Repeat Questions
Below are the specific questions that recent test takers have indicated are currently in the computerized Patent Bar Exam database. Remember that some “repeat” questions are not verbatim. The law may have changed, and according to exam takers, the PTO has altered/updated old questions for the current exam. Please note that I have organized the questions by exam month, year, and am (a) or pm (p). For example, repeat question #46 from the April 1999 AM Patent Bar Exam is referenced as 4.99.46a.
Repeat Questions on the Exam
Parenthesis means that the question may be altered and probably not verbatim. An asterisks indicates numerous individuals from the forum have reported that question on their exam. For your convenience, I have added links for all of the repeat patent bar exam questions and their model answers.
2000 April (am) 6, 9, 10*, 11*, 14, 17*, (23)*, 24*, 27*, 32, 34, 36*, 42*, 47
Product by Process (4.00.6a)
Restriction (4.00.9a)
Mario Lepieux (4.00.10a)
Laurel, Abbot and Hardy (4.00.14a)
Smith Laminate(4.00.17a)
Tommie and Jo(4.00.23a/4.00.24a)
Bond 60%C or 60%D (4.00.27a)
Obviousness (4.00.32a)
Declassified Reference (4.00.34a)
Make a Patent Application Special (4.00.36a)
Prior Art (4.00.42a)
Reexamination (4.00.47a)
2000 April (pm) 19, 21, (28), 41, 44*
Federal Court Decisions binding for Office (4.00.19p)
Grape Squeezing (4.00.21p)
Claims stand or fall (4.00.28p)
102(b) dates (4.00.41p)
102 (f) (4.00.44p)
XYZ/ABC Appeal (10.00.02a)
Prior Art (10.00.16a)
Mitch and Mac (10.00.23a)
2000 October (pm) 50
Claims (10.00.50p)
Mitch and Mac (4.01.23a)
Jack and Jill in Vietnam (4.01.40a)
2001 April (pm) 10
Sally, Ted and Spot Remover (4.01.10p)
2001 October (am) 5, 6*, (11), 14, 24, 26*, 30
MEGACORP (10.01.5a)
35 USC 101 (10.01.6a)
Final Office Action (10.01.11a)
Written Description (10.01.14a)
Able and Baker (10.01.24a)
35 USC 103, 102(f) and 102 (g) (10.01.26a)
Obviousness (10.01.30a)
A, B, C and D (10.01.1p)
Smith’s Drawings (10.01.3p)
Affidavits (10.01.46p)
2002 April (am) 11, 16*, 24, 32, 36*, 44, 50*
35 USC 102(e) (4.02.11a)
37 CFR 1.8 and 1.10 (4.02.16a)
Mr. Brick (4.02.24a)
Johnnie and Floor Tile (4.02.32a)
Claims (4.02.36a/10.00.50p)
Signing Inventors (4.02.44a)
Foreign Patents (4.02.50a)
2002 April (pm) 2, 4, 11, 18, 19, 20, 22, 24*, (37)*, 38*
RCE (4.02.2p)
Diligence (4.02.4p)
Henrietta’s Camera (4.02.11p)
Roger Rocket (4.02.18p/4.02.19p/4.02.20p)
Smartner’s Cell Phone (4.02.22p)
New Matter (4.02.24p)
Hair Gel (4.02.37p)
Smith and Jones (4.02.38p)
2002 October (am) 1, 2, 6, 8*, (12)*, 17, 18, 21*, 30*, 34, 46, 49*, 50
Non-Signing Inventor (10.02.1a)
Lack of Possession 112 (10.02.2a)
37 CFR 1.131 – MPEP 715 (10.02.6a)
Double Patenting (10.02.8a)
Broadening Reissue (10.02.12a)
102 dates (10.02.17a)
Bird Watching (10.02.18a)
Public Inspection (10.02.21a)
Dead Inventors (10.02.30a)
Omitted Items (10.02.34a)
Third Party Submissions (10.02.46a)
Facsimile Transmissions (10.02.49a)
Reissue (10.02.50a)
2002 October (pm) 1, 5, 8, 14, 16, 34, (43), 46, (47)
35 USC 119(a) (10.02.1p)
Duty to disclose (10.02.5p)
35 USC 112 p1 (10.02.8p)
Provisional Patents (10.02.14p)
Original disclosure (10.02.16p)
Express mail (10.02.34p)
Nylon Rope and Tent Fabric (10.02.43p/04.01.20a/11.99.2a)
Protest (10.02.46p)
Apex and Pinnacle Mfg. Corps. (10.02.47p)
2003 April (am) 1*, 2*, 5, 8*, 11, 12*, 17, (19), 21, 22, 23, 25*, 26, 29*, 30, (31), 33*, 36, 37*, 39, 40, 41, 42, 44*, 45*, 47, 49
Reduction to Practice (4.02.1a)
nonpublication request/45 days (10.03.44a/4.03.2a)
File by Fax (4.03.5a)
Notice of Appeal (4.03.8a)
Certificate of Correction (4.03.11a)
Potter (4.03.12a)
Best Mode (4.03.17a)
Interview (4.03.19a)
New Matter (04.03.21a)
Beck – Mixture Y with melting point of 150F (10.03.11p/4.03.22a)
Practitioner Conduct (4.03.23a)
Board of Appeals Remanding case to the Examiner (4.03.25a)
IDS after Notice of Allowance (4.03.26a)
Certificate of Mailing (4.03.29a)
Verification (4.03.31a)
Inert gas (4.03.30a)
Lancer Toothbrush (4.03.33a)
Mike and Alice are Shipwrecked (4.03.36a)
Board Decisions (4.03.37a)
Time for Filing an Appeal Brief (4.03.39a)
Provisional Filing Requirements (4.03.40a)
Obvious (04.03.41a)
Rejection, 35 USC 102(e) (4.03.42a)
Polypropylene range (obviousness of ranges) (4.03.44a)
New Grounds of Rejection (4.03.45a)
Claims may Not Contain (4.03.47a)
Enabling Disclosure (4.03.49a)
2003 April (pm) 3, 4*, 5, 12, 13, 14, 15, 16, 19, 20, 22*, 21*, 23*, 28, 32, 36, 38, 40, 41, 42, 44, 45, 46, 48*
Prior Art under 102(d) (4.03.3p)
Final Rejection Period for Reply (4.03.4p)
35 USC 102(a) Rejection (4.03.5p)
Interference and Reexamination (4.03.12p)
Small Entity Status (4.03.13p)
Broadening Reissue (4.03.14p)
Inventor (4.03.15p)
Copper substrate (10.03.4a/4.03.16p)
35 USC101 (4.03.19p)
Interviews (4.03.20p)
Petition to make Special (4.03.21p)
Foreign Priority (4.03.22p)
Appeal Brief (4.03.23p)
147 Claim Counting (10.03.50a/4.03.28p)
Bloc; Synthetic Z (10.03.7a/4.03.32p)
Public Use (4-03-36p)
Amendment after Appeal (4.03.38p)
Incorporation by Reference (4.03.40p)
112 second paragraph (4.03.41p)
Claim anticipation (4.03.42p)
Practice (4.03.44p)
Prior Art after Notice of Allowance (4.03.45p)
Printed Publication (4.03.46p)
Canceled matter as PA (4.03.48p)
2003 October (am) 3*, 4, 5, 6*, 7*, 8*, 9*, (10)*, (11), (12) , 13, 14, 15, 16*, 17, (19)*, 20*, 21, 22, (23)*, 24*, 26, 28, 29, 30, 31, 32, 33, 34, 36*, 37, (38)*, (39), (41), 42*, 44*, 46, 49, 50
Interviews (10.03.3a)
Copper substrate (10.03.4a/4.03.16p)
103 Prior Art (10.03.5a)
Reexam Extension of Time (10.03.6a)
Bloc; Synthetic Z (10.03.7a)
35 USC 102(d) (10.03.8a) variation
Smith / DRAM (10.03.9a)
112, second paragraph (10.03.10a)
prior art exclusion of 35 USC 103(c) (10.03.11a)
Inventor Refused to Sign (10.03.12a)
Small Entity Fee (10.03.13)
Antisense Technology (10.03.14a)
Reply to a Second Action Final Rejection (10.03.15a)
Tribell (10.03.16a)
Obvious widget (10.03.17a)
35 USC 102 (10.03.19a)
Missing Drawing (10.03.20a)
Anticipation (10.03.21a)
Public Access (10.03.22a)
Five Steps to Cross a Road (10.03.23a)
Door Handle (10.03.24a)
Supplemental oath as an amendment (10.03.26a)
Shopping Cart Insert (10.03.28a)
Publications as References (10.03.29a)
Prior Art (10.03.30a)
Hydrocyclone (10.03.31a)
Enablement (10.03.32)
Antecedent Basis (10.03.33a)
Late IDS when client knew about PA all along (10.03.34a)
RCE During Appeal (10.03036a)
Allowance after abandonment after appeal (Variation on 10.03.38a)
Overcoming a Rejection based on 102(e) (10.03.39a)
Dependent Claim (10.03.41a)
Restriction Appeal (10.03.42a)
Foreign Filing without Publication (10.03.44a)
Printed Publication (10.03.46a)
Indefinite Claim (10.03.49a)
Claim Counting (10.03.50a)
2003 October (pm) 1, 2*, (4)*, 6*, 7*, 8*, 10, 11*, 13*, 15, 16*, 17*, 18*, (19), 20*, 21*, 22, 23, 24*, (25)*, (27)*, 28*, 29, 30, 31*, 32, 34, 36, 37, 38*, 37, (39)*, 40*, (41)*, 42, (43), 44, 45, (46)*, 47, 50
NonProvisional Filing Date (10.03.1p)
ABCD/ABCDE/BCDE (10.03.2p)
Invitation to Correct PCT Application (10.03.4p)
Moondust (10.03.6p)
Anticipation / Inherency (10.03.7p)
Diligence (10.03.8p)
3rd Party Submission – Japanese publication (10.03.10p)
Broadening Reissue (10.03.11p)
Product-by-Process Claims (10.03.13p)
National Stage by Fax (10.03.15p)
103 Obviousness (10.03.16p)
Anticipated under 102(e) (10.03.17p)
Correcting the Name of the Inventor (10.03.18p)
Prior Art Reference (10.03.19p)
102 Rejections (10.03.20p)
Reply to non-final rejection (10.03.21p)
Which, if any: Chapter 600 (10.03.22p)
Prior Art Disclosed in Abstract (10.03.23p)
Foreign Priority (10.03.24p)
Added Claims in CIP (10.03.25p)
Design Patent in Country X (10.03.27p)
Parking Meter (10.03.28p)
Filing date (10.03.29p)
Smith & Jones… (10.03.30p)
Nonprovisional Filing Date Requirements (10.03.31p)
Verification Statement (10.03.32p)
Certificate of Mailing (10.03.34p)
Affidavit 1.131 (10.03.36p)
Claims lack utility (10.03.37p)
Issue fee transmittal form – XYZ Company (10.03.38p/4.03.11p)
Filing Date (10.03.39p)
Foreign prior art date (10.03.40p)
Restriction (10.03.41p)
Smith, Jones & Brown (10.03.42p)
App Data Sheet (10.03.43p)
Claim Interpretation (10.03.44p)
Smith over Jones, Appeal (10.03.45p)
Toy plane with Foil Wings (10.03.46p)
Public Use (10.03.47p)
Ex Parte Rejection (10.03.50p)
{ 1 trackback }
{ 64 comments… read them below or add one }
Repeats that appeared on a July 2008 exam.
OCT 03 AM: 3, 7, 11, 13, 16, 19, 24, 26, 38, 44
OCT 03 PM: 6, 19*, 29, 38, 50
* = slight variation
more repeats from an August 2008 exam
Oct 2003 AM: 3, 7, 8, 9, 12, 16, 23 (revised), 34, 44, 46
Oct 2003 PM: 2, 6, 11, 13, 18, 29, 38, 42
Oct 03 AM: 19 (variation. Choice D was diff but the answer was still E), 23, 24, 36, 38 (variation), 44,
Oct 03 PM: 4 (had a couple variations), 8, 15, 16, 17, 28, 38, 39 (variation), 41 (variation, same concept of having to elect no matter what)
April 03 AM: 8, 12, 25, 37, 45
April 03 PM: 21, 38 (correct answer was different, it was switching indep to dep i believe),
Oct 02 AM: 12 (variation, filing reissue outside two years fine if no broading, just to add inventor)
April 02 PM: 37 (variation, the hairgel question seems like the same thing as this. They offer intres exam but it was before the date it started so exparte was the answer)
April 00 AM: 24 (tommie and jo where answer is E, none), 27, 36, 42
Hair Gel with Buzzy, Supercuts, and Razorcuts
1) This is nearly identical in concepts tested to the Einstein / Weisman football pads question in (I think) April 2002
# 2000 APR AM: 6, 9, 17, 23, 32, 34, 42, 47
# 2000 APR PM: 41
# 2000 OCT AM: 2
# 2002 APR PM: 24
October 2001 AM – 6, 26
October 2001 PM – 1, 3, 46
April 2002 AM – 16, 36
April 2002 PM – 2, 4, 11, 18, 19, 38
October 2002 AM – 8, 21
October 2002 PM – 1, 8, 14, 34, variants of 43 and 47
April 2003 AM – 1, 17, variant of 19, 26, 29, question similar to 31, 33, 36, 37, 40, 41, 47, 49
April 2003 PM – 3, 5, 14, 15, 19, 20, Potter (either 22 or April 2003 Q. 12), 23, 36, 41, 45
October 2003 AM – 7, 16, variant of 19 with lengthy fact pattern, 20, 23, 24, 42, 46, 49, 50
October 2003 PM – 2, 6, 7, 8, 17, 24, 18, 25, 30, 31, 38, 40
The Laurel, Abbott, Hardy, Costello and Burns question is from April 2000 AM, Question 14.
Number 38 from Oct/2003 AM
17, 37, 38, 41, Oct/03 PM
8, 25, 37, April/03 AM
Variation of 37 October/02 PM
October 2003 am repeats:
6. Two months to reply in reexam/unavoidable delay
7. Compound Y/cancer cure
13. Fee not reduced for small entity/recording a document affecting title
16. Tribell
24. Means for pulling open the door/replace with structure in claim
34. IDS after notice of allowance (oops, I gave the wrong answer!)
38. Board rejects claim 1 /Claim 2 depends on claim 1/Claim 3 allowed
44. Japan/45 days
October 2003 pm repeats:
6. Moon dust pencil/no duty to disclose
50. 102(g) ex parte rejection
April 2003 AM repeats:
2. Japan/45 days
4. Markush
8. Twice rejected concept (variation)
26. IDS after notice of allowance (variation)
37. Appeal affirms rejection/results in abandonment
41. Barry in view of Foreman
October 2002 am repeats:
18. Thomas/Roland/WTO/NAFTA (variation?)
Others:
Two month rule
40% ownership XYZ/60% ownership PQ/two inventors/double patenting: who must sign terminal disclaimer?
Claiming priority from foreign filing of design patent/6 month rule
Combination lacks specificity as way to overcome rejection
Failure of examiner to establish prima facie case of obviousness
At least one question involving correcting drawings without losing priority
One question involving invalid mailing from foreign office
One question involving concept that ADS is not required
About 7 PCT questions (at least two involved requirements for entering U.S. national phase; at least one involved maintaining foreign priority)
There was a similar question on the April 2002 AM exam. It was question 32.
It talks about a floor tile coating. He put it on the floor of his supermarket. The model answer says “public use occurs even when the public is unaware that they were walking on the
developed material since the material was used in a public place.”
OCT 2002 AM: 1, 6, 34, 49
OCT 2002 PM: none
APR 2002 AM: none
APR 2002 PM: 24
Oct 03 AM – 6 ,7 ,16, 19, 26,31, 44, 41(Variant)
Oct 03 PM – 2, 6, 13, 16, 28, 29, 32
Apr 03 AM – 1, 2, 12, 22, 25, 31
Apr 03 PM – 4, 12, 13
Oct 01 AM – 30
OCT 03(am): 3,19,23,24,36,38,44
OCT 03 pm:17,21,38
Apr 03 am: 8,25,21,42
apr 02pm:37
apr 00 am: 17,27
apr 00 pm:44
Apr AM 02: 50
Apr PM 02: 22
Oct AM 02: 18, 21, 30
Oct PM 02: 46
Apr 2001 AM 23
Oct 2000 AM 23
Oct 01 AM
5 14 24
Apr 02 AM
50
Oct 02 AM
1 version 21
Oct 02 PM
5 version 16 version
Apr 03 Am
2 8 22 30 31 37 44
Apr 03 PM
3 version 11 12 16 28 32
Oct 03 AM
4 6 version 7 8 9 22 23 36 44 50
Oct 03 PM
2 4 10 13 14 17 32 38 40 43
Are these questions on the real Patent bar exam?
Rishi
>>Rishi
Well, this is all the problems from the prior tested exams.
I’m assuming your questions of “Are they still tested in recently?”
The answer would be
“May be, May be not”
These are what people claimed to have seen on the exam.
All we can do is make sure to master all the problems from previous tests,
and make sure to know ESPECIALLY the ones claimed by past takers.
I’m taking the test with review from PATBAR.COM and this site mainly in a few weeks….
hope to pass the first try
oh, and by the way, I’ve already exceeded 600hrs of study time…….
Many sites claim 150hrs of study time to be sufficient……Yea right….
Ordinary people like me needs waaaay more then 150hrs
This site has really good quick review made by the host, and posts by others really help me get the idea of what the test is like.
Good luck to all who’s taking the test soon, and congrats to those who’ve passed.
Is there a May 2001 Exam? I’m using PLI to study and it has an option to take a May 2001 exam, but I’ve never seen this exam on other websites such as this one.
How come some of the questions are not available here? Just curious. Thank you.
Is it worth reviewing the 97 and 98 exams? I briefly reviewed 97 and it is quite different from the current exam questions.
Thanks
I think the 97 PM exam has old format testing. You can do it if you want to learn about claims and amendments.
2001 October (am) – question on 102(f) and (g) is redirecting to
‘Wordpress” – what is that???
I am looking for the PLI course/software… I can pay about 500$… let me know if interested…
please write at luc347@yahoo.com
For April 2003 AM – Question 11:
In accordance with the USPTO rules and procedures set forth in the MPEP, a Certificate of Correction effectuates correction of an issued patent where:
(A) Through error and without deceptive intent, there is a failure to make reference to a prior copending application according to 37 CFR 1.78, and the failure does not otherwise affect what is claimed, but the prior copending application is referenced in the record of the application, and a petition under 37 CFR 1.324 and appropriate fees were filed.
(B) Through error and without deceptive intent, a preferred embodiment that materially affects the scope of the patent was omitted in the original disclosure in the filed application, and a petition under 37 CFR 1.324 and appropriate fees were filed.
(C) Through error and without deceptive intent, a prior copending application is incorrectly referenced in the application, the incorrect reference does not otherwise affect the claimed subject matter, and the prior copending application is correctly identified elsewhere in the application file, and a petition under 37 CFR 1.324 and appropriate fees were filed.
(D) Through error and without deceptive intent, an inventor’s name is omitted from an issued patent, a petition under 37 CFR 1.324 and appropriate fees were filed, and the petition was granted.
(E) (A), (C) and (D).
The correct answer was E. However CFR 1.324 is only for correcting inventorship. Shouldn’t choices A and C read CFR 1.323? Is this a beta question, an artifact from the ‘02 MPEP, or possibly an error?
MS-
I think you’re right. MPEP 1402: “The most common bases for filing a reissue application are:
…
D) applicant failed to make reference to or incorrectly made reference to prior copending applications.”
http://exam.freepatentbar.com/chalkboard/april-2003-pm/24
Is this problem right? It says the answer is A, but wouldn’t A be wrong because it is lacking the statement required by 37 CFR 1.97(e)?
I initially chose E on this problem.
Any advice would be appreciated.
I believe that answer A is correct in light of the request for continued examination combined with the IDS. The RCE restarts the clock for IDS submission requirements to 37 CFR 1.97(b)(4) – “Before the mailing of a first Office action after the filing of a request for continued examination under § 1.114.”
In the absence of an RCE, the IDS would have have to be accompanied by the fee and 1.97(e) statement required by 37 CFR 1.97(d).
I’m not sure that I understand the answer to question #44 from the October 03 AM exam:
44. A registered practitioner filed in the USPTO a client’s utility patent application on December 30, 2002. The application was filed with a request for nonpublication, certifying that the invention disclosed in the U.S. application has not and will not be the subject of an application in another country, or under a multilateral international agreement, that requires eighteen month publication. Subsequently, the client files an application in Japan on the invention and some recent improvements to the invention. The improvements are not disclosed or supported in the utility application. Japan is a country that requires eighteen month publication. Two months after filing the application in Japan, and before filing any other papers in the USPTO, the client remembers that a nonpublication request was filed and informs the practitioner about the application that was filed in Japan. Which of the following courses of action is in accordance with the patent laws, rules and procedures as related in the MPEP?
(A) The application is abandoned because the practitioner did not rescind the nonpublication request and provide notice of foreign filing within 45 days of having filed the application in Japan. The applicant must now file a petition and fee to revive under 37 CFR 1.137(b).
(B) The application is abandoned because the applicant did not rescind the nonpublication request before filing the application in Japan. The applicant must now file a petition and fee to revive under 37 CFR 1.137(b).
(C) The applicant should file an amendment to the specification of the U.S. application, adding the recent improvements to the disclosure in the specification.
(D) The application is abandoned because the applicant did not rescind the nonpublication request by notifying the Office under 37 CFR 1.213(c) within the appropriate time. The applicant must now file a petition and fee to revive under 37 CFR 1.137(b).
(E) The applicant could today notify the USPTO of the foreign filing. It is not necessary to file a petition and fee to revive for the application to continue to be examined in the USPTO.
The correct answer is “A.” What is the difference between “did not rescind the nonpublication request and provide notice of foreign filing” (answer A) and “did not rescind the nonpublication request by notifiying the office under 37 CFR 1.213(c)” (answer D)? 37 CFR 1.213(c) basically quotes the 45-day limit of 35 USC 122 (b)(2)(B)(iii). Neither the patent rules nor the law says anything about having to rescind the nonpublication request in order to avoid abandonment. What am I missing here?
The Question #2 from the April 2003 (AM) and the question #44 from the October 03 AM exam are the same but have different answer.
For Question #2 from the April 2003 (AM), it says the ANSWER: (A) and (D) are accepted as the correct answers. However for Question #44 from the October 03 AM, the correct answer is “A.”
Then which one is right?
There is a notice of foreign filing required in addition to the recission of nonpublication. One is not effective without the other, and the 45 day rule requires both.
But 37 CFR 1.213(c) says:
(c) If an applicant who has submitted a nonpublication request under paragraph (a) of this section subsequently files an application directed to the invention disclosed in the application in which the nonpublication request was submitted in another country. . .the applicant must notify the Office of such filing within forty-five days after the date of the filing of such foreign or international application.
How is the requirement that “the applicant must notify the Office of such filing within forty-five days” different from “providing notice of foreign filing”? When I got this question two weeks ago, I just answered “A” without worrying about why. It must have worked, since I got a preliminary grade of “pass.”
I just took the Patent Bar today and PASSED! I used the resources from this site, past exams (especially the 2003 ones), and lots and lots of practice.
On the exam today:
04/03 AM: 2, 22, 30, 31,
04/03 PM: 12, 16, 28, 32, 48
10/03 AM: 4, 6, 7, 8, 9, 13, 18, 23, 34, 36, 44, 50
10/03 PM: 2, 4, 10, 13, 14, 24, 32, 40, 43
Laurel, Abbot, Hardy
New Questions:
Trade Secret
Spanish Phone (CIP version)
Correction Of Inventorship
Piecemeal
Hairgel
Lip Gloss (gag version)
Competitor’s Information
Maintenance Fee
Japan 45 Days
Best Mode
Mirror (parallel, perpendicular)
There was a Schmidt question, I don’t remember the details, but I do remember it was tricky. Hopefully other posters can fill in the details here.
Once again, thank you to everyone who posted before me. This site was a tremendous help to passing the exam. I encourage everyone to keep it going.
Please can someone tell me the correct answer for this question. I was thinking that this is 101 issue but the answer is D as per PLI.
QUESTION
20. During his summer vacation to the mountains, Eric discovered and isolated a microorganism which secretes a novel compound. Eric purified and tested the compound in tumor-containing control mice and found that the tumors disappeared after one week; whereas tumor-containing mice which did not receive the compound died. Eric was very excited about his results and so he did a few additional experiments to characterize the microorganism and the compound which it was secreting. Eric determined that the microorganism was an S.spectaculus, and that the secreted compound was so unlike any other compounds that Eric named it spectaculysem. Eric told his friend Sam about his discovery, who urged him to apply for a U.S. patent on the microorganism and the secreted product. Eric did so, but to his amazement, a primary examiner rejected all the claims to his inventions. Which of the following, if made by the examiner, would be a proper rejection in accordance with USPTO rules and procedures set forth in the MPEP?
A. The examiner’s rejection of the claims to the microorganism under 35 USC 101 as being unpatentable because microorganisms are living matter and living matter is non-statutory subject matter.
B. The examiner’s rejection of the claims to the compound under 35 USC 101 as having no credible utility because Eric has only tested the compound in mice and curing mice of cancer has no “real world” value. The examiner also states that Eric must demonstrate that the compound works in humans in order to show that it has a patentable utility.
C. The examiner’s rejection of the claims to the compound under 35 USC 103, stating that it would have been obvious to one of ordinary skill in the art to test the by product of a newly-discovered microorganism for therapeutic uses.
D. The examiner’s rejection of the claims to the microorganism under 35 USC 102/103 over a reference which teaches an S. spectaculus microorganism stating that Eric’s claimed microorganism is the same as, or substantially the same as, the microorganism described in the prior art.
E. None of the above.
The issue of patentability of microorganisms is discussed in MPEP 2105. Living matter is not necessarily unpatentable (Diamond v. Charkabarty) — only *naturally occurring* living matter is unpatentable as its isolation does not include inventive activity. Genetically engineered microorganisms are not inherently unpatentable. Thus, A cannot be the correct answer.
Demonstrating that a pharmaceutical has activity in animals is evidence of credible utility, so B cannot be the correct answer.
“Obvious to try” is considered equivalent to “obvious” only if there are a “finite number of identified, predictable solutions, with a reasonable expectation of success” (MPEP 2143); in this case, there may be any number of new, unknown compounds secreted by the microorganism, and there is no expectation that any of them will have any utility against cancer. Thus, C cannot be the correct answer.
Since the microorganism is already known in the prior art, it is likely that any compound that it produces can be extracted from it by methods that are known in the art. Note that according to the fact pattern, only the compound was claimed, not its use as a cure for cancer. Therefore, the examiner is justified in rejecting the claims on the basis of 35 USC 102/103, and D is a correct answer.
Since D is correct, E obviously cannot be.
You are correct that the patent could have been rejected under 35 USC 101 since the microorganism is not genetically engineered, but that option was not one of the choices presented. The question doesn’t ask which of the following would be the *only* proper rejection, only which of them would be *a* proper rejection.
Third party submissions….610, 37 CFR 1.99
Does the version of MPEP currently tested on have 610? I seem to be using v8 r4.
Thank you.
Yes, I didn’t notice any difference in the questions because the revisions are obscure, but the MPEP version for question lookup was R4.
I passed last week, thanks for the great site.
I am selling my almost entirely unused PRG study materials. This includes: 1) All 4 volumes of volumes of “Patent Practice” textbook,
2) Printed practice questions corresponding to each volume of “Patent Practice,”
3) CD-ROM with over 2,000 practice questions (really helpful),
4) Printed version of MPEP (4 large binders),
5) PRG’s “Latest Tips and Tricks for Success” for passing the patent bar on your first try, and
6) Binder with all handouts from class and my notes.
Price is 750 (paid almost 3,000).
Please respond to this thread if interested.
Passed today
Had a few repeats but not that many it seemed. A lot of appeal, reexam and PCT questions.
Repeats:
Mario Lepieux (4.00.10a)
Japanese Patent PCT (45days)
Smith over Jones, Appeal (10.03.45p)
Moondust (10.03.6p)
Bloc; Synthetic Z (10.03.7a)
Substrates with the two layers, prior art had three layers.
Stephen,
Congratulations and thanks for posting.
Any New questions that you can remember?
Hi,
I have just started studying for the exam, and am very confused on the basics. For example, Question 29 of April 17, 2002 afternoon exam is about pending published application. The answer states “Inspection of the application file of a pending application is not permitted. A member of the public may request only copies of the application file”
What is the difference between “inspection” and “requesting copy” of an application file?
Thank you so much!
Hello all, this is a fantastic site that will really help you prepare for the exam.
I took the exam for the second time yesterday and passed! The first time I took the exam I studied by reviewing a used PLI bar course that I bought (and am now selling on craigslist!) and missed it by 3 points. I really didn’t do any old exams. To prepare this time, I ignored those materials and did the exams from 2000 – 2003, each about 20 times. I didn’t use the MEP, but rather went through the exams blindly relying only on what I knew. I was scoring about 60-65 on each exam the first time through. Then I went through and read all the answers and learned the concepts in this way.
By the time the test rolled around, I knew all the concepts and could go through an exam in 1.5 hours and understand all the concepts. It’s all about repetition. It truely helped me more than any other technique. Use the MPEP as reference, but not a crutch; learn the concepts independantly and you’ll realize that it’s pretty easily to narrow down the answers.
Many people say that a lot of the exam questions are repeated, and honestly I had only about 10 repeat questions on my exam yesterday, and I knew all the old questions. I won’t relist them, they are all on this site. Rather, they recycled the concepts in different questions. Most of my exam questions were totally new though. Good luck to everyone, and if anyone has questions, let me know, I’ll be happy to tell you anything I remember.
Nicole, Pittsburgh PA
Nicole,
Congratulations on passing the exam!
Can you remember 1 or 2 of the new questions?
Thanks and good luck in your new career.
Thank you, I don’t really remember a lot, but here’s the little bit that’s left:
I was extremely worried aobut questions on PCt, and thankfully had very few of them, none were new–the questions about Japan (45 days), Costa Rica, Sweden, and Germany. I had two questions about protest, section 1900. I hadn’t seen either of them before, dealing with proper procedure for protest, when to submit a protest, who can do so, what must be submitted. Several assignment questions; one dealt with what an assignee could do–the answer was that an assignee couldn’t sign a small entity status document, another question dealt with what documents were needed for an assignement.
I’m sorry, I don’t remember the specifics, but I didn’t have any trouble with the questions, they were very easy to look up. There were only a few that I really didn’t have time to make sure were correct. Honestly, learn as many questions as possible, so that if you do have repeat questions you can get through them very quickly and can spend time on questions that are new. This is not to say however you shouldn’t read all the questions on the exam; small details are sometimes changed.
Good luck everybody, if I think of anything else, I will definitely post again.
Thank you, Nicole!!!
Best of luck to you!
Passed today on my first attempt, thanks in largest part to this website. Thank you for putting it together! I saw the following repeats on the Exam today. A few were slightly modified. For the most party, though, they questions and answer choices were reproduced word-for-word.
Laurel, Abbot and Hardy (4.00.14a)
Smith Laminate(4.00.17a)
Federal Court Decisions binding for Office (4.00.19p)
Protest (10.02.46p)
Potter (4.03.12a)
Beck – Mixture Y with melting point of 150F (10.03.11p/4.03.22a)
IDS after Notice of Allowance (4.03.26a)
Verification (4.03.31a)
Bloc; Synthetic Z (10.03.7a/4.03.32p)
Copper substrate (10.03.4a/4.03.16p)
Reexam Extension of Time (10.03.6a)
Inventor Refused to Sign (10.03.12a)
Tribell (10.03.16a)
Hydrocyclone (10.03.31a)
ABCD/ABCDE/BCDE (10.03.2p)
Moondust (10.03.6p)
Design Patent in Country X (10.03.27p)
Verification Statement (10.03.32p)
Toy plane with Foil Wings (10.03.46p)
Congrats! GT
Any new ?’s you can remember?
I bought PLI’s homestudy course a few years ago. They gave me the MPEP Edition 8, Revision 3. I know that they are now testing the new Revision, but does anyone know if this is still an acceptable version/study kit to use? Thanks so much!
I downloaded the MPEP v8 r4 for free. Though there is a link to that on this website, there is no downloadable version here. From my understanding, it is better to use a downloadable version, for a better simulation of the exam.
I just took the test, and passed!
While I apologize and don’t remember the repeat questions, my main recommendation would be to study the 4 2003 tests completely. Also, in addition to those questions, I’d also make sure that you know 1800 and 1200 really well. It’s especially important to know what amendments can and can’t be made during the appeal process, and what the US R/O can bounce back to the International Bureau.
Just took the exam today and need to retake it. I found the first half very difficult and had alto of lookup to do. Quite a few questions on assignments, assignees, dates, incorporation by reference…basically, questions from first 5 chapters. But, yes, as others have pointed out the focus seems to be a lot on PCT, reissue/re-exam, appeal and a couple on protest.
The repeat questions I saw:
Mario Lepieux
Jo(h)n Jones
Smith Laminate
Hair Gel
RCE during appeal
Smith and Jones
There was also the question on combination/subcombination and a question on disclaimer – asking who had the authority to file a disclaimer?!
Quite bummed about not making it, but for someone who is trying to get into this field, it was an uphill battle for me.
Also, the MPEP on screen at the prometric center was a bit fuzzy – at small font so it made searching the MPEP very slow and difficult when the page size was enlarged.
Sorry about that!!! Any idea what might have gone wrong?
Just passed today on my first try. Thanks to everyone who have contributed to this great site.
I noticed following repeats:
Invitation to Correct PCT Application (10.03.4p)
Moondust (10.03.6p)
3rd Party Submission – Japanese publication (10.03.10p)
National Stage by Fax (10.03.15p)
Anticipated under 102(e) (10.03.17p)
Correcting the Name of the Inventor (10.03.18p)
Reply to non-final rejection (10.03.21p)
Foreign Priority (10.03.24p)
Parking Meter (10.03.28p)
Filing date (10.03.29p)
Smith & Jones… (10.03.30p)
Issue fee transmittal form – XYZ Company (10.03.38p/4.03.11p)
Foreign prior art date (10.03.40p)
Bloc; Synthetic Z (10.03.7a)
35 USC 102(d) (10.03.8a) variation
prior art exclusion of 35 USC 103(c) (10.03.11a)
Tribell (10.03.16a)
Five Steps to Cross a Road (10.03.23a)
Door Handle (10.03.24a)
Enablement (10.03.32)
RCE During Appeal (10.03036a)
Allowance after abandonment after appeal (Variation on 10.03.38a)
Restriction Appeal (10.03.42a)
Foreign Filing without Publication (10.03.44a)
Claim Counting (10.03.50a)
Final Rejection Period for Reply (4.03.4p)
Foreign Priority (4.03.22p)
Practice (4.03.44p)
Canceled matter as PA (4.03.48p)
Reduction to Practice (4.02.1a)
nonpublication request/45 days (10.03.44a/4.03.2a)
Notice of Appeal (4.03.8a)
Board of Appeals Remanding case to the Examiner (4.03.25a)
Lancer Toothbrush (4.03.33a)
Board Decisions (4.03.37a)
Obvious (04.03.41a)
Some questions that seemed unfamiliar:
- What is required to obtain a filing date for REISSUE app
- Who needs to sign supplemental declaration
- Documents NOT necessary to record assignment
- Requirement for Information; whether failure to respond leads to abandonment
- Telephone interview; whether it needs to be scheduled in advance so that the practitioner’s privacy interest can be preserved (I chose this as wrong)
Hope this helps.
Congrats!!!
Wow! That’s a lot of repeats. Is this typical? Can everyone else be this lucky?
I also passed the exam on May 13, 2010. This site provided very useful info and I really appreciate all those who have contributed to it. Here are the questions that I recall:
– Titanium Baseball (Public Use/Printed Publication)
– Mirror (Inherent Function)
– Costa Rica and Sweden – PCT
– Velcro (Trademarks in Claims)
– Information requested from USPTO
– Trade Secret Question
– Means plus Function variant of Door Handle (Determining Equivalence)
– Piecemeal
– Missing parts in PCT Application (30 days)
– Shoe Polish and hair gel
Overall, I think there were about a total of 25~30 questions from “Repeat Questions” (in both sessions), I remember the following:
– Tommie and Jo(4.00.23a/4.00.24a)
– Bond 60%C or 60%D (4.00.27a)
– 147 Claim Counting (10.03.50a/4.03.28p)
– Lancer Toothbrush (4.03.33a)
– Bloc; Synthetic Z (10.03.7a/4.03.32p)
– RCE During Appeal (10.03.36a)
– Moondust (10.03.6p)
– Correcting the Name of the Inventor (10.03.18p)
– Design Patent in Country X (10.03.27p)
– Smith & Jones… (10.03.30p)
Hi Everyone,
Thanks for the helpful information, which helped me pass yesterday! Off the top of my head, at least 50% exam is recycled questions (perhaps more, but I only managed to work my way thru a couple of practice exams, largely because I worked as a technical specialist for a couple of years before taking the exam). In any case, here’s what I recall.
1. Mirror, perpendicular mounting,
2. PCT, missing Abstract
3. PCT, deleting benefit claim
4. PCT, the Costa Rica Question
5. PCT, the German guy question
6. PCT amending abstract
7. PCT , is the English translation needed or not
8. Terminal Disclaimers , who can sign
40% one assignee, 40% second assignee, 20% remained with inventors, who can sign what
9. 4 Inventors filed a patent, one inventor refuses to cooperate, what’s next
10. New use of an “old” chemical
11. Titanium Baseball
12. VELCRO
13. priority of design app.
14. 102(e) dates for app. before and after 11/29/2000,
15. Japan 45 days
16. maintenance fee, check returned
17. Tommie and Jo(4.00.23a/4.00.24a)
18. Bond 60%C or 60%D (4.00.27a)
19. 147 Claim Counting (10.03.50a/4.03.28p)
20. Lancer Toothbrush (4.03.33a)
21. Bloc; Synthetic Z (10.03.7a/4.03.32p)
22. RCE During Appeal (10.03.36a)
23. Moondust (10.03.6p)
24. Correcting the Name of the Inventor (10.03.18p)Information requested from USPTO
25. Trade Secret Question
26. Means plus Function variant of Door Handle (Determining Equivalence)
27. Piecemeal
28. Missing parts in PCT Application (30 days)
29. Shoe Polish and hair gel
30. Invitation to Correct PCT Application (10.03.4p)
31. 3rd Party Submission – Japanese publication (10.03.10p)
32. National Stage by Fax (10.03.15p)
33. Anticipated under 102(e) (10.03.17p)
34. Correcting the Name of the Inventor (10.03.18p)
35. Reply to non-final rejection (10.03.21p)
36. Parking Meter (10.03.28p)
37. Issue fee transmittal form – XYZ Company (10.03.38p/4.03.11p)
38. prior art exclusion of 35 USC 103(c) (10.03.11a)
39. Five Steps to Cross a Road (10.03.23a)
40. Restriction Appeal (10.03.42a)
41. Foreign Filing without Publication (10.03.44a)
42, Canceled matter as PA (4.03.48p)
43. Reduction to Practice (4.02.1a)
44. nonpublication request/45 days (10.03.44a/4.03.2a)
45. Board of Appeals Remanding case to the Examiner (4.03.25a)
46, Board Decisions (4.03.37a)
Obvious (04.03.41a)
47. What is required to obtain a filing date for REISSUE app
48. Who needs to sign supplemental declaration
49. Documents NOT necessary to record assignment
50. Requirement for Information
51. Telephone interview
Study the old exams, and you’ll succeed! Good luck everyone!
Wow, I took mine today..and I had many of these!
I took the test last week and didn’t pass. The AM session was very hard, not a single repeat. Stuff I never heard of. But PM had the usual repeats as above. I practiced the old exams many times and got 98-99% in all of them. I also went over all the new questions from this site. But my AM exam had many new areas that I did not study. Now I am realizing that I must know the MPEP inside out.; cannot just rely on the past exams any more. It is the MPEP and seems like every chapter is equally important.
I called the USPTO (OED) to make the wrong answers available online to us instead of us having to fly out to Varginia to look at them. They said they would pass the word to the OED boss. If more people call to the OED, requesting them to release the wrong answers and the question online that would be extremely helpful to the once that didn’t pass. I cannot remember the questions, as they were all new areas for me. Without knowing what I answered wrong, it is difficult to feel more confident. So, please called the OED at 571-272-4097 est and make the request. Thanks.
When I said call OED, I meant for you to be able to look at what you answered wrong for the test you took; not someone else’s wrong answers. Currently, PTO allows that, but you have to go to Varginia to look at your wrong answers. My request was to make it available online for me to to able to look at my wrong answers. Make sense? So, start calling. Thanks
I took and passed the test on June 7. Second try. It looks like it is just luck of the draw. On my first test I saw only a few repeats – most of the questions were completely new. On my second test I saw 30-40 repeats or variations from old tests or the new questions posted on this site.
The most heavily tested areas were PCT (10+ questions), Appeal (10+ questions, several dealing with new grounds for rejection from the board) and the regular 102/103 questions (30+ questions). There were roughly the same proportion of questions from these subjects on each of my tests, but like I said, on my second test there were WAY more repeats than my first test.
My best advice is to know all of the questions from the “Repeat Questions” tab inside and out – know not only what the answer is, but why and where to find it in the MPEP. Also review all of the questions on the “Exam Questions and Concepts” tab a few times before you go the exam – I had several questions where I knew the answer just from what I remembered from what other people had said (i.e. black ink).
Once you have done that, just hope you’re lucky and get a repeat-heavy exam.
Thanks. What I saw was that they would break down a Rule into two parts and use one part in one Answer (say B) and the other part in another Answer (say E) to confuse you. It takes longer to search the PEP, as you have to
re-read several times to make sure that is what they are doing. It took me a while to figure out that. So, match the entire Rule to make sure that it is the full Rule, not chopped up. That way you can eliminate two Answers right away. I think they are testing us to see we know the full Rule. I will give it a try again. Also, by giving a harder AM test dampens your enthusiasm for the PM test, thinking is it even worth studying the repeat questions during the break?
I would study the repeat questions. I think it’s all luck of the draw. Like I said, my second exam was full of repeats. Having them fresh in my mind knocked out a third of my exam. I ended up having about 45 minutes to go over questions during each half since I saved so much time on the repeats.
Thank you mypatentbar.com! Today I took the test and passed because of the number of repeat questions I saw from this website!! For the last week of study, i just went through all of the repeat questions and at least 15 showed up on my test! =)
This website is awesome. I took the Patent Bar yesterday and passed so for karma’s sake, wanted to make a post. I studied the stuff on this website and took as many old tests as I could. Here are the repeat questions I can remember having:
October 2003 AM: 3, 4, 7, 8, 9, 16, 20, 23, 34, 36, 38, 42, 44, 50
October 2003 PM: 4, 13, 14, 15, 32
April 2003 AM: 8, 11, 25, 26, 30, 44, 12, 13
April 2003 PM: 27