Q) Laurel, Abbot and Hardy (4.00.14a)

by patentbar on September 4, 2008 · 20 comments

in Exam Questions

14. On August 7, 1997, practitioner Costello filed a patent application identifying Laurel,
Abbot, and Hardy as inventors. Each named inventor assigned his patent rights to Burns just
prior to the application being filed. Laurel and Abbot, alone, jointly invented the subject matter
of independent claim 1 in the application. Hardy contributed to inventing the subject matter of
claim 2. Claim 2 properly depends upon claim 1. The examiner rejected claim 1 and claim 2
under 35 U.S.C. § 102(a) as anticipated by a journal article by Allen, dated July 9, 1997. Laurel,
Abbot, and Hardy are readily available to provide evidence in support of and sign an antedating
affidavit under 37 C.F.R. § 1.131 showing reduction to practice of the subject matter of claims 1
and 2 prior to July 9, 1997. Which of the following may properly make an affidavit under 37
C.F.R. § 1.131 to overcome the rejection of claims 1 and 2.?
(A) Laurel and Abbot.
(B) Laurel, Abbot, and Hardy.
(C) Laurel, Hardy and Burns.
(D) Burns only.
(E) None of the above.

14. ANSWER: (B). MPEP 715.04. (A) is incorrect since it cannot be shown that less than all
the inventors invented the subject matter of claim 2. (C) and (D) are incorrect since the assignee
can make an affidavit under 37 C.F.R. § 1.131, only when it is not possible to produce the
affidavit of the inventor. The facts indicate that all inventors were readily available produce the
affidavit. (E) is incorrect since (B) is correct.

{ 20 comments… read them below or add one }

1 triedandtestedNo Gravatar May 20, 2009 at 10:02 pm

What happens if only Laurel and Abbot, but not Hardy were available? Would that still work because claim 2 depends from claim 1?

Reply

2 scruffNo Gravatar June 17, 2009 at 9:12 pm

Since both claims were independently rejected, all the inventors of those claims must make the affidavit. Supposing Hardy is unavailable, I imagine that the assignee would have to sign on his behalf.

HOWEVER…

If claim 1 alone is rejected, then dependent claim 2 will be objected to, and must be written in indpt. form. Since an affidavit under 37 CFR 1.131 is not appropriate to traverse the objection of the dependent claim 2, I would think that only the inventors trying to traverse the rejection of the indpt claim 1, would have to sign, in which case the assignee would not need to sign if Hardy were unavailable because he is not the inventor of claim 1.

Does this sound right?

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3 thwallsNo Gravatar May 17, 2010 at 3:25 pm

That sounds right to me.

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4 SolNo Gravatar March 25, 2012 at 10:59 pm

First, it is claim by claim basis:
for Claim 1, inventors Lau and Abo must BOTH sign
for Claim 2, inventor Lau, Abo and Har must ALL sign

If an inventor is dead CRF 1.42 or insane CRF 1.3, his/her legal representiave can sign on behalf for the dead or insane inventor

If only one or two co-inventor refuses to sign or cannot be located after dilligent effort, other co-inventors can sign on hehalf with petition (fee) granted CFR.1.47. OR, the unvailable co-inventor signed oath/declaraion, an easier way than 1.47 petition, the remaining co-inventor can sign on behalf with gratned 1.183 petition reqeusting waiver of the unavailable’s signature. However, the condition for grating the petition is the same with 1.47.

If all inventor refuse or cannnot be located after dilligent effort, the assignee can sign on behalf with petition (fee) granted CFR.1.47

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5 Boating BobNo Gravatar December 30, 2010 at 5:10 pm

Had this question today 12/30/10

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6 ELSNo Gravatar March 7, 2011 at 11:54 am

Had this question 03/06/11.

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7 OverworkkedNo Gravatar April 28, 2011 at 3:14 pm

Repeat on 4/27/2011 MPEP E8R8

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8 ohsoobviousNo Gravatar May 24, 2011 at 8:33 pm

had this question on 5/18/11 MPEP E8R8

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9 AnonNo Gravatar October 12, 2011 at 12:00 am

Repeat – identical on 10/11/11

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10 RonnieNo Gravatar November 29, 2011 at 4:03 pm

This helps a lot. Thanks for all of the comments.

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11 RemandedNo Gravatar January 20, 2012 at 7:50 pm

Repeat on 20 January 2012.

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12 PCTearsOfJoyNo Gravatar February 3, 2012 at 9:23 am

Got this 2/2

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13 KillianRedNo Gravatar March 17, 2012 at 5:27 pm

Got this one 3/17/12

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14 PrometricEarphonesNo Gravatar April 17, 2012 at 5:28 pm

Got this one 4/17

I answered A, but I passed anyway.

I don’t like this question. L and A can file a 1.131 as to claim 1. If claim 1 is no longer rejected, claim 2 would not be rejected. Thus, L and A, without Hardy, “may properly make an affidavit under 37 C.F.R. § 1.131 to overcome the rejection of claims 1 and 2” because an affidavit swearing behind claim 1 would overcome the rejection of claim 2.

Am I wrong?

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15 RTNo Gravatar May 11, 2012 at 12:48 pm

Got it exactly 5-10-12

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16 passedatlastNo Gravatar June 19, 2012 at 5:16 pm

Got this 6/19, verbatim or nearly so.

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17 IndiJonesNo Gravatar June 30, 2012 at 1:49 am

got this 6/29

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18 Pass 8/13No Gravatar August 14, 2012 at 10:40 am

I had this exact question on 8/13.

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19 fluidNo Gravatar September 23, 2012 at 9:01 am

I had it 9/22/2012.

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20 Am I OverstudyingNo Gravatar December 9, 2013 at 10:58 pm

@PrometricEarphones And in case other people come and study this question, I will have to agree with scruff’s explanation. If the examiner’s reply said that Dependent claim 2 is rejected because Independent claim 1, then it would be an objection and the applicant will be given a chance to amend claim 2 to an allowable independent claim. However, it is stated that both claim 1 and claim 2 were rejected.

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