Recent test takers report that question #20 from the October 2003 (PM) test is in the patent bar exam database.
20. Recommend which of the following rejections under 35 USC 102 in a reexamination proceeding is in accordance with the patent laws, rules and procedures as related in the MPEP.
(A) A rejection under 35 USC 102(a) based on an affidavit that the invention was known or used by others before the invention thereof by the applicant for patent.
(B) A rejection under 35 USC 102(b) based on an affidavit that the invention was in the public use in this country more than one year prior to the date of the application for a patent in the United States.
(C) A rejection under 35 USC 102(e) that the invention was described in a patent by another filed in the United States before the invention thereof by the patent applicant.
(D) A rejection under 35 USC 102(f) based on an affidavit that the applicant did not himself invent the subject matter sought to be patented.
(E) A rejection under 35 USC 102(b) that the invention was on sale in this country, more than one year prior to the date of the application for patent in the United States.
ANSWER: (C) is the most correct answer. 35 U.S.C. § 302; 37 CFR § 1.552; andMPEP § 2258. MPEP § 2258, under the heading “Prior Patents Or Printed Publications,” states“[r]ejections on prior art in reexamination proceedings may only be made on the basis of priorpatents or printed publications. Prior art rejections may be based upon the following portions of35 U.S.C. 102: . . .(e).” (A), (B), (D) and (E) are incorrect. MPEP § 2258, under the heading“Matters Other Than Patents or Printed Publications,” states “[r]ejections will not be based onmatters other than patents or printed publications, such as public use or sale, inventorship, 35U.S.C. 101, fraud, etc. In this regard, see In re Lanham, 1 USPQ2d 1877 (Comm’r Pat. 1986),and Stewart Systems v. Comm’r of Patents and Trademarks, 1 USPQ2d 1879 (E.D. Va. 1986). Arejection on prior public use or sale, insufficiency of disclosure, etc., cannot be made even if itrelies on a prior patent or printed publication. Prior patents or printed publications must beapplied under an appropriate portion of 35 U.S.C. 102 and/or 103 when making a rejection.”Reexamination is limited to substantially new questions of patentability based on patents and publications.