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Question #25 from the April 2003 (AM) patent bar exam is reported by exam takers as a question in the current exam database.


25. In accordance with USPTO rules and procedures set forth in the MPEP, which of the following is not a proper basis on which the Board of Patent Appeals and Interferences may remand a case to the examiner?
(A) Remand for a fuller description of the claimed invention.
(B) Remand for a clearer explanation of the pertinence of the references.
(C) Remand for a selection by the primary examiner of a preferred or best ground of rejection when multiple rejections of a cumulative nature have been made by the examiner.
(D) Remand to the primary examiner with instructions to consider an affidavit not entered by the examiner which was filed after the final rejection but before the appeal.
(E) Remand to the primary examiner to prepare a supplemental examiner’s answer in response to a reply brief.



ANSWER: (D) is the most correct answer. See MPEP § 1211.02. (D) is not a proper basis for remand because the Board has no authority to require the examiner to consider an affidavit which has not been entered after final rejection and which was filed while the application was pending before the examiner. Pursuant to 37 CFR § 1.195, “[a]ffidavits…submitted after the case has been appealed will not be admitted without a showing of good and sufficient reasons why they were not earlier presented.” The facts are silent regarding whether such a showing was made. However, as discussed in MPEP § 715.09, “Review of an examiner’s refusal to enter [and consider] an affidavit as untimely is by petition and not by appeal to the Board of Patent Appeals and Interferences. In re Deters, 515 F.2d 1152, 185 USPQ 644 (CCPA 1975); Ex parte Hale, 49 USPQ 209 (Bd. App. 1941).” Thus, remand by the Board cannot be expected. Support for each of answers (A), (B), (C) and (E) is specifically provided for in MPEP § 1211.

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Q) Printed Publication (4.03.46p)

April 8, 2010

Recent test takers report question #46 from the October 2003 (pm) exam is in the Patent Bar database of tested questions.
46. In accordance with USPTO rules and procedures set forth in the MPEP, which of the following is not a “printed publication” under 35 USC 102(b), with respect to a patent application filed June 1, [...]

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Q) Prior Art after Notice of Allowance (4.03.45p)

April 8, 2010

Recent test takers report question #45 from the October 2003 (pm) exam is in the Patent Bar database of tested questions.

45. Al files an application for a patent. After the Notice of Allowance is mailed and the issue fee has been paid Al discovers a prior art reference which is material to patentability. What should [...]

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Q) Practice (4.03.44p)

April 8, 2010

Recent test takers report question #44 from the October 2003 (pm) exam is in the Patent Bar database of tested questions.

44. In accordance with the USPTO rules and the procedures set forth in the MPEP, which of the following, if any, is true?
(A) The loser in an interference in the PTO is estopped from later [...]

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Q) Claim anticipation / Paprika! (4.03.42p)

April 8, 2010

Recent test takers report question #42 from the October 2003 (pm) exam is in the Patent Bar database of tested questions.

42. Paprika is a known product. A patent application discloses a composition which is made by subjecting paprika to processing steps X, Y and Z. The composition is disclosed to be useful in treating cancer. [...]

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Q) Incorporation by Reference (4.03.40p)

April 8, 2010

Recent test takers report question #40 from the October 2003 (pm) exam is in the Patent Bar database of tested questions.

40. Which of the following is not a proper incorporation by reference in an application prior to allowance according to the USPTO rules and the procedures set forth in the MPEP?
(A) Incorporating material necessary to [...]

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