Q) Able and Baker (10.01.24a)

by patentbar on September 4, 2008 · 3 comments

in Exam Questions

24. Able and Baker conceived an improved gas grille for cookouts. Using elements A, B, C,
D, E and F found in their backyards, as well as elements G, H, I, J, K, L, M and N purchased at a
local hardware store, they successfully constructed and used a gas grille conforming to their
concept. The grille includes subcombination of elements K, L and M conceived by Able, and
subcombination C, D, F, G and M conceived by Baker. Able and Baker conceived their
respective subcombinations separately and at different times. Able and Baker retain you to
prepare and file a patent application for them. You are considering whether and what can be
claimed in one patent application. Which of the following is true?
(A) For Able and Baker to properly execute an oath or declaration under 37 CFR 1.63
in a patent application claiming not only the grille, but also the two
subcombinations, Able and Baker must be joint inventors of the grille, and each
of the two subcombinations.
(B) A characteristic of U.S. patent law that is generally shared by other countries is
that the applicant for a patent must be the inventor.
(C) If Able and Baker execute an oath or declaration under 37 CFR 1.63 as joint
inventors and file an application claiming the grille (a combination of elements A,
B, C, D, E, F, G, H, I, J, K, L, M and N), the existence of the claim to the grille is
evidence of their joint inventorship of the individual elements.
(D) Able and Baker may properly execute an oath or declaration under 37 CFR 1.63
as joint inventors and file an application containing claims to the grille (a
combination of elements A, B, C, D, E, F, G, H, I, J, K, L, M and N), claims to
the subcombination conceived by Able, and claims to the subcombination
conceived by Baker.
(E) Able and Baker could not properly claim the combination unless they successfully
and personally reduced the grille to practice.

§ 2137.01, “Inventorship,” and see Kimberly-Clark Corp. v. Procter & Gamble Distributing, 23
USPQ2d 1921, 1925 – 26 (Fed. Cir. 1992); and Moler v. Purdy, 131 USPQ 276, 279 (Bd. Pat.
Inter. 1960). (A) is not correct. MPEP § 2137.01 (Requirements for Joint Inventorship) and see
Kimberly-Clark Corp. v. Procter & Gamble Distributing, 23 USPQ2d 1921, 1925 – 26 (Fed. Cir.
1992); and Moler v. Purdy, 131 USPQ 276, 279 (Bd. Pat. Inter. 1960). (B) is not correct. 35
U.S.C. §§ 101, 115; MPEP § 2137.01. (C) is not correct. MPEP § 2137.01. The inventor of an
element, per se, and the inventor of a combination using that element may differ. See In re
DeBaun, 214 USPQ 933, 936 (CCPA 1982); and In re Facius, 161 USPQ 294, 301 (CCPA
1969). (E) is not correct. There is no provision in the Patent Statute requiring the invention to
be reduced to practice in order to file a patent application claiming the invention. Further, see
MPEP § 2137.01; and see In re DeBaun, 214 USPQ 933, 936 (CCPA 1982).

{ 3 comments… read them below or add one }

1 cheesepepNo Gravatar January 2, 2009 at 7:05 pm

The above answer is D.

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2 PCTearsOfJoyNo Gravatar February 3, 2012 at 9:21 am

Got this 2/2

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3 BradNo Gravatar December 18, 2012 at 1:20 pm

AIA changes this question. Specifically, choice B. Applicant need not be inventor.

Reply

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