These are Hard Mode questions from our bank: applied fact patterns with dates, filings and deadlines, the style that costs candidates points on the real exam. Answers and worked explanations are shown. All questions are original; they are not questions from the current exam.
A German company filed a PCT application on May 4, 2025, designating the United States; WIPO published it in German on November 12, 2026. A U.S. applicant, unrelated to the company and with no earlier disclosure, filed a nonprovisional application on January 20, 2026, claiming subject matter the PCT application describes. Can the examiner rely on the PCT publication under 102(a)(2)?
Why: Answer: Yes, as of May 4, 2025, even though it was published in German. Under 35 U.S.C. 374, a WIPO publication of a PCT application designating the United States is treated as a published U.S. application for 102(a)(2). Under the AIA its language does not matter, and under 102(d) it is effectively filed on its international filing date (or an earlier entitled priority date). May 4, 2025 is before January 20, 2026 (MPEP 2154.01(a)). Why not the others: - English only: that limit applied to pre-AIA 102(e) as amended by the AIPA, not to AIA 102(a)(2). - Published after the applicant filed: 102(a)(2) dates the reference from when it was effectively filed. - Only as of publication: the publication date is the 102(a)(1) date, not the 102(a)(2) date. - Only after national stage entry: the WIPO publication itself qualifies under 35 U.S.C. 374. Rule: A WIPO publication designating the U.S. is 102(a)(2) art as of its effective filing date, in any language. Source: MPEP § 2154.01(a), § 2154.01(b) (9th ed., Rev. 01.2024); 35 U.S.C. 102(a)(2), 102(d), 374; as at Oct 2026
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Start practicing →Original study material written from the MPEP (9th ed., Rev. 01.2024). Every rule carries its source and date; confirm current practice with the USPTO before relying on it.
Before Ama's invention date, a competitor in Ohio used her claimed heat-treating process in secret and sold large numbers of springs made by it. The process cannot be learned by examining the springs. Ama's pre-AIA application was filed within one year of the competitor's first sales. Is the competitor's activity prior art against Ama's process claims under pre-AIA 102(a)?
Why: Answer: No, because another's secret process is not in public use if the product does not reveal it. A secret use of a process coupled with sale of the product does not make the process publicly used unless the public could learn the process by examining the product. Secret use by another, even with commercial sales, cannot support a pre-AIA 102(a) rejection when examining the product would not reveal the process (MPEP 2132(I)(B)). The sales began less than a year before filing, so 102(b) does not apply either. Why not the others: - Sales put the process in public use: only if the product reveals the process. - Any commercial use by another: 102(a) needs the invention to be publicly known or used, and this use was secret. - Only publications and patents: 102(a) also covers inventions known or used by others in this country. - In the United States: the use was in this country, but it was not public, so location does not help. Rule: Another's secret process does not become 102(a) prior art just because products made by it are sold, unless the products reveal it. Source: MPEP § 2132 (9th ed., Rev. 01.2024); pre-AIA 35 U.S.C. 102(a); as at Oct 2026
References combined in a proper rejection teach a polymer coating with exactly the composition Hugo claims. Hugo discovered that this coating also blocks ultraviolet light, a property no reference mentions, and argues that the newly found property makes his coating claim nonobvious. The claim recites only the composition. Which is correct?
Why: Answer: The argument fails, because finding a latent property of an otherwise obvious coating does not make it nonobvious. Mere recognition of latent properties in the prior art does not render nonobvious an otherwise known invention (In re Wiseman, MPEP 2145(II)). The combined references lead to the same coating, which inherently has the ultraviolet-blocking property whether or not anyone knew it (MPEP 2112). Why not the others: - Unknown property cannot be obvious: the claim is to the composition, which the art makes obvious; the property comes with it. - New property is always an unexpected result: unexpected results must show a difference from the closest prior art; this coating is the same. - Properties never relevant: properties can matter, for example in a comparison showing unexpected results for a different composition. - Declaration naming the property: a declaration that only names an inherent property does not change the composition or show a difference from the art. Rule: Discovering a new property of an obvious composition does not make the composition patentable. Source: MPEP § 2145, § 2112 (9th ed., Rev. 01.2024); 35 U.S.C. 103; as at Oct 2026
Claim 3 recites 'control means for opening the bypass valve when line pressure exceeds a set point.' The specification states only that 'the valve may be controlled by known differential-pressure and valving control equipment' and identifies no particular controller. In reply to a rejection, the applicant argues that engineers would know many suitable controllers. What is the proper treatment of claim 3?
Why: Answer: Reject it under 35 U.S.C. 112(b), because saying known equipment may be used is not structure. A means-plus-function limitation must be supported by corresponding structure disclosed in the specification itself. A bare statement that known techniques or equipment can be used does not disclose structure (Biomedino), and it is not enough to argue later that skilled persons would know what to use (Aristocrat). Without corresponding structure the claim fails 112(b); MPEP 2185 notes that 112(a) rejections should also be considered. Why not the others: - Skilled engineers would know: the inquiry is whether the specification discloses a structure, not whether a skilled person could supply one. - Examine only under 102 and 103: when no structure is disclosed, any element performing the function is an equivalent for prior art purposes, but the 112(b) defect must still be addressed. - 1.75(d)(1) objection alone: the defect is a failure to disclose structure for a 112(f) limitation, which is a 112(b) rejection, not a mere antecedent basis objection. - Adding a specific controller after filing would introduce structure not originally disclosed, which is new matter. Rule: A means-plus-function claim with no structure in the specification is indefinite; 'known equipment can be used' is not structure. Source: MPEP § 2181, § 2185 (9th ed., Rev. 01.2024); 35 U.S.C. 112(b), 112(f); as at Oct 2026
To secure a filing date quickly, an applicant files a nonprovisional application under 111(a) consisting only of an application data sheet with a reference stating that the specification and drawings are replaced by those of a previously filed Japanese application, identified by number, country and filing date. Which statement is correct?
Why: Answer: It secures a filing date; a copy and translation follow later. Under 35 U.S.C. 111(c) and 37 CFR 1.57(a), a reference in an ADS on filing to a previously filed application, indicating that its specification and drawings replace those of the new application, gives a filing date. The applicant must later file a copy of the specification and drawings, an English translation if needed and the 1.17(i) fee. A reference filing does not by itself claim priority (MPEP 601.01(a)). Why not the others: - Certified copy on filing: a copy may be filed later within the set period. - Provisionals only: reference filing applies to nonprovisional applications under 111(a). - Automatic priority: priority must be claimed separately under 1.55. - Designs only: reference filing under 111(c) is not available for design applications. Rule: A 1.57(a) reference filing secures a filing date; the copy, translation and fee follow, and priority is claimed separately. Source: MPEP § 601.01(a) (9th ed., Rev. 01.2024); 35 U.S.C. 111(c); 37 CFR 1.57(a); as at Oct 2026
Parent application P1 discloses a pump with a ceramic impeller. Parent application P2, filed later by the same inventor, discloses the same pump with a magnetic coupling but no ceramic impeller. Neither describes the two features together. A continuation-in-part that properly claims the benefit of both, while both are pending, claims a pump with a ceramic impeller and a magnetic coupling. What is that claim's effective filing date?
Why: Answer: The CIP's own filing date. A claim gets an earlier application's date only if that application supports the whole claim under 35 U.S.C. 112(a), except best mode. A claim relying on a combination of prior applications may not get either date, because neither application alone discloses the claimed invention (Studiengesellschaft Kohle). The claim's effective filing date is the CIP's own filing date. Why not the others: - P1's date: P1 does not describe the magnetic coupling. - P2's date: P2 does not describe the ceramic impeller. - Split dates: effective filing dates attach to a claimed invention as a whole, not to individual features. - Issue dates have nothing to do with the effective filing date of a claim. Rule: Each earlier application must alone support the entire claim; disclosures cannot be pieced together. Source: MPEP § 211.05, § 2152.01 (9th ed., Rev. 01.2024); 35 U.S.C. 100(i), 120; as at Oct 2026
A final rejection was mailed on Wednesday, January 14, 2026, with a 3-month shortened statutory period. Two months later fell on Saturday, March 14, 2026. The applicant filed a complete first reply on Monday, March 16, 2026. The examiner mailed an advisory action on Thursday, April 23, 2026. Without any extension of time, what is the last day to file a notice of appeal?
Why: Answer: Thursday, April 23, 2026, the advisory action's mailing date. Two months from the final rejection fell on Saturday, March 14, so a reply filed on Monday, March 16 is deemed filed within the 2-month window under 37 CFR 1.7(a) (MPEP 706.07(f), item A). The advisory action was mailed after the 3-month date (April 14), so the shortened period expired on April 23, the advisory action's mailing date. Why not the others: - April 14: the 3-month date controls only if the first reply misses the 2-month window or the advisory action is mailed before it. - March 16: the filing of a reply does not end the period for reply. - July 14: six months is the outer limit reachable only with extensions. - No rule adds a month after an advisory action; any time past April 23 must be bought with extensions. Rule: A first reply filed on the next business day after a 2-month date falling on a weekend counts as filed within 2 months. Source: MPEP § 706.07(f), § 710.05 (9th ed., Rev. 01.2024); 35 U.S.C. 21(b); 37 CFR 1.7(a); as at Oct 2026
Three commonly owned, copending utility applications, the Aster, Iris and Lupin applications, have mutually conflicting claims. In each, the examiner makes a provisional nonstatutory double patenting rejection over the other two. The applicant wants to overcome the rejections with terminal disclaimers. Which of the following statements is/are correct? (i) A single terminal disclaimer filed in the Aster application, naming both the Iris and Lupin applications, is sufficient for all three. (ii) Appropriate terminal disclaimers must be filed in at least two of the three applications. (iii) Requesting that all three issue on a common date can substitute for the terminal disclaimers.
Why: Answer: (ii) only. (i) False. A terminal disclaimer in only one application addressing the other two is not sufficient (MPEP 804, subsection I.B.1; MPEP 1490, subsection VI.D). (ii) True. An appropriate disclaimer must be filed in at least two of the applications to require common ownership or enforcement for all three, and sometimes in all three. (iii) False. Reliance on a common issue date cannot substitute for terminal disclaimers, and the Office cannot ensure a common issue date (MPEP 804.02, subsection III). Rule: With three conflicting applications, disclaimers are needed in at least two; a common issue date is no substitute. Source: MPEP § 804, § 804.02, § 1490 (9th ed., Rev. 01.2024); 37 CFR 1.321(c); as at Oct 2026
