Q) Smith (10.03.9a)

by patentbar on November 15, 2007 · 21 comments

in Exam Questions

Recent test takers report question #9 from the October 2003 (a) exam is in the Patent Bar database of tested questions.

9. Smith’s first invention is a new method of fabricating a semiconductor capacitor in a dynamic random access memory (DRAM) cell. Smith filed a first patent application on December 13, 2001 disclosing and claiming the first invention. Smith’s later, second invention, is an improved semiconductor capacitor in a DRAM cell and a method of making it. Smith filed a second application on December 16, 2002, claiming the benefit of the filing date of the copending first application. The second application contains claims 1-20, and a specification that provides support for the claimed subject matter in compliance with 35 USC 112, first paragraph. In the second application, claims 1-10 are drawn to Smith’s first invention, and claims 11-20 are drawn to Smith’s second invention. The primary examiner found a non-patent printed publication authored by Jones published on February 4, 2002. The article discloses the both of Smith’s inventions. Which of the following courses of action by the examiner would be in accord with the patent laws, rules and procedures as related in the MPEP?

(A) The examiner can reject claims 1-20 in the second application using the article because the publication date of the article is earlier than the filing date of the second application.

(B) The examiner cannot reject any of the claims in the second application using the article because the second application claims the benefit of the filing date of the first application.

(C) The examiner can reject claims 1-20 in the second application using the article because the second application is not entitled to the benefit of the filing date of the first application since the second application was filed more than one year from the filing date of the first application.

(D) The examiner can reject claims 1-10, but cannot reject claims 11-20 in the second application because the first application did not disclose the improved capacitor set forth in claims 11-20.

(E) The examiner cannot reject claims 1-10, but can reject claims 11-20 in the second application because the first application did not disclose an improved capacitor set forth in claims 11-20.

9. ANSWER: The most correct answer is (E). See MPEP § 201.11, under the heading “VI. When Not Entitled To Benefit Earlier Of Filing Date, ” states “[a]ny claim in am continuation-in-part application which is directed solely to subject matter adequately disclosed under 35 U.S.C. 112 in the parent nonprovisional application is entitled to the benefit of the filing date of the parent nonprovisional application. However, if a claim in a continuation-in-part application recites a feature which was not disclosed or adequately supported by a proper disclosure under 35 U.S.C. 112 in the parent nonprovisional application, but which was first introduced or adequately supported in the continuation-in-part application such a claim is entitled only to the filing date of the continuation-in-part application. See In re Chu, 66. F.3d 292, 36 USPQ2d 1089 (Fed. Cir. 1995) and Transco Products, Inc. v. Performance Contracting Inc., 38 F.3d 551, 32 USPQ2d 1077 (Fed. Cir. 1994).” Accordingly, claims 1-10 are entitled to the benefit of the filing date of the first application, but claims 11-20 are not entitled to the benefit of the filing date of the first application because claims 11-20 recite an improved capacitor, which was not disclosed in the first application. Claims 1-10 have an effective filing date earlier than the publication date of the article. Claims 11-20 have a filing date later than the publication date of the article. For 35 U.S.C. 102(a) to apply, the reference must have a publication date earlier in time than the effective filing date of the application. See MPEP 706.02(a), paragraph “III. 35 U.S.C. 102(a).” Thus, answers (A)-(D) are incorrect.

{ 21 comments… read them below or add one }

1 MattNo Gravatar September 25, 2010 at 11:30 pm

It’d be nice if the fact pattern explicitly stated that the second app was a CIP. Obviously that is what I assumed, but they really should be using proper terminology. Maybe they just like to stress us out?

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2 LostNo Gravatar March 22, 2011 at 12:20 am

The CIP is an inherent attribute of this question.. 😉

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3 KforsytheNo Gravatar October 18, 2011 at 7:41 pm

I totally agree. To clarify becuase this was a CIP there are no timeline deadlines..meaning the 1 year time line the answers raise is not applicable here or ever?

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4 maggieNo Gravatar October 18, 2011 at 8:13 pm

There is no 1 year time line to any continuation app (continuation apps only require that they are co-pending together to claim benefit) . But, of course, there is a 1 year/12 month deadline for a claim the benefit of a provisional app.

The Q though, is pointed to the fact that the CIP’s “new matter” claims do not get the benefit of the parent’s date because they are not covered by the parent’s disclosure.

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5 KFNo Gravatar October 31, 2011 at 9:59 pm

Thanks Maggie!! I keep wondering if you have passed yet! 4 more days for me!

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6 maggieNo Gravatar November 1, 2011 at 12:32 pm

No, retaking in Nov :)

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7 KFNo Gravatar October 31, 2011 at 10:01 pm

So, to clarify Answer C is wrong, because there is no requirement that a CIP be filed within 1 year of the parent application. A CIP can be filed whenever, as long as the parent application is still in prosecution, hence the two applications would be copending??

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8 maggieNo Gravatar November 1, 2011 at 12:34 pm

Yes, and any “new matter” claims in a CIP do not get benefit of earlier priority date.

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9 KFNo Gravatar November 2, 2011 at 10:31 am

RIght, and the parent application can now be used as prior art for the CIP app, right?

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10 maggieNo Gravatar November 2, 2011 at 11:45 am

It will only be prior art against the child If there is no (parent-child relationship est during co-pendency). For example of this see the Spanish phone Q..

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11 KerstinNo Gravatar February 12, 2012 at 4:29 pm

In case it helps anyone, the relevant provision is not located under 201.11, Part I(b). Part VII has a new title now…..

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12 patentmanNo Gravatar July 23, 2015 at 1:09 pm

There is no 201.11. It is moved to 211.11-211.05

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13 patentmanNo Gravatar July 23, 2015 at 1:15 pm

MPEP 211.05 (I)(B) contains the correct answer.

14 MirandaNo Gravatar February 19, 2012 at 8:41 pm

How does the publication qualify as 102(a) if there is no indication of applicant’s date of invention with regards to the 2nd invention?

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15 KillianRedNo Gravatar March 17, 2012 at 5:30 pm

Got this one 3/17/12

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16 Galya BlachmanNo Gravatar April 13, 2012 at 1:54 pm

Miranda – under 102(a) the “date of invention” can be actual reduction to practice or constructive reduction to practice (i.e. filing). The publication occurred prior to the filing of the second application so it qualifies as prior art.

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17 RTNo Gravatar May 11, 2012 at 12:56 pm

Got it 5-10-12

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18 value321No Gravatar September 18, 2012 at 11:51 am

Had this question on 9-17-2012

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19 MJNo Gravatar September 18, 2012 at 11:59 am

Value321… how many repeats did you have overall? Any sections I should focus on?

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20 fluidNo Gravatar September 23, 2012 at 9:04 am

I had it 9/22/2012.

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21 postJan14No Gravatar February 16, 2014 at 7:46 pm

Maggie’s clarification were most helpful.

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