Q) Moondust (10.03.6p)

by patentbar on August 24, 2007 · 30 comments

in Exam Questions

Recent takers report that question #6 from the October 2003 (PM) test is in the Prometric database.

6. Inventor Tip, a scientist in a pencil research laboratory, theorized that, based on the abrasive properties of moon dust, a highly efficient erasure can be made by adding a trace amount of moon dust to a normal pencil erasure formulation. Point, in the Sales department, determined that this would be perfect for a high end product. A U.S. patent application has been filed claiming a pencil erasure formulation with a trace amount of moon dust. An example of how to make the formulation with specified percentages of moon dust is presented therein. Thereafter, Tip learns about the duty to disclose information and he recalls signing a declaration under 37 CFR 1.63 stating that he had reviewed and understood the contents of the specification including the claims. Tip becomes concerned that the use of moon dust was only a theory and that to obtain patent would mislead the public to conclude that moon dust was actually used and found to be effective. The application has been allowed, but the issue fee has not yet been paid. Which of the following is most in accord with patent laws, rules and procedures as related in the MPEP?

(A) Point is under a duty to disclose material information to the USPTO.

(B) Tip is under a duty to disclose his concern regarding the moon rock information to the USPTO.

(C) Both Point and Tip are under a duty to disclose material information to the UPSTO.

(D) There is no duty to disclose information regarding how the moon rock formulation was developed to the USPTO.

(E) Inasmuch as the application is allowed, an appropriate Request for Continued Prosecution pursuant to 37 CFR 1.114 needs to be filed accompanied by a information disclosure regarding the possibility of rejections under 35 USC 101, and 112, first paragraph.

6. ANSWER: (D) is the most correct answer. 37 CFR § 1.56; MPEP § 2001.05. 37 CFR § 1.56(a) sets forth a duty to disclose information that is material to patentability. MPEP § 2001.05 states that “information is not material unless is comes within the definition of 37 CFR 1.56(b)(1) or (b)(2). If information is not material, there is no duty to disclose the information to the Office.” The information that moon dust was never actually used is not material as defined under 37 CFR § 1.56(b)(1) or (2) which state that information is material if “(b)(1) It establishes, by itself or in combination with other information, a prima facie case of unpatentability of a claim; or (2) It refutes, or is inconsistent with, a position the applicant takes in: (i) Opposing an argument of unpatentability relied on b y the Office or, (ii) Asserting an argument of patentability.” That the use of the moon dust as part of an erasure formulation was only theorized and not actually used is acceptable as is an example for making it. MPEP § 608.01(p), II, under the heading “Simulated or Predicted Test Results Or Prophetic Examples,” states that “[s]imulated or predicted test results and prophetical examples (paper examples) are permitted in patent applications. … Paper examples describe the manner and process of making an embodiment of the invention which has not actually been conducted.” Care, however, must be taken not to state that an experiment was actually run or conducted when it was not and that “[n]o results should be presented as actual results unless they have actually been achieved.” MPEP § 2004, item 8. (A) is incorrect. 37 CFR § 1.56(a) requires that individuals associated with the filing and prosecution of a patent application have a duty to disclose information to the Office. 37 CFR § 1.56(c) defines which individuals are associated with the filing and prosecution of a patent application and that “(c) Individuals associated with the filing or prosecution of a patent application within the meaning of this section are: (1) Each inventor named in the application; (2) Each attorney or agent who prepares or prosecutes the application; and (3) Every other person who is substantively involved in the preparation or prosecution of the application and who is associated with the inventor, with the assignee or with anyone to whom there is an obligation to assign the application.” Point is part of the Sales department and no facts were presented that substantively involved him in the preparation or prosecution of the application. Additionally, as noted in the explanation relating answer to (D), the information given to Point by Tip was not material information. (B) is incorrect. While Tip would be an individual identified under 37 CFR § 1.56(c), there is no material information to be disclosed as noted in the explanation to (D). (C) is incorrect. As noted in the explanation relating to (D), the information is not material. Additionally, as noted in the explanation to answer (A), Point is not an individual defined by 37 CFR 1.56(c) as owing a duty. (E) is incorrect. As there is no requirement that it be explicitly stated that an invention has or has not been actually conducted, as noted in the explanation of (D), the prosecution need not be continued for the purpose of supplying an information disclosure statement regarding the development of the moon rock erasure formulation.

1 patentbarNo Gravatar August 19, 2008 at 7:51 pm

moon dust erasers (on March 2008 exam).

2 cosigner student that no loansNo Gravatar December 7, 2008 at 2:26 am

with no loans cosigner student loans student no cosigner with

3 StephNo Gravatar January 13, 2010 at 10:20 pm

had this question yesterday =)

4 lanceNo Gravatar August 16, 2010 at 10:37 pm

Don’t get it…thought you can’t patent a scientific theory…only something that has ACTUALLY BEEN REDUCED TO PRACTICE…right??? This is going against everything that’s been taught in 2100…

5 StuffNo Gravatar October 17, 2010 at 6:47 pm

Doesnt have to be actual. See Constructive Reduction to Practice.

6 DNo Gravatar January 22, 2011 at 1:07 pm

I had this question on my 1/21/11 test with two useful additions:
1. “The application lists Tip as the sole inventor.”
2. “The specification uses clearly prophetic examples to describe the use of the moon dust.”

With those clarifications, answer (D) definitely made even more sense as the correct answer.

I passed, but of course don’t know whether I got this specific question correct.

7 ELSNo Gravatar March 7, 2011 at 12:16 pm

Had this one yesterday with the same additional statements in the prompt as D stated. Chose (D).

8 OverworkkedNo Gravatar April 28, 2011 at 3:38 pm

Repeat or close variant on 4/27/2011 MPEP E8R8

9 ohsoobviousNo Gravatar May 25, 2011 at 6:03 pm

I don’t know why they continue to like Moondust so much, but I got this question on 5/18/11

10 VodkaNo Gravatar July 27, 2011 at 6:02 pm

Got this one verbatim today, 7/27/11

11 BobNo Gravatar August 3, 2011 at 2:14 am

Got this on 8/2/11

12 RemandedNo Gravatar September 18, 2011 at 8:16 pm

Got this one verbatim today, 18 September 2011.

13 JRSNo Gravatar November 1, 2011 at 6:01 pm

Had this verbatim. October 31, 2011.

14 ENo Gravatar November 28, 2011 at 5:38 pm

verbatim 11/22/11

15 PCTearsOfJoyNo Gravatar February 3, 2012 at 9:19 am

Got this question verbatim 2/2

16 KillianRedNo Gravatar March 17, 2012 at 5:25 pm

Got this one 3/17/12

17 RTNo Gravatar May 11, 2012 at 1:00 pm

Got it 5-10-12

18 passedatlastNo Gravatar June 19, 2012 at 5:19 pm

Got this 6/19.

19 IndiJonesNo Gravatar June 30, 2012 at 2:11 am

got this 6/29/12

20 Mike01ciNo Gravatar August 8, 2012 at 1:41 pm

Got it 8/7/12

21 mimiNo Gravatar September 20, 2012 at 1:16 am

I’m still confusing why the application is allowed, though I understand the answer .
Is the application satisfied with an enablement requirement of 112(1)?
If Yes, please let me know.
If the application has sun dust instead of moon dust, is it possible to be allowed? (Nobody can get sun dust)

Sorry, this is not a material factor in this Q, but I’m really confusing.

22 fluidNo Gravatar September 23, 2012 at 8:56 am

I had it 9/22/2012.

23 NamelessNo Gravatar October 25, 2012 at 8:59 pm

I had this question today.

24 KHNo Gravatar March 29, 2013 at 3:17 pm

My friend had it on his exam yesterday

25 ZNo Gravatar March 31, 2013 at 2:02 pm

Got this 3/30/13. This question is almost guaranteed to be on your exam.

26 Long 30 daysNo Gravatar June 7, 2013 at 12:15 pm

I got this on 5/28/13, verbatim.

27 Agent DNo Gravatar June 7, 2013 at 2:46 pm

Had this, but it was seashells

28 HenchNo Gravatar June 12, 2013 at 10:00 am

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29 PayitforwardNo Gravatar March 7, 2014 at 11:55 pm

Had same variant as Agent D.

30 mmmaryNo Gravatar June 23, 2015 at 10:24 am

I don’t agree. Wouldn’t his concern be an information which establish a prima facie enablement issue of the invention? It is true that simulated examples are allowable in the specification, but the mooniest is the key element of the invention, and if it is unavailable, wouldn’t it cause the PHOSITA not able to make a product according to the invention?

Somebody please explain it to me. thanks

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