Loading…
Questions and options are transcribed word for word from the USPTO's published PDF, with its original wording and typos. US government work (17 U.S.C. 105(a): "Copyright protection under this title is not available for any work of the United States Government"). The explanations, status flags and MPEP references are ours. Questions: USPTO; answers: USPTO (archived copies).
Sit these 50 questions as a timed session
Assuming that a rejection has been properly made final, which of the following statements is not in accordance with the patent laws, rules and procedures as related in the MPEP?
USPTO answer when released: (C)
The question asks for the statement that is wrong. Ordinarily an examiner's objection is reviewed by petition and a rejection is reviewed on appeal, but when the same new matter appears in both the claims and the specification and the examiner has both objected and rejected, the objection is determinative of the rejection and the whole issue goes to the Board (now the Patent Trial and Appeal Board), not to a petition. Statement (C) reverses that rule, so it is the incorrect statement and the answer. (A), (B) and (D) each state the rule correctly, which also rules out (E). Source: MPEP § 2163.06(II), § 1201 (9th ed., Rev. 01.2024); 37 CFR 1.181; 35 U.S.C. 132; as at Oct 2026
A claim in a pending patent application stands rejected under 35 USC 103(a) as being obvious over Kim in view of Lance. The Kim and Lance references are both U.S. Patents issued on respective applications filed before the date of the application in question. In the rejection, the primary examiner asserted that no determination of the level of ordinary skill in the art was necessary because the subject matter of the application and of Kim and Lance were so easily understandable; and that the Kim reference relates to the applicant’s endeavor. The examiner properly found motive in Kim and Lance for combining the references, but the motive would produce a benefit different from that offered by applicant’s invention. Neither reference teaches or suggests the ambiguous limitation. In the rejection under 36 USC 103(a), the examiner did not address an ambiguous limitation in the claim. However, the examiner separately rejected under 35 USC 112, second paragraph as indefinite due to the ambiguity. According to the patent laws, rules and procedures as related in the MPEP, which of the following arguments, if true, would overcome the rejection?
USPTO answer when released: (A) or (B) or (C) or (D) or (E) · Today: (D)
The USPTO gave credit for every answer to this question when the exam was graded, so there was no single official key. Applying the current MPEP, (D) is the best answer: an indefinite limitation cannot be ignored in a prior-art rejection.
The USPTO accepted every answer here, so the item was effectively not graded. On the current MPEP the strongest argument is (D): a limitation the examiner thinks is indefinite still has to be accounted for, and a section 103 rejection that ignores a limitation neither reference teaches does not make out a prima facie case. (A) is weak because a specific finding on the level of skill is not required where the prior art itself reflects that level. (B) fails because a reference in the applicant's field of endeavor is analogous art even if it addresses a different problem; either test is enough. (C) fails because the motivation to combine need not be the applicant's own reason or benefit. Source: MPEP §§ 2143.03(I), 2141.03, 2141.01(a), 2144(IV) (9th ed., Rev. 01.2024); 35 U.S.C. 103, 112(b); as at Oct 2026
MPEP § 2143.03 · MPEP § 2141.03 · MPEP § 2141.01(a) · MPEP § 2144
Inventor Joe is anxious to get a patent with the broadest claim coverage possible for the invention. Joe retained a registered practitioner, Jane, to obtain the advantage of legal counsel in obtaining broad protection. Jane filed a patent application for the invention. The inventor heard that, although patent prosecution is conducted in writing, it is possible to get interviews with examiners. Joe believes an interview might hasten the grant of a patent by providing the examiner a better understanding of the true novelty of the invention. Which of the following are consistent with the patent law, rules and procedures as related by the MPEP regarding usage of interviews?
USPTO answer when released: (B)
An interview is appropriate when it can clarify specific issues and move prosecution forward, which is exactly the situation in (B): the first action suggests the examiner reads the claims very differently from what was intended. (A) is wrong because a patentability interview does not ordinarily occur before the first Office action unless the application is continuing or substitute, or the examiner decides it would advance prosecution, and an unsolicited inventor call is not that. (C) describes a 'sounding out' interview by a stand-in practitioner who cannot commit the principal, which the MPEP says should not be permitted. (D) is wrong because there is no right to an interview after final rejection; one may be granted at the examiner's discretion, so (E) also fails. Source: MPEP §§ 713.01, 713.02, 713.03, 713.09 (9th ed., Rev. 01.2024); 37 CFR 1.133(a)(2); as at Oct 2026
MPEP § 713.01 · MPEP § 713.02 · MPEP § 713.03 · MPEP § 713.09
Claim 1 of an application recites “[a]n article comprising: (a) a copper substrate; and (b) a electrically insulating layer on said substrate.” The specification defines the term “copper” as being elemental copper or copper alloys. In accordance with the patent laws, rules and procedures as related in the MPEP, for purposes of searching and examining the claim, the examiner should interpret the term “copper” in the claim as reading on:
USPTO answer when released: (C)
Claims get their broadest reasonable interpretation consistent with the specification, and when the applicant acts as their own lexicographer by clearly defining a term, that definition controls. Here the specification defines 'copper' to include both elemental copper and copper alloys, so the claim reads on both, which is (C). (A) applies the ordinary meaning even though a special definition exists, (B) reads only part of the definition, and (D) stretches the term beyond the definition to copper compounds. Source: MPEP §§ 2111, 2111.01(IV) (9th ed., Rev. 01.2024); 35 U.S.C. 112(b); as at Oct 2026
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?
USPTO answer when released: (B)
Only material that qualifies as prior art under section 102 can be used in an obviousness rejection under section 103. The publication in (B) appeared the day after the application was filed, so it is not prior art under either pre-AIA 35 U.S.C. 102 or AIA 35 U.S.C. 102(a)(1), which looks to disclosures before the effective filing date. Each of the other references predates the filing and is analogous art, either because it is in the applicant's field of endeavor or because it is reasonably pertinent to the problem the inventor faced; a different Office classification in (E) does not make a reference non-analogous. Source: MPEP §§ 2141.01, 2141.01(a), 2152.01 (9th ed., Rev. 01.2024); 35 U.S.C. 102, 103; as at Oct 2026
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?
USPTO answer when released: (B)
In ex parte reexamination, a patent owner who does not file a timely, appropriate response has the prosecution terminated under 37 CFR 1.550(d); the reply was due January 8, 2002 and was filed in March with no extension. Extensions in reexamination must be requested on or before the due date, so a later extension request (A) or (E) does not work, and the examiner does not issue a Notice of Allowance or a new final action on old claims ((C), (D)). The remedy is a petition under 37 CFR 1.137 to revive the terminated proceeding and have the late response entered, which is (B). Note that since December 18, 2013 the only revival standard is 'unintentional' delay; the separate 'unavoidable' petition mentioned in (B) no longer exists, but the course of action is unchanged. Source: MPEP §§ 2265, 2266, 2268 (9th ed., Rev. 01.2024); 37 CFR 1.550(c)-(d), 1.137; as at Oct 2026
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?
USPTO answer when released: (C)
An applicant needs to make only one credible assertion of specific and substantial utility for the claimed invention; further asserted utilities, even incredible ones, do not make the invention lack utility. Compound Y is an intermediate for synthetic Z, and the specification credibly says Z relieves pain like natural Z, so that utility carries the claim and the cancer-cure statement is beside the point. (C) makes that argument. (A) gives up a valid claim, (B) takes on an unnecessary burden, (D) is true but does not answer the utility point, and (E) does not by itself establish a credible use. Source: MPEP §§ 2107.01, 2107.02 (9th ed., Rev. 01.2024); 35 U.S.C. 101, 112(a); as at Oct 2026
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)?
USPTO answer when released: (D) · Today: (D)
Pre-AIA only: the 35 U.S.C. 102(d) foreign-patenting bar does not exist for applications subject to the AIA (any claim with an effective filing date on or after March 16, 2013). The answer remains correct for pre-AIA applications and patents.
Under pre-AIA 35 U.S.C. 102(d), the four conditions are: the foreign application was filed more than 12 months before the U.S. filing; it was filed by the same applicant or legal representatives or assigns; the foreign patent or inventor's certificate actually issued before the U.S. filing; and the same invention is involved. The foreign grant need not be published, only granted and enforceable, so (D) is not one of the conditions. The AIA removed this bar for applications governed by first-inventor-to-file, so the item matters today only for pre-AIA applications and patents. Source: MPEP §§ 2135, 2135.01 (9th ed., Rev. 01.2024); pre-AIA 35 U.S.C. 102(d); as at Oct 2026
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?
USPTO answer when released: (E)
Benefit of an earlier filing date is decided claim by claim. Claims 1-10 cover subject matter fully disclosed in the first application (filed December 13, 2001), so they keep that date and the February 4, 2002 article is not prior art against them. Claims 11-20 recite the improved capacitor that was first disclosed in the second (continuation-in-part) application, so their date is December 16, 2002 and the earlier article can be applied. The same result follows under the AIA, where the effective filing date of each claim is likewise determined claim by claim. Filing more than a year after the parent does not defeat benefit for copending applications, so (C) is wrong. Source: MPEP §§ 211.05, 2133.01, 2152.01 (9th ed., Rev. 01.2024); 35 U.S.C. 100(i), 120; as at Oct 2026
In accordance with the patent laws, rules and procedures as related in the MPEP, definiteness of claim language under 35 U.S.C. 112, second paragraph must be analyzed, not in a vacuum, but in light of:
USPTO answer when released: (E)
The MPEP says definiteness is judged in light of the content of the application disclosure, the teachings of the prior art, and the interpretation a person of ordinary skill in the art would give the claim. That is (A), (B) and (C) together, so (E) is the answer. (D) is wrong because the yardstick is ordinary skill, not expert skill. Source: MPEP § 2173.02 (9th ed., Rev. 01.2024); 35 U.S.C. 112(b); as at Oct 2026
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?
USPTO answer when released: (C)
Pre-AIA 35 U.S.C. 103(c) removes commonly owned subject matter that qualifies as prior art only under 102(e), (f) or (g) as a basis for an obviousness rejection under 103(a). It does nothing to a rejection for anticipation under 102(e), and it never overcomes double patenting, which is why the combination and 'all of the above' choices fail. The rule still governs applications subject to pre-AIA law, such as this one filed in the early 2000s (MPEP 706.02(l)(1)). For applications under the AIA, the common-ownership exception in 102(b)(2)(C) works differently: it removes the U.S. patent document as prior art for both 102 and 103 (MPEP 2154.02(c)), but double patenting is still available (MPEP 804).
Inventors B and Care 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?
USPTO answer when released: (C)
Only the assignee of the entire interest can intervene in prosecution to the exclusion of the inventors and ask that an inventor be barred from inspecting the file (MPEP 106, 106.01). Inventor C never assigned his rights, so Corporation D holds only part of the interest and cannot shut C out. A non-signing inventor cannot appoint his own practitioner over the power of attorney given by the applicant, nothing requires the other inventors' agreement to exclude someone, and exclusion is never automatic. The 37 CFR 1.47 practice in the facts has since been replaced, for applications filed on or after September 16, 2012, by the substitute statement of 37 CFR 1.64 and assignee-applicant filing under 37 CFR 1.46, but the access rule is the same.
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”?
USPTO answer when released: (D) · Today: no option can be graded
Small entity fees are now reduced by 60 percent (micro entity 80 percent) after the Unleashing American Innovators Act (effective December 29, 2022), and the statutory disclaimer fee in 37 CFR 1.20(d) is now a single, unreduced amount, so two options name unreduced fees.
When this exam was given, small entity reductions applied to the filing, extension and maintenance fees set under 35 U.S.C. 41(a) and (b), and to the disclaimer fee, but not to the fee for recording an assignment, which is a miscellaneous charge outside the statutory schedule; so the recording fee was the answer (MPEP 509.02). Today the reduction is 60 percent, the disclaimer fee is charged at one rate for everyone, and recording an assignment electronically costs nothing. Both the disclaimer fee and the recording fee are now outside the small entity reduction, so the question no longer has a single answer.
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:
USPTO answer when released: (A)
Enablement must be commensurate with the scope of the claims. Weighing the Wands factors, the claims cover antisense regulation in any cell while the specification shows only three genes in E. coli, the art is unpredictable, and the evidence shows extensive experimentation would be needed elsewhere, so the rejection is proper (MPEP 2164.01, 2164.01(a), 2164.08). A broad statement that the method is 'generally applicable' does not supply enablement, original claims are not automatically enabled by their own wording, safety for consumption is not an enablement issue, and later evidence of the inventor's own failures may be used to show the state of the art as of filing (MPEP 2164.05(a)).
MPEP § 2164.01 · MPEP § 2164.01(a) · MPEP § 2164.08 · MPEP § 2164.05(a)
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?
USPTO answer when released: (A)
After a final rejection, a proper reply under 37 CFR 1.113 includes an amendment complying with 37 CFR 1.116, such as one that cancels the rejected claims so the allowed claims can issue (MPEP 714.12, 714.13). A notice of appeal alone is not enough without the required fee, a request for continued examination needs a submission as well as the fee (37 CFR 1.114), and a continued prosecution application is not available for a utility application filed in 2001; today CPAs are limited to design applications (37 CFR 1.53(d)).
MPEP § 714.12 · MPEP § 714.13 · MPEP § 706.07(h) · MPEP § 201.06(d)
Tribell files a patent application for her aroma therapy kit on November 29, 1999, which issues as a patent on August 7, 2001. She tries to market her kit but all of 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 in the MPEP?
USPTO answer when released: (A)
Claims that are narrower than the patentee had a right to claim are a classic error correctable by reissue, and a broadening reissue must be applied for within two years of grant (35 U.S.C. 251(d); MPEP 1402, 1412.03). Tribell is within that period. The non-elected claims are a different matter: failing to file a divisional on claims withdrawn after a restriction requirement is not an error that reissue can correct (MPEP 1412.01), and a divisional application can no longer be filed because the original application has issued and is not copending. Broadening is not available at any time during enforceability.
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.
USPTO answer when released: (A)
When an applicant adequately traverses an officially noticed fact, the examiner must either support it with documentary evidence or drop the rejection (MPEP 2144.03). If the examiner cites a reference only to support the noticed fact, and the rejection is otherwise unchanged, the next action may be made final; if no support can be found, the examiner withdraws the rejection and may allow the claim. A demand for proof of the noticed fact is a proper reply to the rejection, so refusing to enter it as non-responsive would be wrong.
In accordance with the patent laws, rules and procedures as related in the MPEP, which of the following statements regarding operability or enablement of a prior art reference is the most correct?
USPTO answer when released: (A)
The level of disclosure needed for a reference to be enabling does not depend on the kind of prior art it is; a U.S. patent and a foreign patent are held to the same standard (MPEP 2121.01, 2121). The other statements are wrong: a prior art patent is presumed operable, and the applicant bears the burden of showing otherwise; a reference must be enabling to anticipate, although even a non-enabling reference can be used for what it teaches in an obviousness rejection; and enablement of the public is exactly what makes the public 'in possession' of the invention.
In accordance with patent laws, rules and procedures as related in the MPEP, a rejection under 35 USC 102 can be overcome by demonstrating:
USPTO answer when released: (E)
Anticipation requires only that a single reference disclose every element of the claim, arranged as claimed. Arguments that the reference is nonanalogous art, teaches away from the invention, or disparages it go to obviousness, and are not germane to a rejection under 35 U.S.C. 102 (MPEP 2131.05). None of the listed showings overcomes anticipation.
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?
USPTO answer when released: (D) · Today: (D)
For applications filed on or after December 18, 2013, 37 CFR 1.57(b) treats a priority or benefit claim present on filing as letting inadvertently omitted drawings from the prior application be added by amendment, up to the close of prosecution, without a separate incorporation-by-reference statement.
When this exam was given, a missing drawing filed in reply to a Notice of Omitted Item(s) took a later filing date, and canceling the description of the figure did not add it; but if the continuation as filed incorporated the parent by reference, the omitted figure contained in the parent could be added by amendment and keep the original filing date (MPEP 201.06(c), now 211.02 and 601.01(g)). A petition under 37 CFR 1.53(e) would be appropriate only if the figure had actually been deposited. Today 37 CFR 1.57(b) produces the same result for any application that claimed priority or benefit on filing: the omitted figure, completely contained in the prior application, may be added by amendment while prosecution is open, so the incorporation-by-reference route in the answer still works.
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?
USPTO answer when released: (D)
A pre-AIA 102(b) bar is measured from the application's effective filing date. If application A properly claims the benefit of copending application B, filed before the patent issued on June 2, 1992, the patent is no longer more than a year before the effective filing date, so the 102(b) rejection falls; the technical paper is used only to show inherency and is not itself the reference (MPEP 2131.01, 2133, 211.05). A Rule 131 declaration cannot antedate a statutory bar (MPEP 715), commercial success and unexpected results do not rebut anticipation, and using an extra reference to show an inherent characteristic is permitted. Today a benefit claim is made in an application data sheet within the 37 CFR 1.78 time limits, or by petition for a delayed claim, rather than by amending the specification, but the effect on the rejection is the same for this pre-AIA application.
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?
USPTO answer when released: (E)
Once an application has been published under 35 U.S.C. 122(b), anyone may obtain a copy of the specification, drawings and all papers in its file, whether it is pending or abandoned, on written request and payment of the fee in 37 CFR 1.19(b) (MPEP 103; 37 CFR 1.14(a)(1)(ii)). Publication ends the confidentiality of 122(a) for that file, so the 'no' answers are wrong, and the public may not take a file from a Technology Center to copy it. Today the file of a published application can also be viewed and downloaded free in Patent Center, but ordering a copy for a fee remains correct.
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?
USPTO answer when released: (C)
A step-plus-function limitation is construed under 35 U.S.C. 112(f) to cover the acts described in the specification and their equivalents (MPEP 2181, 2182). The reference anticipates only if it discloses those acts or their equivalents, so the complete argument shows that neither act (5) nor an equivalent of it appears in the reference. Arguing only that act (5) is missing ignores equivalents. Deleting act (5) from the specification or excluding it in the claim would not help: it narrows nothing the reference lacks and could raise new matter or written description problems.
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 as 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 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?
USPTO answer when released: (D)
The means-plus-function limitation covers the handle and knob described in the specification and their equivalents, and the examiner properly found the prior art bar to be an equivalent (MPEP 2182, 2183). Replacing the means language with the actual structure of a handle and a knob removes the equivalents scope and distinguishes the bar. Bare argument does not answer an unrebutted equivalence finding, and amending the claim or specification to add or exclude a bar would either claim the prior art or add new matter.
A registered practitioner filed a utility patent application on May 15, 2000 pursuant to 35 USC 111(a) claiming a detergent composition. On May 15, 2002 the Office mailed a non-final Office action setting a 3-month period for reply. A proper reply was mailed on August 15, 2002 by first-class mail with sufficient postage to the USPTO. The reply was received by the USPTO on September 15, 2002. On September 30, 2002, the Office mailed a final Office action. On October 15, 2002, the Office received a Request for Continued Examination (RCE) meeting all of the requirements of 37 CFR 1.114. On October 30, 2002, the USPTO mailed a Notice of Allowance in view of the RCE and amendment. The utility application issued on February 11, 2003. Which of the following statements is in accord with the patent laws, rules and procedures as related in the MPEP concerning the amount of additional term applicant X would receive because of Patent Term Adjustment (PTA)?
USPTO answer when released: (D)
Patent term adjustment under 35 U.S.C. 154(b) as amended by the American Inventors Protection Act applies only to original applications filed on or after May 29, 2000 (37 CFR 1.702(f); MPEP 2730). This application was filed on May 15, 2000, so it can earn none; filing an RCE does not make an earlier application eligible. Applications filed between June 8, 1995 and May 28, 2000 are governed by the earlier patent term extension provisions of 37 CFR 1.701, which give extensions only for interferences, secrecy orders and successful appeals (MPEP 2720).
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?
USPTO answer when released: (D)
A supplemental oath or declaration is not an amendment, except in a reissue: there it corrects the patent, so a supplemental reissue oath or declaration filed after allowance is treated as an amendment under 37 CFR 1.312 (MPEP 714.16). In an ordinary nonprovisional application, a supplemental declaration is handled under the oath rules, not 1.312, whether filed before or after the notice of allowance or issue fee payment. Filed during regular reissue prosecution, before allowance, it is simply entered.
In accordance with the patent laws, rules and procedures as related in the MPEP, which of the following is patentable subject matter under 35 USC 101?
USPTO answer when released: (C) · Today: no option can be graded
After Bilski v. Kappos (2010) and Alice Corp. v. CLS Bank (2014), a billing process whose only additions to a mathematical algorithm are generic steps such as producing an invoice is likely directed to an abstract idea; the 2003 answer relied on the State Street Bank 'useful, concrete and tangible result' test, which no longer applies.
In 2003, the MPEP followed State Street Bank and AT&T v. Excel: a process using a mathematical algorithm was patentable subject matter if it produced a useful, concrete and tangible result, such as an invoice, so the billing process was the answer, while abstract ideas, laws of nature and physical phenomena were excluded however new. The exclusions remain. The billing process, however, would now be analyzed under the Alice/Mayo framework of MPEP 2106: a billing calculation is a mathematical concept and a commercial practice, and writing an invoice is insignificant post-solution activity (MPEP 2106.04(a)(2), 2106.05(g)), so as described it would most likely not be eligible. No option is reliably correct today.
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?
USPTO answer when released: (A)
The prior art need not suggest the combination for the same purpose or to solve the same problem the applicant addressed; a different reason that would lead the skilled person to the claimed structure is enough (MPEP 2144(IV)). Patent A suggests circular receptacles sized for complementary bottles of any kind, which reaches wine bottles, so the argument about preventing breakage does not defeat the prima facie case. A different intended use or a property that the obvious structure would have anyway is not an unexpected result (MPEP 2145(II)).
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?
USPTO answer when released: (B)
The question asks for the incorrect statement. Evidence of routine business practices, such as a library's or publisher's normal procedures, can establish when a document became publicly accessible (MPEP 2128.02), so saying it is never sufficient is wrong. The other statements are correct: an indexed and shelved thesis can be a printed publication, an oral presentation with copies distributed without restriction can be one (MPEP 2128.01), internal documents under a confidentiality policy are not, and a mailed publication is available as of its receipt by a member of the public (MPEP 2128.02).
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?
USPTO answer when released: (B) or (D)
To invoke pre-AIA 35 U.S.C. 103(c), the applicant must establish that the application and the reference were commonly owned, or subject to an obligation of assignment to the same person, at the time the claimed invention was made; a clear and conspicuous statement by the applicant or the practitioner of record is enough (MPEP 706.02(l)(2)). The USPTO credited both the declaration about an obligation of assignment at the time of invention and the practitioner's statement of common ownership at that time. Ownership 'at the present time', a majority interest, or a statement by someone not authorized to speak for the owner does not establish common ownership at the relevant time. This remains the rule for pre-AIA applications; under the AIA the relevant time is the effective filing date (MPEP 2154.02(c)).
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.
USPTO answer when released: (C)
No proposed amended or new claim enlarging the scope of a claim of the patent is permitted in reexamination (35 U.S.C. 305; MPEP 2258). A new claim is broader if it covers anything the original claims did not. The patent has only apparatus claims; a method of separating fibers that does not require the claimed hydrocyclone apparatus could be infringed by processes the original claims never reached, so it enlarges scope. The other proposed claims depend from claim 4 and add limitations, which narrows them.
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.
USPTO answer when released: (B)
The examiner bears the initial burden of giving reasons, supported by the record, why the scope of protection sought is not adequately enabled (MPEP 2164.04). Claims must be construed first, because enablement is judged against what the claim covers, so statement (1) is wrong. Statement (3) is wrong because the examiner must still explain why there is doubt; the absence of working examples beyond those disclosed is not by itself a reason (MPEP 2164.02).
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?
USPTO answer when released: (D)
Inherent components of a recited element have antecedent basis in the recitation of the element itself: a circle necessarily has a center, an ellipse a major diameter, a sphere an outer surface and a rectangle an area (MPEP 2173.05(e)). A machine does not necessarily have a lever, so 'the lever' with no earlier recitation lacks antecedent basis.
A registered practitioner filed a utility application on February 11, 2002. On April 4, 2002, the practitioner filed an information disclosure statement (IDS) in the application. The practitioner received a notice of allowance dated January 3, 2003 soon after it was mailed. When discussing the application with the practitioner on January 21, 2003, and before paying the issue fee, the client notices for the first time that a reference, which is one of many patents obtained by the client’s competitor, was inadvertently omitted from the IDS. The client has been aware of this reference since before the application was filed. The client is anxious to have this reference appear on the face of the patent as having been considered by the USPTO. Which of the following actions, if taken by the practitioner, would not be in accord with the patent law, rules and procedures as related by the MPEP?
USPTO answer when released: (A)
After a notice of allowance and before payment of the issue fee, an IDS is considered only if it comes with a statement under 37 CFR 1.97(e) and the fee (37 CFR 1.97(d)). The client has known of the reference since before filing and it was not first cited by a foreign office within three months, so the 1.97(e) statement cannot truthfully be made; filing the IDS with that certification is the improper course (MPEP 609.04(b)). The other routes are proper: an RCE with the IDS before the issue fee is paid, a continuing application filed while the parent is pending, and, after the issue fee, a petition to withdraw from issue under 37 CFR 1.313(c) for an RCE or for express abandonment in favor of a continuing application (MPEP 1308).
A registered practitioner files an amendment to the client’s claim which inserts language into the claim. The primary examiner improperly rejects the claim under 35 USC 112, first paragraph, description requirement. The examiner’s rejection states that the amendment inserted new matter which does not have descriptive support in the original specification. The examiner correctly points out that there is no literal support for the amendatory claim language in the original specification, but erroneously concludes that it constitutes new matter. Assume that there is support for the amendment in the original disclosure. In accordance with the patent laws, rules and procedures as related in the MPEP, a proper reply would include which of the following argument(s) to show the examiner is in error?
USPTO answer when released: (E)
The written description requirement does not demand literal support for claim language; the test is whether the original disclosure reasonably conveys to a person skilled in the art that the inventor possessed the claimed subject matter as of the filing date (MPEP 2163, 2163.02). Both points belong in the reply. Enablement is a separate requirement and does not answer a written description rejection, and description in a different patent does not show that this application's original disclosure supports the amendment.
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 from 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?
USPTO answer when released: (D)
Filing an RCE after an appeal brief but before the Board decides is treated as a withdrawal of the appeal, whether or not the RCE is complete (MPEP 1215.01, 706.07(h)). Because the RCE lacked the fee, prosecution is not reopened; the proceedings as to the rejected claims end. Claims objected to as depending from a rejected claim are treated as rejected, so claims 1-5 are canceled and the application passes to issue on allowed claims 6-10. Had no claim been allowed, the application would have been abandoned. The Board of Patent Appeals and Interferences is now the Patent Trial and Appeal Board.
Applicant filed an application containing a claim directed to a polishing wheel coated with diamond grit particles. The application discloses, but does not claim, a diamond grit particle size of 5-7 microns. The examiner rejected the claim under 35 USC 102(b) as being anticipated by a U.S. patent which disclosed as its invention a polishing wheel in accordance with the claim of the application but coated with glass grit particles instead of diamond grit particles. The applied patent, which issued more than 1 year prior to the effective filing date of the application, also disclosed that diamond grit particles were known for coating on polishing wheels but were inferior to glass grit particles because they were more expensive and did not adhere as well to the polishing wheel. The applied patent disclosed a grit particle size of 50-100 microns. Which of the following timely taken courses of action would comply with the patent laws, rules and procedures as related in the MPEP for overcoming the rejection?
USPTO answer when released: (E)
The patent describes a polishing wheel with diamond grit as known, so it discloses every element of the claim even while calling diamond grit inferior; a teaching away does not negate anticipation (MPEP 2131.05). Unexpected results answer obviousness, not anticipation, and a Rule 131 declaration cannot antedate a reference that is a 102(b) bar (MPEP 715). Adding the disclosed 5-7 micron particle size, which the patent's 50-100 micron disclosure does not meet, and explaining the difference is a proper way to overcome the rejection (MPEP 2131, 2131.03). The same analysis applies under AIA 102(a)(1).
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?
USPTO answer when released: (D)
When the Board affirms and no court review is sought, proceedings on the rejected claims terminate (37 CFR 1.197). Where at least one claim stands allowed, the examiner cancels the rejected claims, and any claims objected to only for depending from them, and passes the application to issue on the allowed claims (MPEP 1214.06). The option of rewriting an objected-to dependent claim applies only where no claim stands allowed, and the application is not abandoned while an allowed claim remains.
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?
USPTO answer when released: (A) or (B) or (C) or (D) or (E) · Today: no option can be graded
The USPTO gave credit for every answer. The question relies on the interference rules (37 CFR 1.601(n), 'same patentable invention'), removed in 2004, and on pre-AIA 102(e) practice for commonly owned applications claiming the same invention.
The USPTO credited all answers, so the item was effectively withdrawn. Under the law it tested, a Rule 131 declaration cannot be used against a U.S. patent claiming the same patentable invention (MPEP 715.05), and a terminal disclaimer addresses double patenting rather than prior art. The cited interference definition no longer exists: interference rules were replaced by Part 41 in 2004, and for AIA applications interferences gave way to derivation proceedings. Today, for an AIA application, a commonly owned earlier-filed U.S. patent document is excepted from 102(a)(2) under 102(b)(2)(C), but claims to the same invention still face statutory double patenting (MPEP 2154.02(c), 804).
In accordance with patent laws, rules and procedures as related in the MPEP, which of the following transitional phrases exclude additional, unrecited elements or method steps from the scope of a claim?
USPTO answer when released: (E)
'Comprising', 'including', 'containing' and 'characterized by' are all open-ended transitional terms that do not exclude additional, unrecited elements or method steps (MPEP 2111.03). Only 'consisting of' is closed, and 'consisting essentially of' is partly closed, so none of the listed phrases excludes unrecited elements.
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.
USPTO answer when released: (E)
A proper multiple dependent claim refers back to preceding claims, in the alternative only (35 U.S.C. 112(e); 37 CFR 1.75(c)). 'According to claims 1-3' and 'claims 1, 2, 3, and/or 4' are not in the alternative, a claim may not depend on later claims such as 6 or 8, and the MPEP lists a claim that is both 'as in claim 1 or 2' and 'made by the process of claim 3 or 4' among unacceptable wordings (MPEP 608.01(n)). None of the options is proper.
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?
USPTO answer when released: (E)
A restriction requirement is reviewed by petition to the Technology Center Director under 37 CFR 1.144 after the requirement is made final, not by appeal; restriction is not a rejection (MPEP 818.03(c), 1002.02(c)). In the continuing application no claim has been rejected at all, so nothing there can be appealed, and the parent's rejections can be appealed only in the parent. The Board of Patent Appeals and Interferences is now the Patent Trial and Appeal Board, and the rule is unchanged.
In accordance with the patent laws, rules and procedures as related in the MPEP, where the independent claim in an application is to an article of manufacture, then a dependent claim to the article of manufacture does not comply with 35 USC 112, fourth paragraph, if:
USPTO answer when released: (C)
A claim in dependent form must refer back to an earlier claim and specify a further limitation of the subject matter claimed (35 U.S.C. 112(d), formerly the fourth paragraph; 37 CFR 1.75(c); MPEP 608.01(n)). A further limitation always changes scope, need not be significant, and classification has nothing to do with it. A claim that does not refer back and further limit fails the requirement.
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?
USPTO answer when released: (A) · Today: (A)
Revival is now under 37 CFR 1.137(a) on the unintentional delay standard (since December 18, 2013; the separate unavoidable route was removed); the option's reference to 1.137(b) reflects the old numbering.
An applicant who made a nonpublication request and then files abroad in a country requiring 18-month publication must notify the USPTO within 45 days of the foreign filing; failing to do so abandons the U.S. application (35 U.S.C. 122(b)(2)(B)(iii); 37 CFR 1.213(c); MPEP 901.03). Here 60 days have passed, so the application is abandoned and must be revived by petition with the fee. Rescission before the foreign filing is not required, and adding the improvements by amendment would be new matter. Today the petition is filed under 37 CFR 1.137(a) for unintentional delay (MPEP 711.03(c)).
In accordance with patent laws, rules and procedures as related in the MPEP, an abandoned U.S. patent application:
USPTO answer when released: (E)
An abandoned application is not itself published prior art, but its contents can become available when properly incorporated by reference in a U.S. patent or a U.S. patent application publication (MPEP 2127). The statements that limit this to patents, or tie the prior art date to the abandoned application's own filing date, are inaccurate; the material is available through the publication or patent that incorporates it.
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?
USPTO answer when released: (C)
Documents distributed only internally within an organization, to people who understand they are to be kept confidential, are not printed publications, however many copies circulate (MPEP 2128.01). An orally presented paper distributed without restriction, a thesis indexed and shelved in a library, a document publicly posted on the Internet, and a catalogued manual in a public library are all publicly accessible; actual viewing is not required. The same accessibility test applies under AIA 102(a)(1) (MPEP 2152.02(b)).
In accordance with the patent laws, rules and procedures as related in the MPEP, which of the following statements regarding claim interpretation during patent prosecution is incorrect?
USPTO answer when released: (B)
The question asks for the incorrect statement. Claims are read in light of the specification and given their broadest reasonable interpretation, but limitations from the specification are not read into the claims (MPEP 2111, 2111.01). The other statements are correct: undefined terms take their ordinary meaning, an explicit definition in the specification controls, and means-plus-function language covers the disclosed structure and its equivalents (MPEP 2181).
Buddy is a recent father and a machinist at a local machine shop. One day while driving to work, Buddy conceived an idea for an improved baby stroller. He quickly worked out many of the details of how to build such an improved stroller, but he still had questions. Buddy later explained his idea to his employer and showed the employer detailed preliminary drawings of the stroller without any agreement as to confidentiality. Buddy wanted use of his employer’s machine shop to build a model. Buddy’s employer was also excited about the stroller idea and its commercial potential, and the two quickly reached an oral agreement. Buddy would have free use of the machine shop equipment and supplies after regular business hours to work on his model. In exchange, Buddy agreed to assign any patent rights in his invention to the employer for $1,000.00. Only Buddy and, occasionally, his employer were ever present in the shop when Buddy was working on the stroller. Buddy finalized the design just over a year later, and a nonprovisional patent application was on file within a month of finalization along with a recently executed written assignment of the rights in the invention to Buddy’s employer. During prosecution of the patent application, the examiner learned of the oral agreement between Buddy and his employer, and rejected the claims on the basis that the invention was on sale more than one year before the application filing date. Determine which of the following would provide the most reasonable basis for traversing the rejection in accordance with the patent laws, rules and procedures as related in the MPEP.
USPTO answer when released: (C)
A sale or assignment of the rights in an invention, including patent rights, is not a sale of the invention itself and does not by itself create an on-sale bar (MPEP 2133.03(b)). On-sale and public-use bars are not limited to patents and printed publications, private sales can bar a patent, the Statute of Frauds is irrelevant, and the lack of an audience goes to public use, not to whether something was on sale. The same principle applies to 'on sale' under AIA 102(a)(1) (MPEP 2152.02(d)).
Inventor files an application for a non-theoretical metal alloy. The application as originally filed contains the following Claim 1: 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)?
USPTO answer when released: (D)
Claim 1 requires at least 20% iron. A dependent claim requiring 54% copper and 27% gallium leaves at most 19% for everything else, so no alloy can meet both claims; a dependent claim whose limits are inconsistent with the open-ended ranges of its parent is indefinite (MPEP 2173.05(c)). The other dependent claims fit within claim 1: 66% gallium and 14% copper still leaves exactly 20% for iron, and the remaining combinations add up to 100% or less. Section 112(2) is now 35 U.S.C. 112(b).
Ben hires a registered practitioner to prosecute his patent application. The practitioner drafted an application having fifteen claims. Claim 1 is independent, and each of claims 2-15 are singularly dependent upon claim 1. A proper non-final Office action is mailed to the practitioner. Following consultation with Ben, the practitioner timely prepared, signed, and filed a reply to the Office action containing an amendment that does not add new matter, but does add claims 16-27. Each of claims 16-27 is directed to the same inventions ought to be patented through claims 1-15. The dependency of each of claims 16-27 reads “any of claims 5-15.” For purposes of fee calculation in accordance with the patent laws, rules and procedures as related in the MPEP, how many total claims are contained in the application after the amendment is entered?
USPTO answer when released: (D)
For fee purposes a multiple dependent claim counts as the number of claims it refers to, and a claim depending from it counts the same way (37 CFR 1.75(c); MPEP 608.01(n), 607). Each of claims 16-27 refers to 'any of claims 5-15', which is 11 claims, so the 12 new claims count as 12 x 11 = 132. Adding the original 15 claims gives 147.
Independent. Not affiliated with or endorsed by the USPTO.