MyPatentBar.com http://mypatentbar.com Patent Bar Review and Study Guide Tue, 04 May 2010 14:34:51 +0000 en-US hourly 1 https://wordpress.org/?v=4.4.10 Q) Ex Parte Rejection (10.03.50p) http://mypatentbar.com/2010/04/19/q-ex-parte-rejection-10-03-50p/ http://mypatentbar.com/2010/04/19/q-ex-parte-rejection-10-03-50p/#comments Mon, 19 Apr 2010 18:52:57 +0000 http://mypatentbar.com/?p=1838

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) http://mypatentbar.com/2010/04/19/q-public-use-10-03-47p/ http://mypatentbar.com/2010/04/19/q-public-use-10-03-47p/#comments Mon, 19 Apr 2010 18:42:57 +0000 http://mypatentbar.com/?p=1834

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 known or used in NAFTA or WTO member countries.
(B) must be known or used in a NAFTA member country, but only if the filing date of the application is after the effective date of the North American Free Trade Agreement Implementation Act.
(C) must be known or used in this country.
(D) can be known or used in any country.
(E) must be known or used in a WTO member country, but only if the filing date of the application is after the effective date of the implementation of the Uruguay Round (WTO) Agreements Act.

ANSWER: (C) is the most correct answer. 35 U.S.C. § 102(a); MPEP § 2132. As set forth in MPEP § 2132, under the heading “II. ‘In This Country,’” subheading “Only Knowledge or Use In The U.S. Can Be Used in a 35 U.S.C. 102(a) Rejection,” states “[t]he knowledge or use relied on in a 35 U.S.C. 102(a) rejection must be knowledge or use ‘in this country.’ Prior knowledge or use which is not present in the United States, even if widespread in a foreign country, cannot be the basis of a rejection under 35 U.S.C. 102(a). In re Ekenstam, 256 F.2d 321, 118 USPQ 349 (CCPA 1958). Note that the changes made to 35 U.S.C.104 by NAFTA (Public Law 103-182) and Uruguay Round Agreements Act (Public Law 103-465) do not modify the meaning of ‘in this country’ as used in 35 U.S.C. 102(a) and thus ‘in this country” still means in the United States for purposes of 35 U.S.C. 102(a) rejections.’” See also MPEP § 706.02(c), “[t]he language ‘in this country’ means in the United States only and does not include other WTO or NAFTA member countries.” Since “in this country” means in the United States for purposes of 35 U.S.C. § 102(a) rejections, (A), (B), (D) and (E) are incorrect.

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Q) Claim Interpretation (10.03.44p) http://mypatentbar.com/2010/04/19/q-claim-interpretation/ http://mypatentbar.com/2010/04/19/q-claim-interpretation/#comments Mon, 19 Apr 2010 18:34:20 +0000 http://mypatentbar.com/?p=1829

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 to only the limitations, elements or steps recited in the claim, and is not inclusive or open-ended of other unrecited elements or steps.
(B) The transition term “consisting essentially of” limits the claim to the limitations recited in the claim and additional elements or steps which do not materially affect the basic and novel characteristics of the claimed invention.
(C) A claim having the transition term “consisting of” is not limited to the elements or steps recited in the claim, but can include elements or steps other than those recited in addition to any impurities ordinarily associated therewith.
(D) A claim which depends from a claim which claims an invention “consisting of” the recited elements or steps can add an element or step to further limit the claimed invention.
(E) All of the above.

ANSWER: (B) is the most correct answer. MPEP § 2111.03 (fourth paragraph) states, in reliance upon In re Herz, 537 F.2d 549, 551-52, 190 USPQ 461, 463 (CCPA 1976), that “[t]he transitional phrase ‘consisting essentially of’ limits the scope of a claim to the specified materials or steps ‘and those that do not materially affect the basic and novel characteristic(s)’ of the claimed invention.” (A) is incorrect. The statement is contradicted by MPEP § 2111.03 (second paragraph), which states, in reliance upon Genentech, Inc. v. Chiron Corp., 112, F.3d 495, 501, 42 USPQ2d 1608, 1613 (Fed. Cir. 1997) that “[t]he transition term ‘comprising’, which is synonymous with ‘including,’ ‘containing,’ or ‘characterized by,’ is inclusive or open-ended and does not exclude additional, unrecited elements or method steps. (C) is incorrect. The statement is contradicted by MPEP § 2111.03 (third paragraph), which states, in reliance upon In re Gray, 53 F.2d 520, 11 USPQ 255 (CCPA 1931) that “[t]he transitional phrase ‘consisting of’ excludes any element, step , or ingredient not specified in the claim.” (D) is incorrect. The statement is directly contradicted by MPEP § 2111.03 (third paragraph), which states “[a] claim which depends from a claim which ‘consists of’ the recited elements or steps cannot add an element or step.” (E) is incorrect because (A), (B) and (C) are incorrect.

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Q) Smith, Jones & Brown (10.03.42p) http://mypatentbar.com/2010/04/19/q-smith-jones-brown-10-03-42p/ http://mypatentbar.com/2010/04/19/q-smith-jones-brown-10-03-42p/#comments Mon, 19 Apr 2010 18:26:48 +0000 http://mypatentbar.com/?p=1826

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 teachings of Smith and Jones. The examiner repeats the rejection of claims 1-10 as being “unpatentable over Smith in view of Jones.” The examiner additionally cites a patent to Brown that was necessary to provide motivation for combining the teachings of Smith and Jones. The examiner does not list Brown in the statement of the rejection. Appellant timely appeals to the Board of Patent Appeals and Interferences, and files a proper appeal brief. The examiner files an examiner’s answer addressing the rejection of claims 1-10 under 35 USC 103(a) as being unpatentable over Smith in view of Jones, and cites Brown in the argument as providing motivation to combine Smith and Jones. In accordance with the patent laws, rules and procedures as related in the MPEP, what will be the most proper decision of the Board?
(A) The Board will affirm the rejection based on Smith and Jones only.
(B) The Board will affirm the rejection based on Smith, Jones and Brown.
(C) The Board will reverse the rejection based on Smith and Jones only.
(D) The Board will reverse the rejection based on Smith, Jones and Brown.
(E) None of the above.

ANSWER: (C) is the most correct answer. 37 CFR § 1.193(a)(2); MPEP § 1208.01. If the claimed invention is rendered obvious by Smith in view of Jones and Brown, the statement of rejection must include all three references. Reliance on Brown to support the rejection is a different rejection from a rejection relying only on Smith in view of Jones. In accordance with MPEP § 1208.01, the Board will not consider the teachings of Brown because Brown was used to support the rejection, but was not listed in the statement of the rejection. As stated in MPEP § 1208.01, “Even if the prior art reference is cited to support the rejection in a minor capacity, it should be positively included in the statement of rejection. In re Hoch, 428 F.2d 1341, 1342 n.3, 166 USPQ 406, 407 n.3 (CCPA 1970).” Therefore, (B) and (D) are clearly wrong. (A) is incorrect. The decision cannot affirm the rejection since there is no motivation for combining the teachings of Smith and Jones absent the teachings of Brown. Therefore, the rejection must be reversed, not affirmed.

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Q) Restriction (10.03.41p) http://mypatentbar.com/2010/04/19/q-restriction-10-03-41p/ http://mypatentbar.com/2010/04/19/q-restriction-10-03-41p/#comments Mon, 19 Apr 2010 18:16:27 +0000 http://mypatentbar.com/?p=1822

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 1.111, preserves applicant’s right to petition the Commissioner to review the restriction requirement in accordance with the patent laws, rules and procedures as related in the MPEP.
(A) Applicant’s entire reply to the restriction requirement is: “The examiner erred in distinguishing between Group 1 and Group 2, and therefore the restriction requirement is respectfully traversed and no election is being made, in order that applicant’s right to petition the Commissioner to review the restriction requirement is preserved.”
(B) Applicant’s entire reply to the restriction requirement is: “Applicant elects Group 1 and respectfully traverses the restriction requirement, because the examiner erred in requiring a restriction between Group 1 and Group 2.”
(C) Applicant’s reply distinctly points out detailed reasons why applicant believes the examiner erred in requiring a restriction between Group 1 and Group 2, and additionally sets forth, “Applicant therefore respectfully traverses the restriction requirement and no election is being made, in order that applicant’s right to petition the Commissioner to review the restriction requirement is preserved.”
(D) Applicant’s reply distinctly points out detailed reasons why applicant believes the examiner erred in requiring a restriction between Group 1 and Group 2, and additionally sets forth, “Applicant therefore respectfully traverses the restriction requirement and elects Group 2.
(E) None of the above.

ANSWER: (D) is the most correct answer. 37 CFR § 1.111(b); MPEP §§ 818.03(a)-(c). MPEP § 818.03(a) states “[a]s shown by the first sentence of 37 CFR 1.143, the traverse to a requirement must be complete as required by 37 CFR 1.111(b) . . . Under this rule, the applicant is required to specifically point out the reasons on which he or she bases his or her conclusions that a requirement to restrict is in error.” An election must be made even if the requirement is traversed. MPEP § 818.03(b). Answer (A) is incorrect since the traversal does not distinctly point out the supposed errors in the examiner’s action, and no election is made. 37 CFR § 1.143. MPEP § 818.03(a) states “[a] mere broad allegation that the requirement is in error does not comply with the requirement of 37 CFR 1.111.” Answer (A) is also incorrect because no election is made. MPEP § 818.03(b) states, “[a]s noted in the second sentence of 37 CFR 1.143, a provisional election must be made even though the requirement is traversed. (B) is incorrect. MPEP § 818.03 since the traversal does not distinctly point out the supposed errors in the examiner’s action. (C) is incorrect since no election is made. See MPEP § 818.03(b) (E) is incorrect because (D) is correct.

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Q) Foreign prior art date (10.03.40p) http://mypatentbar.com/2010/04/19/q-10-03-40p/ http://mypatentbar.com/2010/04/19/q-10-03-40p/#comments Mon, 19 Apr 2010 17:57:27 +0000 http://mypatentbar.com/?p=1812

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 in English on July 5, 2001. The international application enters the national stage in the United States on September 5, 2001. The USPTO publishes the application on June 6, 2002. The application issues as a United States patent on December 3, 2002. What is its earliest possible 35 USC 102(e) prior art date for the application published by the United States, in view of the amendment to Title 35 by the American Inventors Protection Act of 1999 and the Intellectual Property and High Technology Technical Amendments Act of 2002?
(A) January 5, 2000.
(B) January 5, 2001.
(C) July 5, 2001.
(D) June 6, 2002.
(E) December 3, 2002.

ANSWER: (B) is the most correct answer. 35 U.S.C. § 102(e)(1) provides that a US published application of a national stage of an international application filed on or after November 29, 2000 has a prior art effect as of its international filing date, if the international application designated the United States, and was published in English. Because in the above fact pattern, the international application designated the United States and was published in English, and was filed on or after November 29, 2000, the USPTO published application is entitled to its international filing date of January 5, 2001 for prior art purposes under 35 U.S.C. § 102(e)(1). See Example 4 of MPEP § 706.02(f)(1). (A) is wrong because the Japanese filing date is relevant under 35 U.S.C. § 119(a) only for priority and not prior art purposes. (C) and (E) are wrong because they recite prior art dates that are later than January 5, 2001. (D) is wrong because the prior art date under 35 U.S.C. § 102(e)(1) is earlier than the application publication date, June 6, 2002.

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Q) Filing Date (10.03.39p) http://mypatentbar.com/2010/04/19/q-10-03-39p/ http://mypatentbar.com/2010/04/19/q-10-03-39p/#comments Mon, 19 Apr 2010 17:47:41 +0000 http://mypatentbar.com/?p=1802

Recent test takers report that question #39 from the October 2003 (PM) test is in the patent bar exam database.


39. An international application is filed in the United States Receiving Office on September 18, 2002. In accordance with the PCT and USPTO rules and the procedures set forth in the MPEP, which of the following will result in the application not being accorded an international filing date of September 18, 2002?
(A) The description and claims are in German.
(B) The Request is signed by a registered attorney rather than the applicant.
(C) The sole applicant is a Canadian resident and national.
D) The application does not contain a claim.
(E) The application is not accompanied by any fees.

ANSWER: The correct answer is (D). PCT Article 11(1)(iii)(e); 35 U.S.C. § 363; 37 CFR § 1.431(a); MPEP § 1810. Under PCT Article 11(1)(iii)(e) to be accorded an international filing date an application must have “a part which on the face of it appears to be a claim or claims.” (A) and (C) are incorrect. Under PCT Rule 19.4 if an application is not filed in the prescribed language or is filed by an applicant for which the Office to which the application is submitted is not competent, such application will be forwarded to the International Bureau which will act as receiving Office and accord a filing date as of the date of receipt in the USPTO. (B) is not correct. The Request may be signed by an attorney or agent who is registered to practice before the USPTO. In such a situation the application will be accorded an international filing date of September 18, 2002, and under PCT Article 14 an invitation to correct the defect will be mailed. See MPEP § 1805, paragraph 7; MPEP 1810, under the heading “The ‘International Filing Date,” second paragraph. (E) is also incorrect. Under PCT Rules 14.1(c), 15.4(a), 16.1(f), and 16bis.1 the fees may be paid at a date later than the original receipt date.

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Q) Claims lack utility (10.03.37p) http://mypatentbar.com/2010/04/18/q-claims-lack-utility/ http://mypatentbar.com/2010/04/18/q-claims-lack-utility/#comments Sun, 18 Apr 2010 20:54:11 +0000 http://mypatentbar.com/?p=1797

Recent test takers report that question #37 from the October 2003 (PM) test is in the patent bar exam database.

37. The specification of an application does not disclose the utility of the claimed composition. In fact, the claimed invention is useful for shrinking a specific class of tumors. In a first Office action, the primary examiner has properly determined that the claims lack utility, and has rejected all of the composition claims under the first paragraph of 35 USC 112 as lacking utility. Which of the following responses is in accord with the USPTO rules and the procedures of the MPEP for persuading the examiner that the rejection is improper?
(A) Explain that the rejection is statutorily improper because the first paragraph of section 112 is concerned with enablement and written description issues and therefore does not support a rejection for lack of utility.
(B) Point out that the rejection is based on an erroneous finding by the examiner because the specification, in fact, clearly discloses that the composition in question possesses “useful biological” properties.
(C) Show that the rejection is improper by filing probative evidence that the claimed composition has unambiguously proven to be useful for shrinking a specific class of tumors.
(D) File declarations by persons with ordinary skill in the art stating that they would immediately appreciate that the claimed composition is useful for shrinking a specific class of tumors due to the fact that similar compositions having the same characteristics as applicant’s claimed composition were known to be effective for this purpose.
(E) Argue that the rejection is improper because the examiner has failed to present evidence in support of his position that the claimed composition has no utility.

ANSWER: (D) is most correct answer. As explained at MPEP § 2107.02, II, B, under the heading “No Statement of Utility for the Claimed Invention in the Specification Does Not Per Se Negate Utility,” the fact that a specification does not contain a statement of utility for the claimed invention does not per se negate utility. This is because a claimed invention may have a well-established utility, and an invention has a well-established utility if (i) a person of ordinary skill in the art would immediately appreciate why the invention is useful based on the characteristics of the invention and (ii) the utility is specific, substantial, and credible. In this case, the declarations specify a specific substantial and credible utility and explain why the declarants (i.e., persons of ordinary skill in the art) would immediately appreciate that the applicant’s claimed composition would possess this utility. (A) is incorrect. A lack of utility deficiency under 35 U.S.C. § 101 also creates a lack of utility deficiency under the first paragraph of 35 U.S.C. § 112 as fully explained at MPEP § 2107.01, under the heading “IV. Relationship Between 35 U.S.C. 112, First Paragraph, And 35 U.S.C. 101.” (B) is not the most correct answer. 35 U.S.C. § 101 (and the first paragraph of 35 U.S.C. § 112) requires that the utility be specific. Therefore, the disclosure of a general utility such as “useful biological” properties does not satisfy this requirement as fully explained at MPEP § 2107.01, under the heading “I. Specific And Substantial Requirements.” Response (C) also would not be persuasive since the rejection is based on the fact that the applicant’s specification fails to identify any specific and substantial utility for the claimed composition or fails to disclose enough information about the invention to make its usefulness immediately apparent to those familiar with the technological field of the invention. This is explained at MPEP § 2107.01. The fact that the claimed composition has unambiguously proven to be useful for curing a form of cancer previously thought to be incurable does not negate these specification deficiencies. That is, notwithstanding this unambiguous proof, the fact remains that the applicant’s specification fails to identify any specific and substantial utility for the composition. Moreover, it is clear that the specification would not make this specific usefulness immediately apparent to those familiar with the technological field of the composition since the cancer was previously thought to be incurable. Finally, response (E) also would not be persuasive. Under current USPTO policy and procedure, the examiner is not required to present evidence in support of a rejection based on lack of utility where, as here, the specification does not identify a specific, substantial and credible utility and does not appear to provide sufficient information such that a well-established utility would be apparent to a person with ordinary skill in the art. See MPEP § 2107, under the heading “II. Examination Guidelines For The Utility Requirement.”

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Q) Affidavit 1.131 (10.03.36p) http://mypatentbar.com/2010/04/18/q-affidavit-1-131-10-03-36p/ http://mypatentbar.com/2010/04/18/q-affidavit-1-131-10-03-36p/#comments Sun, 18 Apr 2010 20:30:39 +0000 http://mypatentbar.com/?p=1787

Recent test takers report that question #34 from the October 2003 (PM) test is in the patent bar exam database.

36. An application naming X and Y as joint inventors, filed on April 3, 2002, has a single pending claim, and does not claim the benefit of any earlier application. Which, if any, of the following items of prior art that have been relied on in various rejections of the claim may be overcome by a suitable affidavit under 37 CFR 1.131 in accordance with the patent laws, rules and procedures as related in the MPEP?
(A) A U.S. patent to G that issued on March 27, 2001, has an effective U.S. filing date of January 4, 2000, and does not claim the “same patentable invention” (as defined in 37 CFR 1.601(n)) as the rejected claim.
(B) A U.S. patent to P that issued on June 5, 2001, has an effective U.S. filing date of February 1, 2000, and includes a claim that is identical to the rejected claim.
(C) A journal article to H published on December 10, 2001, and characterized in the application as “describ[ing] the prior art.”
(D) A foreign patent issued to X and Y on November 7, 2001, which claims the same 
subject matter as the rejected claim and is based on an application filed on January 3, 2001.
(E) None of the above.

ANSWER: The correct answer is (E), “None of the above.” (A) is incorrect because the G patent is a 35 U.S.C. § 102(b) statutory bar. See MPEP § 715 under heading “Situations Where 37 CFR 1.131 Affidavits Or Declarations Are Inappropriate,” states “(A) Where the reference publication date is more than 1 year prior to applicant’s or patent owner’s effective filing date. Such a reference is a ‘statutory bar’ under 35 U.S.C. 102(b) as referenced in 37 CFR 1.131(a)(2).” (B) is incorrect because 37 CFR § 1.131 expressly provides that prior invention may not be established under the rule “if the rejection is based upon a U.S. patent or U.S. patent application publication of a pending or patented application to another or others which claims the same patentable invention as defined in 37 CFR 1.601(n).” 37 CFR § 1.131(a)(1). Regarding (C), see MPEP § 715, under heading ” Situations Where 37 CFR 1.131 Affidavits Or Declarations Are Inappropriate,” which states “(G) Where applicant has clearly admitted on the record that subject matter relied on in the reference is prior art. In this case, that subject matter may be used as a basis for rejecting his or her claims and may not be overcome by an affidavit or declaration under 37 CFR 1.131. In re Hellsund, 474 F.2d 1307, 177 USPQ 170 (CCPA 1973); In re Garfinkel, 437 F.2d 1000, 168 USPQ 659 (CCPA 1971); In re Blout, 333 F.2d 928, 142 USPQ 173 (CCPA 1964); In re Lopresti, 333 F.2d 932, 142 USPQ 177 (CCPA 1964).” Regarding (D), see MPEP § 715, under heading, ” Situations Where 37 CFR 1.131 Affidavits Or Declarations Are Inappropriate,” which states “(C) Where the reference is a foreign patent for the same invention to applicant or patent owner or his or her legal representatives or assigns issued prior to the filing date of the domestic application or patent on an application filed more than 12 months prior to the filing date of the domestic application. See 35 U.S.C. 102(d).”

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Q) Certificate of Mailing (10.03.34p) http://mypatentbar.com/2010/04/18/q-certificate-of-mailing-2/ http://mypatentbar.com/2010/04/18/q-certificate-of-mailing-2/#comments Sun, 18 Apr 2010 20:16:48 +0000 http://mypatentbar.com/?p=1779

Recent test takers report that question #34 from the October 2003 (PM) test is in the patent bar exam database.

34. In accordance with the patent laws, rules and procedures as related in the MPEP , which of the following paper is precluded from receiving the benefit of a certificate of mailing or transmission under 37 CFR 1.8?
(A) An amendment, replying to an Office action setting a period for reply, transmitted by mail with a certificate of mailing to the USPTO from a foreign country.
(B) An amendment, replying to an Office action setting a period for reply, transmitted by facsimile with a certificate of transmission to the USPTO from a foreign country.
(C) An information disclosure statement (IDS) under 37 CFR 1.97 and 1.98 transmitted after the first Office action.
(D) A request for continued examination (RCE) under 37 CFR 1.114.
(E) An appeal brief.

ANSWER: (A) is the most correct answer. See MPEP § 512, which states “The Certificate of Mailing procedure does not apply to papers mailed in a foreign country.” (B) is not correct. See MPEP § 512. Certificate of transmission procedure applies to correspondence transmitted to the Office from a foreign country and an amendment is not prohibited from being transmitted by facsimile and is not precluded from receiving the benefits under 37 CFR § 1.8. (C) is not correct. See MPEP § 609, subsection “Time for Filing.” An IDS will be considered to have been filed on the date of mailing if accompanied by a properly executed certificate of mailing or facsimile transmission under 37 CFR § 1.8. (D) is not correct. See MPEP § 706.07(h) Comparison Chart. An RCE is entitled to the benefit of a certificate of mailing or transmission under 37 CFR § 1.8. (E) is not correct. See MPEP § 1206. An appeal brief is entitled to the benefit of a certificate of mailing or transmission under 37 CFR § 1.8 because it is required to be filed in the Office within a set time period which is 2 months from the date of appeal.

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