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Exam Questions

Recent test takers report that question #50 from the October 2003 (PM) test is in the patent bar exam database.

50. In accordance with the patent laws, rules and procedures as related in the MPEP, which of the following facts are required for 35 USC 102(g) to form the basis for an ex parte rejection:
(1) The subject matter at issue has been actually reduced to practice by another before the applicant’s invention.
(2) There has been no abandonment, suppression or concealment.
(3) A U.S. patent application for the subject matter at issue has been filed by another prior to the filing of the applicant’s application.
(4) A U.S. patent has been granted for the subject matter at issue prior to the filing of the applicant’s application.
(A) Fact (1) only
(B) Fact (2) only
(C) Facts (1) and (2)
(D) Facts (1), (2) and (3)
(E) Facts (1), (2), (3) and (4)

ANSWER: (C) is the most correct, as a 35 U.S.C. § 102(g) rejection requires actual reduction to practice by another, and lack of abandonment, suppression, or concealment. MPEP § 2138 states “35 U.S.C. 102(g) may form the basis for an ex parte rejection if: (1) the subject matter at issue has been actually reduced to practice by another before the applicant’s invention; and (2) there has been no abandonment, suppression or concealment. See, e.g., Amgen, Inc. v. Chugai Pharmaceutical Co., 927 F.2d 1200, 1205, 18 USPQ2d 1016, 1020 (Fed. Cir. 1991); New Idea Farm Equipment Corp. v. Sperry Corp., 916 F.2d 1561, 1566, 16 USPQ2d 1424, 1428 (Fed. Cir. 1990); E.I. DuPont de Nemours & Co. v. Phillips Petroleum Co., 849 F.2d 1430, 1434, 7 USPQ2d 1129, 1132 (Fed. Cir. 1988); Kimberly-Clark v. Johnson & Johnson, 745 F.2d 1437, 1444-46, 223 USPQ 603, 606-08 (Fed. Cir. 1984).” (A) is incorrect, as actual reduction to practice is not sufficient to establish a 35 U.S.C. § 102(g) rejection where the subject matter has been abandoned, suppressed, or concealed. MPEP § 2138. (B) is incorrect, as abandonment, suppression, or concealment is not sufficient to establish a 35 U.S.C. § 102(g) rejection where the subject matter has been reduced to practice in that conception alone is not sufficient. See Kimberly-Clark v. Johnson & Johnson, 745 F.2d 1437, 1445, 223 USPQ 603, 607 (Fed. Cir. 1984). MPEP § 2138. (D) is incorrect because no prior patent application is required for a § 102(g) rejection. MPEP § 2138. Similarly, (E) is incorrect, because no prior patent application nor issued patent is required for a rejection under 35 U.S.C. § 102(g).

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Q) Public Use (10.03.47p)

April 19, 2010

Recent test takers report that question #47 from the October 2003 (PM) test is in the patent bar exam database.
47. To rely in a rejection under 35 USC 102(a) on an invention that is known or publicly used in accordance with patent laws, rules and procedures as related in the MPEP, the invention:
(A) must be [...]

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Q) Claim Interpretation (10.03.44p)

April 19, 2010

Recent test takers report that question #44 from the October 2003 (PM) test is in the patent bar exam database.
44. In accordance with the patent laws, rules and procedures as related in the MPEP, which of the following statements regarding claim interpretation is the most correct?
(A) A claim having the transition term “comprising” is limited [...]

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Q) Smith, Jones & Brown (10.03.42p)

April 19, 2010

Recent test takers report that question #42 from the October 2003 (PM) test is in the patent bar exam database.
42. The primary examiner has rejected claims 1-10 under 35 USC 103(a) as being unpatentable over the Smith patent in view of the Jones reference. Appellant properly argues that there is no motivation to combine the [...]

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Q) Restriction (10.03.41p)

April 19, 2010

Recent test takers report that question #41 from the October 2003 (PM) test is in the patent bar exam database.
41. A non-final Office action contains, among other things, a restriction requirement between two groups of claims (Group 1 and Group 2). Determine which of the following, if included in a timely reply under 37 CFR [...]

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Q) Foreign prior art date (10.03.40p)

April 19, 2010

Recent test takers report that question #40 from the October 2003 (PM) test is in the patent bar exam database.
40. Applicant files a patent application in Japan on January 5, 2000. Applicant files a PCT international application designating the United States on January 5, 2001, based on the Japanese application. The international application is published [...]

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