JP

Y22. 10.08.a.21. Patent application A was filed on January 12, 1995, containing claims 1-10. A primary examiner rejects the claims under 35 USC 102(b) as being anticipated by a U.S. patent issued on June 2, 1992. The rejection also relies on a technical paper published March 12, 1993 to show that a characteristic is inherent in the patent, although not expressed in its disclosure. According to the patent laws, rules and procedures as related in the MPEP, which of the following actions is most likely to overcome the rejection?

(A) Filing a declaration and exhibits under 37 CFR 1.131 to antedate the reference U.S. patent.
(B) Filing evidence under 37 CFR 1.132 tending to show commercial success of the invention.
(C) Filing evidence under 37 CFR 1.132 tending to show unexpected results of the invention.
(D) Amending the specification of application A to claim priority under 35 USC 120 by a specific reference to a prior copending application B that was filed before June 2, 1992 by the same inventor and discloses the invention claimed in at least one claim of application A in the manner provided by the first paragraph of 35 USC 112.
(E) Submitting arguments pointing out that the rejection under 35 USC 102(b) relies on more than one reference.
Y23. 10.03.a.22. Application Number A was published as U.S. Patent Application Publication Number B. A member of the public reviewed the listing of the file contents of the application on the Patent Application Information Retrieval system and determined that the application was still pending, that a final Office action was mailed, and that the application file is in the Technology Center where it is being examined. The member of the public does not have a power to inspect, but would like a copy of the final Office action as well as the other papers in the patent application. In accordance with the patent laws, rules and procedures as related in the MPEP, can a copy of these papers be obtained by the member of the public, and if so, how can the copy be obtained?

(A) No, a copy cannot be obtained because patent applications are maintained in confidence pursuant to 35 USC 122(a).
(B) No, a copy cannot be obtained because the patent application is still pending.
(C) Yes, a member of the public can go to the Technology Center and ask for the file for copying at a public photocopier.
(D) Yes, the member of the public can complete a “Request for Access to an Application Under 37 CFR 1.14(e)” and, without payment of a fee, order the file from the File Information Unit. Upon the Unit’s receipt of the application, the member of the public can use a public photocopier to make a copy.
(E) Yes, the member of the public can order a copy from the Office of Public Records, with a written request and payment of the appropriate fee.
Y24. 10.03.a.23. Applicant files a claim which includes the following limitation: “a step for crossing the road.” The specification recites the following acts: “(1) go to the curb, (2) look both ways, (3) if the road appears safe, walk across the road, (4) step up onto the far curb, (5) continue walking.” The primary examiner properly construes the step limitation to cover the foregoing acts. A prior art reference, published two years before the application was filed, expressly describes acts (1)-(4), but not (5). This same reference also discloses the remaining limitations recited in applicant’s claim, i.e., those other than the step plus function limitation. The examiner rejects the claim under 35 USC 102(b) as being anticipated by the prior art reference. In accordance with the patent laws, rules and procedures as related in the MPEP, which of the following is the most complete reply to overcome the rejection under these circumstances?
(A) An argument explaining that since act (5) is not disclosed in the reference, it does not anticipate the claim.
(B) An amendment to the specification deleting act (5) – continue walking.
(C) An argument showing that neither the equivalent of act (5) nor act (5) is disclosed in the reference, which therefore does not anticipate the claim.
(D) An amendment to the claim by adding a negative limitation to expressly exclude act (5) from crossing the road.
(E) (B) and (D)
Y25. 10.03.a.24. A registered practitioner filed an application for an applicant claiming a “a means for pulling the door open.” The specification describes a handle and a knob being used together as a corresponding structure for pulling the door open. A prior art patent discloses a door opened by pulling on an attached bar. The primary examiner issued an Office action rejecting the claim under 35 USC 102 as being anticipated. In the action, the examiner properly identified the corresponding structure described in the applicant’s specification as the means for pulling the door open and properly explained why the prior art attached bar is the equivalent of the structure described in applicant’s specification. In accordance with the patent laws, rules and procedures as related in the MPEP, which of the following is the most correct reply to overcome the rejection under these circumstances?
(A) An amendment to the claim changing the pulling means to expressly include an attached bar.
(B) Only arguer that the claimed pulling means is not found in the prior art relied-upon reference and therefore the claim is patentable.
(C) An amendment to the specification that adds an attached bar to correspond to the prior art.
(D) An amendment to the claim substituting for the term “means for pulling the door open” the structure of a handle and a knob.
(E) An amendment to the specification that excludes an attached bar as a pulling means.
Y26. 10.03.a.26. When, in accordance with the patent laws, rules and procedures as related in the MPEP, is a supplemental oath or declaration treated as an amendment under 37 CFR 1.312?
(A) When filed in a nonprovisional application after the Notice of Allowance has been mailed.
(B) When filed in a reissue application at any point during the prosecution.
(C) When filed in a nonprovisional application after the payment of the Issue Fee.
(D) When filed in a reissue application after the Notice of Allowance has been mailed.
(E) (A) and (D).
Y27. 10.03.a.28. A registered practitioner files a patent application with the following claim:

1. A plastic insert for the bottom of a shopping cart comprising circular receptacles to receive wine bottles and to maintain them in an upright and stable position even while the shopping cart is moved about a store so that they do not fall and break.
Patent A discloses a plastic insert for the bottom of a shopping cart comprising rectangular receptacles to receive cereal boxes and to maintain them in an upright and stable position even while the shopping cart is moved about a store in order to keep them organized in the cart. Patent A also discloses that the receptacles could be any circular diameter to receive complementary shaped bottles or jars such as to securely hold 2-liter soft drink bottles or mayonnaise jars. A primary examiner rejected the claim as being obvious under 35 USC 103 over Patent A reasoning that Patent A suggests to one of ordinary skill in the art an insert for a shopping cart with circular receptacles for the purpose of stably maintaining any bottle, including wine bottles, while pushing the cart about a store so that the cart remains organized. Assume the examiner has made a sufficient prima facie case of obviousness. Following receipt of the rejection, the practitioner filed a timely reply. The practitioner argued that Patent A does not render obvious the claimed subject matter because there is no suggestion of a plastic insert to keep a wine bottle from falling and breaking in a shopping cart. Which of the following best explains why, in accordance with the patent laws, rules and the procedures as related in the MPEP, the examiner should or should not be persuaded by the practitioner’s argument?

(A) No, because Patent A suggests circular receptacles for any complementary bottle, albeit for a different purpose.
(B) Yes, because there is no suggestion in Patent A that the plastic insert can hold a wine bottle.
(C) Yes, because the claim uses the insert to keep the bottles from falling and breaking while Patent A uses the insert to keep the cart organized.
(D) Yes, because Patent A is more interested in organizing boxes than holding bottles.
(E) Yes, because the prevention from breakage is an unexpected property of the plastic insert.
Y28. 10.03.a.29. In accordance with the patent laws, rules and procedures as related in the MPEP, which of the following statements regarding publications as references is incorrect?

(A) A doctoral thesis indexed and shelved in a library can be sufficiently accessible to the public to constitute prior art as a printed publication.
(B) Evidence showing routine business practices is never sufficient to establish the date on which a publication became accessible to the public.
(C) A paper which is orally presented in a forum open to all interested persons can constitute a “printed publication” if written copies are disseminated without restriction.
(D) Documents distributed only internally within an organization, which has an existing policy of confidentiality or agreement to remain confidential are not “printed publications” even if many copies are distributed.
(E) A publication disseminated by mail is not available as prior art until it is received by at least one member of the public.

Y29. 10.03.a.30. A registered practitioner receives an Office action for Application X, a patent application filed after November 29, 1999. The action contains a rejection of all the claims as being obvious under 35 USC 103(a) over Patent A in view of Patent B. Patent A is only available as prior art under 35 USC 102(e). Patent B is available under 35 USC 102(b). The practitioner seeks to disqualify Patent A as prior art under 35 USC 103(c). Which of the following would be sufficient evidence to disqualify Patent A as prior art in accordance with the patent laws, rules and procedures as related in the MPEP?

(A) A declaration signed by an employee of Corporation K, who is not empowered to act on behalf of Corporation K, stating that at the time the invention claimed in Application X was made, the claimed invention and Patent A were commonly owned by Corporation K.
(B) A declaration signed by the inventor of Patent A stating that at the time the invention claimed in Application X was made, the invention claimed in Application X and the invention claimed in Patent A were both subject to an obligation of assignment to the same person.
(C) A statement by the inventor Jones, the sole inventor of Application X, saying that at the present time, Application X and Patent A are commonly owned.
(D) A statement by the practitioner stating that Application X and Patent A were, at the time the invention claimed in Application X was made, commonly owned by the same person.
(E) A statement by inventor Jones, the sole inventor of Application X, saying that at the time the invention claimed in Application X was made, Jones owned a majority interest in Patent A.
Y30. 10.03.p.20. Recommend which of the following rejections under 35 USC 102 in a reexamination proceeding is in accordance with the patent laws, rules and procedures as related in the MPEP.

(A) A rejection under 35 USC 102(a) based on an affidavit that the invention was known or used by others before the invention thereof by the applicant for patent.
(B) A rejection under 35 USC 102(b) based on an affidavit that the invention was in the public use in this country more than one year prior to the date of the application for a patent in the United States.
(C) A rejection under 35 USC 102(e) that the invention was described in a patent by another filed in the United States before the invention thereof by the patent applicant.
(D) A rejection under 35 USC 102(f) based on an affidavit that the applicant did not himself invent the subject matter sought to be patented.
(E) A rejection under 35 USC 102(b) that the invention was on sale in this country, more than one year prior to the date of the application for patent in the United States.
Y31. 10.03.p.21. Which of the following would comply with the patent laws, rules and procedures as related in the MPEP and would be a fully responsive reply to a non-final Office action on the merits rejecting all the claims in the application as being unpatentable under 35 USC 102 and/or 103 over prior art references?

(A) A timely filed and properly signed written reply which does not include an
amendment to the claims, but includes a request for the examiner’s rejections to
be reconsidered supported by arguments replying to every ground of rejection and
distinctly and specifically points out the supposed errors in every rejection. and
pointing out the specific distinctions believed to render the claims patentable over
any applied references.
(B) A timely filed and properly signed written reply which includes an amendment
canceling all the claims in the application and adding new claims, and a request
for the examiner’s rejections to be reconsidered in view of the newly presented
claims.
(C) A timely filed and properly signed written reply which does not include an
amendment to the claims, but does generally alleges that the claims define a
patentable invention.
(D) A timely filed and properly signed written request for continued examination
(RCE).
(E) All of the above.
Y32. 10.03.p.22. Which, if any, of the following statements is in accord with the patent laws, rules and procedures as related in the MPEP?

(A) Where an inventor’s residence is stated correctly in the 37 CFR 1.76 application data sheet and incorrectly in the inventor’s 37 CFR 1.63 oath or declaration, the discrepancy must be corrected by filing a supplemental 37 CFR 1.67 oath or declaration giving the correct residence.
(B) Where two inventors file separate 37 CFR 1.63 oaths or declarations which do not identify both inventors, the USPTO will presume they are joint inventors and will not require new oaths or declarations.
(C) A dependent claim which merely repeats a limitation that appears in the claim on which it depends is properly rejected under the fourth paragraph of 35 USC 112.
(D) In a statement under 37 CFR 1.97(e)(1) specifying that “each item of information contained in the information disclosure statement was first cited in any communication from a foreign patent office in a counterpart foreign application not more than three months prior to the filing of the statement,” the three-month period begins on the date the communication was first received by either a foreign associate or a U.S. registered practitioner.
(E) None of statements (A) to (D) is correct.

Y33. 10.03.p.23. A patent application is filed having one claim (claim 1). The most relevant prior art uncovered by the primary examiner, after searching the claimed subject matter, is a published abstract summarizing the disclosure of a foreign patent document. The abstract is in English, the foreign document is in German. Both the published abstract and the foreign document are prior art under 35 USC 102(b). The published abstract provides an adequate basis for concluding that claim 1 is prima facie obvious under 35 USC 103. Which of the following actions is in accord with the patent laws, rules and procedures as related in the MPEP?

(A) Reject claim 1 under 35 USC 103, based on the abstract, because it is a publication in its own right and provides sufficient basis for a prima facie case of obviousness.
(B) Reject claim 1 under 35 USC 103, based on the abstract, because disclosures that are not in English cannot form the basis of a prior art rejection.
(C) Reject claim 1 under 35 USC 103, based on the German-language patent document, as evidenced by the abstract.
(D) Do not reject claim 1 based on the abstract; instead, obtain a translation of the German-language document and determine whether its full disclosure supports a rejection under 35 USC 102(b) or 103.
(E) Do not reject the claims based on the abstract because an abstract can never provide sufficient disclosure to be enabling.

Y34. 10.03.p.24. Applicant filed a provisional patent application in the USPTO under 35 USC 111(b) on Tuesday, November 30, 1999. On Tuesday, November 28, 2000, applicant filed a nonprovisional application in the USPTO under 35 USC 111(a) that properly claimed priority under 35 USC 119(e) to the filing date of the provisional application. On Wednesday, November 29, 2000, applicant filed an international application for patent in the USPTO under the Patent Cooperation Treaty that designated the United States and properly claimed priority to both the provisional and the nonprovisional applications. On Friday, July 28, 2001, applicant filed a national stage application in the USPTO under 35 USC 371, providing all of the requirements under 35 USC 371 and properly claiming benefit to the filing date of the provisional application under 35 USC 119(e) and the nonprovisional application under 35 USC 120. The national stage application was published on Tuesday, January 30, 2002 and issued as a patent on Tuesday, February 4, 2003. Assuming no patent term extension or adjustment, the patent term ends on the date that is 20 years from which of the following dates in accordance with the patent laws, rules and procedures as related in the MPEP?

(A) Tuesday, November 30, 1999
(B) Tuesday, November 28, 2000
(C) Wednesday, November 29, 2000
(D) Friday, July 28, 2001
(E) Tuesday, February 4, 2003
Y35. 10.03.p.25. A registered practitioner files a nonprovisional utility application in 2000. In 2002, the practitioner files a continuation-in-part application and claims benefit of the filing date of the 2000 application for the 2002 application. Thereafter, the practitioner amends the 2002 application to include claims that were not present in either the originally filed 2000 application or the originally filed 2002 application. The primary examiner properly concludes that the added claims are not supported by the original disclosure in either application. Which of the following is in accord with the patent laws, rules and procedures as related in the MPEP?

(A) The added claims are rejected for lack of written description under 35 USC 112, first paragraph.
(B) The added claims are rejected as new matter under 35 USC 132.
(C) The added claims are denied benefit of the filing date of the 2000 application.
(D) (A) and (B).
(E) (A) and (C).

Y36. 10.03.p.29. On Thursday, February 6, 2003, applicant files an application for a design patent in Country X, which issues the patent on the filing date. In accordance with the patent laws, rules and the procedures as related in the MPEP, what is the last date applicant can file a U.S. design application to avoid any loss of patent rights?
(A) Friday, February 6, 2004 (assume not a Federal holiday).
(B) Thursday, February 5, 2004 (assume not a Federal holiday).
(C) Wednesday, August 6, 2003.
(D) Wednesday, May 6, 2003.
(E) None of the above are correct.

Y37. 10.03.p.28. A patent application is filed disclosing and claiming a system for detecting expired parking meters. The specification fully supports the original, sole claim. The application discloses that the “electronics control unit” contains a comparator and an alarm. The application includes several drawings. One of the drawings shows a block diagram of the system, illustrating the electronics control unit as a box, labeled “electronics control unit.” The sole claim of the application is as follows:

The claim. A system for detecting expired parking meters, comprising: a timer mechanism; an infrared sensor for detecting the presence of a parked vehicle; and an electronics control unit, including a comparator and an alarm, coupled to the infrared sensor and the timer mechanism. A final Office action, dated February 3, 2004, indicates that the sole claim contains allowable subject matter, but includes an objection to the specification, on the grounds that the subject matter of the electronics control unit, though described in a sufficiently specific and detailed manner in the original specification, was required to be shown in the drawings under 37 CFR 1.83. The Office action did not set a period for reply. Determine which of the following actions, if any, comports with the patent laws, rules and procedures as related in the MPEP for overcoming the objection.

(A) On April 1, 2004, a Notice of Appeal is filed together with appropriate fees, and a brief pointing out that a patent should issue since the subject matter of the electronics control unit was adequately described in the original specification.
(B) On April 1, 2004, a drawing is filed in the USPTO illustrating only the comparator and alarm of the electronics control unit that was described in the original specification.
(C) On April 1, 2004, a Notice of Appeal of appeal is filed together with appropriate fees, and a brief pointing out that the addition of a drawing showing the electronics control unit would not constitute addition of new matter since the electronics control unit was adequately described in the original specification.
(D) On September 1, 2004, a petition is filed urging that no further drawing should be required because the subject matter of the electronics control unit, for purposes of the application, was adequately disclosed in the block diagram drawing.
(E) None of the above.

Y38. 10.03.p.30. Co-inventors Smith and Jones filed an application for a patent on a cell phone, on May 15, 2002. They received a first Office action from a primary examiner rejecting the claims under 35 USC 102(a) over a publication by Bell and Watson, published on April 5, 2002, describing a cell phone having all the same features as is claimed in the patent application. In reply, the co-inventors each submitted a declaration under 37 CFR 1.131 stating that they had actually reduced the invention to practice no later than March 13, 2002. However, the declarations failed to include two claimed features. Neither the particular antenna needed to enable the cell phone could receive transmissions from the local cellular transmitting tower, nor a detachable carrying strap was included in the declarations. As evidence of their prior reduction to practice, Smith and Jones submitted their co-authored journal article. The journal article contained a figure of the cell phone as described in the declarations. That is, the cell phone shown in the figure of the article lacked an antenna and a detachable strap. The article was received by the journal on March 13, 2002, and was published on April 30, 2002. The cell phones shown in the figure in the Bell and Watson publication, and in the Smith and Jones patent application have the particular antenna and a detachable strap. Which of the following actions, if taken by the examiner, would be the most proper in accordance with the patent laws, rules and the procedures as related in the MPEP?
(A) The examiner should maintain the rejection of the claims under 35 USC 102(a) and make the rejection final.
(B) The examiner should withdraw the rejection and look for references which have a publication date prior to May 15, 2001.
(C) The examiner should withdraw the rejection and notify Smith and Jones that their application is in condition for allowance.
(D) The examiner should maintain the rejection, but indicate that the claims would be allowable if Smith and Jones provided an original copy of the figure published in their journal article as factual support for their declarations.
(E) The examiner should maintain the rejection and inform Smith and Jones that the declarations are insufficient because they cannot “swear behind” a reference which is a statutory bar.

Y39. 10.03.p.31. In accordance with the patent laws, rules and procedures as related in the MPEP, for a nonprovisional application to receive a filing date in the USPTO under 37 CFR 1.53(b), all of the following must be filed except:

(A) An oath or declaration executed by applicant pursuant to 37 CFR 1.63.
(B) A specification as prescribed by the first paragraph of 35 USC 112.
(C) A description pursuant to 37 CFR 1.71.
(D) At least one claim pursuant to 37 CFR 1.75.
(E) A drawing when required by 37 CFR 1.81(a).
Y40. 10.03.p.32. Determine which of the following documents, if any, must also contain a separate verification statement in accordance with the patent laws, rules and procedures as related in the MPEP.

(A) A request to correct inventorship in a pending application.
(B) A petition to make an application special.
(C) A claim for foreign priority.
(D) A substitute specification.
(E) None of the above.
Y41. Reported Question. Applicant claims a toy plane whose wings are covered in aluminum foil but whose body isn’t. The spec describes a toy plane comprising wings covered in aluminum foil. Reference discloses a plane that is covered entirely in chewing gum wrapper, which includes aluminum foil and another material. Claim is rejected by the examiner under 102. Applicant timely responds, arguing that covering only the wings in foil provides useful aerodynamic properties, and therefore the claimed invention is distinguishable from the reference. How should the examiner respond?
A) Withdraw the rejection.
B) Make the rejection final.
C) Suggest an interference.
D) Impose a restriction requirement.
E) None of the above.

Test Y Answers
1.A or E 23.E
2.D 24.C
3.E 25.D
4.D 26.D
5.A 27.A
6.C 28.B
7.B 29.B or D
8.C 30.C
9.B 31.A
10.D 32.E
11.A 33.A or D
12.C 34.B
13.E 35.E
14.C 36.C
15.E 37.B
16.A 38.A
17.A 39.A
18.E 40.E
19.A 41.B**
20.E
21.D
22.D
**Y41 Answer
I said the examiner should maintain the rejection b/c the claim is broad enough to include a plane that is covered entirely in aluminum foil (limitations present in the spec will not be read into the claim if not expressly recited A patent of a paper airplane with aluminum foil (I think) wings. The prior art is a plane covered with aluminum I think. Is it patentable? similar to Oct 2003: PM 46 (airplane with foil on wings, prior art has airplane covered completely in chewing gum wrapper)
I recently reviewed this answer at the PTO. Yes, the examiner should maintain the rejection in view of practitioner’s arguments. The answer description points out that the claim is open-ended (“…comprising wings covered in aluminum foil”). Thus, the prior art anticipates the claim.

X27 – Credit given for all Answers . For better understanding of a problem like this:
706.02(b) states:
A rejection based on 35 U.S.C. 102(e) can be overcome by:
(A) Persuasively arguing that the claims are patentably distinguishable from the prior art;
(B) Amending the claims to patentably distinguish over the prior art;
(C) Filing an affidavit or declaration under 37 CFR 1.132 showing that the reference invention is not by “another.” See MPEP § 715.01(a), § 715.01(c), and § 716.10;
(D) Filing an affidavit or declaration under 37 CFR 1.131 showing prior invention, if the reference is not a U.S. patent or a U.S. patent application publication claiming the same patentable invention as defined in 37 CFR 41.203(a). See MPEP § 715 for more information on 37 CFR 1.131 affidavits. When the claims of the reference U.S. patent or U.S. patent application publication and the application are directed to the same invention or are obvious variants, an affidavit or declaration under 37 CFR 1.131 is not an acceptable method of overcoming the rejection. Under these circumstances, the examiner must determine whether a double patenting rejection or interference is appropriate. If there is a common assignee or inventor between the application and patent, a double patenting rejection must be made. See MPEP § 804. If there is no common assignee or inventor and the rejection under 35 U.S.C. 102(e) is the only possible rejection, the examiner must determine whether an interference should be declared. See MPEP Chapter 2300 for more information regarding interferences;
(E) Perfecting a claim to priority under 35 U.S.C. 119(a)-(d) within the time period set in 37 CFR 1.55(a)(1) or filing a grantable petition under 37 CFR 1.55(c). See MPEP § 201.13. The foreign priority filing date must antedate the reference and be perfected. The filing date of the priority document is not perfected unless applicant has filed a certified priority document in the application (and an English language translation, if the document is not in English) (see 37 CFR 1.55(a)(3)) and the examiner has established that the priority document satisfies the enablement and description requirements of 35 U.S.C. 112, first paragraph; or
(F) Perfecting benefit under 35 U.S.C. 119(e) or 120, within the time periods set in 37 CFR 1.78(a) or filing a grantable petition under 37 CFR 1.78(a), by amending the specification of the application to contain a specific reference to a prior application or by filing an application data sheet under 37 CFR 1.76 which contains a specific reference to a prior application in accordance with 37 CFR 1.78(a), and by establishing that the prior application satisfies the enablement and written description requirements of 35 U.S.C. 112, first paragraph. See MPEP § 201.11 and § 706.02.

Y1. 4.03.a.33. A claim in a pending patent application for an electric toothbrush is rejected under 35 USC 102 as being anticipated by a U.S. Patent, which was issued to Lancer, the soel name inventor, for a similar electric toothbrush. The Lancer patent was issue one day before the filing date of the application in question. The claim in the pending application contains a limitation specifying the location of an on/off switch. In accordance with USPTO rules and procedures set forth in the MPEP, which of the following arguments, if true, would overcome the rejection?
(A) The Lancer patent discloses and claims an electric toothbrush, but does not mention whether its toothbrush includes a power supply.
(B) Evidence is submitted to show the electric toothbrush claimed in the application is commercially successful.
(C) The Lancer patent teaches away from the bristles of the claimed toothbrush.
(D) Lancer is one of three named inventors of the claimed toothbrush in the pending application.
(E) The on/off switch in the Lancer patent is on a different side of the body than that recited in the claim for the electric toothbrush in the patent application.
Y2. 10.03.a.33. Which of the following phrases taken from an independent claim has an antecedent basis problem according to the patent laws, rules and the procedures as related in the MPEP?

(A) “the center of the circle having …,” where the claim does not previously recite that the circle has a “center.”
(B) “the major diameter of the ellipse being …,” where the claim does not previously recite that the ellipse has a “major diameter.”
(C) “the outer surface of the sphere being …,” where the claim does not previously recite that the sphere has an “outer surface.”
(D) “the lever of the machine being located …,” where the claim does not previously recite a “lever.”
(E) “the area of the rectangle being …,” where the claim does not previously define an “area.”
Y3. 4.03.p.11. A registered practitioner properly recorded an assignment document for application A identifying XYZ Company as the assignee. The document assigns to XYZ Company the “subject matter claimed in Application A.” A proper restriction requirement was made by a primary examiner in application A between two distinct inventions, and the practitioner elected to prosecute one of the inventions. Application A was prosecuted, and later became abandoned. Before the abandonment date of application A, the practitioner filed a complete application B as a proper divisional application of application A. Application B claimed the nonelected invention of Application A, and was published as a U.S. application publication. XYZ Company remains the assignee of application A. What must the practitioner do in accordance with the USPTO rules and the procedures set forth in the MPEP to ensure that XYZ Company is listed as the assignee on the face of any patent issuing from application B?

(A) File a proper assignment document in application B identifying XYZ Company as the assignee.
(B) File a proper assignment document in application B identifying XYZ Company as the assignee, and confirm that USPTO’s bibliographic data for application B identifies XYZ Company as the assignee by checking the filing receipt for application B, the U.S. application publication of application B, or the USPTO’s Patent Application Information Retrieval (PAIR) system data for application B, depending on when the practitioner filed the assignment document in application B.
(C) Confirm that XYZ Company is identified as the assignee on the U.S. application publication of application B.
(D) File a proper assignment document in application B identifying XYZ Company as the assignee, and confirm that XYZ Company is identified as the assignee on the U.S. application publication of application B.
(E) Upon allowance of application B, the practitioner must identify XYZ Company as the assignee in the appropriate space on the Issue Fee Transmittal form for specifying the assignee for application B.

Y4. 4.03.a.25. In accordance with USPTO rules and procedures set forth in the MPEP, which of the following is not a proper basis on which the Board of Patent Appeals and Interferences may remand a case to the examiner?

(A) Remand for a fuller description of the claimed invention.
(B) Remand for a clearer explanation of the pertinence of the references.
(C) Remand for a selection by the primary examiner of a preferred or best ground of rejection when multiple rejections of a cumulative nature have been made by the examiner.
(D) Remand to the primary examiner with instructions to consider an affidavit not entered by the examiner which was filed after the final rejection but before the appeal.
(E) Remand to the primary examiner to prepare a supplemental examiner’s answer in response to a reply brief.

Y5. 10.03.a.14. The specification of a patent application contains limited disclosure of using antisense technology in regulating three particular genes in E. coli cells. The specification contains three examples, each applying antisense technology to regulating one of the three particular genes in E. coli cells. Despite the limited disclosure, the specification states that the “the practices of this invention are generally applicable with respect to any organism containing genetic material capable of being expressed such as bacteria, yeast, and other cellular organisms.” All of the original claims in the application are broadly directed to the application of antisense technology to any cell. No claim is directed to applying antisense technology to regulating any of the three particular genes in E. coli cells. The claims are rejected under 35 USC 112, first paragraph, for lack of enablement. In support of the rejection, a publication is cited that correctly notes antisense technology is highly unpredictable, requiring experimentation to ascertain whether the technology works in each type of cell. The publication cites the inventor’s own articles (published after the application was filed) that include examples of the inventor’s own failures to control the expressions of other genes in E. coli and other types of cells. In accordance with the patent laws, rules and procedures as related in the MPEP, the rejection is:

(A) appropriate because the claims are not commensurate in scope with the breadth of enablement inasmuch as the working examples in the application are narrow compared to the wide breadth of the claims, the unpredictability of the technology, the high quantity of experimentation needed to practice the technology in cells other than E. coli.
(B) appropriate because the claims are not commensurate in scope with the breadth of the enablement inasmuch no information is provided proving the technology is safe when applied to animal consumption.
(C) inappropriate because the claims are commensurate in scope with the breadth of enablement inasmuch as the specification discloses that the “the practices of this invention are generally applicable with respect to any organism containing genetic material capable of being expressed.”
(D) inappropriate because the claims are commensurate in scope with the breadth of enablement inasmuch as the claims are original, and therefore are self-supporting.
(E) inappropriate because the claims are commensurate in scope with the breadth of the enablement inasmuch as the inventor is not required to theorize or explain why the failures reported in the article occurred.

Y6. 10.03.p.17. A patent application was filed on November 1, 2000 for the invention of J.J. Smithy. The application has no priority or benefit claims to any other application. Claims in the application are separately rejected under 35 USC 102 as being anticipated by each of the following references. Which reference can be properly applied under 35 U.S.C. 102(e) in accordance with the patent laws, rules and procedures as related in the MPEP?

(A) A WIPO publication of an international application under PCT Article 21(2), which has an international filing date of October 3, 2000, was published in English and designated the United States.
(B) A U.S. patent by J.J. Smithy that has a filing date of September 5, 2000.
(C) A U.S. application publication under 35 U.S.C. 122(b) by inventor Jones that was filed on August 8, 2000.
(D) A journal article by Marks published on October 11, 2000.
(E) All of the above.

Y7. 4.03.a.30. A patent application includes the following Claim 1:
Claim 1. A method of making an electrical device comprising the steps of:

(i) heating a base made of carbon to a first temperature in the range of 1875°C to 1925°C;
(ii) passing a first gas over said heated base, said first gas comprising a mixture of hydrogen, SiCl4, phosphorus, and methane, whereby said first gas decomposes over said heated base and thereby forms a first deposited layer of silicon, phosphorus and carbon on said heated base;
(iii) heating said base having said deposited layer to a second temperature of approximately 1620°C; and
(iv) passing a second gas over said base heated to said second temperature, said second gas consisting of a mixture of hydrogen, SiCl4, AlCl3, and methane, whereby said second gas decomposes over said heated base to form a second deposit layer adjacent said first layer, said second layer comprising silicon, aluminum and carbon.
Assuming proper support in the specification, which of the following claims, if presented in the same application, is a proper claim in accordance with the USPTO rules and the procedures set forth in the MPEP?

(A) Claim 2. The method of claim 1, wherein said first temperature is in the range of 1800°C to 2000°C.
(B) Claim 3. The method of claim 1, wherein said first gas further comprises an inert gas.
(C) Claim 4. The method of claim 1, wherein said second gas further comprises Argon.
(D) Claim 5. The method of claim 1, wherein said first gas is an inert gas such as Argon.
(E) Claim 6. The method of claim 1, wherein said second gas consists of a mixture of hydrogen, SiCl4 and AlCl3 only.

Y8. 4.03.p.23. The claims in a patent application having been twice or finally rejected, the applicant files a timely Notice of Appeal on January 2, 2003. In accordance with USPTO rules and procedures set forth in the MPEP, which of the following situations should the USPTO not notify the applicant that the Appeal Brief is defective and allow him an opportunity to correct the deficiency?

(A) The Appeal Brief is filed on July 10, 2003, without a request for extension of time under 37 CFR 1.136.
(B) The Appeal Brief is submitted unsigned.
(C) The Appeal Brief states that the claims do not stand or fall together, and presents argument as to why the claims are separately patentable, but the primary examiner does not agree with the applicant’s argument.
(D) The Appeal Brief does not state whether the claims stand or fall together, but presents arguments why the claims subject to the same rejection are separately patentable.
(E) The Appeal Brief does not address one of the grounds of rejection stated by the primary examiner.
Y9. 10.03.a.32. With respect to the examiner’s burden in making an enablement rejection under 35 USC 112, first paragraph, which of the following statements is or are in accordance with the patent laws, rules and procedures as related in the MPEP?

(1) The examiner may properly make an enablement rejection before construing the claims.
(2) The examiner has the initial burden to establish a reasonable basis to question the enablement provided for the claimed invention.
(3) The examiner need not give reasons for the uncertainty of the enablement when there is no evidence of operability beyond the disclosed embodiments.

(A) Statement (1) only
(B) Statement (2) only
(C) Statement (3) only
(D) Statements (1) and (2)
(E) Statements (1) and (3)
Y10. 10.03.p.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.

Y11. 10.03.a.15. A utility application filed in May 2001 has been prosecuted through a second action final rejection. In the final rejection some claims were allowed and other claims were finally rejected. Which of the following accords with the patent laws, rules and the procedures as related in the MPEP for a proper reply to a second action final rejection in the utility application?

(A) An amendment canceling all rejected claims and complying with 37 CFR 1.116.
(B) Only a Notice of Appeal.
(C) The appropriate fee for a request for continued examination (RCE).
(D) A continued prosecution application (CPA) under 37 CFR 1.53(d).
(E) All of the above.

Y12. 10.03.p.18. A registered practitioner filed a design patent application on December 30, 2003. The application was filed with an inventor-executed declaration naming Jon Jones as the sole inventor, who has not assigned the invention and is not under an obligation to assign his invention. The filing receipt was recently received, indicating that the application will be published on Thursday, July 1, 2004. In reviewing the filing receipt the practitioner realizes that the typed name of the inventor contained a typographical error (an “h” was missing) and that the correct spelling was John Jones. Which of the following would be the course of action at the least expense to correct the error in accordance with the patent laws, rules and procedures as related in the MPEP?

(A) The practitioner should file a request under 37 CFR 1.48 to correct the inventorship of the application with a new declaration under 37 CFR 1.63 signed by John Jones (with the correct spelling of this name), a statement by Mr. Jones as to how the error occurred and that the error was without deceptive intention, and the processing fee set forth in 37 CFR 1.17(q).
(B) The practitioner should file a petition under 37 CFR 1.182 and the petition fee set forth in 37 CFR 1.17(h), requesting correction of the spelling of the inventor’s name.
(C) The practitioner should file a request for a corrected filing receipt and a separate letter to the Office explaining that the declaration contains a typographical error, that the correct spelling of the inventor’s name is John Jones, and requesting correction of the Office records.
(D) The practitioner should expressly abandon the application, and file a continuation with a new declaration with the correct spelling.
(E) The practitioner should call the examiner and tell the examiner that the inventor’s name is wrong, and ask for the examiner to change the name on the declaration.

Y13. 4.03.a.31. In accordance with the USPTO rules and the procedures set forth in the MPEP, which of the following documents, if any, must also contain a separate verification statement?

(A) Small entity statements.
(B) A petition to make an application special.
(C) A claim for foreign priority.
(D) An English translation of a non-English language document.
(E) None of the above.
Y14. 10.03.a.31. Reexamination has been ordered following receipt of a request for reexamination of U.S. Patent X, filed by the patentee. Patent X contains independent claims 1 through 4, each directed to a hydrocyclone separator apparatus. They are the only claims that were ever presented during prosecution of the application that matured into Patent X. In the first Office action during reexamination, claims 1 through 4 are rejected as being obvious under 35 USC 103 over U.S. Patent Z. The apparatus is used for separating material, including fibers suspended in a liquid suspension, into a light fraction containing the fibers, and a heavy fraction containing rejects. Assume there are no issues under 35 USC 102, 103, or 112, and that any dependent claim is properly dependent. Recommend which of the following claims, if any, would be subject to rejection under 35 USC 305 for improperly enlarging the scope of the original claim in accordance with the patent laws, rules and procedures as related in the MPEP.

(A) Claim 5. A hydrocyclone separator apparatus according to claim 4, wherein said blades are configured in the form of generally plane surfaces curved in one plane only.
(B) Claim 5. A hydrocyclone separator apparatus according to claim 4, wherein the outlet duct is in the form of two frustro-conical portions joined at their narrow ends.
(C) Claim 5. A method of separating material including fibers suspended in a liquid suspension comprising the steps of separating the material into a light fraction containing the fibers and a heavy fraction containing rejects, and converting the light fraction into a pulp and paper stock suspension.
(D) Claim 5. A hydrocyclone separator apparatus according to claim 4, wherein the separator chamber is conical in shape having at the narrow end an outlet for the heavy fraction and at its wide end an outlet for the light fraction.
(E) None of the above.
Y15. 10.03.p.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.
Y16. 4.03.a.29. In accordance with the USPTO rules and the procedures set forth in the MPEP, which of the following papers 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.
Y17. 10.03.a.16. Tribell files a patent application for her aroma therapy kit on November 29, 1999, which issues as a patent August 7, 2001. She tries to market her kit but all her prospects are concerned that her patent claims are not sufficiently broad. On September 5, 2001, Tribell asks a registered practitioner for advice on what to do to improve her ability to market her aroma therapy kit. At the consultation the practitioner learns that in the original patent application, Tribell had a number of claims which were subjected to a restriction requirement, but were nonelected and withdrawn from further consideration. The practitioner also determines that the claims in the patent obtained by Tribell were narrower than the broader invention disclosed in the specification, and the cited references may not preclude patentability of the broader invention. Which of the following is the best course of action to pursue in accordance with the patent laws, rules and procedures as related to the MPEP?
(A) Tribell should file a reissue application under 35 USC 251 within two years of the issue of the patent, broadening the scope of the claims of the issued patent.
(B) Tribell should file a reissue application under 35 USC 251 any time during the period of enforceability of the patent to broaden the scope of the claims of the issued patent, and then file a divisional reissue application of the first reissue application on the nonelected claims that were subjected to a restriction requirement in the nonprovisional application which issued as a patent.
(C) Tribell should simultaneously file two separate reissue applications under 35 USC 251, one including an amendment of broadening the claims in the original patent, and the other including the nonelected claims that were subjected to a restriction in the nonprovisional application which issue as a patent.
(D) Tribell should immediately file a divisional application under 37 CFR 1.53(b) including the nonelected claims that were subjected to a restriction requirement in the original application.
(E) Tribell should immediately file a reissue application under 35 USC 251, including the nonelected claims that were subjected to a restriction requirement in the original application.
Y18. 10.03.p.19. The claims in an application are rejected under 35 USC 103 as obvious over prior art reference A in view of prior art reference B. All of the following statements are in accord with the patent laws, rules and procedures as related in the MPEP except:

(A) Where the combination of prior art references provides motivation to make the claimed invention to achieve the same advantage or result discovered by the applicant, the references do not have to expressly suggest the combination of references.
(B) The rationale to modify or combine the prior art references may be reasoned from knowledge generally available to one of ordinary skill in the art, established scientific principles, or legal precedent established by prior case law.
(C) In considering the disclosure of the prior art references, it is proper to take into account the specific teachings of the references, as well as the inferences that one skilled in the art could reasonably draw from the specific teachings.
(D) An examiner may take official notice of facts outside the record that are capable of instant and unquestionable demonstration as being “well known” prior art or common knowledge in the art.
(E) To rely on equivalence as a rationale supporting an obviousness rejection under 35 USC 103 an examiner may base the rejection on the mere fact that the components at issue are functional or mechanical equivalents.
Y19. 10.03.a.17. Inventor files an application containing the following original Claim 1:

1. A widget comprising element A, and element B.

In a first Office action on the merits, a primary examiner rejects claim 1 under 35 USC 103 as being obvious over reference X. Reference X explicitly discloses a widget having element A, but it does not disclose element B. The examiner, however, takes official notice of the fact that element B is commonly associated with element A in the art and on that basis concludes that it would have been obvious to provide element B in the reference X widget. In reply to the Office action, the registered practitioner representing the applicant makes no amendments, but instead requests reconsideration of the rejection by demanding that examiner show proof that element B is commonly associated with element A in the art. Which of the following actions, if taken by the examiner in the next Office action would be in accord with the patent laws, rules and procedures as related in the MPEP?

I. Vacate the rejection and allow the claim.
II. Cite a reference that teaches element B is commonly associated with element A in the art and make the rejection final.
III. Deny entry of applicant’s request for reconsideration on the ground that it is not responsive to the rejection and allow applicant time to submit a responsive amendment.

(A) I and II only.
(B) II only.
(C) II and III only.
(D) I, II, and III.
(E) I and III only.
Y20. 10.03.a.19. In accordance with patent laws, rules and procedures as related in the MPEP, a rejection under 35 USC 102 can be overcome by demonstrating:

(A) the reference is nonanalogous art.
(B) the reference teaches away from the claimed invention.
(C) the reference disparages the claimed invention.
(D) (A), (B) and (C).
(E) None of the above.
Y21. 10.03.a.20. On January 3, 2003, a registered practitioner filed a continuation application that includes a benefit claim to a prior-filed application. The practitioner simultaneously filed in the prior filed application an express abandonment in favor of a continuing application. The prior application contained five drawing figures described in the specification. However, the continuation application contains only four of the five drawing figures. The specification of the continuation application did not include a complete description of the missing drawing figure. A postcard from the USPTO, listing the contents of the continuation application, contains a note that only four drawing figures were received. The practitioner inadvertently omitted one of the drawing figures mentioned in the specification when he filed the continuation application. The missing drawing figure shows a claimed feature of the invention. On February 10, 2003, the practitioner received a Notice of Omitted Item(s) properly according a filing date of January 3, 2003 for the continuation application without the missing drawing figure and notifying the applicant that the drawing is missing. Which of the following procedures for filing the missing drawing would comply with the patent laws, rules and procedures as related in the MPEP for according the continuation application a January 3, 2003 filing date with the five drawing figures that were present in the application?

(A) The practitioner files the missing drawing figure in response to the Notice of Omitted Item(s) within the time period set forth in the notice.
(B) The practitioner files the missing drawing figure and an amendment to the specification to add a complete description of the missing drawing figure in response to the Notice of Omitted Item(s) within the time period set forth in the notice.
(C) The practitioner files an amendment to cancel the description of the missing drawing figure from the specification of the continuation application.
(D) If the continuation application as originally filed includes an incorporation by reference of the prior-filed application to which the benefit is claimed, the practitioner can file the missing drawing figure any time prior to the first Office action.
(E) The practitioner files the missing drawing figure accompanied by a petition under 37 CFR 1.53(e) with the petition fee set forth in 37 CFR 1.17(h) only alleging that the drawing figure indicated as omitted was in fact deposited with the USPTO with the application papers.

X26. 10.03.p.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.
X27. 10.03.a.39. On May 1, 2001, a complete patent application was filed with the USPTO naming H as the sole inventor. A primary examiner rejected all the claims in the application under 35 USC 102(e) as being anticipated by a U.S. Patent granted to inventors H and S. The patent was granted on September 25, 2001 on an application filed on December 7, 2000. The claims of the patent application and U.S. patent define the same patentable invention as defined in 37 CFR 1.601(n). The U.S. patent and the application have common ownership. Which of the following, if properly submitted by applicant, would overcome the rejection in accordance with the patent laws, rules and procedures as related in the MPEP?

(A) File a terminal disclaimer in accordance with 37 CFR 1.321(c).
(B) File a declaration under 37 CFR 1.131 to establish the inventor invented the subject matter of the rejected claim prior to the effective date of the reference X.
(C) File a declaration stating that the application and patent are currently owned by the same party, and that the inventor named in the application is the prior inventor under 35 USC 104.
(D) (A) and (C).
(E) All of the above.
X28. 4.03.p.40. Which of the following is not a proper incorporation by reference in an application prior to allowance according to the USPTO rules and the procedures set forth in the MPEP?
(A) Incorporating material necessary to describe the best mode of the claimed invention by reference to a commonly owned, abandoned U.S. application that is less than 20 years old.
(B) Incorporating non-essential material by reference to a prior filed, commonly owned pending U.S. application.
(C) Incorporating material that is necessary to provide an enabling disclosure of the claimed invention by reference to a U.S. patent.
(D) Incorporating non-essential material by reference to a hyperlink.
(E) Incorporating material indicating the background of the invention by reference to a U.S. patent which incorporates essential material.
X29. 4.03.a.40. In accordance with USPTO rules and the procedure set forth in the MPEP, which one of the following is not required for a provisional application filed in the USPTO?

(A) A specification.
(B) A drawing as prescribed by 35 USC 113.
(C) An application fee.
(D) A claim.
(E) A cover sheet complying with the rule.

X30. 4.03.a.19. Which of the following requests by the registered practitioner of record for an interview with an examiner concerning an application will be granted in accordance with proper USPTO rules and procedure?

(A) A request for an interview in a substitute application prior to the first Office action, for the examiner and attorney of record to meet in the practitioner’s office without the authority of the Commissioner.
(B) A request for an interview in a continued prosecution application prior to the first Office action, to be held in the examiner’s office.
(C) A request for an interview in a non-continuing and non-substitute application, prior to the first Office action to be held in the examiner’s office.
(D) All of the above.
(E) None of the above.

X31. 10.03.p.11. A U.S. patent was granted on May 8, 2001 to five inventors. The five inventors assigned their entire patent rights to Q Company. Q Company needs to file a reissue application to broaden the claims of the patent. The registered practitioner preparing the application has been unable to locate any of the five inventors to sign the reissue oath or declaration. Today is May 8, 2003. Which of the following should the practitioner do to enable the applicant to broaden the patent claims in accordance with the patent laws, rules and procedures as related in the MPEP?

(A) Wait to file the reissue application until the first day the signatures of all five inventors can be obtained. At that time, pay the filing fee and file a petition seeking May 8, 2003 as the filing date. File with the petition a showing of the unavailability of all inventors until the filing of the application.
(B) Wait to file the reissue application until the signatures of at least three inventors can be obtained. At that time, file a petition seeking May 7, 2003 as the filing date accompanied by a showing of the unavailability of all inventors on May 8th. Payment of the filing fees may be postponed until receipt of a decision on the petition.
(C) File the reissue application on May 8, 2003, presenting only the claims in the patent, and include a listing of inventors, but not pay the filing fee at the time of filing.
(D) Wait to file the reissue application until the signature of one of the inventors has been obtained since at least one inventor is needed to show a lack of deceptive intent on the part of the applicants.
(E) File the complete reissue application complying with 37 CFR 1.173(a) and 1.53(b) with an unexecuted reissue declaration listing the names of all the inventors with at least one broadening claim on May 8, 2003.

X32. 4.03.a.39. Applicant received a Final Rejection with a mail date of Tuesday, February 29, 2000. The Final Rejection set a 3 month shortened statutory period for reply. Applicant files an Amendment and a Notice of Appeal on Monday, March 27, 2000. The examiner indicates in an Advisory Action that the Amendment will be entered for appeal purposes, and how the individual rejection(s) set forth in the final Office action will be used to reject any added or amended claim(s). The mail date of the examiner’s Advisory Action is Wednesday, May 31, 2000. In accordance with the USPTO rules and the procedures set forth in the MPEP, which of the following dates is the last date for filing a Brief on Appeal without an extension of time?

(A) Saturday, May 27, 2000.
(B) Monday, May 29, 2000 (a Federal holiday, Memorial Day).
(C) Tuesday, May 30, 2000.
(D) Wednesday, May 31, 2000.
(E) Tuesday, August 29, 2000.

X33. 4.00.p.38. In accordance with USPTO rules and the procedures set forth in the MPEP, an amendment filed with or after a notice of appeal under 37 CFR 1.191(a), but before jurisdiction has passed to the Board of Patent Appeals and Interferences, should be entered by the primary examiner where the amendment:

(A) requests unofficial consideration by the examiner.
(B) is less than six pages long.
(C) removes issues from appeal.
(D) presents more specific claims, because it is believed that they may have a better chance of being allowable even though the claims do not adopt the examiner’s suggestions.
(E) introduces new issues, allowing the examiner to rethink his position.

X34. 10.03.a.38. Prosecution before the primary examiner results in the rejection of claim 1. Claim 2 was objected to as being allowable except for its dependency from claim 1. Independent claim 3 has been allowed. The rejection of claim 1 is properly appealed to the Board of Patent Appeals and Interferences. The Board properly affirms the rejection of claim 1. Appellant has filed no response to the decision of the Board, the appellant has taken no action, and the time for filing an appeal to the court or a civil action has expired. In accordance with the patent laws, rules and procedures as related in the MPEP, which of the following actions is the most appropriate response by the examiner?

(A) The examiner should hold the application abandoned.
(B) The examiner should cancel claim 1, convert dependent claim 2 into independent form by examiner’s amendment, and allow the application.
(C) The examiner should set a 1-month time limit in which appellant may rewrite the dependent claim in independent form.
(D) The examiner should cancel claims 1 and 2 and allow the application with claim 3 only.
(E) None of the above.
X35. 10.03.p.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.
X36. 4.03.a.21. Assuming that any rejection has been properly made final, which of the following statements is not in accordance with the USPTO rules and the procedures set forth in the MPEP?

(A) An objection and requirement to delete new matter from the specification is subject to supervisory review by petition under 37 CFR 1.181.
(B) A rejection of claims for lack of support by the specification (new matter) is reviewable by appeal to the Board of Patent Appeals and Interferences.
(C) If both the claims and the specification contain the same new matter, and there has been both a rejection and objection by the primary examiner, the new matter issue should be decided by petition, and is not appealable.
(D) If both the claims and the specification contain the same new matter, and there has been both a rejection and objection by the examiner, the new matter issue is appealable, and should not be decided by petition.
(E) None of the above.

X37. 4.03.p.19. In connection with the utility of an invention described in a patent application, which of the following conforms to the USPTO rules and the procedure set forth in the MPEP?

(A) A deficiency under 35 USC 101 also creates a deficiency under 35 USC 112, first paragraph.
(B) To overcome a rejection under 35 USC 101, it must be shown that the claimed device is capable of achieving a useful result on all occasions and under all conditions.
(C) A claimed invention is properly rejected under 35 USC 101 as lacking utility if the particular embodiment disclosed in the patent lacks perfection or performs crudely.
(D) To overcome a rejection under 35 USC 101, it is essential to show that the claimed invention accomplishes all its intended functions.
(E) A claimed invention lacks utility if it is not commercially successful.

X38. 10.03.a.11. Application A was filed after November 29, 2000. Reference X and application A were commonly owned at the time the invention of application A was made. In accordance with the patent laws, rules and procedures as related in the MPEP the prior art exclusion of 35 USC 103(c) can be properly invoked to obviate which of the following rejections?

(A) A rejection under 35 USC 102(e) based on reference X, if reference X is prior art only under 35 USC 102(e).
(B) A double patenting rejection based on reference X, if reference X is available as prior art only under 35 USC 102(e).
(C) A rejection under 35 USC 103(a) based on reference X, if references X is available as prior art only under 35 USC 102(e).
(D) (B) and (C).
(E) All of the above.
X39. 10.03.p.13. On January 2, 2001, a registered practitioner filed a patent application with the USPTO for inventor Beck. The application includes a specification and a single claim to the invention which reads as follows:
1. Mixture Y made by the process Q1.
In the specification, Mr. Beck discloses that mixture Y has a melting point of 150° F. On June 2, 2001, the practitioner received an Office action from the primary examiner rejecting the claim. The claim is rejected under 35 USC 102/103 as being clearly anticipated by or obvious over Patent A. The examiner states “Patent A teaches mixture Y but made by a different process Q2.” Beck believes he is entitled to a patent to mixture Y. In accordance with the patent laws, rules and procedures as related in the MPEP, which of the following would be the best reply to the rejection of his claim?

(A) An argument that the claimed product has an unexpectedly low melting point of 150° F, supported by an affidavit showing that the mixture Y made by process Q2 exhibits a melting point of 300° F.
(B) An argument that the processes used by applicant and patent A are different, supported by a third-party declaration stating only that the processes are different.
(C) An argument that the claimed product has an unexpectedly low melting point of 150° F, supported by a third-party declaration stating only that the products are different.
(D) An argument that the processes used by applicant and patent A are different, supported by an affidavit showing that the mixture Y made by process Q2 exhibits a melting point of 300° F.
(E) An argument that the claimed product has an unexpectedly low melting point of 150° F because the claimed mixture Y has a melting point of 150° F and the mixture Y of patent A has a melting point of 300° F.
X40. 4.03.A.37. Applicant properly appealed the primary examiner’s final rejection of the claims to the Board of Patent Appeals and Interferences (Board). Claims 1 to 10 were pending in the application. The examiner did not reject the subject matter of claims 7 to 10, but objected to these claims as being dependent on a rejected base claim. Claim 1 was the sole independent claim and the remaining claims, 2 through 10, were either directly or indirectly dependent thereon. After a thorough review of Appellant’s brief and the examiner’s answer, the Board affirmed the rejection of claims 1 to 6. In accordance with the USPTO rules and the procedures set forth in the MPEP, which of the following is the appropriate action for the examiner to take upon return of the application to his jurisdiction when the time for appellant to take further action under 37 CFR 1.197 has expired?
(A) Abandon the application since the Board affirmed the rejection of independent claim 1.
(B) Convert the dependent claims 7 to 10 into independent form by examiner’s amendment, cancel claims 1 to 6, and allow the application.
(C) Mail an Office action to applicant setting a 1-month time limit in which the applicant may rewrite dependent claims 7 to 10 in independent form. If no timely reply is received, the examiner should amend the objected to claims, 7 to 10, and allow the application.
(D) Mail an Office action to applicant with a new rejection of claims 7 to 10 based on the Board’s decision.
(E) No action should be taken by the examiner since the Board affirmed the rejection of independent claim 1, the application was abandoned on the date the Board decision was mailed.
X41. 4.03.p.36. Which of the following is not a policy underlying the public use bar of 35 USC 102(b)?

(A) Discouraging the removal, from the public domain, of inventions that the public reasonably has come to believe are freely available.
(B) Favoring the prompt and widespread disclosure of inventions.
(C) Allowing the inventor(s) a reasonable amount of time following sales activity to determine the potential economic value of a patent.
(D) Increasing the economic value of a patent by extending the effective term of the patent up to one year.
(E) Prohibiting the inventor(s) from commercially exploiting the invention for a period greater than the statutorily prescribed time.
X42. 10.03.A.36. A registered practitioner filed a patent application in the Office in 1999. Following examination and a final rejection, the practitioner timely filed a proper notice of appeal and a proper appeal brief in the application wherein claims 1-3 stand rejected, claims 4 and 5, which depend on claim 1, stand objected to as depending from a rejected claim but are otherwise allowable, and claims 6-10 stand allowed. The appeal involves claims 1-3. After the brief was filed but prior to a decision by the Board of Patent Appeals and Interferences, the practitioner filed a request for continued examination (RCE) with a submission in accordance with 37 CFR 1.114 without paying the fee set forth in 37 CFR 1.17(e). In accordance with the patent laws, rules and procedures as related in the MPEP, what effect does the filing of the RCE without the fee set forth in Rule 1.17(e) have on the application under appeal?
(A) The application is abandoned.
(B) The application is still pending and under appeal awaiting a decision by the Board of Patent Appeals and Interferences, because the RCE was improper.
(C) The application is still pending; the appeal is considered withdrawn and the application will be passed to issue with claims 1-3 canceled and claims 4-10 allowed.
(D) The application is still pending; the appeal is considered withdrawn and the application will be passed to issue with claims 1-5 canceled and claims 6-10 allowed.
(E) The appeal is withdrawn; the application is returned to the primary examiner and prosecution is reopened as to claims 1-10.
X43. 10.03.p.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.
X44. 10.03.a.12. Inventors B and C are employed by Corporation D, which authorized registered practitioner E to prepare and file a patent application claiming subject matter invented by B and C. Inventor B signed the oath, an assignment to Corporation D, and a power of attorney authorizing practitioner E to prosecute the application. Inventor C refused to sign the oath and any assignment documents for the application. The employment contract between inventor C and Corporation D contains no language obligating C to assign any invention to Corporation D. A patent application was properly filed in the USPTO under 37 CFR 1.47 naming B and C as inventors, but without inventor C signing the oath. C has now started his own company competing with Corporation D producing a product with the invention in the application. Inventor B is a friend of inventor C and wants C to have continued access to the application. Which of the following statements is in accordance with the patent laws, rules and procedures as related in the MPEP?

(A) Inventor C, who has not signed the oath or declaration, may revoke the power of attorney to practitioner E and appoint practitioner F to prosecute the application.
(B) Inventor C cannot be excluded from access t the application because inventor B has not agreed to exclude inventor C. In order to exclude a co-inventor from access to an application, all the remaining inventors must agree to exclude that coinventor.
(C) Inasmuch as one of the named joint inventors has not assigned his or her rights to Corporation D, the corporation is not an assignee of the entire right and interest, and therefore cannot exclude inventor C from access to the application.
(D) An inventor who did not sign the oath or declaration filed in an application can always be excluded from access to an application.
(E) An assignee filing an application can control access to an application and exclude inventors who have not assigned their rights and other assignees from inspecting the application.
X45. 10.03.p.15. Applicant filed an international patent application under the Patent Cooperation Treaty (PCT) designating the United States. A copy of the international application has not been submitted to the USPTO by the International Bureau. The deadline for entering the national stage under 35 USC 371(c) was August 15, 2002. Applicant submitted all of the national stage items required by 35 USC 371(c) by facsimile transmission on August 15, 2002. The facsimile transmission was successfully received by the USPTO on August 15, 2002. The submission included an authorization to charge any required fees to the valid deposit account of the registered practitioner representing applicant. The account contained sufficient funds. Assuming that applicant has made no other national stage submissions under 35 USC 371(c), which of the following statements is most correctly describes why the national stage submission in accordance with the patent laws, rules and the procedures as related in the MPEP is proper or improper?

(A) The national stage submission was proper because facsimile transmission is a valid method of correspondence in the USPTO.
(B) The national stage submission was proper because a copy of an originally executed oath or declaration is acceptable, but the original oath or declaration should be retained as evidence of authenticity.
(C) The national stage submission was improper because a copy of the international application and the basic national fee necessary to enter the national stage as required by 35 USC 371(c) may not be submitted by facsimile transmission.
(D) The national stage submission was improper because the USPTO does not accept fee payments via facsimile transmission.
(E) The national stage submission was improper because facsimile transmission may never be used for PCT applications.
X46. 4.03.a.36. Mike and Alice, who are not related, are shipwrecked on a heretofore uninhabited and undiscovered island in the middle of the Atlantic Ocean. In order to signal for help, Mike invents a signaling device using bamboo shoots. Alice witnesses but does not assist in any way in the development of the invention. The signaling device works and a helicopter comes and rescues Alice. However, Mike remains on the island due to overcrowding on the helicopter. Unfavorable weather conditions have prevented Mike’s rescue to date. Alice comes to you, a registered patent practitioner, to file an application for a patent and offers to pay you in advance. Which of the following, in accordance with the USPTO rules and the procedures set forth in the MPEP, is true?

(A) Since Mike invented the invention, Alice cannot properly file an application for a patent in her name even though Mike is unavailable.
(B) Since Mike is unavailable, you may properly file an application for a patent without his consent. You can accept the money from Alice as payment for the application.
(C) Since Mike is not available and cannot be reached, Alice may properly sign the declaration on his behalf since she has witnessed the invention and knows how to make and use it.
(D) Alice should file an application in her name since she has witnessed the invention and knows how to make and use it. Subsequently, when Mike becomes available, the inventorship may be changed to the correct inventorship.
(E) Even though Mike and Alice are not related, Alice may properly file an application on Mike’s behalf.
X47. 10.03.p.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.
X48. 4.03.a.23. Which of the following is not prohibited conduct for a practitioner under the USPTO Code of Professional Responsibility?

(A) Entering into an agreement with the client to limit the amount of any damages which the client may collect for any mistakes the practitioner may make during prosecution of the client’s patent application in exchange for prosecuting the application at a reduced fee.
(B) Encouraging the client to meet with an opposing party for settlement discussions.
(C) Failing to disclose controlling legal authority which is adverse to the practitioner’s client’s interest when arguing the patentability of claims in a patent application.
(D) In reply to an Office action, stating honestly and truthfully in the remarks accompanying an amendment that the practitioner has personally used the device and found it to be very efficient and better than the prior art.
(E) Investing the funds the client advanced for the practitioner legal fees (not costs and expenses) in long term United States Treasury Bills in order to obtain guaranteed protection of the principal.
X49. 4.03.p.13. In accordance with the patent laws, rules and procedures as related in the MPEP, which of the following fees may not be reduced by 50 percent for “small entities”?
(A) The basic filing fee for a design patent application.
(B) The fee for a disclaimer.
(C) The fee for a petition for an extension of time.
(D) The fee for recording a document affecting title.
(E) The maintenance fee due at 3 years and six months after grant.

X50. 10.03.p.16. Which of the following statements is or are in accord with the patent laws, rules and procedures as related in the MPEP?

(1) In a 35 USC 103 obviousness analysis, the proper question is whether the differences between the prior art and the claims would have been obvious to one of ordinary skill in the art.
(2) In a 35 USC 103 obviousness analysis, an inventor’s assertion the he has discovered the source or cause of an identified problem should never be considered.
(3) A 35 USC 103 obviousness analysis requires consideration not just of what is literally recited in the claims, but also of any properties inherent in the claimed subject matter that are disclosed in the specification.

(A) Statement 1
(B) Statement 2
(C) Statement 3
(D) Statements 1 & 2
(E) Statements 1 & 3

Test X Answers
1.C 22.C 43.B
2.A 23.A 44.C
3.B 24.E 45.C
4.C 25.E 46.A
5.E 26.C 47.D
6.D 27.ALL* 48.B
7.E 28.D 49.D
8.B 29.D 50.C
9.C 30.B
10.E 31.E
11.C 32.D
12.B 33.C
13.C 34.D
14.D 35.D
15.E 36.C
16.C 37.A
17.D 38.C
18.B 39.A
19.A 40.A
20.E 41.D
21.E 42.D

X1. 10.03.a.7. On January 2, 2001, a registered practitioner filed a patent application with the USPTO for inventor Bloc. The application includes a specification and a single claim to the invention which reads as follows:
1. Compound Y.
In the specification, Bloc explains that compound Y is an intermediate in the chemical manufacture of synthetic Z. With respect to synthetic Z, the specification discloses its structural formula and further states that synthetic Z is modeled on the natural form of Z to give it the same therapeutic ability to alleviate pain. The specification goes on to state that synthetic Z is also a cure for cancer. On June 2, 2001, the practitioner received an Office action from the primary examiner rejecting the claim. The claim is rejected under 35 U.S.C. 101 as being inoperative; that is, the synthetic Z does not operate to produce a cure for cancer (i.e., incredible utility). Bloc believes he is entitled to a patent to his compound Y. In accordance with the patent laws, rules and procedures as related in the MPEP, how best should the practitioner reply to the rejection of the claim?
(A) Advise Bloc that he should give up because a cure for cancer is indeed incredible and is unproven.
(B) File a reply arguing that a cure for cancer is not incredible and he can prove it if given the chance.
(C) File a reply arguing that whether or not a cure for cancer is incredible is superfluous since Bloc has disclosed another utility – alleviating pain, which is not incredible.
(D) File a reply arguing that the claim is directed to compound Y, not synthetic Z.
(E) File a reply arguing that synthetic Z is modeled on the natural form of Z.
X2. 10.03.p.7. The claimed invention in a patent application is directed to an explosive composition “comprising 60-90% solid ammonium nitrate, and 10-40% water-in-oil in which sufficient aeration is entrapped to enhance sensitivity to a substantial degree.” The application discloses that the explosive requires both fuel (the ammonium nitrate), and oxygen to “sensitize the composition.” A prior art reference, published more than two years before the effective filing date of the application, discloses explosive compositions containing water-in-oil emulsions having identical ingredients to those claimed, in ranges overlapping with the claimed composition. The only element of the claim not recited in the reference is “sufficient aeration entrapped to enhance sensitivity to a substantial degree.” The reference does not recognize that sufficient aeration sensitizes the fuel to a substantial degree. In addition to the prior art reference, a printed publication contains test data demonstrating that “sufficient aeration” is necessarily an inherent element in the prior art blasting composition under the circumstances. In accordance with the patent laws, rules and the procedures as related in the MPEP, the prior art reference:

(A) anticipates the claim because it discloses every limitation of the claim either explicitly or inherently.
(B) does not anticipate the claim because the prior art reference does not recognize an inherent property.
(C) does not anticipate the claim because the prior art reference does not recognize an inherent function of oxygen.
(D) does not anticipate the claim because the prior art reference does not recognize an inherent ingredient, oxygen.
(E) (B), (C) and (D).
X3. 4.00.a.32. Nonobviousness of a claimed invention may be demonstrated by:
(A) producing evidence that all the beneficial results are expected based on the
teachings of the prior art references.
(B) producing evidence of the absence of a property the claimed invention would be
expected to possess based on the teachings of the prior art.
(C) producing evidence showing that unexpected results occur over less than the
entire claimed range.
(D) producing evidence showing that the unexpected properties of a claimed invention
have a significance less than equal to the expected properties.
(E) (A), (B), (C) and (D).
X4. 4.02.a.30. In accordance with the MPEP, and USPTO rules and procedure, a patent application may be made by someone other than the inventor in certain situations. In which of the following situations would an application not be properly made by someone other than the inventor?

(A) The inventor is deceased, and the application is made by the legal representative of the deceased inventor.
(B) The inventor is deceased, and the application is made by one who has reason to believe that he or she will be appointed legal representative of the deceased inventor.
(C) The inventor is a minor (under age 18) who understands and is willing to execute the declaration, but the application is made by the minor’s legal representative.
(D) The inventor is insane, and the application is made by the legal representative of the insane inventor.
(E) The inventor is legally incapacitated, and the application is made by the legal representative of the legally incapacitated inventor.
X5. 4.03.a.42. Which of the following practices or procedures may be employed in accordance with the USPTO rules and the procedures set forth in the MPEP to overcome a rejection properly based on 35 USC 102(e)?

(A) Persuasively arguing that the claims are patentably distinguishable from the prior art.
(B) Filing an affidavit or declaration under 37 CFR 1.132 showing that the reference invention is not by “another.”
(C) Filing an affidavit or declaration under 37 CFR 1.131 showing prior invention, if the reference is not a U.S. patent that either claims the same invention or claims an obvious variation of the subject matter in the rejected claim(s).
(D) (A) and (C).
(E) (A), (B) and (C).

X6. 4.03.p.42. Paprika is a known product. A patent application discloses a composition which is made by subjecting paprika to processing steps X, Y and Z. The composition is disclosed to be useful in treating cancer. The application was filed June 1, 2002. A reference published May 1, 2001 discloses a food product made by subjecting paprika to processing steps X, Y and Z. The reference does not disclose that the resulting composition has any properties that would make it useful for treating cancer. In accordance with USPTO rules and procedures set forth in the MPEP, which of the following claims is not anticipated by the reference?

(A) A composition made by the process of subjecting paprika to processing steps X, Y and Z, wherein the composition is effective for treating cancer.
(B) A composition for treating cancer, made by the process of subjecting paprika to processing steps X, Y and Z.
(C) A method of making a cancer-treating composition, comprising subjecting paprika to processing steps X, Y and Z.
(D) A method of treating cancer, comprising administering an effective amount of a composition made by subjecting paprika to processing steps X, Y and Z.
(E) All of the above.

X7. 4.03.a.42. A registered practitioner filed a first patent application wherein claims 1-10 claims are directed to a widget and claims 11-20 are directed to a method of making a widget. Following a proper restriction requirement, claims 1-10 were elected for prosecution. The primary examiner rejected claims 1-10. The practitioner filed a reply that only consisted of argument. The examiner was unpersuaded by the argument, and entered a final rejection of claims 1-10. In reply, the practitioner filed a continuing application containing claims 1-10 directed to a widget, and claims 11-20 directed to a method of using a widget. In the continuing application, the examiner enters a new written restriction requirement requiring a provisional election between claims 1-10 and claims 11-20. The practitioner believes the new restriction requirement is improper and would like the rejection in the parent application reviewed as well. The new restriction requirement has not been made final. Which of the following best describes whether and why, in accordance with the patent laws, rules, and procedures as related by the MPEP, the reply to the restriction requirement may be by appeal to the Board of Patent Appeals and Interferences?

(A) Yes. An immediate appeal to the Board can be filed to review the restriction requirement if any claims have been twice rejected.
(B) No. An immediate appeal cannot be filed to the Board because the new claims directed to a method of using a widget have not been twice rejected.
(C) Yes. An immediate appeal can be filed for any claims that have been twice rejected because the Board can also review any second restriction requirement made against the same claims.
(D) No. An immediate appeal to the Board cannot be lodged because a provisional election has not been made of either the claims to a widget or claims to a method of use of the widget.
(E) No. An immediate appeal cannot be taken because no claims are currently under rejection. Review of a final restriction requirement is only possible as a petitionable matter before a Technology Center Director. It is not an appealable matter to the Board.
X8. 4.03.p.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.
Please answer questions 23 and 24 based on the following facts. Jo invented a new and unobvious technique for inexpensively manufacturing a chemical that has been used in paper mills for years to bleach paper. Tommie developed a new and unobvious technique to clean-up toxic waste spills. Jo and Tommie collaborated to invent a method to clean-up toxic waste spills using the chemical made according to the unobvious technique invented by Jo. The inventions have been assigned to your client Dowel Chemical Company. You prepared a single patent application fully disclosing and claiming each invention. Claims 1-9 were directed to the method of manufacturing; claims 10-19 were directed to the method of cleaning up toxic waste spills; and claim 20 was directed to a method of cleaning up toxic waste spills using the chemical manufactured in accordance with claim 1. Both inventors approve the application, but Tommie is unavailable to sign an oath before an upcoming statutory bar. Accordingly, you are instructed to immediately file the application without an executed oath. On June 1, 1999, you file the application along with an information sheet to identify the application. However, you do not notice that Tommie was inadvertently left off the list of inventors on the information sheet, which listed Jo as the sole inventor. After receiving a Notice to File Missing Parts, you submit an oath executed by both Jo and Tommie. No paper was filed to change the named inventive entity. You later receive an Office action requiring restriction between Jo’s invention and Tommie’s invention. In reply to the restriction requirement, you elect Jo’s invention, cancel claims 10-20, and immediately file a divisional application directed to the invention of claims 10-19. Claim 20 was omitted from the divisional application. The divisional application includes a specific reference to the original application and is files with an inventor’s oath executed by Tommie only. The divisional application incorporated the original application by reference.
X9. 4.00.a.23. Which of the following statements is correct?
(A) Because the original application as filed only named Jo as an inventor, Tommie’s divisional application is not entitled to the filing date of the original Application because there is no common inventor between the original application and the divisional application.
(B) The incorrect inventorship listed on the information sheet of the original application was never properly corrected and, therefore, any patent issuing on that application will be invalid under 35 U.S.C. § 116 unless the inventorship is later corrected.
(C) After canceling claims 10-20, it is necessary to change the named inventive entity in the original application by filing a petition including a statement identifying Tommie as being deleted and acknowledging that Tommie’s invention is no longer being claimed in the application and an appropriate fee.
(D) Written consent of the Dowel Chemical Company is required before Tommie can be deleted as an inventor in the original application.
(E) It is necessary in the divisional application to file a petition including a statement identifying Jo as being deleted as an inventor and acknowledging that Jo’s invention is not being claimed in the divisional application.
X10. 4.00.a.24. Which of the following statements is most correct?
(A) Since claim 20 was omitted from the divisional application as filed, it cannot be added to the divisional application by subsequent Amendment because such an Amendment would constitute new matter.
(B) It was improper to include Tommie and Jo as joint inventors in the patent application.
(C) The examiner may properly make a provisional obviousness-type double patenting rejection in the divisional application based on the parent application, but that rejection may be readily overcome with the filing of a terminal disclaimer.
(D) Because the inventive entity of the amended parent application is different than the inventive entity of the divisional application, the examiner may reject the claims of the divisional application under the provisions of 30 U.S.C. § 102(e).
(E) Statements (A), (B), (C) and (D) are each incorrect.
X11. 10.02.a.17. Which of the following statements is true?
(A) In the context of 35 USC 102(b), a magazine need only be placed in the mail to be effective as a printed publication.
(B) The earliest date declassified printed material may be taken as prima facie evidence of prior knowledge under 35 USC 102(a) is as of the date the material is cataloged and placed on the shelf of a public library.
(C) Declassified printed material is effective as a printed publication under 35 USC 102(b) as of the date of its release following declassification.
(D) The American Inventors Protection Act (AIPA) amended 35 USC 102(e) to provide that U.S. patents, U.S. application publications, and certain international application publications can be used as prior art under 35 USC 102(e) based on their earliest effective filing date only against applications filed on or after November 29, 2000.
(E) The American Inventors Protection Act (AIPA) amended 35 USC 102(e) to provide that U.S. patents, U.S. application publications, and certain international application publications can be used as prior art under 35 USC 102(e) based on their earliest effective filing date only against applications filed prior to November 29, 2000 which have been voluntarily published.
X12. 4.03.a.12. The Potter patent application was filed on June 6, 2002, claiming subject matter invented by Potter. The Potter application properly claims priority to a German application filed on June 6, 2001. A first Office action contains a rejection of all the claims of the application under 35 USC 103(a) based on a U.S. patent application publication to Smith in view of a U.S. patent to Jones. A registered practitioner prosecuting the Potter application ascertains that the relevant subject matter in Smith’s published application and Potter’s claimed invention were, at the time Potter’s invention was made, owned by ABC Company or subject to an obligation of assignment to ABC Company. The practitioner also observes that the Smith patent application was filed on April 10, 2001 and that the patent application was published on December 5, 2002. Smith and Potter do not claim the same patentable invention. To overcome the rejection without amending the claims, which of the following timely replies would comply with the USPTO rules and the procedures set forth in the MPEP to be an effective reply for
overcoming the rejection?

(A) A reply that only contains arguments that Smith fails to teach all the elements in the only independent claim, and which specifically points out the claimed element that Smith lacks.
(B) A reply that properly states that the invention of the Potter application and the Smith application were commonly owned by ABC Company at the time of the invention of the Potter application.
(C) A reply that consists of an affidavit or declaration under 37 CFR 1.132 stating that the affiant has never seen the invention in the Potter application before.
(D) A reply that consists of an affidavit or declaration under 37 CFR 1.131 properly proving invention of the claimed subject matter of Potter application only prior to June 6, 2001.
(E) A reply that consists of a proper terminal disclaimer and affidavit or declaration under 37 CFR 1.130.

X13. 4.03.p.14. Mark Twine obtains a patent directed to a machine for manufacturing string. The patent contains a single claim (Claim 1) which recites six claim elements. The entire interest in Twine’s patent is assigned to the S. Clemens String Co., and Twine is available and willing to cooperate with S. Clemens String Co. to file a reissue application. A subsequent reissue application includes Claim 2, which is similar to original Claim 1. However, one of the elements recited in Claim 2 is broader than its counterpart element in the original claim. The remaining five elements are narrower than their respective counterpart elements in the original patent claim. Which of the following scenarios accords with the USPTO rules and the procedures set forth in the MPEP?

(A) The S. Clemens String Co. files the reissue application more than 2 years after the issue date of the original patent application.
(B) The S. Clemens String Co. files the reissue application less than 2 years after the issue date of the original patent but more than 2 years after original application filing date.
(C) Mark Twine files the reissue application less than 2 years after the issue date of the original patent but more than 2 years after original application filing date.
(D) Mark Twine files the reissue application more than 2 years after the issue date of the original patent.
(E) Mark Twine and the S. Clemens String Co. jointly file the reissue application more than 2 years after the issue date of the original patent.
X14. 10.03.a.8. 35 USC 102(d) establishes four conditions which, if all are present, establish a bar against the granting of a patent in this country. In accordance with the patent laws, rules and procedures as related in the MPEP, which of the following is not one of the four conditions established by 35 USC 102(d)?
(A) The foreign application must be filed more than 12 months before the effective U.S. filing date.
(B) The foreign application must have been filed by the same applicant as in the United States or by his or her legal representatives or assigns.
(C) The foreign patent or inventor’s certificate must be actually granted before the U.S. filing date.
(D) The foreign patent or inventor’s certificate must be actually granted and published before the U.S. filing date.
(E) The same invention must be involved.
X15. 10.03.p.8. With respect to establishing “reasonable diligence” for under 35 USC 102(g), which of the following statements is or are in accordance with the patent laws, rules and procedures as related in the MPEP?
(1) The inventor and his attorney must drop all other work and concentrate on the particular invention involved.
(2) The entire period during which diligence is required must be accounted for by either affirmative acts or acceptable excuses.
(3) Work relied upon to show reasonable diligence must be directly related to the reduction to practice.

(A) Statement (1) only
(B) Statement (2) only
(C) Statement (3) only
(D) Statements (1) and (3)
(E) Statements (2) and (3)
X16. 4.00.a.27. On February 8, 1999, you filed a patent application that you prepared for Mr. Bond. The application contains only one claim. The application disclosed a composition having 20%A, 20%B, and either 60%C or 60%D. Claim 1 is as follows:
Claim 1. A composition useful for bonding semiconductor materials to metals, comprising 20%A, 20%B, and 60%C.”
The examiner found a patent to Gold, dated March 8, 1998, which only disclosed and claimed a composition, having 20%A, 20%B, and 60%C, and also taught that the composition would only be useful for insulating metals from corrosion. The examiner rejected Claim 1 under 35 U.S.C. § 102(a) as anticipated by Gold, in an Office action dated August 9, 1999. Which of the following is most likely to overcome the rejection, and comports with proper PTO rules and procedure?
(A) Filing a reply, on March 9, 2000, with a petition for a three-month extension and the fee for a three-month extension, traversing the rejection on the ground that Gold does not disclose using the composition for bonding semiconductor materials to metals, and therefore does not disclose all the elements of Claim 1.
(B) Filing a reply, on September 9, 1999, traversing the rejection on the ground that Gold does not disclose using the composition for bonding semi-conductor materials to metals, and therefore does not disclose all the elements of Claim 1.
(C) Filing a reply on October 9, 1999, amending Claim 1 to state as follows: “Claim 1. A composition comprising: 20%A, 20%B, and 60%D.” In the reply, pointing out why the amendment gives the claim patentable novelty.
(D) Filing a reply on October 9, 1999, traversing the rejection on the grounds that the patent to Gold teaches away from using the invention in the manner taught in Bond’s application.
(E) Filing (i) a 37 C.F.R. § 1.132 affidavit objectively demonstrating the commercial success of the invention as claimed, and (ii) a reply containing an argument why the claimed invention is patentable, but no amendment to Claim 1.
X17. 10.02.a.21. Which of the following documents is not open to public inspection?

(A) The abandoned parent application of a divisional application. A patent was granted on the divisional application, which refers to the abandoned parent application.
(B) Assignment document relating to both an issued patent and a patent application not published under 35 USC 122(b).
(C) Assignment document relating to a pending reissue application.
(D) Copy of assignment record relating to both a pending patent application and an abandoned patent application not published under 35 USC 122(b).
(E) Assignment document relating to both an abandoned patent application not published under 35 USC 122(b) and a pending reissue application.
X18. 4.03.a.41. A claim in a pending patent application is rejected under 35 USC 103(a) as being obvious over Barry in view of Foreman. The Barry reference is a U.S. Patent that was issued on an application filed before the date of the application in question. In accordance with USPTO rules and procedures set forth in the MPEP, which of the following arguments, if true, would overcome the rejection?

(A) The Foreman reference is nonanalogous art, but the reference may be reasonably pertinent to Barry’s endeavor to solving the particular problem with which Barry was concerned.
(B) The rejection does not address a claimed limitation, and neither of the references teaches the claimed limitation.
(C) The Barry patent issued after the filing date of the pending patent application.
(D) The original specification states that the results achieved by the claimed invention are unexpected. (The statement is unsubstantiated by evidence).
(E) The Foreman patent issued 105 years before the filing date of the pending patent application.

X19. 4.03.p.41. Evidence that a claim may not comply with the second paragraph of 35 USC 112 occurs in accordance with the USPTO rules and the procedure set forth in the MPEP where:

(A) Remarks filed by applicant in a reply or brief regarding the scope of the invention differ and do not correspond in scope with the claim.
(B) There is a lack of agreement between the language in the claims and the language set forth in the specification.
(C) The scope of the claimed subject matter is narrowed during pendency of the application by deleting the originally much broader claims, and presenting claims to only the preferred embodiment within the originally much broader claims.
(D) Claims in a continuation application are directed to originally disclosed subject matter (in the parent and continuation applications) which applicants did not regard as part of their invention when the parent application was filed.
(E) All of the above.

X20. 10.03.a.41. Assume that each claim 5 is in a different patent application. Recommend which, if any, of the following wording is in accord with the patent laws, rules and procedures as related in the MPEP for a multiple dependent claim.

(A) Claim 5. A gadget according to claims 1-3, in which …
(B) Claim 5. A gadget as in claims 1, 2, 3, and/or 4, in which …
(C) Claim 5. A gadget as in claim 1 or 2, made by the process of claim 3 or 4, in which …
(D) Claim 5. A gadget as in either claim 6 or claim 8, in which …
(E) None of the above are proper multiple dependent claims.
X21. 10.02.a.18. While traveling through Germany (a WTO member country) in December 1999, Thomas (a Canadian citizen) conceived of binoculars for use in bird watching. The binoculars included a pattern recognition device that recognized birds and would display pertinent information on a display. Upon Thomas’ return to Canada (a NAFTA country) in January 2000, he enlisted his brothers Joseph and Roland to help him market the product under the tradename “Birdoculars.” On February 1, 2000, without Thomas’ knowledge or permission, Joseph anonymously published a promotional article written by Thomas and fully disclosing how the Birdoculars were made and used. The promotional article was published in the Saskatoon Times, a regional Canadian magazine that is also widely distributed in the United States. Thomas first reduced the Birdoculars to practice on March 17, 2000 in Canada. A United States patent application properly naming Thomas as the sole inventor was filed September 17, 2000. That application has now been rejected as being anticipated by the Saskatoon Times article. Which of the following statements is most correct?
(A) Thomas can rely on his activities in Canada in establishing a date of invention prior to publication of the Saskatoon Times article.
(B) In a priority contest against another inventor, Thomas can rely on his activities in Canada in establishing a date of invention.
(C) In a priority contest against another inventor, Thomas can rely on his activities in Germany in establishing a date of invention.
(D) Statements (A) and (B) are correct, but statement (C) is incorrect.
(E) Statements (A), (B), and (C) are each correct.
X22. 4.03.a.17. In accordance with the USPTO rules and the procedures set forth in the MPEP, which of the following is true?

(A) A claim to a process omitting a step in a disclosed process, where the step is disclosed in the specification to be essential to the invention, may not be properly rejected under 35 USC 112, first paragraph, for lack of enablement where the specification provides an enabling disclosure only for the process which includes the essential step.
(B) Failure to disclose the best mode must rise to the level of active concealment or grossly inequitable conduct in order to support a rejection under 35 USC 112, first paragraph.
(C) A claim failing to interrelate essential elements of the invention, as defined by the applicant in the specification, where the interrelation is critical to the invention may be properly rejected under 35 USC 112, second paragraph, for failure to properly point out and distinctly claim the invention.
(D) Where the best mode contemplated by the inventor at the time of filing the application is not disclosed, a proposed amendment adding a specific mode of practicing the invention would not be new matter.
(E) The best mode requirement is the same as the enablement requirement of the first paragraph of 35 USC 112.

X23. 4.03.p.15. Able conceived the invention claimed in a patent application. In conceiving the invention, Able used and adopted ideas and materials known in the art and invented by others. Ben, Able’s employee, reduced the invention to practice at Able’s request and totally pursuant to Able’s suggestions. Being unable to afford a patent practitioner’s fees to prepare and prosecute the application, Able convinced John to pay for the practitioner’s services in return for an interest in the invention. John did nothing more than provide the funds for the practitioner. Which of the following is in accordance with the USPTO rules and the procedures set forth in the MPEP?

(A) Able need not be the one to reduce the invention to practice so long as the reduction to practice occurred on his or her behalf. Able can be properly named as inventor in the application.
(B) To be named an inventor, it is not necessary for John to have contributed to the conception of the invention. Ben, not Able, can be named as inventor in the application.
(C) In conceiving the invention, Able may not consider and adopt ideas and materials derived from any sources, such as ideas of previous inventors. Able cannot be properly named as inventor in the application.
(D) John and Able may be properly named as joint inventors of the invention in the application.
(E) John, Ben, and Able may be properly named as joint inventors of the invention in the application.
X24. 10.03.a.9. Smith’s first invention is a new method of fabricating a semiconductor capacitor in a dynamic random access memory (DRAM) cell. Smith filed a first patent application on December 13, 2001 disclosing and claiming the first invention. Smith’s later, second invention, is an improved semiconductor capacitor in a DRAM cell and a method of making it. Smith filed a second application on December 16, 2002, claiming the benefit of the filing date of the copending first application. The second application contains claims 1-20, and a specification that provides support for the claimed subject matter in compliance with 35 USC 112, first paragraph. In the second application, claims 1-10 are drawn to Smith’s first invention, and claims 11-20 are drawn to Smith’s second invention. The primary examiner found a non-patent printed publication authored by Jones published on February 4, 2002. The article discloses the both of Smith’s inventions. Which of the following courses of action by the examiner would be in accord with the patent laws, rules and procedures as related in the MPEP?
(A) The examiner can reject claims 1-20 in the second application using the article because the publication date of the article is earlier than the filing date of the second application.
(B) The examiner cannot reject any of the claims in the second application using the article because the second application claims the benefit of the filing date of the first application.
(C) The examiner can reject claims 1-20 in the second application using the article because the second application is not entitled to the benefit of the filing date of the first application since the second application was filed more than one year from the filing date of the first application.
(D) The examiner can reject claims 1-10, but cannot reject claims 11-20 in the second application because the first application did not disclose the improved capacitor set forth in claims 11-20.
(E) The examiner cannot reject claims 1-10, but can reject claims 11-20 in the second application because the first application did not disclose an improved capacitor set forth in claims 11-20.
X25. 10.03.p.10. In accordance with the patent laws, rules and procedures as related in the MPEP, which of the following can a third party submit in a pending published application within two months from the publication date where the submission identifies the application to which it is directed by application number and includes the appropriate fee?

(A) A list referencing a videotape and copy of the tape showing that the process
claimed in the application was in use more than one year before the filing date of
the application.
(B) A U.S. patent issued more than one year before the filing date of the application
and a written explanation of the patent made by the third party on the patent.
(C) A publication with a publication date more than one year before the filing date of
the application and including underlining made by the third party on the
publication.
(D) A protest raising fraud and inequitable conduct issues.
(E) A list of the sole Japanese language publication submitted for consideration,
including the publication date of the publication, a copy of the Japanese language
publication and a written English language translation of the pertinent parts of the
publication.

P49. 4.03.a.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).

P50. 4.03.p.13. Prior to filing a patent application for a client, a registered practitioner determined that the client was entitled to claim small entity status under 37 CFR 1.27. The practitioner filed a patent application for the client on November 1, 2002 together with a claim for small entity status under 37 CFR 1.27. On December 2, 2002, a Notice to File Missing Parts was mailed setting a two month period for reply and requiring the basic filing fee and the surcharge under 37 CFR 1.16(e). The practitioner timely submitted the small entity fees for the basic filing fee and the surcharge as required in the Notice. Shortly thereafter, the practitioner discovered that on October 31, 2002, the day before the application was filed, the client, without advising the practitioner, had assigned all rights in the invention that is the subject of the application to an entity that would not qualify for small entity status under 37 CFR 1.27. In accordance with the USPTO rules and the procedures set forth in the MPEP, which of the following actions would be the best action for the practitioner to take?

(A) File a continuing application under 37 CFR 1.53(b) with the large entity filing fee and then file a letter of express abandonment under 37 CFR 1.138 in the original application after the continuing application has been accorded a filing date.
(B) Promptly file a notification of loss of small entity status under 37 CFR 1.27(g) and, thereafter, pay large entity fees whenever any subsequent fees are required.
(C) Wait until a Notice of Allowance is received and then timely submit the large entity issue fee along with a notification of loss of small entity status under 37 CFR 1.27(g).
(D) File a paper under 37 CFR 1.28(c) requesting that the good faith error in claiming small entity status be excused and complying with the separate submission and itemization requirements of 37 CFR 1.28(c) and including payment of the deficiency owed.
(E) Pay the difference between the large entity filing fee and small entity filing fee and the difference between the large entity surcharge and small entity surcharge within two months from the mail date of the Notice to File Missing Parts.

Test P Answers
1.D 22.D 43.B
2.C 23.C 44.A
3.E 24.C 45.B
4.E 25.B 46.E
5.E 26.C 47.E
6.C 27.C 48.C
7.B 28.B 49.E
8.A 29.B 50.D
9.E 30.D
10.B 31.E
11.D 32.B
12.A 33.D
13.B 34.E
14.C 35.D
15.B 36.B
16.D 37.D
17.C 38.C
18.E 39.E
19.D 40.A
20.D 41.D
21.B 42.C

1. A metal alloy comprising at least 20% by volume of iron; at least 10% by volume of gallium, and at least 10% by volume of copper.

In accordance with the patent law, rules and procedures as related by the MPEP, which of the following claims would be properly held indefinite under 35 USC 112(2)?

(A) Claim 2: The alloy of claim 1 containing 66% by volume of gallium and 14% by volume of copper.
(B) Claim 2: The alloy of claim 1 containing at least 21% by volume of iron, 11% by volume of gallium, and 10.01% by volume of copper.
(C) Claim 2: The alloy of claim 1 containing 20% by volume of iron, 10% by volume of gallium, and 10% by volume of copper.
(D) Claim 2: The alloy of claim 1 containing 54% by volume of copper and 27% by volume of gallium.
(E) Claim 2: The alloy of claim 1 containing at least 1% by volume of silver.

P2. 10.03.p.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.
The following fact pattern is for the next 2 questions:
Mario Lepieux was a member of a Canadian national hockey team touring Europe. While traveling through Germany (a WTO member country) in December 1998, Mario conceived of an aerodynamic design for a hockey helmet that offered players improved protection while reducing air resistance during skating. Upon Mario’s return to Canada (a NAFTA country), he enlisted his brothers Luigi and Pepe Lepieux to help him market the product under the tradename “Wing Cap.” On February 1, 1999, without Mario’s knowledge or permission, Luigi anonymously published a promotional article written by Mario and fully disclosing how the Wing Cap was made and used. The promotional article was published in Moose Jaw Monthly, a regional Canadian magazine that is not distributed in the United States. The Wing Cap was first reduced to practice on March 17, 1999. A United States patent application properly naming Mario as the sole inventor was filed September 17, 1999. That application has now been rejected as being anticipated by the Moose Jaw Monthly article.
P3. 4.00.a.10. Which of the following statements is most correct?
(A) The promotional article cannot be used as prior art because the Wing Cap had not been reduced to practice at the time the article appeared in the regional Canadian magazine.
(B) The regional Canadian magazine article is not prima facie prior art because it was published without Mario’s knowledge or permission.
(C) The regional Canadian magazine article is not prima facie prior art because it appeared in a regional Canadian publication and does not evidence knowledge or use in the United States.
(D) The promotional article in the regional Canadian magazine constituted an offer to sell that operates as an absolute bar against Mario’s patent application.
(E) Mario, as the inventor, can overcome the rejection by filing an affidavit under 37 C.F.R. § 1.132 establishing that he is the inventor, and the article describes his work.
P4. 4.00.a.11. Which of the following statements is most correct?
(A) In a priority contest against another inventor, Mario can rely on his activities in Canada in establishing a date of invention.
(B) In a priority contest against another inventor, Mario can rely on his activities in Germany in establishing a date of invention.
(C) Mario can rely on his activities in Canada in establishing a date of invention prior to publication of the regional Canadian magazine article.
(D) (A) and (C).
(E) (A), (B), and (C).
P5. 4.00.p.28. Which of the following is true?
(A) On appeal of a rejection of ten claims to the Board of Patent Appeals and
Interferences, each appealed claim stands or falls separately as a result of
appellant pointing out differences in what the claims cover.
(B) The 2-month period for filing a petition mentioned in 37 CFR 1.181(f) is
extendable under 37 CFR 1.136(a).
(C) An examiner may enter a new ground of rejection in the examiner’s answer to an
applicant’s appeal brief.
(D) After filing a notice of appeal, an applicant is estopped from further prosecuting
the same claims in a continuation application.
(E) When desiring to claim foreign priority, the oath or declaration in a reissue
application must claim foreign priority even though the priority claim was made
in the original patent.
P6. 10.01.a.11. In which of the following final Office action rejections is the finality of the Office action rejection proper?
(A) The final Office action rejection is in a second Office action and uses newly cited
art under 35 U.S.C. § 102(b) to reject unamended claims that were objected to but
not rejected in a first Office action.
(B) The final Office action rejection is in a first Office action in a continuation- in-part
application where at least one claim includes subject matter not present in the
parent application.
(C) The final Office action rejection is in a first Office action in a continuing
application, all claims are drawn to the same inve ntion claimed in the parent
application, and the claims would have been properly finally rejected on the
grounds and art of record in the next Office action if they had been entered in the
parent application.
(D) The final Office action rejection is in a first Office action in a substitute
application that contains material that was presented after final rejection in an
earlier application but was denied entry because the issue of new matter was
raised.
(E) None of the above.
P7. 4.02.a.24. Mr. Brick, the inventor, files an application with the USPTO on January 2, 2001 containing a single claim for his invention: a new bouncing ball called “Y”. Brick
receives a first Office action dated June 4, 2001 from the primary examiner handling
Brick’s application. The examiner rejected Brick’s claim only under 35 U.S.C. § 103 on
the grounds that Reference X teaches a bounc ing ball called “Q,” and that although “Y”
and “Q” are not the same, it would have been obvious to one of ordinary skill to make
changes to the “Q” ball in order to obtain a ball just like Brick’s “Y” ball.
On August 2, 2001, Brick responds by stating that his new “Y” ball bounces
unexpectedly higher than the “Q” ball described in Reference X. Brick includes a
declaration, signed by Mrs. Kane, that includes extensive data comparing the bouncing
results for the “Y” and “Q” balls and showing that the “Y” ball bounces unexpectedly
higher than the “Q” ball. Brick argues that the rejection under 35 U.S.C. § 103 should be
withdrawn because he has proven that, in view of the unexpectedly higher bounce of the
“Y” ball as compared to the “Q” ball, it would not have been obvious to one of ordinary
skill in the art to make changes to the “Q” ball to obtain Brick’s “Y” ball.
On October 2, 2001, Brick receives a final rejection from the examiner. The rejection
states, in its entirety: “The response has been reviewed but has not been found persuasive
as to error in the rejection. The claim is finally rejected under 35 U.S.C. § 103 for the
reasons given in the first Office action.” Brick believes he is entitled to a patent to his
new bouncing ball “Y.” How should Brick proceed?

(A) Brick should give up because the declaration did not persuade the
examiner of the merits of Brick’s invention.
(B) Brick should timely file a Request for Reconsideration asking the
examiner to reconsider the rejection on the basis of the Kane declaration
and, as a precaution against the Request for Reconsideration being
unsuccessful, also timely file a Notice of Appeal.
(C) Brick should respond by submitting a request for reconsideration
presenting an argument that Reference X does no t provide an enabling
disclosure for a new ball with the unexpectedly higher bounce of his “Y”
ball.
(D) Brick should respond by submitting a request for reconsideration
presenting an argument that Reference X does not provide a written
description for a new ball with the unexpectedly higher bounce of his “Y”
ball.
(E) Brick should respond by submitting a request for reconsideration
presenting an argument the declaration data proves that the “Q” ball and
the “Y” are not identical.
P8. 4.02.p.11. While vacationing in Mexico on April 14, 2001, Henrietta invented a camera that operated at high temperature and is waterproof. She carefully documented her invention
and filed a provisional application in the USPTO on April 30, 2001. She conducted tests
in which the camera withstood temperatures of up to 350 degrees Fahrenheit. However,
when the camera was placed in the water leaks were discovered rendering the camera
inoperable. On April 12, 2002, Henrietta conceived of means that she rightfully believed
will fix the leakage issue. Henrietta came to you and asked whether she can file another
application. Henrietta desires to obtain the broadest patent protection available to her.
Which of the following is the best manner in accordance with proper USPTO practice
and procedure for obtaining the patent covering both aspects of her invention?

(A) She can file a nonprovisional application on April 30, 2002 claiming
benefit of the filing date of the provisional application, disclosing the
means for fixing the leak and presenting a claim covering a camera that
operates at high temperatures and a claim covering a camera that is
waterproof, or presenting a claim covering a camera that both operates at
high temperatures and is waterproof.
(B) Henrietta cannot rightfully claim a camera that is waterproof in a
nonprovisional application filed on April 30, 2002, since she tested the
camera and the camera developed leaks.
(C) Henrietta can file another provisional application on April 30, 2002 and
obtain benefit of the filing of the provisional application filed on April 30,
2001.
(D) Henrietta may establish a date of April 14, 2001 for a reduction to practice
of her invention for claims directed to the waterproofing feature.
(E) Henrietta should file a nonprovisional application on April 30, 2002
having claims directed only to a camera that withstands high temperatures
since the camera that she tested developed leaks.
P9. 10.02.a.6. According to USPTO rules and procedure, which of the following can be overcome by an affidavit under 37 CFR 1.131?
(A) A rejection properly based on statutory double patenting.
(B) A rejection properly made under 35 USC 102(d) based on a foreign patent granted in a non-WTO country.
(C) A rejection properly made under 35 USC 102(a) based on a journal article dated one month prior to the effective filing date of the U.S. patent application. Applicant has clearly admitted on the record during the prosecution of the application that subject matter in the journal article relied on by the examiner is prior art.
(D) A rejection properly made under 35 USC 102(b) based on a U.S. patent that issued 18 months before the effective filing date of the application. The patent discloses, but does not claim, the invention.
(E) None of the above.
P10. 10.02.p.8. An application includes independent claims 1 and 2. Which of the following, in a reply to a non-final Office action, provides the proper basis for a rejection under 35 USC 112, first paragraph?

(A) Applicant amends claim 2 of the originally filed application by adding a limitation which was previously written only in claim 1 of the originally filed application, and one of ordinary skill in the art is enabled by the original disclosure to make and use the invention as claimed in amended claim 2.
(B) Applicant amends claim 1 of the originally filed application by adding a limitation that was written in the original disclosure of the application, but the original disclosure does not enable one of ordinary skill in the art to make or use the invention as claimed in amended claim 1.
(C) Applicant amends and broadens claim 2 by removing a limitation which was written in the original disclosure of the application, and one of ordinary skill in the art is enabled by the original disclosure to make and use the invention as claimed in amended claim 2.
(D) Applicant adds new matter to the disclosure, but does not amend the claims of the originally filed application, and one of ordinary skill in the art is enabled by the original disclosure to make and use the invention as described in each of the claims.
(E) None of the above.
P11. 4.03.a.5. In accordance with the USPTO rules and the procedures set forth in the MPEP, which of the following may not be filed by facsimile transmission?

(A) A request for continued examination under 37 CFR 1.114 along with a submission.
(B) A continued prosecution application under 37 CFR 1.53(d).
(C) An amendment in reply to a non-final Office action.
(D) The filing of a provisional patent application specification and drawing for the purpose of obtaining an application filing date.
(E) (B) and (D).
P12. 4.03.p.5. Which of the following practices or procedures may be properly employed in accordance with the USPTO rules and the procedures set forth in the MPEP to overcome a rejection properly based on 35 USC 102(a)?

(A) Perfecting a claim to priority under 35 USC 119(a)-(d) based on a foreign application having a foreign priority filing date that antedates the reference.
(B) Filing a declaration under 37 CFR 1.131 showing that the cited prior art antedates the invention.
(C) Filing a declaration under 37 CFR 1.132 showing that the reference invention is by “others.”
(D) Perfecting priority under 35 USC 119(e) or 120 by, in part, amending the declaration of the application to contain a specific reference to a prior application having a filing date prior to the reference.
(E) (A), (B) (C), and (D).

P13. 10.03.a.5. In accordance with the patent laws, rules and procedures as related in the MPEP, which of the following does not constitute prior art upon which a primary examiner could properly rely upon in making an obviousness rejection under 35 USC 103?
(A) A U.S. patent in the applicant’s field of endeavor which was issued two years before the filing date of applicant’s patent application.
(B) A non-patent printed publication in a field unrelated to the applicant’s field of endeavor but relevant to the particular problem with which the inventor-applicant was concerned, which was published the day after the filing date of applicant’s application.
(C) A printed publication published more than 1 year before the filing date of applicant’s patent application, which publication comes from a field outside the applicant’s field of endeavor but concerns the same problem with which the applicant-inventor was concerned.
(D) A printed publication in the applicant’s field of endeavor published 3 years before the filing date of applicant’s patent application.
(E) A U.S. patent which issued more than 1 year before the filing date of applicant’s patent application, which the Office placed in a different class than the applicant’s patent application, but which concerns the same problem with which the applicant-inventor was concerned, and which shows the same structure and function as the applicant’s patent application.
P14. 10.03.p.4. A registered practitioner files an international application submission that includes a description, claims and drawings in the United States Receiving Office (RO/US) on Wednesday, January 8, 2003. The submission did not include the required request, international and search fees, or the designation of a PCT contracting State. The RO/US mails an “Invitation to Correct the Purported International Application,” dated January 10, 2003, to the practitioner indicating that the designation of at least one Contracting State, as required by PCT Article 11(1)(iii)(b), was not included. A one-month period for response is set in the Invitation. On Monday, February 10, 2003, the practitioner submits by facsimile a designation sheet of the Request Form designating every available Contracting State, and authorization to charge all required fees. In accordance with the patent laws, rules and procedures as related in the MPEP, will the application be accorded an international filing date?

(A) Yes. The application will be accorded a filing date of January 8, 2003.
(B) Yes. The application will be accorded an international filing date of February 10, 2003.
(C) No. The application will not be accorded an international filing date because the failure to designate at least one contracting State cannot be cured by a facsimile transmission.
(D) No. The application was given a one-month period for response. The practitioner would have had to have filed the response on Friday, February 7, 2003 in order to have been timely.
(E) None of the above.

P15. 4.00.a.36. A petition to make a patent application special may be filed without fee in which of the following cases?
(A) The petition is supported by applicant’s birth certificate showing applicant’s age is 62.
(B) The petition is supported by applicant’s unverified statement that applicant’s age is 65.
(C) The petition is supported by applicant’s statement that there is an infringing device actually on the market, that a rigid comparison of the alleged infringing device with the claims of the application has been made, and that applicant has made a careful and thorough search of the prior art.
(D) The petition is accompanied by a statement under 37 C.F.R. § 1.102 by applicant explaining the relationship of the invention to safety of research in the field of recombinant DNA research.
(E) The petition is accompanied by applicant’s statement explaining how the invention contributes to the diagnosis, treatment or prevention of HIV/AIDS or cancer.
P16. 10.01.a.24. Able and Baker conceived an improved gas grille for cookouts. Using elements A, B, C,D, E and F found in their backyards, as well as elements G, H, I, J, K, L, M and N purchased at a local hardware store, they successfully constructed and used a gas grille conforming to their concept. The grille includes subcombination of elements K, L and M conceived by Able, and subcombination C, D, F, G and M conceived by Baker. Able and Baker conceived their respective subcombinations separately and at different times. Able and Baker retain you to prepare and file a patent application for them. You are considering whether and what can be claimed in one patent application. Which of the following is true?

(A) For Able and Baker to properly execute an oath or declaration under 37 CFR 1.63
in a patent application claiming not only the grille, but also the two
subcombinations, Able and Baker must be joint inventors of the grille, and each
of the two subcombinations.
(B) A characteristic of U.S. patent law that is generally shared by other countries is
that the applicant for a patent must be the inventor.
(C) If Able and Baker execute an oath or declaration under 37 CFR 1.63 as joint
inventors and file an application claiming the grille (a combination of elements A,
B, C, D, E, F, G, H, I, J, K, L, M and N), the existence of the claim to the grille is
evidence of their joint inventorship of the individual elements.
(D) Able and Baker may properly execute an oath or declaration under 37 CFR 1.63
as joint inventors and file an application containing claims to the grille (a
combination of elements A, B, C, D, E, F, G, H, I, J, K, L, M and N), claims to
the subcombination conceived by Able, and claims to the subcombination
conceived by Baker.
(E) Able and Baker could not properly claim the combination unless they successfully
and personally reduced the grille to practice.
P17. 10.00.p.50. Which of the following is not a USPTO recommendation or requirement?
(A) Claims should be arranged in order of scope so that the first claim presented is the least restrictive.
(B) Product and process claims should be separately grouped.
(C) Every application should contain no more than three dependent claims.
(D) A claim which depends from a dependent claim should not be separated from that dependent claim by any claim which does not also depend from the dependent claim.
(E) Each claim should start with a capital letter and end with a period.
P18. 4.02.p.24. In 1995 Patent Agent filed a U.S. patent application containing five claims
(Application 1). All five claims are fully supported under 35 U.S.C. § 112 by the
disclosure of Application 1. In 2000, Patent Agent filed a U.S. patent application
(Application 2) that was a continuation- in-part of Application 1. Application 2 adds new
subject matter to the disclosure of Application 1, and ten additional claims. Of the fifteen
claims in Application 2, claims 1-5 are exactly the same as Application 1, claims 6-10 are
fully supported under 35 U.S.C. § 112 by the disclosure of Application 1, and claims 11-
15 are fully supported under 35 U.S.C. § 112 only by the newly added subject matter of
Application 2. The effective filing date for claims in Application 2 is:

(A) 1-15 is 2000.
(B) 1-15 is 1995.
(C) 1-10 is 1995.
(D) 11-15 is 2000.
(E) (C) and (D).
P19. 10.02.a.46. Which of the following statements relevant to a third party submission in a published patent application accords with proper USPTO practice and procedure?

(A) A submission of patents by a member of the public must be made within 2 months of the date of publication of the application.
(B) A submission of patents by a member of the public must be made prior to the mailing of a Notice of Allowance.
(C) A submission of patents by a member of the public must be made within 2 months of the date of publication of the application or prior to the mailing of a Notice of Allowance, whichever is later.
(D) A submission of patents by a member of the public must be made within 2 months of the date of publication of the application or prior to the mailing of a Notice of Allowance, whichever is earlier.
(E) Any submission not filed within the period set forth in the patent rules will be accepted provided it is accompanied by the processing fee set forth in 37 CFR 1.17(i).
P20. 10.02.p.43. A patent application filed in the USPTO claims a nylon rope coated with element E for the purpose of preventing breakage of the rope. In the first Office action, the examiner rejects the claim as obvious over P in view of a trade journal publication, T. P teaches a nylon rope coated with resin for the purpose of making the rope waterproof. T teaches a nylon tent fabric coated with element E for the purpose of making the tent waterproof, and suggests the use of element E for making other nylon products waterproof. Following proper USPTO practices and procedures, the combination of P and T:

(A) cannot support a prima facie case of obviousness because T lacks a suggestion to combine with P for the purpose of preventing breakage in nylon rope.
(B) cannot support a prima facie case of obviousness because P lacks a suggestion to combine with T for the purpose of preventing breakage in nylon rope.
(C) cannot support a prima facie case of obviousness because T only contains a suggestion to combine with P for the purpose of waterproofing nylon rope.
(D) can support a prima facie case of obviousness, even though T only contains a suggestion to combine with P for the purpose of waterproofing nylon rope.
(E) can support a prima facie case of obviousness because the applicant is always under an obligation to submit evidence of non-obviousness regardless of whether the examiner fully establishes a prima facie case of obviousness.

P21. 4.03.a.45. An examiner’s answer, mailed on January 2, 2003, contains a new ground of rejection in violation of 37 CFR 1.193(a)(2). If an amendment or new evidence is needed to overcome the new ground of rejection, what is the best course of action the appellant should take in accordance with the USPTO rules and the procedures set forth in the MPEP?

(A) File a reply brief bringing the new ground of rejection to the attention of the Board of Patent Appeals and Interferences and pointing out that 37 CFR 1.193(a)(2) prohibits entry of the new ground of rejection.
(B) File a timely petition pursuant to 37 CFR 1.181 seeking supervisory review of the examiner’s entry of an impermissible new ground of rejection in the answer, after efforts to persuade the examiner to reopen prosecution or remove the new ground of rejection are unsuccessful.
(C) File a reply brief arguing the merits of the new ground of rejection.
(D) File an amendment or new evidence to overcome the new ground of rejection.
(E) Ignore the new ground of rejection.
P22. 4.03.p.45. Al files an application for a patent. After the Notice of Allowance is mailed and the issue fee has been paid Al discovers a prior art reference which is material to patentability. What should Al do in accordance with the USPTO rules and the procedures set forth in the MPEP?

(A) Al should file a prior art statement under 37 CFR 1.501 that will be placed in the patent file upon issuance of the application as a patent.
(B) Since the issue fee has been paid, Al no longer has a duty to disclose to the Office material prior art. He is under no obligation to submit the prior art reference to the Office.
(C) Since the issue fee has been paid, it is too late to have the examiner consider the reference in this application. Al should file a continuation application to have the reference considered and allow the original patent application to issue as a patent.
(D) Al should file a petition to have the application withdrawn from issuance, citing the finding of additional material prior art as the reason for withdrawal. A continuation application should also be filed with an information disclosure statement containing the reference in order to have the reference considered.
(E) Al should file an amendment under 37 CFR. 1.312 deleting all of the claims which are unpatentable over the reference since an amendment deleting claims is entitled to entry as a matter of right.

P23. 10.03.a.46. In accordance with the patent law, rules and procedures as related by the MPEP, which of the following is not a “printed publication” under 35 USC 102(b), with respect to a patent application filed June 1, 2002?

(A) A paper that was orally presented at a meeting held May 1, 2001, where the meeting was open to all interested persons and the paper was distributed in written form to six people without restriction.
(B) A doctoral thesis that was indexed, cataloged, and shelved May 1, 2001, in a single, university library.
(C) A research report distributed May 1, 2001, in numerous copies but only internally
within an organization to persons who understood the organization’s unwritten policy of confidentiality regarding such reports.
(D) A reference available only in electronic form on the Internet, which states that it was publicly posted May 1, 2001.
(E) A technical manual that was shelved and cataloged in a public library as of May 1, 2001, where there is no evidence that anyone ever actually looked at the manual.

P24. 10.03.p.46. A primary examiner is examining a patent application. The application includes a specification and a single claim to the invention that reads as follows:
1. A building material to be used as an alternative to brick in the construction of a house, said building material comprising compressed refuse, the majority of which is wood.
In the specification, the inventor explains that the wood to be used in the inventive building material should be balsa wood. According to the specification, balsa-containing building material has the advantage of being lighter than brick. In a first Office action mailed to the registered practitioner representing the inventor the single claim was rejected as anticipated under 35 U.S.C. § 102 over Patent A. Patent A issued more than one year before the effective filing date of the application, and teaches a building material to be used as an alternative to brick in the construction of a house comprising compressed refuse, the majority of which is pine. The practitioner replies to the first Office action by arguing that the invention is different from that of Patent A. According to the practitioner, the inventor uses balsa wood, not pine. The claim has not been amended. Which of the following describes how the examiner should proceed in accordance with the patent laws, rules and procedures as related in the MPEP?
(A) The examiner should allow the claim.
(B) The examiner should allow the claim only after including a Reasons for Allowance pointing out that the inventor argues that her invention is directed to using balsa wood, not pine.
(C) The examiner should issue a Final Rejection again rejecting the claim as anticipated under 35 USC102 over Patent A.
(D) The examiner should reopen prosecution and begin anew, this time searching for a reference that shows a building material containing balsa wood.
(E) The examiner should withdraw the rejection but issue a new Office action this time rejecting the claim under 35 USC 112, second paragraph, because the claim is broad enough to encompass using pine.
P25. 4.00.a.14. On August 7, 1997, practitioner Costello filed a patent application identifying Laurel, Abbot, and Hardy as inventors. Each named inventor assigned his patent rights to Burns just prior to the application being filed. Laurel and Abbot, alone, jointly invented the subject matter of independent claim 1 in the application. Hardy contributed to inventing the subject matter of claim 2. Claim 2 properly depends upon claim 1. The examiner rejected claim 1 and claim 2 under 35 U.S.C. § 102(a) as anticipated by a journal article by Allen, dated July 9, 1997. Laurel, Abbot, and Hardy are readily available to provide evidence in support of and sign an antedating affidavit under 37 C.F.R. § 1.131 showing reduction to practice of the subject matter of claims 1 and 2 prior to July 9, 1997. Which of the following may properly make an affidavit under 37 C.F.R. § 1.131 to overcome the rejection of claims 1 and 2?

(A) Laurel and Abbot.
(B) Laurel, Abbot, and Hardy.
(C) Laurel, Hardy and Burns.
(D) Burns only.
(E) None of the above.
P26. 10.01.a.14. Which of the following is not in accord with proper USPTO practice and procedure?

(A) A written description as filed in a nonprovisional patent application is presumed
adequate under 35 U.S.C. § 112 in the absence of evidence or reasoning to the
contrary.
(B) An examiner may show that a written description as filed in a nonprovisional
patent application is not adequate by presenting a preponderance of evidence why
a person of ordinary skill in the art would not recognize in the applicant’s
disclosure a description of the invention defined by the claims.
(C) A general allegation of “unpredictability in the art” is sufficient to support a
rejection of a claim for lack of an adequate written description.
(D) When filing an amendment, a practitioner should show support in the original
disclosure for new or amended claims.
(E) When there is substantial variation within a genus, an applicant must describe a
sufficient variety of species to reflect the variation within the genus.
P27. 10.01.a.15. Sam is a sole proprietor of Sam’s Labs, which has no other employees. Sam invented a new drug while doing research under a Government contract. Sam desires to file a patent application for his invention and assign it to Sam’s Labs. Sam has licensed Rick, also a sole proprietor with no employees, to make and use his invention. Sam wants to claim small entity status when filing a patent application for his invention. Sam also wants to grant the
Government a license, but will not do so if he will be denied small entity status. Sam has limited
resources and wants to know whether, how, and to what extent he may claim small entity status.
Which of the following is not accurate with respect to proper USPTO procedure in relation to
applications filed on or after January 1, 2001?

(A) Sam’s Labs is a small business concern for the purposes of claiming small entity
status for fee reduction purposes.
(B) If Sam grants a license to the Government resulting from a rights determination
under Executive Order 10096, it will not constitute a license so as to prohibit
claiming small entity status.
(C) The establishment of small entity status permits the recipient to pay reduced fees
for all patent application processing fees charged by the USPTO.
(D) Sam may establish small entity status by a written assertion of entitlement to
small entity status. A written assertion must: (i) be clearly identifiable; (ii) be
signed; and (iii) convey the concept of entitlement to small entity status, such as
by stating that applicant is a small entity, or that small entity status is entitled to
be asserted for the application or patent.
(E) While no specific words or wording are required to assert small entity status, the
intent to assert small entity status must be clearly indicated in order to comply
with the assertion requirement.
P28. 4.02.a.32. Johnnie owns a supermarket store in Cleveland, Ohio, and is constantly frustrated when little children drop their chewing gum on Johnnie’s clean floor in the supermarket. In her spare time, Johnnie develops an entirely novel type of coating material that she applies to floor tile. The coating material resists adhesion to chewing gum. In order to
check out the effectiveness of the floor tile coating material, on December 31, 2000, she
secretly covers the floor tiles in her supermarket with the new chewing gum resistant
floor tile coating material. Johnnie is amazed at the results inasmuch as cleaning the
floor was never easier. On January 30, 2001, Johnnie, satisfied with the experimental use
results, ceased testing the use of the coating material. The ability of the coating material
to withstand chewing gum adhesion continued unabated throughout the remainder of
2001. On January 1, 2002, one of Johnnie’s many customers, James, remarked at how
clean the floor looked. Johnnie then told James of her invention. James thinks for one
moment and suggests that the floor tile coating material may be useful in microwave
ovens, so that food will not stick to the interior sides of the microwave oven. James
discusses getting patent protection with Johnnie. Which of the following is true?
(A) Johnnie could never be entitled to a patent on a floor tile in combination
with a coating material affixed to the outer surface of the tile.
(B) James can be named as a coinventor with Johnnie in a patent application
claiming a microwave oven wherein the internal surfaces of the oven are
coated with the coating material.
(C) Since for one year Johnnie told nobody that the floor tile in her
supermarket contained the new chewing gum resistant coating material,
she would never be barred from obtaining patent protection for the floor
coating material.
(D) Use of the floor tile coating material in microwave ovens would have been
obvious to one of ordinary skill in the art, since James thought of it within
seconds after first learning of the floor tile coating material, and James
was not skilled in the art.
(E) The floor tile having the coating material affixed to the outer surface of
the tile, an article of manufacture, would not be patentable as of January 1,
2002 inasmuch as the article was in public use on the supermarket floor
for one year.
P29. 4.02.p.18. Roger Rocket is a designer of paper cups at Paper America. During his free time, he likes to attend baseball games at Yankee Stadium. One day, while seated in the stands,
he caught a fly ball. He took the baseball home and played catch with his friends Andy
Cannon, Orlando Torpedo, and Mariano Missle. Unfortunately for Rocket, Cannon has a
problem with accuracy. Cannon threw the ball over Rocket’s head and straight through a
neighbor’s front window. The shattered glass ripped the lining off of the baseball.
Instantly, Rocket conceived a more durable baseball with an exterior similar to that of a
golf ball. Rocket worked for months on his invention in Missle’s garage. His new
baseball was comprised of a titanium core, and a plastic shell having circular dimples and
V-shaped laces. Torpedo realized and told Rocket that Y-shaped laces would enable
baseball players to throw the ball faster. Cannon, an engineer in a radar gun laboratory,
tested the velocity of the baseball with both V and Y-shaped laces. To Cannon’s surprise,
the baseball traveled 10 M.P.H. faster with the Y-shaped laces. Rocket wanted patent
protection for a baseball having a titanium core, and a plastic shell having circular
dimples and Y-shaped laces, so he approached Yogi Practitioner for assistance. Rocket
has no obligation, contractual or otherwise, to assign his inventions to Paper America.
In accordance with proper USPTO practice and procedure, who should execute
the oath?
(A) Rocket
(B) Rocket and Torpedo
(C) Rocket and Cannon
(D) Rocket, Torpedo, and Cannon
(E) Rocket, Torpedo, Cannon, and Missle.
P30. 4.02.p.19. Before executing the oath, Rocket wanted to ask Practitioner a question. On his way to Practitioner’s office, Rocket was instantly killed when a drunk driver hit his car.
The officers or employees of Paper America are not related to Rocket. Who can execute
an oath on Rocket’s behalf?
(A) The President of Paper America
(B) The CEO of Paper America
(C) Rocket’s manager at Paper America
(D) Rocket’s legal representative
(E) None of the above

P31. 4.02.p.20. Practitioner received all of the proper papers required to
receive a filing date. However, due to an unexpected emergency, he had to fly out of the
country that evening to conduct discovery in another matter. Practitioner knew that he
would be out of the office for at least 4 weeks, so before leaving, he left a note instructing
his assistant to file the Rocket application on October 13, 2001, using an Express Mailing
label. His assistant did not see the note until 8:00 P.M. on Friday, October 19, 2001. On
Monday, October 22, 2001, Rocket’s assistant deposited the Rocket application in the
United States Postal Service with a proper Express Mailing label. The Postal Service
properly completed a legible label showing an October 22, 2001 date in. The
correspondence was received in the USPTO on October 27, 2001. What is the filing date
of the Rocket application absent any Postal Service Emergency?
(A) October 12, 2001
(B) October 13, 2001
(C) October 19, 2001
(D) October 22, 2001
(E) October 27, 2001
P32. 10.02.a.8. The MPEP and USPTO rules and procedure provide for ways that a nonstatutory double patenting rejection can be overcome. Which of the following is an effective way to overcome a nonstatutory double patenting rejection?
(A) Filing a 37 CFR 1.131 affidavit to swear behind the patent on which the rejection is based.
(B) Filing a terminal disclaimer under 37 CFR 1.321(c).
(C) Filing a 37 CFR 1.131 affidavit arguing that the claims are for different inventions that are not patentably distinct.
(D) Filing a reply arguing that there is only one common inventor regarding the claims of the application and the claims of the patent.
(E) All of the above.
P33. 10.02.p.14. Which of the following timely actions should you take to accord maximum patent protection at minimum government fees for your client whose invention is described in a provisional patent application that was filed 6 months ago with no claim?

(A) File a request to convert the provisional application to a nonprovisional application, accompanied by a proper executed declaration, an amendment including at least one claim as prescribed by paragraph 2 of 35 USC 112 and the proper fee set forth in 37 CFR 1.17(i).
(B) File a request to convert the provisional application to a nonprovisional application, accompanied by a proper executed declaration, an amendment including at least one claim as prescribed by paragraph 2 of 35 USC 112, the proper fee set forth in 37 CFR 1.17(i), and the basic filing fee for the nonprovisional application.
(C) File a request to convert the provisional application to a nonprovisional application, accompanied by a proper executed declaration, an amendment including at least one claim as prescribed by paragraph 2 of 35 USC 112, the proper fee set forth in 37 CFR 1.17(i), the basic filing fee for the nonprovisional application, and the surcharge required by 37 CFR 1.16(e).
(D) File a nonprovisional application including at least one claim accompanied by a proper executed declaration, and the basic filing fee. The application contains a specific reference to the provisional application in compliance with 37 CFR 1.78(a)(5).
(E) File a nonprovisional application including at least one claim accompanied by a proper executed declaration but without the basic filing fee. The application contains a specific reference to the provisional application in compliance with 37 CFR 1.78(a)(5).
P34. 4.03.a.8. Following a restriction requirement and election, a registered practitioner received a first Office action dated Friday, December 1, 2000. The primary examiner indicated that claims 1 to 10 were rejected and claims 11 to 20 were withdrawn from consideration. The first Office action set a 3 month shortened statutory period for reply. On February 28, 2001, the practitioner properly filed an express abandonment in the application and at the same time filed a request for continuing application. In a non-final Office action dated May 1, 2001 in the continuing application, the examiner indicated in that claims 1 to 20, all of the pending claims, are rejected. The practitioner filed a notice of appeal on Monday, July 2, 2001. In accordance with USPTO rules and procedures set forth in the MPEP, which of the following most accurately describes the propriety of the practitioner’s reply to the May 1st Office action?

(A) The notice of appeal is not a proper response because the claims of the continuing application have not been finally rejected.
(B) The notice of appeal is not a proper reply because all of the claims in the continuing application have not been twice rejected.
(C) The filing of a notice of appeal is not a proper reply because not all the claims in the continuing application have been twice rejected.
(D) A notice of appeal is never a proper response to a non-final rejection.
(E) The reply is proper.

P35. 4.03.p.12. In accordance with the USPTO rules and the procedures set forth in the MPEP, which of the following is true?

(A) Interferences will generally be declared even when the applications involved are owned by the same assignee since only one patent may issue for any given invention.
(B) A senior party in an interference is necessarily the party who obtains the earliest actual filing date in the USPTO.
(C) Reexamination proceedings may not be merged with reissue applications since third parties are not permitted in reissue applications.
(D) After a reexamination proceeding is terminated and the certificate has issued, any member of the public may obtain a copy of the certificate by ordering a copy of the patent.
(E) None of the above.
P36. 10.03.a.6. In a reexamination proceeding a non-final Office action dated November 8, 2001 set a shortened statutory period of 2 months to reply. The patent owner, represented by a registered practitioner, filed a response on March 7, 2002, which included an amendment of the claims. No request for an extension of time was received. As of May 8, 2002, which of the following actions would be in accord with the patent laws, rules and procedures as related in the MPEP?
(A) The registered practitioner should file a request and fee for an extension of time of two months.
(B) The registered practitioner should file a petition for revival of a terminated reexamination proceeding showing the delay was unavoidable or unintentional, and the appropriate petition fee for entry of late papers.
(C) The primary examiner responsible for the reexamination should mail a Notice of Allowance and grant a new patent. The patent owner’s failure to timely respond to the outstanding Office action does not affect the allowability of the claims in the patent.
(D) The examiner should provide an Office action based upon the claims in existence prior to the patent owner’s late amendment, and mail a Final Office action.
(E) The registered practitioner should request an extension of time of four months, and file a Notice of Appeal.
P37. 10.03.p.6. Inventor Tip, a scientist in a pencil research laboratory, theorized that, based on the abrasive properties of moon dust, a highly efficient erasure can be made by adding a trace amount of moon dust to a normal pencil erasure formulation. Point, in the Sales department, determined that this would be perfect for a high end product. A U.S. patent application has been filed claiming a pencil erasure formulation with a trace amount of moon dust. An example of how to make the formulation with specified percentages of moon dust is presented therein. Thereafter, Tip learns about the duty to disclose information and he recalls signing a declaration under 37 CFR 1.63 stating that he had reviewed and understood the contents of the specification including the claims. Tip becomes concerned that the use of moon dust was only a theory and that to obtain patent would mislead the public to conclude that moon dust was actually used and found to be effective. The application has been allowed, but the issue fee has not yet been paid. Which of the following is most in accord with patent laws, rules and procedures as related in the MPEP?
(A) Point is under a duty to disclose material information to the USPTO.
(B) Tip is under a duty to disclose his concern regarding the moon rock information to the USPTO.
(C) Both Point and Tip are under a duty to disclose material information to the UPSTO.
(D) There is no duty to disclose information regarding how the moon rock formulation was developed to the USPTO.
(E) Inasmuch as the application is allowed, an appropriate Request for Continued Prosecution pursuant to 37 CFR 1.114 needs to be filed accompanied by a information disclosure regarding the possibility of rejections under 35 USC 101, and 112, first paragraph.
P38. 4.00.a.34. You have just received an Office action rejecting all of your claims in your patent application as anticipated under 35 U.S.C. § 102(a) using published declassified material as the reference. The examiner explains that the declassified material is being used as prima facie
evidence of prior knowledge as of the printing date. The published declassified material contains
information showing that it was printed six months before the filing date of the application, and
that it was published two months after the application’s filing date. You correctly note that
although the printing date precedes your application filing date by six months, you note that the
publication was classified as of its printing date (thus, available only for limited distribution even
when the application was filed), and was not declassified until its publication date (when it
became available to the general public). Each element of the claimed invention is described in
the publication of the declassified material. Which of the following statements is true?

(A) The rejection is not supported by the reference.
(B) The publication is not available as a reference because it did not become available
to the general public until after the filing date of your patent application.
(C) The publication is prima facie evidence of prior knowledge even though it was
available only for limited distribution as of its printing date.
(D) The publication constitutes an absolute statutory bar.
(E) It is not possible to use a Rule 131 affidavit or declaration to antedate the printing
date of the publication.
P39. 4.02.p.22. Patentee, Iam Smarter, filed and prosecuted his own nonprovisional patent
application on November 29, 1999, and received a patent for his novel cellular phone on
June 5, 2001. He was very eager to market his invention and spent the summer meeting
with potential licensees of his cellular phone patent. Throughout the summer of 2001, all
of the potential licensees expressed concern that the claim coverage that Smarter obtained
in his cellular phone patent was not broad enough to corner the market on this
technology, and therefore indicated to him that they feel it was not lucrative enough to
meet their financial aspirations. By the end of the summer, Smarter is discouraged. On
September 5, 2001, Smarter consults with you to find out if there is anything he can do at
this point to improve his ability to market his invention. At your consultation with
Smarter, you learn the foregoing, and that in his original patent application, Smarter had a
number of claims that were subjected to a restriction requirement, but were nonelected
and withdrawn from further consideration. You also learn that Smarter has no currently
pending application, that the specification discloses Smart’s invention more broadly than
he ever claimed, and that the claims, in fact, are narrower than the supporting disclosure
in the specification. Which of the following will be the best recommendation in
accordance with proper USTPO practice and procedure?

(A) Smarter should immediately file a divisional application under 37 CFR
1.53(b) including the nonelected claims that were subjected to a restriction
requirement in the nonprovisional application that issued as the patent.
(B) Smarter should file a reissue application under 35 U.S.C. § 251, including
the nonelected claims that were subjected to the restriction requirement in
the nonprovisional application that issued as the patent.
(C) Smarter should file a reissue application under 35 U.S.C. § 251,
broadening the scope of the claims of the issued patent, and then file a
divisional reissue application presenting only the nonelected claims that
were subjected to a restriction requirement in the nonprovisional
application which issued as the patent.
(D) Smarter should simultaneously file two separate reissue applications under
35 U.S.C. § 251, one including broadening amendments of the claims in
the original patent, and one including the nonelected claims that were
subjected to a restriction requirement in the nonprovisional application
which issued as the patent.
(E) Smarter should file a reissue application under 35 U.S.C. § 251 on or
before June 5, 2003, broadening the scope of the claims of the issued
patent.
P40. 10.02.a.34. Jane files a nonprovisional application with the USPTO containing at least one drawing figure under 35 USC 113 (first sentence) and at least one claim. Subsequently, Jane receives a “Notice of Omitted Items” from the USPTO indicating that the application which Jane filed lacks page 5 of the specification. Assuming that the application without page 5 satisfies 35 USC 112, which of the following statements is true based on proper USPTO practice and procedure?

(A) If Jane is willing to accept the application as filed, she need not respond to the Notice, and the Office will accord the filing date of the original application. Jane will need to file an amendment renumbering the pages consecutively and canceling incomplete sentences caused by the missing page 5.
(B) Jane must promptly submit the omitted page and accept an application filing date as of the date of submission of the omitted page.
(C) Jane must promptly submit the omitted page and will be accorded a filing date as of the date of filing the original application.
(D) Within 3 months of the Notice date, Jane must file an affidavit asserting that page 5 was in fact deposited in the USPTO with the original application. Jane will be accorded the filing date of the original application.
(E) Within 3 months of the Notice date, Jane must file a proper petition asserting that page 5 was in fact deposited in the USPTO with the original application, accompanied by the proper petition fee and evidence that page 5 was in fact deposited as alleged. Jane will be accorded the original filing date of the application.
P41. 10.02.p.34. On Monday, May 13, 2002, John’s secretary deposited in an “Express Mail” drop box prior to the last scheduled pick-up for that day, an envelope properly addressed to the USPTO for delivery to the USPTO by the “Express Mail Post Office to Addressee” service. The envelope was received by the USPTO on Wednesday, May 15, 2002, containing a reply to an Office action which set a shortened statutory period (“SSP”) for reply ending on Tuesday, May 14, 2002. The reply was marked by the Office as being received on May 15, 2002. The number of the “Express Mail” mailing label had not been placed on the response papers, and upon receipt of the “Express Mail” mailing label John learned that the “date in” was not clearly marked. John promptly filed a petition requesting the filing date to be the date of deposit. The petition included a showing that the date of deposit accompanied by evidence of USPS corroboration of the deposit. Accordingly,

(A) The reply will be regarded as timely filed in the USPTO on May 15, 2002.
(B) The reply will be regarded as timely filed in the USPTO on May 14, 2002.
(C) The reply will be regarded as timely filed in the USPTO on May 13, 2002.
(D) The reply will be regarded as timely filed in the USPTO if a petition with proper fee for a one month extension of time is filed in the USPTO on or before June 14, 2002.
(E) The reply will be regarded as timely filed in the USPTO if the number of the “Express Mail” mailing label is placed on each page of a copy of the original response and hand carried to the USPTO on May 15, 2002, rather than being sent by “Express Mail.”
P42. 4.03.a.44. A claim in an application recites “[a] composition containing: (a) 35-55% polypropylene; and (b) 45-65% polyethylene.” The sole prior art reference describes, as the only relevant disclosure, a composition containing 34.9% polypropylene and 65.1% polyethylene. In accordance with USPTO rules and procedures set forth in the MPEP, the primary examiner should properly:

(A) Indicate the claim allowable over the prior art because there is no teaching, motivation or suggestion to increase the amount of polypropylene from 34.9% to 35% and decrease the amount of polyethylene from 65.1% to 65%.
(B) Reject the claim under 35 USC 102 as anticipated by the prior art reference.
(C) Reject the claim under 35 USC 103 as obvious over the prior art reference.
(D) Reject the claim alternatively under 35 USC 102 as anticipated by or under 35 USC 103 as obvious over the prior art reference.
(E) None of the above.

P43. 4.03.p.44. In accordance with the USPTO rules and the procedures set forth in the MPEP, which of the following, if any, is true?
(A) The loser in an interference in the PTO is estopped from later claiming he or she was the first to invent in a Federal District Court since the loser must win in the USPTO or he/she will lose the right to contest priority.
(B) A person being sued for infringement may file a request for reexamination without first obtaining the permission of the Court in which the litigation is taking place.
(C) A practitioner may not represent spouses, family members or relatives before the USPTO since such representation inherently creates a conflict of interest and a practitioner is likely to engage in favoritism over his/her other clients.
(D) Employees of the USPTO may not apply for a patent during the period of their employment and for two years thereafter.
(E) None of the above.

P44. 10.03.a.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.
P45. 10.03.p.45. A patent application has claims 1-10 pending. Claims 1 and 7 are independent claims. Claims 2-6 depend directly from claim 1 while claims 8-10 depend directly from claim 7. Claims 1-10 have been twice rejected by the primary examiner under 35 USC 103(a) as being unpatentable over Smith patent in view of Jones patent. The applicant has appealed the rejection to the Board of Patent Appeals and Interferences. In the brief under the “grouping of claims” section, appellant states that each of the claims is separately patentable. In the arguments section of the brief, appellant separately argues only claims 1, 4 and 6. In the examiner’s answer, the examiner disagrees with appellant’s claim grouping because all the claims present a similar issue of patentability. The examiner states that the claims all stand or fall together as a single group. In accordance with the patent laws, rules and procedures as related in the MPEP, which claim(s) must the Board consider separately on the merits?
(A) The Board must consider each of claims 1-10 separately on the merits.
(B) The Board must only consider claims 1, 4 and 6 separately on the merits.
(C) The Board must only consider claim 1 separately on the merits.
(D) The Board must consider claim 1 and claim 7 separately on the merits as representative of all the claims on appeal.
(E) The Board must determine which claim is representative of all the claims on appeal and consider only that claim separately on the merits.
P46. 4.00.a.17. Smith invented a laminate. In a patent application, Smith most broadly disclosed the laminate as comprising a transparent protective layer in continuous, direct contact with a light-sensitive layer without any intermediate layer between the transparent protective layer and the light-sensitive layer. The prior art published two years before the effective filing date of Smith’s application included a laminate containing a transparent protective layer and a light-sensitive layer held together by an intermediate adhesive layer. Which of the following is a proper claim that would overcome a 35 U.S.C. § 102 rejection based on the prior art?
(A) 1. A laminate comprising a transparent protective layer and a light-sensitive layer.
(B) 1. A laminate comprising a transparent protective layer and a light-sensitive layer
which is in continuous and direct contact with the transparent protective layer.
(C) 1. A laminate comprising a transparent protective layer and a light-sensitive layer,
but not including an adhesive layer.
(D) (A) and (B).
(E) (B) and (C).
P47. 10.02.a.12. Inventor A filed a patent application and assigned the entire interest in the application to his employer, MegaCorp. The application issued as a utility patent on July 9, 2002. In June 2004, MegaCorp’s management first learns that a second inventor, Inventor B, should have been named as a co-inventor with respect to at least one claim of the issued patent. There was no deceptive intent in failing to name Inventor B in the original application. Inventor A, who is unfamiliar with patent law and concepts of inventorship, incorrectly believes that he should be the sole named inventor on the patent, and refuses to cooperate with any effort by MegaCorp to change the named inventive entity. The issued patent contains no other error. In accordance with the Manual of Patent Examining Procedure, which of the following procedures is/are available for MegaCorp to seek correction of the named inventive entity without any agreement, cooperation or action from Inventor A?
(A) File, on or before July 9, 2004, a reissue application, made by MegaCorp only, that seeks to add Inventor B.
(B) File, after July 9, 2004, a reissue application, made by MegaCorp only, that seeks to add Inventor B.
(C) Request a Certificate of Correction to add Inventor B as a named inventor.
(D) Submit in the issued patent file: a Request for Correction of Inventorship Under the Provisions of 37 CFR 1.48 that sets forth the desired inventorship change; a statement by Inventor B that the error in inventorship occurred without deceptive intention on her part; an oath or declaration executed by Inventor B; all required fees; and the written consent of MegaCorp.
(E) A and B are each available procedures.
P48. 10.02.p.16. In which of the following situations, considered independently of each other, is the original, new, or amended claim supported in the application as filed?

(A) An amendment to the specification changing the definition of “holder” from “is a hook” to “is a hook, clasp, crimp, or tong” and no amendment is made of the claim, which uses the term “holder.” The amendment is filed one month after the application was filed. There was no previous supporting disclosure in the specification of the holder being a clasp, crimp, or tong.
(B) An amendment to the specification and claims changing the definition of “holder” from “is a hook” to “is a hook, clasp, crimp, or tong.” The amendment is filed one month after the application was filed. There was no previous supporting disclosure in the specification of the holder being a clasp, crimp, or tong.
(C) Original claim 1 in the application refers to “a holder,” and original claim 2 depends from and refers to claim 1 stating, “said holder is a hook, clasp, crimp, or tong.” There is no disclosure in the specification preceding the claims in the application as filed for the holder to be a clasp, crimp, or tong.
(D) An amendment is filed presenting a claim to an electrical insulating device, copied from a patent for the purpose of provoking an interference. The claim refers to “nonconductive plastic holder.” The application as filed contains a broad generic disclosure describing electrical insulating devices. The holder is described in the specification of the application as “conducting electricity.” There is no disclosure in the specification of the holder being “nonconductive.”
(E) All of the above.
P49. 4.03.a.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 d