Comments on: Exam Questions and Concepts

By: PCTMaster

PCTMaster — Mon, 26 Jul 2010 23:32:14 +0000

Passed test today. Prepared using PLI home course, followed by extensive study of old tests 2002-2003, as well as the “new questions” on this website. Guess it’s my turn to give back to the community.

Overall it was easy. I finished the morning session with about 1 hour to spare and the afternoon session with 45 min extra. Memorizing repeat questions is the key.

REPEATS (OLD):
Mario Lepieux (4.00.10a)
Smith Laminate(4.00.17a)
Foreign Patents (4.02.50a)
Notice of Appeal (4.03.8a)
Potter (4.03.12a)
Beck – Mixture Y with melting point of 150F (10.03.11p/4.03.22a)
Lancer Toothbrush (4.03.33a)
Board Decisions (4.03.37a)
Polypropylene range (obviousness of ranges) (4.03.44a)
New Grounds of Rejection (4.03.45a)
Interference and Reexamination (4.03.12p)
Foreign Priority (4.03.22p) POTTER – 2 VERSIONS
Bloc; Synthetic Z (10.03.7a/4.03.32p)
Bloc; Synthetic Z (10.03.7a)
Smith / DRAM (10.03.9a)
Tribell (10.03.16a)
Correcting the Name of the Inventor (10.03.18p)
Smith & Jones… (10.03.30p)
Foreign prior art date (10.03.40p)
Smith, Jones & Brown (10.03.42p)

NEW QUESTIONS
Q3) Mirror (112 enabling or 112 indefinite)
Q12) 1.131 and 1.132 Affidavits
Q14) Costa Rica and Sweden – PCT
Q15) Spanish Phone – Design
Q19) Mexican Nationals – PCT filed in US/RO not in English
Q22) Germany – PCT / Patent Term
Q23) Broom
Q24) Japanese Patent Qs
Q25) Electric Fan
Q26) Maintenance Fee Paid / Check Returned
Q29) Death of inventor before application is filed
Q34) Investigating Deceptive Intent
Q59) PTO-892
Q61) PCT Publication in US/RO
Q64) Restriction of Combinations/Sub-Combinations

OTHER QUESTIONS:
1) What is needed for accelerated examination?
2) Which statements invoke 112 6th paragraph?
3) PCT – if you file at US/RO you do not need to submit the IA or wait for it to be transferred from IB to enter national stage, just pay the fee. BUT, the facts also indicated there was a correction in the inventorship of the IA that was sent DIRECTLY to the IB – so now do you need to update your IA app at the US/RO? I chose no, just pay the fee – I think somewhere in 1800 I saw that correction of inventorship on PCT should be done
4) PCT – you submit 3 corrections: (I) typo in name, (II) missing page of spec, (III) missing drawing – which corrections will be accepted? (I) will be and (II) will not; but not sure about (III)…

MISC:
I took the 15 minutes to write down 50 numbers as others have suggested. People haven’t mentioned this – but the 1 hour break is optional. I only took a 20 minute break b/c I just wanted to get it over with.

GOOD LUCK!!

By: DG

DG — Sun, 25 Jul 2010 22:12:40 +0000

The oath or declaration may not be signed by an attorney on behalf of the inventor, even if the attorney has been given a power of attorney to do so. Opinion of Hon. Edward Bates,10 Op. Atty. Gen. 137 (1861). See also Staeger v. Commissioner of Patents and Trademarks, 189 USPQ 272 (D.D.C. 1976) and In re Striker, 182 USPQ 507 (PTO Solicitor 1973) (In each case, an oath or declaration signed by the attorney on behalf of the inventor was defective because the attorney did not have a proprietary interest in the invention.).

By: PCTMaster

PCTMaster — Sun, 25 Jul 2010 04:51:30 +0000

that would make sense then. much appreciate the clarification.

By: darth

darth — Sat, 24 Jul 2010 17:42:57 +0000

I think the correct wording on the question should be “Claim 4 depends on Claims 2 or 3 …Claim 6 depends on claims 2, 3 or 5″ which would make 8 the correct answer. That’s the way it was on my test anyway.

By: PCTMaster

PCTMaster — Sat, 24 Jul 2010 08:51:43 +0000

answer is (A). See Anticipated under 102(e) (10.03.17p)

By: PCTMaster

PCTMaster — Sat, 24 Jul 2010 05:35:19 +0000

Q5: why not 5 (answer a)?
claim 1: ind, so ignore
claim 2: counts as 1 dep on
claim 3: counts as 1 dep
claim 4: counts as 1 dep b/c it is improper multiple dep claim
claim 5: counts as 1 dep
claim 6: counts as 1 dep b/c it is improper multiple dep claim

thanks

By: darth

darth — Sat, 24 Jul 2010 03:19:28 +0000

you’re right sp 41.33 (a) applies with that fact pattern not (b)

By: SP

SP — Fri, 23 Jul 2010 21:58:41 +0000

The fact is “before appeal brief”, so “rewrite dependent claims into independent claim” is not the answer. According to MPEP, the applicant can “present rejected claims in better form for consideration
on appeal”, answer c is close to this one,

By: darth

darth — Fri, 23 Jul 2010 17:10:05 +0000

I had Q1-Q6 on my exam as well. SP’s post jogged my memory.

I believe the answer to Q2 is A though SP based on:
35 U.S.C. 172 Right of priority.
The right of priority provided for by subsections (a) through (d) of section 119 of this title and the time specified in section 102(d) shall be six months in the case of designs. The right of priority provided for by section 119(e) of this title shall not apply to designs.

I think priority from foreign apps are ok for design apps just not provisionals or PCT’s.

Also think B is the correct answer on Q4 based on:
37 CFR 41.33. Amendments and affidavits or other evidence after appeal.
(b)Amendments filed on or after the date of filing a brief pursuant to § 41.37 may be admitted:
(1)To cancel claims, where such cancellation does not affect the scope of any other pending claim in the proceeding, or
(2)To rewrite dependent claims into independent form.

By: SP

SP — Fri, 23 Jul 2010 15:21:13 +0000

I got this Q yesterday.
The the additional facts are notice of appeal was filed on Oct 27, the continuing application was filed with brief on April 26 the following year with authorization to charge necessary fees. The question is “as on May 1, what is the status of the application?” One of the choices is “copending, because it is still within 5 months extension limit and can make another extension.”