. Why does her name belong on the patent.

As far as I can tell, The divisional should be only tommie.

32 MCPNo Gravatar October 9, 2012 at 3:12 pm

Ok, sorry, when the question refers to “the application” it is referring to the original parent. Text is not super clear but it works out since Tommie is listed as sole inventor of the divisional

33 ZNo Gravatar March 31, 2013 at 12:45 pm

Got 4.00.24a on 3/30/13

34 Am I OverstudyingNo Gravatar December 9, 2013 at 11:31 pm

Does anybody know if there needs to be an amendment to the parent application on the inventors if both Joe’s and Tommy’s inventions were to be pursued in separate divisional applications??

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