Q) Which, if any: Chapter 600 (10.03.22p)

by admin on April 13, 2010 · 25 comments

Recent test takers report that question #22 from the October 2003 (PM) test is in the patent bar exam database.

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.

ANSWER: (E) is the correct answer. (A) is not in accord the patent laws, rules and procedures as related in the MPEP. Regarding (A), MPEP § 601.05, states (“[i]f an application is filed with an application data sheet correctly setting forth the citizenship of inventor B, and an executed 37 CFR 1.63 declaration setting forth a different incorrect citizenship of inventor B, the Office will capture the citizenship of inventor B found in the application data sheet. Applicant, however, must submit a supplemental oath or declaration under 37 CFR 1.67 by inventor B setting forth the correct citizenship even though it appears correctly in the application data sheet. … If, however, the error is one of residence, no change would be required (37 CFR 1.76(d)(2)).” (B) is not in accord the patent laws, rules and procedures as related in the MPEP. As for (B), MPEP § 602, under the heading “Sole Or Joint Designation,” states “[w]hen joint inventors execute separate oaths or declarations, each oath or declaration should make reference to the fact that the affiant is a joint inventor together with each of the other inventors indicating them by name.” The examiner should notify the inventors that their oaths or declarations are defective and that new oaths or declarations are required. (C) is incorrect. MPEP § 608.01(n), under the heading “II. Treatment Of Improper Dependent Claims,” states “[c]laims which are in improper dependent form for failing to further limit the subject matter of a previous claim should be objected to under 37 CFR 1.75(c) by using form paragraph 7.36.” The claim should not be rejected. Further as for (C), MPEP § 608.01(n), under heading “III. Infringement Test,” states “[a] dependent claim does not lack compliance with 35 U.S.C. 112, fourth paragraph, simply because there is a question as to (1) the significance of the further limitation added by the dependent claim, or (2) whether the further limitation in fact changes the scope of the dependent claim from that of the claim from which it depends. The test for a proper dependent claim under the fourth paragraph of 35 U.S.C. 112 is whether the dependent claim includes every limitation of the claim from which it depends. The test is not one of whether the claims differ in scope.” (D) is not in accord the patent laws, rules and procedures as related in the MPEP. As for (D), MPEP § 609, under heading “(B)(5) Statement Under 37 CFR 1.97(e),” states “[t]he date on the communication by the foreign patent office begins the 3-month period in the same manner as the mailing of an Office action starts a 3-month shortened statutory period for reply . … The date which begins the 3-month period is not the date the communication was received by a foreign associate or the date it was received by a U.S. registered practitioner.”

1 studier December 3, 2010 at 12:54 pm

repeating a limitation verbatim is hardly the same as “questioning the significance of the further limitation,” but ok… I’ll just remember this.

2 Sol April 3, 2012 at 9:13 pm: I agree. On the same page, MPEP says if the scopes differ does not matter in regard to the question if the dependent claim is proper or improper. On the other hand, saying “…as being of improper dependent form for failing to further limit the subject matter of a previous claim”. Further limit or not? I am so confused. 112 does require further limitation.

I am just going to remember
repeat a limitation, then no further limitation, (not? in compliance with 112 4th?) then objection no rejection

3 KF March 2, 2012 at 9:42 pm

FYI-The correct citation for answer choice (D) is now 609.04(b)(V), not 609. Title is still the same.

4 KillianRed March 17, 2012 at 5:24 pm

Got this one 3/17/12

5 Sol April 3, 2012 at 9:34 pm: If “The test for a proper dependent claim under the fourth paragraph of 35 U.S.C. 112 is whether the dependent claim includes every limitation of the claim from which it depends.”, “A dependent claim which merely repeats a limitation that appears in the claim on which it depends” is NOT improper since it includes every limitation of the claim form which it depends. Then how come objection as being of improper dependent form?

6 ARos April 11, 2012 at 10:51 pm

(C) is wrong because the MPEP states that the Examiner should OBJECT to the improper dependent claim rather than REJECTing it.

See MPEP 608.01(n) II: “A claim determined to be an improper dependent claim should be treated as a formal matter, in that the claim should be objected to and applicant should be required to cancel the claim (or replace the improper dependent claim with an independent claim) rather than treated by a rejection of the claim under 35 U.S.C. 112, fourth paragraph.”

7 Sol April 12, 2012 at 1:20 am: I know they wrote this in MEPE, but it just does not make sense. Either from the statue language or from their own conflicting statements. Now they changed the guideline but I am not sure they change the answer.

8 Sol April 12, 2012 at 1:18 am

C is correct according to sup rules.In fact, I think their current interpretation is making much mor sense. C should have been correct if they read and understand the statue before making unthinkable guideline.

However, I don’t what I am going to do on the test if I saw this one again.

6. Supplementary Examination Guidelines for Determining Compliance with 35 U.S.C. § 112 and for Treatment of Related Issues in .

Although the requirements of § 112, ¶4 are related to matters of form, noncompliance with § 112, ¶4 renders the claim unpatentable just as noncompliance with other paragraphs of § 112 would.55 For example, a
dependent claim must be rejected under § 112, ¶4 if it omits an element from the claim upon which it depends 56 or it fails to add a limitation to the claim
upon which it depends.

9 ARos April 12, 2012 at 10:46 am

Nice catch. I didn’t check the supplemental rules.

As for what to do on the exam, the PTO website says that in the event of a conflict between the MPEP and other source materials:

“The applicable laws, rules and procedures as set forth in the published USPTO policy and procedure reference material will control ”

So go with supplemental guidlines rather than the MPEP.

10 ARos April 14, 2012 at 10:35 pm

As a follow-up, I actually got this question…thanks for pointing me to the right place in the supplemental materials, SOL

11 Kass May 21, 2012 at 12:56 pm

Are these Supplementary guidelines given to us on Exam day?

12 Keener May 21, 2012 at 8:23 pm: Yep… it is under a separate Reference button. There are several to choose from and they are long.

13 PatCrazed May 23, 2012 at 7:18 pm

Thanks for the reference Sol,

I found the Federal Register citation, but is this supplemental rule in the MPEP? I tried finding it, but to no avail. Thanks again.

14 zan May 21, 2012 at 8:33 pm

ARos reported getting this question in April. Is C now the correct answer?

15 A patent dude June 5, 2012 at 8:55 am

From the Federal Register, dated 2-9-2011.

5. Dependent Claims: When examining a dependent claim, the examiner should also determine whether the claim complies with § 112, ¶4, which requires that dependent claims contain a reference to a previous claim in the same application, specify a further limitation of the subject matter claimed, and necessarily include all the limitations of the previous claim. [53] If the dependent claim does not comply with the requirements of § 112, ¶4, the examiner should reject the dependent claim under § 112, ¶4 as unpatentable rather than objecting to the claim. [54] Although the requirements of § 112, ¶4 are related to matters of form, non-compliance with § 112, ¶4 renders the claim unpatentable just as non-compliance with other paragraphs of § 112 would. [55] For example, a dependent claim must be rejected under § 112, ¶4 if it omits an element from the claim upon which it depends [56] or it fails to add a limitation to the claim upon which it depends. [57]

I think this answers the question.

16 Has Designs June 6, 2012 at 6:04 pm

This Site, The Contributors are such a help. Just starting on the determined study here. I am also using Mambo’s FC. So I found 10.03.p.22 in Mambo FC 4, where he has written in E. For some reason the last letter and number are exchanged in Mambo’s nomenclature of the questions. I inserted a sticky note and added Sol’s and Patent Dude’s contributions, see below for the insert. I do Mambo’s FC on my Android, via Repli Go Reader, works great. And I keep it active by adding annotations:

Answer C is actually right, it is not E, they are not all wrong. A dependent claim that just repeats the limitations in the claim from which it depends without adding further limitation is rejected, the MPEP gets it wrong. Go to:

Federal Register, dated 2-9-2011.

And see:

6. Supplementary Examination Guidelines for Determining Compliance with 35 U.S.C. § 112 and for Treatment of Related Issues in .
Although the requirements of § 112, ¶4 are related to matters of form, noncompliance with § 112, ¶4 renders the claim unpatentable just as noncompliance with other paragraphs of § 112 would. For example, a dependent claim must be rejected under § 112, ¶4 if it omits an element from the claim upon which it depends 56 or it fails to add a limitation to the claim upon which it depends.

17 PatentGrrl July 4, 2012 at 8:49 am

Although I agree with you all that the answer should be C, I bet the PTO still counts E as correct. Has anyone checked their answers at the PTO in the past year or two to see about this?

18 Matty August 16, 2012 at 3:23 pm

I agree with the consensus that (C) is correct under PTO practice when considering Supplemental Examination Guidelines and the Federal Register. After reading the question, comments here, and the MPEP sections and Suppl. Exam. Guidelines, and Fed. Register, this struck me:
Perhaps we’re misreading the question. The call of the question is “as related in *the MPEP*?”. Are the SED and FR part of the MPEP? I don’t know for sure, but if they’re *not*, then under the MPEP alone, (C) appears incorrect — making (E) the correct answer to the question asked.
Thoughts?

19 VenuSareen August 24, 2012 at 12:09 am

Per John White:

112, 4th, is not used as basis of rejection. It is always 112, 2nd.
112, paragraphs 3-6 are cited or referenced, but the rejection is
always under 112, 2nd, as being indefinite.

112, 1st, is used to rejects claims and object to the spec as being
insufficient.

20 E August 28, 2012 at 6:13 pm

Hi Has Designs,

Can you provide more info on “Mambo’s FC” and “Repli Go Reader”?

Thanks,
E

21 mimi September 21, 2012 at 1:14 am

I think a dependent claim which merely repeats a limitation that appears in the claim on which it depends is a duplicate claim.

I looked up the related text in 706.03(k) MEPE. See below.
It seems that the duplicate claim may not be rejected or objected under 112 before allowance. Or applicants have some right to restate in claims within a resonable number of claims.

I need helps to understand this Q.

——————————————–
Inasmuch as a patent is supposed to be limited to only one invention or, at most, several closely related indivisible inventions, limiting an application to a single claim, or a single claim to each of the related inventions might appear to be logical as well as convenient. However, court decisions have confirmed applicant’s right to restate (i.e., by plural claiming) the invention in a reasonable number of ways. Indeed, a mere difference in scope between claims has been held to be enough.

Nevertheless, when two claims in an application are duplicates, or else are so close in content that they both cover the same thing, despite a slight difference in wording, it is proper after allowing one claim to object to the other claim under 37 CFR 1.75 as being a substantial duplicate of the allowed claim.

Form paragraphs 7.05.05 and 7.05.06 may be used where duplicate claims are present in an application.

22 MCP October 9, 2012 at 6:49 pm

What about B? I can’t find that separate oaths need to mention other inventor.

23 Unipec January 17, 2013 at 5:27 pm

(C) is now correct according to the current version (revision 9; August 2012) of the MPEP. MPEP 608.01(n)(II) (page 600-89) states:

“Claims which are in improper dependent form for failing to further limit the subject matter of a previous claim . . . should be rejected under 35 U.S.C. 112, fourth paragraph.”

As to MCP’s question of (B), revision 9 seems ambiguous, but it still says that when joint inventors file separate oaths, each oath should mention that the affiants are joint inventors and list the other inventors, though. MPEP 602(IV) (page 600-32). I’d say that (B) is still wrong.