Practice Exam 4

Question 1

Is reassertion of small entity status required in related applications? (continuations, divisionals, reissues)

Answer 1

Yes, status as a small entity in one application or patent does not affect the status of any other application or patent, regardless of the relationship of the applications or patents.

509.03

Question 2

If you assign rights to another party who is a small entity after asserting small entity status yourself, do you still need a second assertion of small entity status?

Answer 2

No, a second assertion is not required.

509.02

Question 3

When is the phrase “effective amount” indefinite in a claim?

Answer 3

When the claim fails to state the function which is to be achieved and more than one effect can be implied from the specification or relevant art.

2173.05c

Question 4

Can you request a suspension of action with an RCE without a complete submission in reply to the Office action accompanying the RCE?

Answer 4

No, the RCE must be accompanied by a complete submission and the fee, or it is treated as improper and the request for suspension will not be recognize and the time period set in the previous rejection will continue to run.

709

Question 5

If there were any changes, additions, or deletions made to the original patent before applying for a reissue, (such as in a certificate of correction), should these changes be shown with underlining or bracketing in the reissue?

Answer 5

No, changes are only shown relative to the patent as it was when the reissue was filed.

1453

Question 6

Can an oath or declaration be submitted after the filing date?

Answer 6

Yes

601.01a

Question 7

Do you need to submit a new oath or declaration with a continuation or divisional application?

Answer 7

No, but you do need to submit a copy of the original.

201.06c

Question 8

How do you make sure a patent issues to the assignee of the application and is listed on the face of the patent?

Answer 8

Upon allowance, identify the company as the assignee in the appropriate space on the Issue Fee Transmittal form. Unless the assignee name and address are identified on the Fee Transmittal form the patent will issue to the applicant.

Question 9

Do you need a signed oath to file a broadening reissue application?

Answer 9

Yes, by the inventor, even if the reissue is applied for by the assignee.

Question 10

Does an inventor have to reduce the invention to practice?

Answer 10

No, see inventorship in 2109

Question 11

In conceiving an invention, can an inventor consider and adopt ideas and materials derived from any sources, such as ideas of previous inventors?

Answer 11

Yes, as long as the inventor maintains intellectual domination over making the invention, ideas, suggestions, and materials may be adopted from others.

Question 12

What happens if a non-provisional application is filed “by reference” where a complete copy of the priority document is not submitted within 4 moths of filing, or sixteen months from the priority date?

Answer 12

It will be treated as though it had never been filed.

Question 13

Does a deficiency under 35 USC 101 also create a deficiency under 35 USC 112 a?

Answer 13

Yes

Question 14

How long do you have to file the issue fee?

Answer 14

Three months from the date of the Notice of Allowance

Question 15

Can you submit an additional drawing to make the specification enabling after receiving an objection for lack of enablement?

Answer 15

No, “drawings submitte3d after the filing date of the application may not be used to overcome any insufficiency of the specification due to lack of an enabling disclosure or otherwise inadequate disclosure.”

Question 16

Can you patent a newly discovered property of something that already existed?

Answer 16

No, “the claiming of a new use, new function, or unknown property which is inherently present in the prior art does not necessarily make the claim patentable.”

Question 17

For fee calculating purposes, how many claims does a multiple dependent claim count as?

Answer 17

The number of claims it depends on.

Question 18

T/F, The level of disclosure required for a reference to be enabling prior art is the same regardless of if it is US or foreign.

Answer 18

True

Question 19

T/F, A reference is presumed to be operable when it expressly anticipates or makes obvious all of the elements of the claimed invention

Answer 19

True

Question 20

Can a non-enabling reference qualify as prior art for the purpose of determining obviousness under 103?

Answer 20

Yes

Question 21

Does a reference contain enabling disclosure just because the public was in possession of the claimed invention before the date of invention?

Answer 21

Yes

Question 22

If an amendment to claim 1 to overcome a 102/103 rejection includes new matter, what should the examiner do?

Answer 22

Reject the claim under 112 first paragraph for lack of support in the original disclosure, but still consider the new matter and determine if the new claim is patentable over the references, because the new matter rejection may be overcome by the applicant.

Question 23

What kinds of references and what kinds of rejections are accepted for establishing a substantial new question of patentability to obtain reexamination?

Answer 23

prior art patents and printed publications, and they must be for 102/103 rejections.

Question 24

Does a small entity get a reduced fee for a request for continued examination?

Answer 24

Yes

Question 25

If a prima facie showing of no substantial credible utility has been establish, how can the applicant rebut it?

Answer 25

Amending the claims, providing reasoning or arguments, providing evidence (132 affidavit) or a patent or a printed publication that rebuts the basis or logic of the prima facie showing.

Question 26

If claims in a continuation application are directed to originally disclosed subject matter (in the parent and continuation) which the applicants did not regard as part of the invention when the parent application was filed, should the claims be rejected under 112b?

Answer 26

No, claiming something that was originally disclosed but originally not regarded as part of the invention when the parent is filed does not prevent the continuation from receiving benefits of the filing date of the parent.

Question 27

Can contentions or admissions (such as in briefs or remarks) filed by the applicant be used as evidence that shows that a claim does not correspond in scope with that which an inventor regards as the invention?

Answer 27

Yes, and they can be used for a rejection under 112b.

Question 28

Can the specification be used as evidence that the scope of the claims is inconsistent with the subject matter which an inventor regards as his or her invention?

Answer 28

No, agreement, or lack thereof, between the claims and the specification is considered only respect to 112a.

Question 29

Does 112 prohibit applicants from changing what they regard as their invention during pendency of the application?

Answer 29

No, shift in claims is permitted.

Question 30

Who can file a request for reexamination?

Answer 30

Any person, at any time.

Question 31

How long are employees of the USPTO prohibited from applying for a patent?

Answer 31

During the period of their employment and one year after.

Question 32

Is it proper to reject claims on the basis of 35 USC 135(b) in a pre-AIA application where claims claim "substantially the same subject matter" as is in a patent that issued more than one year before the new claim was presented? (e.g., an interference)

Answer 32

Yes, if the patent is claiming the same invention as the application and its issue date is one year or more prior to the presentation of the claims to that invention in the application, a rejection of the claims of the application under 35 USC 135(b) should be made.

Question 33

Can matter canceled from the application file wrapper of a U.S. patent be used as prior art?

Answer 33

Yes, as of the patent date or publication date, in that it then constitutes prior public knowledge under 35 USC 102(a).

Question 34

T/F, canceled matter in the application file of a US patent or US application publication is a proper reference as of the filing date under USC 102(a)(2)

Answer 34

False, it is not a proper reference as of the filing date under 102(a)(2), but it is as of the publication date or patent date under 102(a)(1).

Question 35

What kind of prior art is an abandoned application that was previously published and when is the prior art date?

Answer 35

AIA 102(a)(1), and as of its application publication date.

Question 36

When is the prior art date of a reference patent that properly claims priority to a previously copending but abandoned application which discloses subject matter in common with the patent?

Answer 36

The filing date of the abandoned application.

Question 37

What is AIA 102(a)(1)

Answer 37

entitled to a patent unless - the claimed invention was patented, described in a printed publication, or in public use, on sale, or otherwise available to the public before the effective filing date of the claimed invention

Question 38

What is AIA 102(a)(2)

Answer 38

the claimed invention was described in a PATENT issued under section 151, or in an APPLICATION FOR PATENT published or deemed published under section 122(b), in which the patent or application . . . NAMES ANOTHER inventor and was effectively filed before the effective filing date of the claimed invention

Question 39

Can you file an RCE without a submission?

Answer 39

No, an RCE that is not accompanied by a submission is an improper RCE, and the time period set in the Office action will continue to run. 706.07h

Question 40

Can an examiners amendment be made 6 months after an Office action?

Answer 40

No, because if its more than 6 months from the date of the action then the application would be abandoned at that point. 706.07f

Question 41

IF after the filing of a reissue application no errors in the original patent are found, what would happen?

Answer 41

A reissue patent would not be granted. There must be at least one error to provide grounds for a reissue. 1402