Comments on: Old Exams http://mypatentbar.com Patent Bar Review and Study Guide Wed, 08 Sep 2010 20:43:39 +0000 http://wordpress.org/?v=2.9.2 hourly 1 By: Sunil http://mypatentbar.com/old-exams/#comment-3416 Sunil Sat, 07 Aug 2010 23:48:08 +0000 http://patentbar.wordpress.com/old-exams/#comment-3416 Does anyone know if there is any collection of old questions from 2003 available ? I have purchased a CD that contains old questions only upto 2003. Does anyone know if there is any collection of old questions from 2003 available ? I have purchased a CD that contains old questions only upto 2003.

]]> By: thwalls http://mypatentbar.com/old-exams/#comment-2324 thwalls Sun, 16 May 2010 04:53:20 +0000 http://patentbar.wordpress.com/old-exams/#comment-2324 See MPEP 2163.05 (III. Range Limitations) "With respect to changing numerical range limitations, the analysis must take into account which ranges one skilled in the art would consider inherently supported by the discussion in the original disclosure." Also, see 2164.08 "Enablement Commensurate in Scope With the Claims [R-2]" and 2173.05(c) "Numerical Ranges and Amounts Limitations" (II. Open-Ended Numerical Ranges) If you look through the pertinent cases you can see that sometimes it can be a point of indefiniteness, but it really depends on how the information in the claim using "at least" compares to the spec and how that claim would be interpreted by PHOSITA. If they gave a range in the spec then that would make this question completely different. In the problem, the question is not regarding a range but in this case you're first given Claim 9 which states at least 1 gigabyte. Claim 11 which depends from claim 10 which depends from claim 9 has the same limitation of at least 1 gigabyte. In other words I completely concur with Rofel. See MPEP 2163.05 (III. Range Limitations)
“With respect to changing numerical range limitations, the analysis must take into account which ranges one skilled in the art would consider inherently supported by the discussion in the original disclosure.”

Also, see 2164.08 “Enablement Commensurate in Scope With the Claims [R-2]” and 2173.05(c) “Numerical Ranges and Amounts Limitations” (II. Open-Ended Numerical Ranges)

If you look through the pertinent cases you can see that sometimes it can be a point of indefiniteness, but it really depends on how the information in the claim using “at least” compares to the spec and how that claim would be interpreted by PHOSITA. If they gave a range in the spec then that would make this question completely different.

In the problem, the question is not regarding a range but in this case you’re first given Claim 9 which states at least 1 gigabyte. Claim 11 which depends from claim 10 which depends from claim 9 has the same limitation of at least 1 gigabyte.

In other words I completely concur with Rofel.

]]> By: Rofel http://mypatentbar.com/old-exams/#comment-2319 Rofel Sat, 15 May 2010 21:05:02 +0000 http://patentbar.wordpress.com/old-exams/#comment-2319 use of "at least" is not indefinite..claim 11 is a dependent claim and should restrict/narrow the claim it is depending from (i.e., claim 9)..in the problem, claim 9 claims "at least 1 gigabyte" while claim 11 claims "greater than 1/2 gigabyte." thus, claim 11 improperly restricts/narrows claim 9 (i.e., 1/2 gig does not fall within min of 1 gig as claimed).. (i don't have specific MPEP rules to back up my reply above but it should be there) use of “at least” is not indefinite..claim 11 is a dependent claim and should restrict/narrow the claim it is depending from (i.e., claim 9)..in the problem, claim 9 claims “at least 1 gigabyte” while claim 11 claims “greater than 1/2 gigabyte.” thus, claim 11 improperly restricts/narrows claim 9 (i.e., 1/2 gig does not fall within min of 1 gig as claimed)..

(i don’t have specific MPEP rules to back up my reply above but it should be there)

]]> By: newtopatentbar http://mypatentbar.com/old-exams/#comment-2317 newtopatentbar Sat, 15 May 2010 18:32:57 +0000 http://patentbar.wordpress.com/old-exams/#comment-2317 Hello, Can anybody here help me understand the following question (oct 03, pm. #49)? 49. A patent specification discloses a personal computer comprising a microprocessor and a random access memory. There is no disclosure in the specification of the minimum amount of storage for the random access memory. In the disclosed preferred embodiment, the microprocessor has a clock speed of 100-200 megahertz. Claims 9 and 10, presented below, are original claims in the application. Claim 11, presented below, was added by amendment after an Office action. 9. A personal computer comprising a microprocessor and a random access memory that includes at least 1 gigabyte of storage. 10. The personal computer of Claim 9, wherein the microprocessor has a clock speed of 100-200 megahertz. 11. The personal computer of Claim 10, wherein the random access memory is greater than ½ gigabyte of storage. Which of the following statements is or are in accord with the patent laws, rules and procedures as related in the MPEP regarding the respective claims under the fourth paragraph of 35 USC 112? (A) Claim 9 is a proper independent claim, and Claims 10 and 11 are proper dependent claims. (B) Claim 9 is a proper independent claim, and Claims 10 and 11 are improper dependent claims. (C) Claim 9 is an improper independent claim, and Claims 10 and 11 are improper dependent claims. (D) Claim 9 is an improper independent claim, and Claims 10 and 11 are proper dependent claims. (E) Claim 9 is a proper independent claim, Claim 10 is a proper dependent claim, and Claim 11 is an improper dependent claim. The answer is (E). I chose (C), because I think claim 9 is improper for using "at least" phrase, it is indefinite. Am I wrong here? Thanks Hello,
Can anybody here help me understand the following question (oct 03, pm. #49)?
49. A patent specification discloses a personal computer comprising a microprocessor and a
random access memory. There is no disclosure in the specification of the minimum amount of
storage for the random access memory. In the disclosed preferred embodiment, the
microprocessor has a clock speed of 100-200 megahertz. Claims 9 and 10, presented below, are
original claims in the application. Claim 11, presented below, was added by amendment after an
Office action.
9. A personal computer comprising a microprocessor and a random access memory that
includes at least 1 gigabyte of storage.
10. The personal computer of Claim 9, wherein the microprocessor has a clock speed of
100-200 megahertz.
11. The personal computer of Claim 10, wherein the random access memory is greater
than ½ gigabyte of storage.
Which of the following statements is or are in accord with the patent laws, rules and procedures
as related in the MPEP regarding the respective claims under the fourth paragraph of 35
USC 112?
(A) Claim 9 is a proper independent claim, and Claims 10 and 11 are proper
dependent claims.
(B) Claim 9 is a proper independent claim, and Claims 10 and 11 are improper
dependent claims.
(C) Claim 9 is an improper independent claim, and Claims 10 and 11 are improper
dependent claims.
(D) Claim 9 is an improper independent claim, and Claims 10 and 11 are proper
dependent claims.
(E) Claim 9 is a proper independent claim, Claim 10 is a proper dependent claim, and
Claim 11 is an improper dependent claim.
The answer is (E). I chose (C), because I think claim 9 is improper for using “at least” phrase, it is indefinite. Am I wrong here?
Thanks

]]> By: thwalls http://mypatentbar.com/old-exams/#comment-2295 thwalls Wed, 12 May 2010 20:46:42 +0000 http://patentbar.wordpress.com/old-exams/#comment-2295 That shows up a lot it seems. They like to lure you in with an answer that's partially correct. You always have to look for the one that's the most correct. That shows up a lot it seems. They like to lure you in with an answer that’s partially correct. You always have to look for the one that’s the most correct.

]]> By: newtopatentbar http://mypatentbar.com/old-exams/#comment-2292 newtopatentbar Wed, 12 May 2010 14:56:08 +0000 http://patentbar.wordpress.com/old-exams/#comment-2292 S, Once again, this question demonstrated that in patent bar exams, you choose the best answers not the correct answers. S,
Once again, this question demonstrated that in patent bar exams, you choose the best answers not the correct answers.

]]> By: S http://mypatentbar.com/old-exams/#comment-2288 S Wed, 12 May 2010 00:21:06 +0000 http://patentbar.wordpress.com/old-exams/#comment-2288 Something doesn't seem right here. I think E should be the answer. Can somebody explain how the answer can be correct for this question, April 2002 AM 19. On June 9, 2000, you file two complete patent applications on behalf of your client, ABC Inc. The subject matter of the patent applications relates to a new automotive body design. One of the applications is filed as a utility application (A#1), and other is filed as a design application (A#2). Prosecution of each application moves forward independently of each other, and you receive final office actions in each application rejecting the respective claim(s) in each application. Your client, in consultation with you, decides that she would rather pursue prosecution in each case rather than appeal the final rejections. Which of following options is available to you under the USPTO rules and procedures ? (A) File a request for continuing examination (RCE) for both A#1 and A#2. (B) File a request for continuing examination (RCE) for A#1 and a continuing prosecution application (CPA) for A#2. (C) File a request for continuing examination (RCE) for A#2 but not A#1. (D) File a continuing prosecution application (CPA) for both A#1 and A#2. (E) File a continuing prosecution application (CPA) for A#1 but not A#2. Answer: 19. ANSWER: (B). 37 C.F.R. § 1.153(d)(I)(i)(B). A design application is eligible for continuing prosecution application procedures. 37 C.F.R. § 1.114 (e)(4) explains that RCE procedure is not available for design applications, therefore (A) and (C) are wrong. Answer (D) is wrong because under 37 C.F.R. §1.53(d) the filing date of the application (A#1) must be before May 29, 2000. Answer (E) is wrong for the same reason. MPEP 1502.01: (H) A Request for Continued Examination (RCE) under 37 CFR 1.114 may only be filed in utility and plant applications filed under 35 U.S.C. 111(a) on or after June 8, 1995, while RCE is not available for design applications (see 37 CFR 1.114(e)). (I) * >Effective July 14, 2003, continuedonly(see 37 CFR 1.53(d)(1)(i)). Prior to July 14, 2003, CPA practice was< available for utility and plant applications only where the prior application has a filing date prior to May 29, 2000 **. Something doesn’t seem right here. I think E should be the answer. Can somebody explain how the answer can be correct for this question,
April 2002 AM

19. On June 9, 2000, you file two complete patent applications on behalf of your
client, ABC Inc. The subject matter of the patent applications relates to a new
automotive body design. One of the applications is filed as a utility application (A#1),
and other is filed as a design application (A#2). Prosecution of each application moves
forward independently of each other, and you receive final office actions in each
application rejecting the respective claim(s) in each application. Your client, in
consultation with you, decides that she would rather pursue prosecution in each case
rather than appeal the final rejections. Which of following options is available to you
under the USPTO rules and procedures ?
(A) File a request for continuing examination (RCE) for both A#1 and A#2.
(B) File a request for continuing examination (RCE) for A#1 and a continuing
prosecution application (CPA) for A#2.
(C) File a request for continuing examination (RCE) for A#2 but not A#1.
(D) File a continuing prosecution application (CPA) for both A#1 and A#2.
(E) File a continuing prosecution application (CPA) for A#1 but not A#2.

Answer: 19. ANSWER: (B). 37 C.F.R. § 1.153(d)(I)(i)(B). A design application is eligible for
continuing prosecution application procedures. 37 C.F.R. § 1.114 (e)(4) explains that RCE
procedure is not available for design applications, therefore (A) and (C) are wrong. Answer (D)
is wrong because under 37 C.F.R. §1.53(d) the filing date of the application (A#1) must be
before May 29, 2000. Answer (E) is wrong for the same reason.

MPEP 1502.01:
(H)
A Request for Continued Examination (RCE) under 37 CFR 1.114 may only be filed in utility and plant applications filed under 35 U.S.C. 111(a) on or after June 8, 1995, while RCE is not available for design applications (see 37 CFR 1.114(e)).
(I)
* >Effective July 14, 2003, continuedonly(see 37 CFR 1.53(d)(1)(i)). Prior to July 14, 2003, CPA practice was< available for utility and plant applications only where the prior application has a filing date prior to May 29, 2000 **.

]]> By: Rofel http://mypatentbar.com/old-exams/#comment-2245 Rofel Wed, 05 May 2010 14:37:01 +0000 http://patentbar.wordpress.com/old-exams/#comment-2245 The IDS filing in Answer A is November 15, 2000 - which is before November 20, 2000 Office Action. Thus, IDS requirements before a first Office Action is applied. See 609.01 as a guide in IDS. Thanks. The IDS filing in Answer A is November 15, 2000 – which is before November 20, 2000 Office Action. Thus, IDS requirements before a first Office Action is applied. See 609.01 as a guide in IDS. Thanks.

]]> By: thwalls http://mypatentbar.com/old-exams/#comment-2242 thwalls Wed, 05 May 2010 02:50:04 +0000 http://patentbar.wordpress.com/old-exams/#comment-2242 I have a question about the Oct. 17, 2001 AM exam. Question 38. Registered practitioner Roni files a utility patent application under 37 CFR 1.53(b) in the USPTO having one claim on May 6, 1998. A proper final rejection of claim 1 was mailed on June 28, 2000. Roni files a request for continued examination with the appropriate fee on September 12, 2000, and submits an amendment to claim 1 with the request. On October 7, 2000, Roni learns about a publication (the “Columbus reference”) which she knows to be material to patentability of claim 1, but which was not considered by the examiner during prosecution of the application. Roni prepares an information disclosure statement that complies with the provisions of 37 CFR 1.98, listing the Columbus reference. The finality of the action on June 28, 2000, is withdrawn in an Office action on November 20, 2000, which is after the filing of the request for continued examination. Which of the following actions, if taken by Roni, will properly result in the Columbus reference being considered by the Office during the pendency of the application? (A) Filing the information disclosure statement on November 15, 2000, without any further statement and without the fee set forth in 37 CFR 1.17(p). (B) Filing the information disclosure statement on December 11, 2000, without any further statement and without the fee set forth in 37 CFR 1.17(p). (C) Filing the information disclosure statement on December 13, 2000, without any further statement and without the fee set forth in 37 CFR 1.17(p). (D) (A) or (B) above. (E) None of the above. I'm not seeing why the answer to this question is A. I have a question about the Oct. 17, 2001 AM exam. Question 38.

Registered practitioner Roni files a utility patent application under 37 CFR 1.53(b) in the USPTO having one claim on May 6, 1998. A proper final rejection of claim 1 was mailed on June 28, 2000. Roni files a request for continued examination with the appropriate fee on September 12, 2000, and submits an amendment to claim 1 with the request. On October 7, 2000, Roni learns about a publication (the “Columbus reference”) which she knows to be material to patentability of claim 1, but which was not considered by the examiner during
prosecution of the application. Roni prepares an information disclosure statement that complies with the provisions of 37 CFR 1.98, listing the Columbus reference. The finality of the action on June 28, 2000, is withdrawn in an Office action on November 20, 2000, which is after the filing of the request for continued examination. Which of the following actions, if taken by Roni, will properly result in the Columbus reference being considered by the Office during the pendency of the application?

(A) Filing the information disclosure statement on November 15, 2000, without any further statement and without the fee set forth in 37 CFR 1.17(p).
(B) Filing the information disclosure statement on December 11, 2000, without any further statement and without the fee set forth in 37 CFR 1.17(p).
(C) Filing the information disclosure statement on December 13, 2000, without any further statement and without the fee set forth in 37 CFR 1.17(p).
(D) (A) or (B) above.
(E) None of the above.

I’m not seeing why the answer to this question is A.

]]> By: admin http://mypatentbar.com/old-exams/#comment-2239 admin Tue, 04 May 2010 15:21:41 +0000 http://patentbar.wordpress.com/old-exams/#comment-2239 Hi S, usptoExam.com, one of our sponsors, does this quite well. :-) Hi S,
usptoExam.com, one of our sponsors, does this quite well. :-)

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