Q) Written Description (10.01.14a)

by patentbar on September 4, 2008 · 10 comments

in Exam Questions

14. Which of the following is not in accord with proper USPTO practice and procedure?
(A) A written description as filed in a nonprovisional patent application is presumed
adequate under 35 U.S.C. § 112 in the absence of evidence or reasoning to the
contrary.
(B) An examiner may show that a written description as filed in a nonprovisional
patent application is not adequate by presenting a preponderance of evidence why
a person of ordinary skill in the art would not recognize in the applicant’s
disclosure a description of the invention defined by the claims.
(C) A general allegation of “unpredictability in the art” is sufficient to support a
rejection of a claim for lack of an adequate written description.
(D) When filing an amendment, a practitioner should show support in the original
disclosure for new or amended claims.
(E) When there is substantial variation within a genus, an applicant must describe a
sufficient variety of species to reflect the variation within the genus.
15. Sam is a sole proprietor of Sam’s Labs, which has no other employees. Sam invented a
new drug while doing research under a Government contract. Sam desires to file a patent
application for his invention and assign it to Sam’s Labs. Sam has licensed Rick, also a sole
proprietor with no employees, to make and use his invention. Sam wants to claim small entity
status when filing a patent application for his invention. Sam also wants to grant the
Government a license, but will not do so if he will be denied small entity status. Sam has limited
resources and wants to know whether, how, and to what extent he may claim small entity status.
Which of the following is not accurate with respect to proper USPTO procedure in relation to
applications filed on or after January 1, 2001?
(A) Sam’s Labs is a small business concern for the purposes of claiming small entity
status for fee reduction purposes.
(B) If Sam grants a license to the Government resulting from a rights determination
under Executive Order 10096, it will not constitute a license so as to prohibit
claiming small entity status.
(C) The establishment of small entity status permits the recipient to pay reduced fees
for all patent application processing fees charged by the USPTO.
(D) Sam may establish small entity status by a written assertion of entitlement to
small entity status. A written assertion must: (i) be clearly identifiable; (ii) be
signed; and (iii) convey the concept of entitlement to small entity status, such as
by stating that applicant is a small entity, or that small entity status is entitled to
be asserted for the application or patent.
(E) While no specific words or wording are required to assert small entity status, the
intent to assert small entity status must be clearly indicated in order to comply
with the assertion requirement.

14. ANSWER: (C), not being in accord with proper USPTO practice and procedure, is the most
correct answer. As stated in “Guidelines for Examination of Patent Applications under 35
U.S.C. 112, ¶ 1, ‘Written Description’ Requirement,” 66 F.R. 1099, 1107 (Jan. 5, 2001), middle
column, “A general allegation of ‘unpredictability in the art’ is not a sufficient reason to support
a rejection for lack of adequate written description”; MPEP § 2163, paragraph III. A. (pg. 2100-
166) (8th Ed.). (A), being in accord with proper USPTO practice and procedure, is not correct.
As stated in “Guidelines for Examination of Patent Applications under 35 U.S.C. 112, ¶ 1,
‘Written Description’ Requirement,” 66 F.R. 1099, 1107 (Jan. 5, 2001), left column, “A
description as filed is presumed to be adequate…” MPEP § 2163, paragraph III. A. (pg. 2100-
166) (8th Ed.). (B), being in accord with proper USPTO practice and procedure, is not correct.
As stated in “Guidelines for Examination of Patent Applications under 35 U.S.C. 112, ¶ 1,
‘Written Description’ Requirement,” 66 F.R. 1099, 1107 (Jan. 5, 2001), “A description as filed is
presumed to be adequate, unless or until sufficient evidence or reasoning to the contrary has been
presented by the examiner to rebut the presumption.65 …The examiner has the initial burden of
presenting by a preponderance of evidence why a person skilled in the art would not recognize in
an applicant’s disclosure a description of the invention defined by the claims.66” (footnotes not
reproduced); MPEP § 2163, paragraph III. A. (pg. 2100-166) (8th Ed.). (D), being in accord with
proper USPTO practice and procedure, is not correct. As stated in “Guidelines for Examination
of Patent Applications under 35 U.S.C. 112, ¶ 1, ‘Written Description’ Requirement,” 66 F.R.
1099, 1107 (Jan. 5, 2001), left column, “[W]hen filing an amendment, applicant should show
support in the original disclosure for new or amended claims.59” Footnote 59 states, “See MPEP
§§ 714.02 and 2163.06 (‘Applicant should…specifically point out the support for any
amendments made to the disclosure.’)”; MPEP § 2163, paragraph III. A. 3. (b) (pg. 2100-165)
(8th Ed.). (E), being in accord with proper USPTO practice and procedure, is not correct. As
stated in “Guidelines for Examination of Patent Applications under 35 U.S.C. 112, ¶ 1, ‘Written
Description’ Requirement,” 66 F.R. 1099, 1106 (Jan. 5, 2001), right column, “[W]hen there is
substantial variation within a genus, an applicant must describe a sufficient variety of species to
reflect the variation within the genus”; MPEP § 2163, paragraph III. A. 3. (a)(ii) (pg. 2100-164)
(8th Ed.).

{ 10 comments… read them below or add one }

1 SeanNo Gravatar April 17, 2009 at 5:55 pm

I figured it out, but where is the answer key to #15? Thanks.

Reply

2 SamiNo Gravatar April 17, 2009 at 5:55 pm

What is the answer to q 15 above?

Reply

3 SeanNo Gravatar April 17, 2009 at 5:59 pm

(E). See 1.27(c).

Reply

4 LizzieNo Gravatar April 18, 2009 at 12:35 pm

question 15 from 10/01 am, the answer is C:
(C). Not all fees are subject to the small entity reduction. See, for example, 37
CFR 1.17(p). As to (A), a small business concern for the purposes of claiming small entity status
for fee reduction purposes is any business concern that: (i) has not assigned, granted, conveyed,
or licensed, and is under no obligation under contract or law to assign, grant, convey, or license,
any rights in the invention to any person, concern, or organization which would not qualify for
small entity status as a person, small business concern, or no nprofit organization. and (ii) meets
the standards set forth in the appropriate section of the code of federal regulations to be eligible
for reduced patent fees. Sam’s Labs meets all of the elements required by 37 CFR 1.27 (a)(2).
Statement (B) contains all of the elements required by 37 CFR 1.27 (a)(4). Statement (D)
contains all of the elements required by 37 CFR 1.27 (c)(1). Statement (E) contains all of the
elements required by 37 CFR 1.27 (c)(1)(iii)

Reply

5 TNo Gravatar January 31, 2010 at 3:47 pm

I disagree – it is actually B.

MPEP 509.02

(4)
License to a Federal agency. (i) For persons under paragraph (a)(1) of this section, a license to the Government resulting from a rights determination under Executive Order 10096 does not constitute a license so as to prohibit claiming small entity status.

Reply

6 TNo Gravatar January 31, 2010 at 3:49 pm

Whoops – Just saw that it is a negative question. I actually think it’s C.

Reply

7 MattNo Gravatar September 22, 2010 at 5:33 pm

#15 must be (C) since not ALL fees are reduced for small entities.

Reply

8 BobNo Gravatar June 6, 2011 at 11:30 pm

#15 is C. See 509.02, third paragraph down.

Reply

9 dkNo Gravatar September 14, 2011 at 3:20 pm

Assertion of small entity status:
a) By writing (Procedure for a is one of the choices of 15)
b) Paying small enity fee. (Choice E is also correct PTO procedure)
Therefore C is the answer.

Reply

10 gotta get through thisNo Gravatar October 29, 2012 at 2:16 pm

BOTH FOR 14 and 15 its C people!

Reply

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