All Q Data

In accordance with the USPTO rules and the procedures set forth in the MPEP, which of the following presents the most proper format for a Markush group in accordance with proper PTO practice and procedure?

A) R is A, B, C, or D.
B) R is selected from the group consisting of A, B, C, and D.
C) R is selected from the group comprising A, B, C, and D.
D) R is selected from the group comprising A, B, C or D.
E) (A) and (B)

An examiner has properly established a prima facie showing of no specific and substantial credible utility for the claimed invention in a patent application filed in February 2001. An applicant can sustain the burden of rebutting and overcoming the showing by:

A) Providing reasoning or arguments rebutting the basis or logic of the prima facie showing.
B) Amending the claims.
C) Providing evidence in the form of a declaration under 37 CFR 1.132 rebutting the basis or logic of the prima facie showing.
D) Providing evidence in the form of a printed publication rebutting the basis or logic of the prima facie showing.
E) All of the above.

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

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

Which of the following is patentable subject matter under 35 USC 101 in accordance with the patent laws, rules, and procedures as set forth in the MPEP?

A) A claim to a new mineral discovered in the earth or a new plant found in the wild.
B) A claim to a method of using a computer to select a set of arbitrary measurement point values. (The selected values are not to be transformed outside of the computer into computer data).
C) A claim to a method of controlling a mechanical robot which relies upon storing data in a computer that represents various types of mechanical movements of the robot.
D) A claim to a method of updating alarm limits by changing the number value of a variable to represent the result of the calculation.
E) A claim to a data structure per se. (The claim does not specify any location where the data structure is stored).

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?

A) A novel and unobvious abstract idea.
B) A previously undiscovered law of nature.
C) A billing process containing mathematical algorithms producing a written invoice.
D) A novel and unobvious discovery of a physical phenomenon.
E) All of the above.

Smith invented a laminate. In a patent application, Smith most broadly disclosed the laminate as comprising a transparent protective layer in continuous, direct contact with a light-sensitive layer without any intermediate layer between the transparent protective layer and the light-sensitive layer. The prior art published two years before the effective filing date of Smiths application included a laminate containing a transparent protective layer and a light-sensitive layer held together by an intermediate adhesive layer. Which of the following is a proper claim that would overcome a 35 U.S.C. 102 rejection based on the prior art?

A) A laminate comprising a transparent protective layer and a light-sensitive layer.
B) A laminate comprising a transparent protective layer and a light-sensitive layer which is in continuous and direct contact with the transparent protective layer.
C) A laminate comprising a transparent protective layer and a light-sensitive layer, but not including an adhesive layer.
D) (A) and (B)
E) (B) and (C).

An applicant, Joe, submits a patent application claiming a toy plane comprising wings covered in aluminum foil. The specification of the application describes a toy plane that has wings covered in foil, but the body of the plane is not covered. A related reference discloses a plane that is covered entirely in chewing gum wrapper, which includes aluminum foil and another material. Joe’s claim is rejected, and he responds by arguing that the use of foil on the wings provides beneficial aerodynamic properties, and therefore the claimed invention is distinguishable from the cited reference. What should the examiner do?

A) The examiner should allow the claim
B) The examiner should allow the claim only after including a Reasons for Allowance pointing out that the inventor argues that his invention is directed to using aluminum foil, not chewing gum wrappers
C) The examiner should maintain the rejection as the claim in broad enough to be anticipated
D) The examiner should withdraw the rejection
E) none of the above

As referred to in the new section 35 U.S.C. 102 introduced by the AIA, what is the “effective filing date” of a claimed invention?

A) It is the later of: (i) the actual filing date of a nonprovisional application; or (ii) the date to which the nonprovisional application claims domestic benefit or foreign priority of another application that describes the subject matter.
B) It is the earlier of: (i) the actual filing date of a nonprovisional application; or (ii) the date to which the nonprovisional application claims domestic benefit or foreign priority of another application that describes the subject matter.
C) It is the later of: (i) the actual filing date of a nonprovisional application; or (ii) the date to which the provisional application claims domestic benefit or foreign priority of another application that describes the subject matter.
D) It is the earlier of: (i) the actual filing date of a nonprovisional application; or (ii) the date to which the provisional application claims domestic benefit or foreign priority of another application that describes the subject matter.
E) None of the above.

A product-by-process claim is properly rejected over a reference under 35 U.S.C. 102(b). Which of the following statements is incorrect?

A) There is no anticipation unless each of the process steps recited in the claim is disclosed or inherent in the applied reference.
B) If the applied reference reasonably indicates that a product disclosed therein is the same or substantially the same as the claimed product, the burden shifts to the applicant to provide evidence to the contrary.
C) The rejection cannot be overcome by evidence of unexpected results.
D) The rejection can be overcome by evidence that the product in the reference does not necessarily or inherently possess a characteristic of the applicants claimed product.
E) An affidavit or declaration under 37 CFR 1.131 cannot overcome a proper rejection under 35 U.S.C. 102(b) over a reference.

In accordance with patent laws, rules and procedures as related in the MPEP, a rejection under 35 USC 102 can be overcome by demonstrating:

A) the reference is nonanalogous art.
B) the reference teaches away from the claimed invention.
C) the reference disparages the claimed invention.
D) (A), (B) and (C).
E) None of the above.

Which of the following is not a policy underlying the public use bar of 35 USC 102(b)?

A) Discouraging the removal, from the public domain, of inventions that the public reasonably has come to believe are freely available.
B) Favoring the prompt and widespread disclosure of inventions.
C) Allowing the inventor(s) a reasonable amount of time following sales activity to determine the potential economic value of a patent.
D) Increasing the economic value of a patent by extending the effective term of the patent up to one year.
E) None of the above.

Which of the following establishes a statutory bar under 35 USC 102(b) to patentability of Applicants claimed invention?

A) To further develop the invention, Applicants invention was tested and experimented in the United States beginning more than one year prior to applicants effective U.S. filing date, but the invention at the time was not fit for its intended use.
B) Applicants invention was sold in a WTO member country outside the United States more than one year prior to applicants effective U.S. filing date, and the sale was merely market testing of the invention to determine product acceptance.
C) Applicants invention is rendered obvious by the combination of two U.S. patents, both of which were patented more than one year prior to applicants effective filing date.
D) Applicants invention was sold outside the United States in a non-WTO member country, more than one year prior to applicants effective U.S. filing date, but the sale was merely an attempt at market penetration.
E) None of the above.

The claims in an application are rejected under 35 USC 103 as obvious over prior art reference A in view of prior art reference B. All of the following statements are in accord with the patent laws, rules and procedures as related in the MPEP except:

A) Where the combination of prior art references provides motivation to make the claimed invention to achieve the same advantage or result discovered by the applicant, the references do not have to expressly suggest the combination of references.
B) The rationale to modify or combine the prior art references may be reasoned from knowledge generally available to one of ordinary skill in the art.
C) The rationale to modify or combine the prior art references may be reasoned from knowledge generally available to one of ordinary skill in established scientific principles.
D) The rationale to modify or combine the prior art references may be reasoned from knowledge generally available to one of ordinary skill in the art, established scientific principles, or legal precedent established by prior case law.
E) To rely on equivalence as a rationale supporting an obviousness rejection under 35 USC 103 an examiner may base the rejection on the mere fact that the components at issue are functional or mechanical equivalents.

Can an examiner make a prima facie case for an obviousness rejection with a single prior art reference that cites chemical amounts of 34.9% and the applicants range starts at 35%?

A) No, because the ranges do not overlap.
B) Yes, and if the applicants argue in their response to the office action that this range has different properties or produces unexpected results, the rejection cannot be overturned.
C) No, because the ranges are not exactly the same.
D) Yes, and the applicant can overcome this rejection if the applicant can show that this range has different properties or produces unexpected results and signs a declaration.
E) No, because a 103 obviousness rejection cannot be based on only one prior art reference.

Which of the following is most likely to be considered in a proper obviousness determination?

A) Evidence demonstrating the manner in which the invention was made.
B) Evidence that a combination of prior art teachings, although technically compatible, would not be made for economic reasons.
C) Evidence demonstrating the level of ordinary skill in the art.
D) Evidence that one of ordinary skill in the art, after reading the patent application, would readily be able to make and use the invention without undue experimentation.
E) Evidence that the prior art, as described in a magazine, has enjoyed great commercial success.

James Salt developed an environmentally friendly technique for controlling deer overpopulation. Briefly, Salt discovered a non- hormonal substance XYZ (“Antiagra”) that efficiently suppresses sexual function in male deer with minimal side effects. Salt determined that the use of a non- hormonal substance eliminated adverse long-term health effects that may be experienced with hormonal substances. He then dissolved an effective amount of Antiagra in salt water, poured the resulting solution into a plurality of twenty-gallon tubs, and heated the tubs to evaporate the water. The resulting blocks of salt, throughout which Antiagra was evenly disbursed, were distributed in overpopulated areas during deer mating season to serve as salt licks. Stags that used the salt lick show no interest in mating, thereby lowering the pregnancy rate among does and helping to control the deer population.

Salt has retained you to conduct a prior art search and, if appropriate, prepare and file a patent application. The only relevant prior art located during the prior art search is a patent to Deere that discloses a salt lick on which a hormonal substance is sprayed. A doe that uses the salt lick ingests the hormonal substance which, in turn, suppresses ovulation and thereby reduces the pregnancy rate. You prepare and file a patent application that provides a fully enabling disclosure and includes four claims sets.

Claims 1-5 are directed specifically to the non-hormonal substance (Antiagra), claims 6-9 are directed to a salt lick laced with a non-hormonal substance that, when ingested by a male deer, suppresses sexual function in the male deer, claims 9-14 are directed to the method of forming the salt lick, and claims 14-20 are directed to a method for controlling deer population by distributing salt licks that are treated with an effective amount of XYZ to reduce pregnancy rates. You also properly establish small entity status on behalf of Salt at the time the application is filed.

Claim 6 of the application reads: “A composition for reducing the pregnancy rate among wild deer population, said composition comprising salt and a non-hormonal substance that, when ingested by a male deer, is operable to suppress sexual function in the male deer.”

Claim 7 reads: “The composition of claim 6, wherein said non-hormonal substance is XYZ.”

Claim 8 reads, “The composition of claim 6, wherein said composition is formed in a block and wherein said non-hormonal substance is interspersed substantially evenly throughout said block.”

Each of these claims is fully supported by the specification. An Office action is mailed March 15, 2002, rejecting Claim 6 under 35 U.S.C. 103 as being unpatentable over the Deere patent. Which of the following arguments, if presented in a timely reply to the March 15 Office action, is most likely to persuade the examiner to remove the 103 rejection without presenting unpersuasive arguments?

A) “The invention of claim 6 provides an advantageous feature in that the substance that helps reduce the pregnancy rate is interspersed throughout the salt lick. Thus, the present invention is effective to reduce the pregnancy rate in deer so long as any portion of the salt lick is available to deer. In contrast, the Deere patent utilizes a substance that is sprayed on the outer surface of the salt lick and, therefore, is effective only so long as the outer portion of the salt lick is available.”
B) “Applicant was aware of the Deere patent prior to filing of the present application, and the claims were carefully drafted to distinguish the present invention over the Deere patent. Accordingly, reconsideration and withdrawal of the § 103 rejection of claim 6 is respectfully requested.”
C) “In contrast to the present invention, the Deere patent calls for the use of a hormonal substance that suppresses ovulation in female deer. Deere neither discloses nor suggests the use of a non-hormonal substance that, when ingested by a male deer, is operable to suppress sexual function in the male deer, as set forth in claim 6.”
D) “The present invention relates to a technique for reducing deer overpopulation by causing male deer to ingest a novel substance (XYZ) that is operable to suppress sexual function in the male deer. The Deere patent neither discloses nor suggests such a technique and, therefore, claim 6 is neither anticipated nor rendered obvious by the Deere patent.”
E) All of the above.

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

(1) In a 35 USC 103 obviousness analysis, the proper question is whether the differences between the prior art and the claims would have been obvious to one of ordinary skill in the art.

(2) In a 35 USC 103 obviousness analysis, an inventors assertion the he has discovered the source or cause of an identified problem should never be considered.

(3) A 35 USC 103 obviousness analysis requires consideration not just of what is literally recited in the claims, but also of any properties inherent in the claimed subject matter that are disclosed in the specification.

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

In accordance with the patent laws, rules and procedures as related in the MPEP, which of the following does not constitute prior art upon which a primary examiner could properly rely upon in making an obviousness rejection under 35 USC 103?

A) A U.S. patent in the applicants field of endeavor which was issued two years before the filing date of applicants patent application.
B) A non-patent printed publication in a field unrelated to the applicants field of endeavor but relevant to the particular problem with which the inventor-applicant was concerned, which was published the day after the filing date of applicants application.
C) A printed publication published more than 1 year before the filing date of applicants patent application, which publication comes from a field outside the applicants field of endeavor but concerns the same problem with which the applicant-inventor was concerned.
D) A printed publication in the applicants field of endeavor published 3 years before the filing date of applicants patent application.
E) A U.S. patent which issued more than 1 year before the filing date of applicants patent application, which the Office placed in a different class than the applicants patent application, but which concerns the same problem with which the applicant-inventor was concerned, and which shows the same structure and function as in the applicants patent application.

An applicants claim stands rejected under 35 USC 103 as being obvious over Larry in view of Morris. Larry and Morris are references published more than one year before applicants effective filing. Although the examiner cites no suggestion or motivation for combining the references, they are, in fact, combinable. Which of the following arguments could properly show that the claim is not obvious?

A) The inventions disclosed by Larry and Morris cannot be physically combined.
B) Neither Larry nor Morris provides an express suggestion to combine the references.
C) As recognized by businessmen, the high cost of Larrys device teaches away from combining it with the simpler device of Morris.
D) Absent a suggestion or motivation, the examiner has not shown that combining Larrys with Morriss device would have been within the level of ordinary skill of the art.
E) None of the above.

Which of the following statements concerning reliance by an examiner on common knowledge in the art in a rejection under 35 USC 103 is correct? I. An examiners statement of common knowledge in the art is taken as admitted prior art if applicant does not adequately traverse the statement during examination. II. Applicant can traverse an examiners statement of common knowledge in the art at any time during the prosecution of an application to properly rebut the statement. III. If applicant rebuts an examiners statement of common knowledge in the art in the next reply after the Office action in which the statement was made, the examiner cannot provide a reference to support the statement of common knowledge in the next Office action and make the next Office action final.

A) I.
B) II
C) III
D) I and II
E) none of the above

Evidence of unexpected results is relied upon to overcome a prima facie case of obviousness. Which of the following is incorrect?

A) The evidence must compare the claimed invention to the closest prior art.
B) The evidence must be commensurate in scope with the claims.
C) Data relied upon to show unexpected results need not cover the full range of the claims if one of ordinary skill in the art could ascertain a trend in the data that would allow that person to reasonably extend the probative value of the data to the full scope of the claims.
D) Unexpected results can be shown by factual evidence or, if no factual evidence is available to the applicant, by sound argument by the applicants agent or attorney.
E) The evidence need not be in an affidavit or declaration under 37 CFR1.132 if the evidence is presented in the specification of an application to which the applicant has attested.

Which of the following, if any, is true?

A) An inventor can keep the best mode secret to exploit it later for financial gain.
B) At the time of filing, an inventor must disclose the best mode they know of even if discovered by another person.
C) An inventor may disclose several embodiments, one of which is his best mode, but not point out in the specification which one is his best mode.
D) Failure to provide the best mode known by the inventor at time of filing can be corrected after issue of the patent by amending the specification.
E) (B) and (C)

The relevant invention relates to a new type of mirror. Unless mentioned, assume the specification make no mention of the reflective qualities of the mirror. Which of the following would fail for a lack of enablement under 35 USC 112.

A) Replacing "mirror" with "reflective surface" when it is not defined in specification, but it would be known to PHOSITA.
B) Replacing "mirror" with its dictionary definition, no other definition for mirror is provided in the specification, and it would be obvious dictionary definition was meant to control.
C) Replacing "mirror" with "light reflecting surface," and the examiner properly takes notice of this definition as a well known fact.
D) "Mirror" is replaced in the claim with "reflective surface" when a mirror is defined as a reflective surface in the specification. "
E) The specification claims a mirror as being parallel in one place and claims a mirror being perpendicular in another place. The claim includes the mirror but PHOSITA would not know from the disclosure which orientation (i.e., parallel or perpendicular) of the mirror was claimed.

A claim limitation will be presumed to invoke 35 U.S.C. 112, sixth paragraph, if it meets the following?

A) the claim limitations must use the phrase "means for" or "step for;"
B) the "means for" or "step for" must be modified by functional language;
C) the phrase "means for" or "step for" must not be modified by sufficient structure, material, or acts for achieving the specified function
D) A and B only
E) A, B, and C

An application includes independent claims 1 and 2. Which of the following, in a reply to a non-final Office action, provides the proper basis for a rejection under 35 USC 112, first paragraph?

A) Applicant amends claim 2 of the originally filed application by adding a limitation which was previously written only in claim 1 of the originally filed application, and one of ordinary skill in the art is enabled by the original disclosure to make and use the invention as claimed in amended claim 2.
B) Applicant amends claim 1 of the originally filed application by adding a limitation that was written in the original disclosure of the application, but the original disclosure does not enable one of ordinary skill in the art to make or use the invention as claimed in amended claim 1.
C) Applicant amends and broadens claim 2 by removing a limitation which was written in the original disclosure of the application, and one of ordinary skill in the art is enabled by the original disclosure to make and use the invention as claimed in amended claim 2.
D) Applicant adds new matter to the disclosure, but does not amend the claims of the originally filed application, and one of ordinary skill in the art is enabled by the original disclosure to make and use the invention as described in each of the claims.
E) None of the above.

With respect to the examiners burden in making an enablement rejection under 35 USC 112, first paragraph, which of the following statements is or are in accordance with the patent laws, rules and procedures as related in the MPEP? (1) The examiner may properly make an enablement rejection before construing the claims. (2) The examiner has the initial burden to establish a reasonable basis to question the enablement provided for the claimed invention. (3) The examiner need not give reasons for the uncertainty of the enablement when there is no evidence of operability beyond the disclosed embodiments.

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

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

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

In the case of Centocor Ortho Biotech, Inc. vs. Abbott Labs., ___ F. 3d ____, 2011 U.S. App. LEXIS 3514; 97 USPQ2d 1870 (Fed. Cir. 2011) the following Representative Claims (U.S. Patent No. 7,070,775 (the 775 patent) were ruled on by the Federal Circuit court:

1. An isolated recombinant anti-TNF-A antibody or antigen-binding fragment thereof, said antibody or antigen-binding fragment comprising a human constant region, wherein said antibody or antigen binding fragment (i) competitively inhibits binding of A2 (ATCC Accession No. PTA-7045) to human TNF-A, and (ii) binds to a neutralizing epitope of human TNF-A in vivo with an affinity of at least 1×108 liter/mole, measured as an association constant (Ka), as determined by Scatchard analysis.

2. The antibody or antigen-binding fragment of claim 1, wherein the antibody or antigen-binding fragment comprises a human constant region and a human variable region.

How should have the examiner addressed both claims in their examination?

A) The claim(s) should be rejected since the claimant is a well-known non-practicing entity (NPE) i.e. a patent troll.
B) The claim should be accepted under the broadest reading of 112 Â¶1 since the treatment of variant epitopes are widely considered sufficiently unpredictable in the filed of the medical arts.
C) Allow the claim since there is since the treatment of variant epitopes are widely considered to be somewhat unpredictable in the filed of the medical arts.
D) The claims should be considered invalid under 112 Â¶1 because they do not comply with the written description requirement. The claimant failed to show sufficient possession of said invention
E) None of the above.

In the case of Sitrick v. Dreamworks, LLC, 516 F.3d 993, 85 USPQ2d 1826 (Fed. Cir. 2007)

Representative Claim (U.S. Patent No. 6,425,825 (the 825 patent) the examiner is overruled by the following decision issued by the Federal Court explaining:

1. A system comprising:

a source of a first video image signal representative of a plurality of background images of which at least two of which are comprised of at least one common predetermined character function therewithin having a recognizable video presentation within the background images;

a source of a user image signal representative of a user image;

means for selecting one predetermined character functions as a selected predetermined character function within the respective background images;

means for mapping the user image to the selected predetermined character function;

apparatus for providing an integrated video output wherein the user image appears integrated

into the respective background images in place of the respective recognizable video presentation for the selected character function responsive to the mapping of the selected predetermined character function to the user image signal.

Background: The 825 patent is directed to integrating a user audio signal or visual image into a preexisting video game or movie. The asserted patent claims were interpreted as including both video games and movies, and the issue was whether the movie embodiment (i.e., substitution or integration of user images in movies) was enabled. The court explained that the patent specification describes the ˜integration or ˜substitution as being performed by an ˜Intercept Adapter Interface System (IAIS) and that, in a video game system, the IAIS functions to reconfigure signals corresponding to character functions by substituting the user image for the predefined character image.

Question: Is the full scope of the asserted claims of the 825 patent as covering both movies and video games enabled?

A) the claims should be found invalid for non-compliance with the 112 Â¶ 6
B) the claims should be found invalid for non-compliance with the 112 Â¶1.
C) the claims should be found invalid for non-compliance with the enablement requirement of 112 Â¶1.
D) the claims should be valid for compliance with the requirements of 112 Â¶ 2.
E) the claims should be valid for compliance with the requirements of 112 Â¶ 1.

In the matter of ICU Med., Inc. v. Alaris Med. Sys., Inc., 558 F.3d 1368 (Fed. Cir. 2009) decided by the Federal Circuit, the Court ruled on the following Representative Claim from U.S. Patent No. 6,572,592:

35. A needleless connector valve comprising:

a body including a wall structure defining an internal cavity having a proximal end and a distal end, said proximal end having an opening sufficiently large to receive a delivery end of a medical implement, the opening being adapted to receive fluid through said delivery end; and

a seal which is adapted to be moved distally in the cavity into an axially compressed state upon insertion of the delivery end of the medical implement into said opening, said seal moving proximally in the cavity and returning to an axially decompressed state upon removal of said medical implement from said opening, said seal substantially completely filling said opening and presenting a generally flush surface across said proximal end of said cavity of said body when said seal is in the decompressed position, said seal having a tubular, corrugated, imperforate wall accommodating axial compression of said seal, and said seal having a preslit orifice at the proximal end of the seal, said orifice being closed to prevent fluid from flowing through said seal when said seal is in said opening, and said orifice being open to allow fluid to flow through said seal when said seal is in the compressed state.

Background: The court characterized the invention as a medical valve that receives fluid from a medical implement (e.g., a syringe) without the use of an external needle. The medical implement compresses a seal on the valve to create a fluid pathway from the medical implement through the valve and into a patients IV line. The asserted claims of the patents fell into three categories: the spike claims, directed to a medical valve comprising a body, a spike, and a seal; the spikeless claims, directed to a medical valve comprising a body and a seal; and the tube claims, directed to a medical valve comprising a body, a seal, and a tube. The court referred to the second set of claims as the spikeless claims not because they exclude a medical valve with a spike but because these claims do not include a spike limitation, i.e., they do not require a spike. The court noted that the specification describes only medical valves with spikes and that the asserted spikeless claims were not filed with the original application; rather they were added years later during prosecution. (FYI: spike = needle)

Which of the following is not true regarding claim 35’s satisfaction of the written description requirement?

A) A needleless connector valve should be considered invalid for non-compliance with the written description requirement of 35 USC 112.
B) The claim might be rejected if the use of a medical valve that receives fluid from a medical implement (e.g., a syringe) without the use of an external needle was mentioned in prior art.
C) This claim must be allowed if spikeless connectors were known at all in the prior art.
D) The asserted spikeless claims were not filed with the original application; rather they were added years later during prosecution. This feature should have been filed as a continuation-in-process claim and should now be rejected by the examiner for failing 35 USC 112.
E) None of the above.

In the matter of Sitrick v. Dreamworks, LLC, 516 F.3d 993, 85 USPQ2d 1826 (Fed. Cir. 2007) the court ruled on the following Representative Claim (U.S. Patent No. 6,425,825 (the 825 patent)):

1. A system comprising:

a source of a first video image signal representative of a plurality of background images of which at least two of which are comprised of at least one common predetermined character function therewithin having a recognizable video presentation within the background images;

a source of a user image signal representative of a user image;

means for selecting one predetermined character functions as a selected predetermined character function within the respective background images;

means for mapping the user image to the selected predetermined character function;

apparatus for providing an integrated video output wherein the user image appears integrated

into the respective background images in place of the respective recognizable video presentation for the selected character function responsive to the mapping of the selected predetermined character function to the user image signal.

Background: The 825 patent is directed to integrating a user audio signal or visual image into a preexisting video game or movie. The asserted patent claims were interpreted as including both video games and movies, and the issue was whether the movie embodiment (i.e., substitution or integration of user images in movies) was enabled. The court explained that the patent specification describes the ˜integration or ˜substitution as being performed by an ˜Intercept Adapter Interface System (IAIS) and that, in a video game system, the IAIS functions to reconfigure signals corresponding to character functions by substituting the user image for the predefined character image.

Is the full scope of the asserted claims of the 825 patent as covering both movies and video games properly enabled?

A) No, realizing that playback of movies that may be transported in various formats are subject to a different standard than video games which may be delivered in more limited formats.
B) No, reject the claim on the basis of 35 USC 112 6
C) No, the claims are invalid for non-compliance with the enablement requirement of 112.
D) Yes
E) (C) and (D)

In the matter of Revolution Eyewear, Inc. v. Aspex Eyewear, Inc., 563 F.3d 1358, 90 USPQ2d 1733 (Fed. Cir. 2009) the court undertook a review of the following representative claim from U.S. Patent No. RE 37,545 (the ‘545 patent):

22. An eyeglass device comprising:

a primary spectacle frame for supporting primary lenses therein and having two side portion extensions extending rearwardly therefrom and having a front side, a rear side, a top side, and a rear end, each of said rear ends pivotally coupling a leg configured to conform to a user at a distal end thereof, each of said extensions of said primary spectacle frame further having a projection attached to each of said rear sides, and a pair of first magnetic members respectively secured in said projections, said first magnetic members capable of engaging second magnetic members of an auxiliary spectacle frame so that lenses of an auxiliary spectacle frame are located in front of said primary lenses.

Background: The disclosure of the 545 patent identifies two deficiencies at the time of the invention in the relevant spectacle frame art: (1) stability issues with regard to the attachment of auxiliary frames when in use; and (2) decreased strength of the primary frames when magnetic elements are embedded into the primary frame. The stability issue is due to the fact that when auxiliary lenses are attached to the frames by magnetic materials only, the auxiliary lenses more easily move downward relative to the frames and disengage from the frames when in use during exercise. 545 patent col.1 ll.26-32. The 545 invention addresses the stability issue by using an auxiliary frame that includes a top mounting mechanical interface between the primary and auxiliary frame. Id. col.2 ll.49-56. The decreased strength problem is due to the design of the prior art frames, where the magnetic materials are embedded in the frames, by excavating four or more cavities in a frame. Id. col.1 ll.33-37. In the 545 invention, magnetic members are supported by projections located at the rear/side portions of both the primary frame and the auxiliary frame. Id. col.2 ll.36-38, ll.43-44. Because the magnetic members are not embedded in the frame structure, they do not compromise the structural strength of the frame. Id. col.3 ll.24-26. Therefore the 545 patent discloses and identifies two known problems in the art and presents solutions for each problem.

Issue: Does a disclosure that addresses two problems known in the art provide adequate written description support for a claim that only sets forth limitations addressing one of the two known problems in the prior art?

A) No, and cite prior art previously described in U.S. Patent US 6364478 B1 Eyeglass device having primary and auxiliary frames with lenses and method of forming the same_x009d_ in which Claim I recites: An eyeglass device having a first and second pairs of lenses, comprising: a. a primary frame comprising: (i). a front portion for holding the first pair of lenses and having two opposed ends; (ii). a first temple attached to one end of the front portion and having an inside surface, an opposite outside surface, and a housing formed on the inside surface of the first temple, wherein the housing has a mouth and a bottom defining a socket therebetween to receive a magnetic member therein; and (iii). a second temple attached to the other end of the front portion and having an inside surface, an opposite outside surface, and a housing formed on the inside surface of the second temple, wherein the housing has a mouth and a bottom defining a socket there between to receive a magnetic member therein, wherein the first and second temples extend rearwardly from the front portion; and b. a auxiliary frame comprising: (i). a forward portion for holding the second pair of lenses and having two opposite ends; (ii). a first arm attached to one end of the forward portion and having a magnetic member secured thereto; and (iii). a second arm attached to the other end of the forward portion and having a magnetic member secured thereto, wherein the first and second arms extend rearwardly from the forward portion, at least one of the first and second arms of the auxiliary frame comprises: a. a body extending rearwardly from the forward portion; b. an extension projecting downwardly from the body; c. a flap projecting horizontally away from the body_x009d_
B) Yes, allow the claim since it is sufficiently different from Claim 1 in the ˜478 patent recited in (A)
C) The examiner should defer to the findings contained in the decision rendered in: United States Court of Appeals for the Federal Circuit 04-1138 ASPEX EYEWEAR, INC., MANHATTAN DESIGN STUDIO, INC., CONTOUR OPTIK, INC., and ASAHI OPTICAL CO., LTD
D) No, do not allow the claim since it is not different from Claim 1 in the ˜478 patent recited in (A)
E) Reject (A), (B) (C) and (D) due to impermissible hindsight cited in KSR v. Teleflex

In the case of Telecordia Techs., Inc., v. Cisco Systems, Inc., 612 F.3d 1365 (Fed. Cir. 2010) U.S. Patent Nos. 4,835,763 (the ‘763 patent)

The claimed subject matter is drawn to a communications network that is self-healing. The relevant claim language of independent claim 1 is as follows:

. . . monitoring means, associated with the first ring and the second ring, for evaluating the integrity of the multiplexed subrate communications on the first ring and the second ring, respectively . . .

The written description of the specification in addition to several black boxes in the drawings, discloses the following in support of the means-plus-function recitation of claim 1:

Each node continuously monitors and evaluates the integrity of the multiplexed subrate signals arriving at the node. Illustratively, this could be accomplished by detecting the absence of a carrier signal in an analog signal environment, or the lack of any incoming signal in a digital environment. When node 1 recognizes major line fault 122 in ring 100, controller 118 inserts an error signal onto the six subrate channels. This could illustratively be accomplished by inserting a string of 1s on each channel in a digital environment. Node 4 performs the identical activity by similarly placing an error signal on the six subrate channels of ring 101. After these two relatively simple procedures take place, the ring network otherwise operates normally.763 patent col. 3, ll. 4-17.

Issue: Does the disclosure that each node has two controllers that monitor and evaluate the integrity of the signals arriving at the node support the means for monitoring means-plus-function limitation and link it to sufficient corresponding structure to satisfy the requirements of 112 ¶ 6 and avoid an indefiniteness rejection?

A) No, reject the claim for claiming an analog basis for what is only available in the digital domain in oversampling digital domain applications employed in subrate communication co-channels
B) No, reject the claim since claim since the cited claim language would be considered to sufficiently address the the absence of a carrier signal in an analog signal environment, which is not best addressed by using oversampling technology only available in the digital domain.
C) Yes, allow the claim since it would be considered definite under 112 because the disclosure provides support for a corresponding structure and links it to the means.
D) Yes, allow the claim since the cited claim language would be considered to sufficiently address the the absence of a carrier signal in an analog signal environment, which is not possible in subrate digital domain.
E) No, based on the more broadly defined violation of sufficient compliance described in MPEP 2107.01(IV).

Background: U.S. Patent No. 5,066,549 patent claims are directed to hot-dip aluminum-coated stainless steel. The coated steel strips are essential for further development of energy saving devices. Hot-dip aluminum-coated steel is produced by passing heated steel strips through molten aluminum; however, it is challenging to get the aluminum to adhere or wet well onto the steel and that the inventors of the patents in suit solved the wetting problem by maintaining the steel strip in a hydrogen atmosphere prior to entry into the aluminum coating bath. The specification includes statements regarding the amount of silicon in the aluminum coating with respect to the coating metals ability to wet well and, as the court explained, the specification states that Type 1 aluminum containing about 10% silicon contains too much silicon and does not achieve that goal_ but Type 2 or nearly pure aluminum does and is therefore preferred. The ‘549 patent issued from a continuation application, which sought and issued with broader claims than its parent patent.

The ‘549 patent has the following representative claims:

1. A ferrous base ferritic strip continuously hot dip coated with a coating metal, comprising: the strip including at least about 6% by weight chromium, the coating metal including aluminum or aluminum alloys, the coating layer on the strip being substantially free of uncoated areas and formed without a thick brittle Fe-Al alloy inner layer, the coating layer being tightly adherent to the strip and resistant to crazing or flaking during bending.

3. The strip of claim 1 wherein the aluminum coating metal contains up to about 10% by weight silicon.

How should have the examiner address these claims in their initial review of said patent?

A) Allow the claim since the need for the coated steel strips regards energy conservation.
B) Reject the claim for lack of enablement based on the ambiguous boundary ranges in the claims.
C) Not reject the claims based on ambiguous numerical boundary ranges.
D) Allow the claim since the use of the coated steel strips is probably essential to national security as defined by provisions contain the Patriot Act as essential tools necessary to combat potential terrorists_x009d_.
E) None of the above.

In re Katz Interactive Call Processing Patent Litig. v. American Airlines, Inc., 97 U.S.P.Q.2D 1737 (Fed. Cir. 2011 ) U.S. Patent No. 5,815,551 (the 551 patent)

The claimed subject matter is drawn to a telephonic-interface statistical analysis system. The relevant claim language of independent claim 14 is as follows:

. . . generator structure selectively coupled to the interface structure and the record memory for providing computer generated numbers to the individual callers and storing the computer generated numbers in the record memory . . .

The written description of the specification discloses the following in support of the noted means-plus function recitation of claim 14:

The system of the present invention may qualify an entitled set of callers, then receive answer data in the course of the call and develop identification or designation data, sequence data and statistical data. The system may then provide data cells for storing individual data while assigning confirmable identifications to the entitled set. From the set, a subset is defined. That is, in accordance with various formats, acquired data is processed in statistical relationship, or in relation to applied external data to accomplish such functional operating formats as an auction sale, a contest, a lottery, a poll, a merchandising operation, a game, and so on. 551 patent, col. 2 ll. 11 “ 21

The processing systems P1-Pn are similar, therefore, only the processing system P1 is shown in any detail. . . . The interface 20 provides the connection of the fifty lines to a switch 21 which is in turn coupled to fifty function units, or processors PR1-PRn. As indicated above, multiple function units, or processors, are described in the disclosed embodiment to facilitate the explanation. Of course, nonparallel techniques and multiplexed operations might well be employed as alternatives. For a similar reason, as disclosed herein, each of the processors PR1-PRn includes memory cells for each of the callers individual data. Development and compilation of data in such cells according to various operating formats is described below. In the disclosed embodiment, the processors PR1-PRn are connected collectively to the command computer terminal CT (incorporating a CRT display), the interface terminal IT, and the printer PR. Note that the CRT display serves to visually display data regarding select subsets as explained in detail below. Exemplary detailed structures for the processors PR1-PRn are described below; however, in general, the units may comprise a microcomputer, for example, programmed as suggested above and as disclosed in detail below to accomplish specific operating formats. . . . On the qualification and designation of callers, the system enters a data accumulation phase during which digital data (formatted at one of the telephone terminals T1-Tn) is processed by one of the processors PR1-PRn. In general, the processing evolves a subset (at least one caller) the members of which may be verified and confirmed. 551 patent, col. 4 l. 35 “ col. 5 l. 52

Does the disclosure of only a general purpose computer satisfy the corresponding structure, material or acts requirement of 112 Â¶ 6 to avoid an indefiniteness rejection?

A) Reject the claim since the use of processing systems P1-Pn are sufficiently similar, therefore, only the processing system of P1 is shown in any detail. . . . The interface [20] provides the connection of the fifty lines to a switch 21 which is in turn coupled to fifty function units, or processors PR1-PRn. As indicated above, multiple function units, or processors, are described in the disclosed embodiment to facilitate the explanation. The use of standard PCI or VME compatible bus signaling does not sufficiently describe in detail the method for addressing any of the individual circuit processing units PR1-PRn.
B) No, reject the claim since the use of a direct memory access (DMA) unit to collecting formatted data from any of the terminals T1-Tn circumvents the use the definiteness requirements of 35 USC 102. A DMA unit would allow any of the slave terminals T1-Tn to output their collected data without the use of a supervising CPU / circuit.
C) Yes, the claim should be allowed for being considered as definite under 35 USC 112.
D) No, reject the claim since processed digital data is too vague to recite a proper structure in accordance with 35 USC 112 and Bilski and fails the sufficient transformation prong further defined in Bilksi, et al.
E) Yes, the claim should be allowed under 35 USC 112 paragraph 2 but rejected under 35 USC 112 paragraph 6.

In re Swinehart, 439 F.2d 210, 169 USPQ 226 (CCPA 1971) (U.S. Application Serial No. 314,952, filed October 9, 1963, had the following claim:

A new composition of matter, transparent to infrared rays and resistant to thermal shock, the same being a solidified melt of two components present in proportion approximately eutectic, one of said components being BaF2 and the other being CaF2.

Prior art compositions were substantially opaque to infrared rays. Applicant’s specification and figures disclose a composition which is substantially transparent to such rays, and the degree of transparency depends on numerous factors such as the conditions employed in producing the crystal, the thickness of the crystal, and the particular wave length of the radiation transmitted.

How should the examiner deal with this claim in regards to the claim’s definiteness?

A) Allow the claim as definite because, in all cases, a substantial amount of infrared radiation is transmitted, and the specification indicates that the degree of transparency varies depending on various factors.
B) Allow the claim based on the sufficiently vague disclaimers contained in the language in the suppositional phrase calling for said device being transparent to infrared rays to a broader reading on an element contained within to be sufficiently unique.
C) Reject the claim based on prior established precedent defined by prior precedent set-out in contained in Union Carbon v. Binney & Smith.
D) Reject the claim based on the broadest interpretation of 35 USC 112 due to too many indefinites contained in the claims(as) further defined in MPEP 2173.05(g).
E) None of the above.

In CCS Fitness, Inc., v. Brunswick Corp., 288 F.3d 1359 (Fed. Cir. 2002) U.S. Patent Nos. 5,924,962 (the 962 patent); 5,938,567 (the 567 patent); and 5,683,333 (the 333 patent) the claimed subject matter is drawn to stationary cardio-vascular exercise devices. Claim 9 of the 962 patent sets forth the relevant claim language, which is representative of the claim language also used in the 567 and 333 patents, reads as follows:

9. An apparatus for exercising comprising:

a frame having a base portion adapted to be supported by a floor; first and second reciprocating members, each reciprocating member having a first and a second end, a portion of said first and second reciprocating members being adapted for substantially linear motion; a coupling member having (i) a pulley supported by said frame defining a pivot axis, and (ii) means for attaching said second ends of said first and second reciprocating members to said pulley so that rotation of said pulley results in orbital movement of said second ends of said first and second reciprocating members about said pivot axis while a portion of each of said first and second reciprocating members distal said second end of each first and second reciprocating members move in a reciprocating pattern; and

first and second pivotal linkage assemblies operatively connected with a respective first and second reciprocating member at a location intermediate the first and second ends of said reciprocating member for orienting the bottom of the feet of the user of the apparatus so that each foot of the user follows a substantially elliptical path during operation of the apparatus.

Question: Does the claim limitation reciprocating member . . . adapted for substantially linear motion sufficiently recite a limitation defined in 35 U.S.C. 112, sixth paragraph?

A) the examiner should recognize that this is no more than a simple variation of a StairMaster and reject the claim without invoking 35 USC112 but on the basis of established prior art (perhaps using MPEP sections 706.02, 706.07 and/or 2123 or 2128)
B) reject the claim on the re-use of a pivotal reciprocating member, something well-known in the art
C) reject the patent based on the re-application of a pivotal reciprocating arm as previously defined in established US Patents in the fields of reciprocating saws and articulating arms employed in movable TV mounts
D) Allow the claim since it does not invoke infrangibly limited elements contained in the prior art
E) Allow the claim since it does not invoked limitations defined in 35 UC 112 sixth paragraph

In re Marosi, 710 F.2d 799, 218 USPQ 289 (Fed. Cir. 1983).

Background: The claimed invention pertains to the synthesis of zeolites without alkali metal in the reaction mixture. The parties agreed that the prior art syntheses of zeolitic compounds required, as an essential ingredient, alkali metal compounds, yet, at the same time, that there are minute but, nevertheless, measurable quantities of alkali metal (however undesired) in the reagents utilized in [the claimed] synthesis.

The following claim was reviewed and ruled upon by a Superior Court: (U.S. Application Serial No. 45,175, filed June 4, 1979):

A process for the manufacture of a nitrogen-containing crystalline metal silicate having a zeolite structure which comprises: adding a metal oxide, metal hydroxide, metal sulfate, metal nitrate or hydrated metal oxide and a silicon dioxide source that is essentially free of alkali metal to a 5 to 90% strength aqueous solution of hexamethylenediamine to form a mixture that is essentially free of alkali metal; stirring the mixture to form a homogeneous gel; and thereafter heating the gel to form the crystalline metal silicate; wherein said metal is selected from the group consisting of aluminum, boron, arsenic, antimony, vanadium, iron and chromium, and whereby said crystalline metal silicate is essentially free of alkali metal.

How should have the examiner best address this claim?

A) Dismiss the claim in light of the guidance defined by Bilski and the study slides produced for the USPTO examiner corp
B) Allow the claim based on the findings contained in Bilski et al
C) Reject the claim and request the applicant to provide more detailed findings regrinding the formation on alkali metals as previously established in a prior art search regarding the use of alkali metals in the formation of zeolite
D) Allow the claim based on sufficient specificity regarding the process to formulate zeolite in the presence of an alkali metal
E) Do nothing

In the matter of Enzo Biochem, Inc. v. Applera Corp., 599 F.3d 1325, 94 USPQ2d 1321 (Fed. Cir. 2010) the following claim was ruled upon and decided upon under the Representative Claim (U.S. Patent No. 5,328,824):

A method of detecting the presence or absence of a nucleic acid in a sample which comprises the steps of:

(a) contacting under hybridizable conditions said sample with at least one compound comprising the structure:

wherein each of B’ and B” represents a purine, 7-deazapurine, or pyrimidine moiety covalently bonded to the C1′-position of the sugar moiety, provided that whenever B’ or B” is purine or 7deazapurine, the sugar moiety is attached at the N9-position of the purine or 7-deazapurine, and whenever B’ or B” is pyrimidine the sugar moiety is attached at the N1-position of the pyrimidine;

wherein B represents 7-deazapurine or pyrimidine moiety covalently bonded to the C1′-position of the sugar moiety, provided that whenever B is 7-deazapurine, the sugar moiety is attached at the N9position of the 7-deazapurine, and whenever B is pyrimidine the sugar moiety is attached at the N1position of the pyrimidine;

wherein A comprises at least three carbon atoms and represents at least one component of a signaling moiety capable of producing a detectable signal; wherein B and A are covalently attached directly or indirectly through a linkage group, said linkage group not interfering substantially with the characteristic ability of said compound to hybridize with said nucleic acid or of A to be detected;

wherein if B is 7-deazapurine, A is attached to the 7-position thereof, and if B is pyrimidine, A is attached to the 5-position thereof;

wherein m, n and p are integers, provided that m and p are not simultaneously 0 and provided further n is never 0; and

wherein z represents H- or HO-; and

(b) detecting said compound or compounds so as to detect said nucleic acid.

Considering USC 112 para. 2, what should the examiner do with such a claim?

A) Examine and likely Allow the claim per the broadest interpretation available under 112, ¶2
B) Disallow the proposed claim as defined by the broadest reading defined by 112, ¶2
C) Allow the claim considering that this is an potential life-saving technology in the field of evolving research contained in the hybridizable pyrimide compound and apply for minimal fee considerations
D) Disallow the claim because this is a derivative form of hybridizable compounds that recites previously established work in the field of said compositions.
E) All of the above

In the case re: Skvorecz, 580 F.3d 1262, 92 USPQ2d 1020 (Fed. Cir. 2009) the court found the following Representative Claim (U.S. Patent No. 5,630,976):

How should have the examiner addressed this claim?

A wire chafing stand comprising a first rim of wire steel which forms a closed geometrical configuration circumscribing a first surface area, and having at least two wire legs with each wire leg having two upright sections interconnected to one another in a configuration forming a base support for the stand to rest upon with each upright section extending upwardly from said base support to from an angle equal to or greater than 90 with respect to a horizontal plane through said base support and being affixed to the first rim adjacent one end thereof and further comprising a plurality of offsets located either in said upright sections of said wire legs or in said first rim for laterally displacing each wire leg relative to said first rim to facilitate the nesting of a multiplicity of stands into one another without significant wedging.

A wire chafing stand as defined in claim 1 wherein said plurality of offsets are welded to said wire legs at the separation of the upright sections into segments.

A) Reject the claim base on ruling contained in 74618 Federal Register / Vol. 79, No. 241 / Tuesday, December 16, 2014 / Rules and Regulations
B) Breech the claim citing the fact that improvements directed to wire chafing elements have been previously cited in a prior application directed to an angle of less than 90 degrees:
C) Allow the claim using guidance contained in defined in 74618 Federal Register / Vol. 79, No. 241 / Tuesday, December 16, 2014 / Rules and Regulations
D) Allow the claim given that the claim(s) for sufficiently containing a unique use of an adjoining design containing adjoining wire abutting designs in excess of 90 degrees are sufficiently unique and definitive
E) Reject the claim outright for the simple audacity of trying to use the patent systems to attempt to further bypass wire chafing designs by employing the use of nearly 90 degrees that are not acknowledged in the field

Greenberg Welker Bearing Co., v. PHD, Inc., 550 F.3d 1090 (Fed. Cir. 2008) regarded U.S. Patent Nos. 6,786,478 (the 478 patent) and 6,913,254 (the 254 patent).

The claimed subject matter is drawn to locating pins for insertion into a work piece to position and hold the work piece. The relevant claim language of independent claim 1 of the 254 patent, which is representative of the claim language also used in the 478 patent, is as follows:

. . . at least one finger supported by said locating pin adjacent said distal end; said assembly characterized by a mechanism for moving said finger along a straight line into and out of said locating pin perpendicular to said axis A in response to said rectilinear movement of said locating pin.

Does the claim limitation involving the mechanism for moving said finger invoke 35 U.S.C. 112, 6th paragraph?

A) Yes, it invokes 112, 6th paragraph because of the sufficiently vague language describing the mechanism for moving.
B) No, the claim does not contain the limitations implied by means plus function claim construction describing the mechanism for moving [the] said finger and should be accepted.
C) Yes, because it uses "means for" language.
D) No, but it should be rejected based on the broadest reasonable interpretation of "mechanism."
E) None of the above.

In Mas-Hamilton Group, v. LaGard, Inc., 156 F.3d 1206 (Fed. Cir. 1998) United States Patent No. 5,307,656 (the 656 patent) the claimed subject matter is drawn to an electro-mechanical lock. The patent is directed to an electronic combination lock is disclosed which allows access to a closed or secure location wherein the lock includes a locking mechanism for operating between a locked condition and an unlocked condition. The relevant claim language contained in the ˜656 patent which further contained in claims 34 and 43 as:

. . . a movable link member for holding the lever out of engagement with the cam surface before entry of a combination and for releasing the lever after entry of the combination; . . .

At issue was whether the claim limitations described in the “member for holding . . . for releasing ” language invoked 35 U.S.C. 112, sixth paragraph. Imagine an examiner was presented this claim during examination. Should he allow the claim?

A) Yes, allow this claim since it is essentially a read on in the findings rendered allowable by the Supreme Court Decision contained in KSR International Co. v. Teleflex Inc..
B) No, reject the claim for an overly broad interpretation of a lever, and further cite the use of pedal contained in the Supreme Court Decision in KSR International Co. v. Teleflex Inc.. and an overly broad application of a lever as defined in this claim.
C) Yes, allow this claim since the use of a interchangeable lever is sufficiently different than the pedal apparatus recited in KSR v. Teleflex since this apparatus applies the use of a roller cam.
D) No, reject this claim using a finding that even though it does not directly invoke 35 USC 112 paragraph 6, it is sufficiently vague to be disallowable subject matter.
E) None of the above.

From the matter of Datamize, LLC v. Plumtree Software, Inc., 417 F.3d 1342, 75 USPQ2d 1801 (Fed. Cir. 2005) the following claim was under further review for indefiniteness:

1. In an electronic kiosk system having a plurality of interactive electronic kiosks for displaying information provided by a plurality of information providers, a method for defining custom interface screens customized for individual kiosks of said plurality and operable to make different assortments of said information available for display at different kiosks of said plurality, said method comprising the steps of:

providing a master database of information from said plurality of information providers, said master database referencing substantially all information content from said providers to be displayed on any of said plurality of kiosks;

providing a plurality of pre-defined interface screen element types, each element type defining a form of element available for presentation on said custom interface screens, wherein each said element type permits limited variation in its on-screen characteristics in conformity with a desired uniform and aesthetically pleasing look and feel for said interface screens on all kiosks of said kiosk system, each element type having a plurality of attributes associated therewith, wherein each said element type and its associated attributes are subject to pre-defined constraints providing element characteristics in conformance with said uniform and aesthetically pleasing look and feel for said interface screens, and wherein said plurality of pre-defined element types includes at least one pre-defined window type, at least one pre-defined button type, and at least one pre-defined multimedia type; selecting a plurality of elements to be included in a custom interface screen under construction, said plurality of elements being selected from said plurality of pre-defined elements types, said plurality of selected elements including at least one button type;

assigning values to the attributes associated with each of said selected elements consistent with said pre-defined constraints, whereby the aggregate layout of said plurality of selected elements on said interface screen under construction will be aesthetically pleasing and functionally operable for effective delivery of information to a kiosk user; selecting from said master database an assortment of information content deriving from selected ones of said information providers to define kiosk information content for an individual kiosk of said kiosk system; associating said kiosk information content with at least a portion of said selected elements for said interface screen under construction; and linking said at least one selected button type element to an action facilitating the viewing of at least portions of said kiosk information content by a kiosk user.

Representative Claim (U.S. Patent No. 6,014,137).

Assuming “aesthetically pleasing” is not defined anywhere in the specification or other claims, how should the examiner treat this claim?

A) Reject the claim for being indefinite
B) Allow the claim based on sufficient specify of how to enhanced the user experience is a sufficient improved over that offered by the fruit logoed smartphone companys app
C) Reject the claim for being essentially a misguided design application for a patent
D) allow the application for properly clamming application of containing a method for a design application
E) allow the application based on the rulings contained in Datamize v. Plumtree software

In MIT v. Abacus Software, 462 F.3d 1344 (Fed. Cir. 2006) regarding U.S. Patent No. 4,500,919, the claimed subject matter relates to computer-assisted color processing and editing systems for use in color printing. The relevant claim language of independent claim 1 of the ‘919 patent is as follows:

… colorant selection mechanism for receiving said modified appearance signals and for selecting corresponding reproduction signals representing values of said reproducing colorants to produce in said medium a colorimetrically-matched reproduction.

Does the claim limitation invoke 35 U.S.C. 112, sixth paragraph?

A) No, because the claim is uses contains no "means" language.
B) Yes, there is a possible application of the means plus function claim construction, and the claim will not be allowed.
C) Yes, even though "means for" is not used, the use of "mechanism" without any structural modifiers is sufficient to invoke 35 USC 112, 6th paragraph.
D) No, but the claim still should not be allowed.
E) None of the above

In the case of Orthokinetics, Inc. v. Safety Travel Chairs, Inc., 806 F.2d 1565, 1 USPQ2d 1081 (Fed. Cir. 1986) the Office ruled on the following Representative Claim (U.S. Patent No. Re. 30,867):

In a wheel chair having a seat portion, a front leg portion, and a rear wheel assembly, the improvement wherein said front leg portion is so dimensioned as to be insertable through the space between the doorframe of an automobile and one of the seats thereof whereby said front leg is placed in support relation to the automobile and will support the seat portion from the automobile in the course of subsequent movement of the wheel chair into the automobile, and the retractor means for assisting the attendant in retracting said rear wheel assembly upwardly independently of any change in the position of the front leg portion with respect to the seat portion while the front leg portion is supported on the automobile and to a position which clears the space beneath the rear end of the chair and permits the chair seat portion and retracted rear wheel assembly to be swung over and set upon said automobile seat.

How should the examiner address this claim upon further detailed examination?

A) Allow the claim to pass since so dimensioned is sufficiently specific to pass the updated guidance defined under the revised 35 USC 112 Examination Guidelines
B) Reject the claim based on the language contained in since so dimensioned is sufficiently specific to pass the updated guidance deinked under the revised 35 USC 112 Examination Guidelines
C) Suggest more precise language in a detailed response to the applicant to better define the meaning of so dimensioned
D) Allow the applicant to whittle in the wind and number this as another proper rejection notch in their docket
E) None of the above

In light of findings expressed in Exxon Research and Engg Co. v. United States, 265 F.3d 1371, 60 USPQ2D 1272 (Fed. Cir. 2001) in which the following Representative Claim (U.S. Patent No. 5,348,982 (the 892 patent) was ruled upon:

A method for optimally operating a large diameter three phase (gas, liquid, solid) slurry bubble column having a diameter greater than 15 cm for Fischer-Tropsch synthesis over a supported cobalt catalyst in which solid particles are fluidized in the liquid phase by bubbles of the gas phase, comprising:

(a) injecting the gas phase into said column at an average gas velocity along said column, Ug> 2 cm/sec, such that the flow regime is in the substantial absence of slug flow;

(b) fluidizing the solid supported cobalt catalyst particles of average diameter, dp > 5 Î¼m, to the height, H > 3m, of the expanded liquid in the column by operating with a catalyst settling velocity, Us, and dispersion coefficient, D, such that where and

(c) maintaining plug flow in said column by operating with a gas phase velocity, Ug, expanded liquid height, H, and dispersion coefficient, D, such that

wherein s= effective density of the particles l= density of the liquid Î¼= viscosity of the liquid f(Cp) = hindered settling function

= volume fraction of solids in the slurry (liquid plus solids) UL = liquid velocity along the column H = height of the expanded liquid in said reactor g = gravitational constant dp = diameter of particles m = meters.

The examiner working in the chemical arts department was in a quandary over how to deal with this claim. How should the examiner properly reply to the applicant in this claim, specifically dealing with the definiteness of “slug flow”?

A) Accept the claim as preferred with no modification
B) Reject the claim as written but suggest that the claim be revised or reworded to use language that would make it more definite.
C) Accept the claim after revision of the language surround the seeming ambiguous term "slug" to provide more definition
D) Reject the claim outright based on prior art in the field of chemical compounds that employed in the definition of slugs_x009d_
E) Allow the claim because the revised rules governing the scope of eligible subject matter under the newest Guidance for Examination of USC 112 subject matter are sufficiently broad to encompass the use of the term slug.

In Halliburton Energy Services, Inc., v. M-I LLC, 514 F.3d 1244, 85 USPQ2d 1654 (Fed. Cir. 2008) Representative Claim (U.S. Patent No. 6,887,832 the following claim was proposed:

A method for conducting a drilling operation in a subterranean formation using a fragile gel drilling fluid comprising:

(a) an invert emulsion base;

(b) one or more thinners;

(c) one or more emulsifiers; and

(d) one or more weighting agents, wherein said operation includes running casing in a borehole.

“Fragile gel” is not further defined anywhere else in the patent

How should have an examiner addressed this claim?

A) dismiss the claim due to prosecutorial overreach
B) re-review the claim based on findings established by the Environmental Protection Agency, which may have more highly skilled insight on the subject matter
C) accept the claim based on sufficient specificity contained the conducting a drilling formation language
D) reject the claim due to indefiniteness based on the language concerning a fragile gel_x009d_
E) accept the claim absent the broadest reading of 35 USC 112

In the case of Seattle Box Co., Inc. v. Indus. Crating & Packing, Inc., 731 F.2d 818, 221 USPQ 568 (Fed. Cir. 1984) the Court rendered a decision on the following: Representative Claim (U.S. Patent No. Re. 30,373):

A shipping bundle formed of a plurality of lengths of pipe of a common size, comprising:

a base formed of a first plurality of transverse sleepers located in spaced-apart parallel arrangement;

a tier of pipe lengths resting on said base, adjacent pipe lengths of said tier being separated by blocks in transverse series, each block having opposed concavities substantially embracing the curved sides of said adjacent pipe lengths;

each of said series of blocks being located to stand on one of said sleepers and being of a height substantially equal to or greater than the thickness of the tier of pipe lengths;

a second plurality of sleepers, each traversing said pipe tier in overlying alignment with a sleeper of said first plurality, the sleepers of said second plurality being supported on the series of separating blocks;

and a bundling strap tightly encircling each sleeper of said first plurality, the separating blocks resting thereon, and the respective overlying sleeper.

The examiner performed a very thorough search of prior art and uncovered that: The claimed invention relates to packaging oil pipes, where a tier of pipes are placed across parallel wooden sleeper beams, and wooden spacer blocks ensure that adjacent pipes remain separated. To prevent the weight of the upper pipes from crushing the lower pipes, the spacer blocks are made with a height at least equal to the pipes diameter such that they absorb most of the weight of the overhead load. What would be the most correct response for the examiner to undertake when reviewing this claim?

A) Do not reject the claim based on the "substantially equal to" language.
B) Reject the claim based on the "substantially equal to" language.
C) Accept the claim given that sleeper beams have been weal known among those highly skilled in the construction field
D) Reject the claim given that sleeper beams have been well known among those highly skilled in the construction field
E) none of the above

In the case of re Cohn, 438 F.2d 989, 169 USPQ 95 (CCPA 1971) the following claim was considered by the Federal Court: wherein challenged claim (first appearing in application serial No. 281,049, filed May 16, 1963) read:

1. The method of producing on a surface of aluminum a durable opaque finish comprising the steps of providing on the surface of the aluminum a porous oxide coating, then sealing said coating by treatment with a solution of an alkali silicate, and then treating the sealed surface with a corroding solution until the metallic appearance of the surface is supplanted by an opaque appearance.

How should the examiner responsible for this examination address this claim?

A) Allow the claim as is_x009d_ without any amendments because it appears to be a novel application of an aluminum porous oxide coating that may be useful in reducing numerous carbon based emissions.
B) Reject the claim for being a non-novel application of an aluminum porous oxide coating
C) Reject the claim based on possible vagueness and cite indefiniteness in the reply.
D) Accept the claim given that there is a market need for using more porous oxide coating_x009d_ given their acceptance potential to enabling green technology proponents per the latest findings contained in USPTO patent 6861002 B2 Reactive compositions for fluid treatment_x009d_
E) any of the above, answers (A), (B), (C) and (D) would be considered equally acceptable.

In Greenberg v. Ethicon Endo-Surgery, Inc., 91 F.3d 1580 (Fed. Cir. 1996) U.S. Patent No. 4,674,501 (the 501 patent)
The claimed subject matter was drawn to an endo-mechanical surgical instrument. The relevant claim language of independent claim 1 of the 501 patent is as follows:
. . . , a radially enlarged wheel on said sleeve and said wheel and said one handle having a cooperating detent mechanism defining the conjoint rotation of said shafts in predetermined intervals, . . .
Issue: Does the claim limitation detent mechanism defining the conjoint rotation¦ invoke 35 U.S.C. 112, sixth paragraph & should the claim be allowed.

A) No, it does not invoke and yes, it attempts to claim a previously judicially defined exception that falls under the guidance contained in 74618 Federal Register / Vol. 79, No. 241 / Tuesday, December 16, 2014 / Rules and Regulations and should be allowed by the examiner
B) No, the claims as written violates judicial overreach for apparently reading on a judicially defined disclosure that falls under the guidelines defined in 74618 Federal Register / Vol. 79, No. 241 / Tuesday, December 16, 2014 / Rules and Regulations and should be rejected by the examiner
C) No it does not invoke and yes allow the claim if only the applicant restates the claim to allow for only detent mechanisms that are focused on collocated conjoint rotation detent mechanisms.
D) No, reject the claim based on the need for collocated conjoint rotation points
E) Answer A and C

In the matter of Finisar Corp. v. The DirecTV Group, Inc., 523 F.3d 1323 (Fed. Cir. 2008) U.S. Patent No. 5,404,505 (the 505 patent)

The claimed subject matter is drawn to a satellite based information broadcasting system which provides a large number of subscribers access to broadcast information. The relevant claim language of independent claim 1 is as follows: . . . a set of one or more computer memory devices on which is stored an information database; database editing means, coupled to said one or more computer memory devices, for generating a hierarchically arranged set of indices for referencing data in said information database, including distinct indices for referencing distinct portions thereof, and for embedding said indices in said information database . . .

Corresponding structure is disclosed in the specification as follows:

As shown in FIG. 1, the program supplier station 102 includes the aforementioned database 112, which is typically stored on a large number of high density magnetic disk devices. The program editing software 132 on the central program supplier station 102 tags all the information in the database 112 with indices (each of which contains a packet ID plus additional information) so as to form a single hierarchical structure that encompasses the entire information database. More specifically, software 132 (executed by CPU 130) generates a hierarchical set of indices referencing all the data in the information database 112 and embeds those indices in the information database. 505 patent, ll. 28-40

Issue: Does the disclosure of software that generates data for the information database, provide the support needed for the database editing means limitation of claim 1 to satisfy the corresponding structure, material or acts requirement of 112 Â¶ 6 to avoid an indefiniteness rejection?

A) Yes, since there is sufficient incorporation of a machine transformation performed by the central program supplier station referenced in supplied drawing in element [102].
B) No, the claim should be rejected for indefiniteness; the examiner should cite 35 USC 112 ¶ 6
C) Yes, by providing with sufficient description of database editing means, the claim provides sufficient description for editing said database
D) No, the claim should be rejected for indefiniteness; the examiner should cite35 USC 112 ¶ 2
E) Yes, a single hierarchical structure that encompasses the entire information database passes the machine transformation requirement contained in 74618 Federal Register / Vol. 79, No. 241 / Tuesday, December 16, 2014 / Rules and Regulations and Bilski et al

In Biomedino, LLC, v. Waters Tech. Corp., 490 F.3d 946 (Fed. Cir. 2007) filed as U.S. Pat. No. 6,602,502 (the 502 patent)

The claimed subject matter is drawn to a method and apparatus for medical testing. The relevant claim language is set forth in claim 40 as follows:

A closed regeneration device . . . comprising . . . for separating a molecule . . . a first valve selectively connecting said first reagent in fluid communication with said molecule bound . . . a second reagent, a second valve selectively connecting said second reagent in fluid communication with . . . to return said binding species to a regenerated condition, and control means for automatically operating valves.

The written description of the specification supports this means-plus-function recitation with the following disclosure which when describing Figure 6 of the 502 patent states, The entire process of regenerating the antibody may be controlled automatically by known differential pressure, valving and control equipment. 502 patent, col.11 ll.55-58. Figure 6 depicts a box labeled Control.

Does the depiction of a box labeled control in combination with the disclosure that the claimed control means may be controlled automatically by known differential pressure, valving and control equipment satisfy the corresponding structure, material or acts requirement of 112, ¶ 6 to avoid an indefiniteness rejection?

A) Yes, reject the claim for reciting a simple improvement that as being essentially previously contained in the differential pressure adapter for an automatic cycle (well) control previously described in US 3266574 A
B) No, accept the claim since the use of a differential pressure adapter previously described in US Patent 3266574 A did not contain a sufficient description of an automated cycle control mechanism to invoke 35 USC 112, ¶ 6 limitations.
C) Yes, allow the claim for a novel invocation and application of a differential pressure adapter.
D) No, reject the claim for reading too close to previously cited prior art defined in US Patent 3266574
E) No. Follow the two-pronged analysis and re-read the limitations contained in said claim to fine it indefinite. The claim should be considered indefinite under 112 ¶ 2 because the disclosure only provides a statement that known techniques or methods can be used to achieve the claimed function and does not disclose the necessary corresponding structure.

Katz Interactive Call Processing Patent Litig. v. American Airlines, Inc., 97 U.S.P.Q.2D 1737 (Fed. Cir. 2011) regarded U.S. Patent No. 5,815,551 (the ‘551 patent).

The claimed subject matter is drawn to a Telephonic-interface statistical analysis system. The relevant claim language of independent claim 21 is as follows:

processing means . . . for receiving customer number data entered by a caller and for storing the customer number data . . . and based on a condition coupling an incoming call to the operator terminal, the processing means visually displaying the customer number data;

The written description of the specification discloses the following in support of the noted means-plus function recitation of claim 21:

The system of the present invention may qualify an entitled set of callers, then receive answer data in the course of the call and develop identification or designation data, sequence data and statistical data. The system may then provide data cells for storing individual data while assigning confirmable identifications to the entitled set. From the set, a subset is defined. That is, in accordance with various formats, acquired data is processed in statistical relationship, or in relation to applied external data to accomplish such functional operating formats as an auction sale, a contest, a lottery, a poll, a merchandising operation, a game, and so on. 551 patent, col. 2 ll. 11 “ 21

The processing systems P1-Pn are similar, therefore, only the processing system P1 is shown in any detail. . . . The interface 20 provides the connection of the fifty lines to a switch 21 which is in turn coupled to fifty function units, or processors PR1-PRn. As indicated above, multiple function units, or processors, are described in the disclosed embodiment to facilitate the explanation. Of course, nonparallel techniques and multiplexed operations might well be employed as alternatives. For a similar reason, as disclosed herein, each of the processors PR1-PRn includes memory cells for each of the callers’ individual data. Development and compilation of data in such cells according to various operating formats is described below. In the disclosed embodiment, the processors PR1-PRn are connected collectively to the command computer terminal CT (incorporating a CRT display), the interface terminal IT, and the printer PR. Note that the CRT display serves to visually display data regarding select subsets as explained in detail below. Exemplary detailed structures for the processors PR1-PRn are described below; however, in general, the units may comprise a microcomputer, for example, programmed as suggested above and as disclosed in detail below to accomplish specific operating formats. . . . On the qualification and designation of callers, the system enters a data accumulation phase during which digital data (formatted at one of the telephone terminals T1-Tn) is processed by one of the processors PR1-PRn. In general, the processing evolves a subset (at least one caller) the members of which may be verified and confirmed. 551 patent, col. 4 l. 35 “ col. 5 l. 52

Does the disclosure of what only amounts to a general purpose computer satisfy the corresponding structure, material or acts requirement of 112 ¶ 6 to avoid an indefiniteness rejection?

A) Yes, since the system employs a number of application-specific processors working in parallel in a large array there is sufficient specificity to allow this claim to be used in call record applications.
B) No, since the application on first exanimation invokes 112 ¶ 6 and on further examination is found to invoke 112 ¶ 6,
C) Yes, since the general purpose computer is patentable.
D) No, it invokes 112 ¶ 6 and upon further examination should be rejected for indefinitess 112 ¶ 2
E) None of the above.

In Linear Tech. Corp., v. Impala Linear Corp., 379 F.3d 1311 (Fed. Cir. 2004) filed as U.S. Patent No. 5,481,178 (the 178 patent)

The claimed subject matter is drawn to a control circuit for maintaining high efficiency over broad current ranges in a switching regulator circuit. The relevant claim language from claim 1 of the 178 patent is as follows:

1. A circuit for controlling a switching voltage regulator . . . the control circuit comprising: a first circuit for monitoring a signal from the output terminal to generate a first feedback signal;

a second circuit for generating a first con-trol signal during a first state of circuit operation, the first control signal being responsive to the first feedback signal to vary the duty cycle of the switching transistors to maintain the out-put terminal at the regulated voltage; and

a third circuit for generating a second control signal during a second state of circuit operation to cause both switching transistors to be simultaneously OFF for a period of time if a sensed condition of the regulator indicates that the current sup-plied to the load falls below a threshold . . . .

Issue: Do the claim limitations for a circuit for monitoring and a circuit for generating invoke 35 U.S.C. 112, sixth paragraph?

A) Yes, reject the claim citing that using switching voltage regulators is a well known practice previously identified in other prior art available prior art to the examiner under chapters 700 and 2100 of the MPEP
B) Yes, reject the claim described a switched voltage regulator for the purpose that has been previously described in US Patent 9,130,456 B
C) Yes, reject the claim since using a switched voltage regulator is widely understood by those highly skilled in the field of voltage regulators as being inherently inferior to linear regulators
D) No, the claim does not invoke language that recite limitation contained in 35 U.S.C. 112 since circuits using multiple control circuit have been previously allowed under the broadest interpretation in the field(s) of electrical arts
E) Any of the above (A), (B), (C), or (D).

In Personalized Media Commcns, LLC, v. ITC, 161 F.3d 696 (Fed. Cir. 1998) first cited in United States Patent 5,335,277 (the 277 patent)

The claimed subject matter relates to an integrated system for communicating programming, e.g. electronically transmitted entertain, instruct or inform, including television, radio, broadcast print, etc. The relevant claim language of independent claim 44 of the 277 patent is as follows:

. . .a digital detector operatively connected to a mass medium receiver for detecting digital information in a mass medium transmission and transferring some of said detected information to a processor; . . .

Issue: Does the claim limitation digital detector invoke 35 U.S.C. 112, sixth paragraph?

A) Yes, accept the claim since the use of a digital detector were first described in US Patent 7298825 B2 which describes a portable digital detector system
B) No,. reject the claim citing in a metal detector using a metal detector system first described in US Patent 4709213 A
C) Yes, reject the claim citing the prior art contained in US 6282264 B1 describing a digital flat panel x-ray detector
D) No, accept the claim based on a method and system for object detection employing the findings contained in US 7099510 B2
E) No, accept the claim for using sufficiently broad language that avoids interpretation contained in 35 USC 112.

In the case of Wenger Mfg, Inc., v. Coating Machinery Sys., Inc., 239 F.3d 1225 (Fed. Cir. 2001) U.S. Patent 5,100,683 (the 683 patent) the claimed subject matter is drawn to a method and apparatus for coating and drying food products. The relevant claim language at issue of independent claim 1 is as follows:

. . . means for selectively inclining said reel with said inlet elevated relative to said outlet; air circulating means associated with said dryer housing for circulating air through said reel, . . .

Claim 3. An apparatus for coating and drying a food product as set forth in claim 2 including means for exhausting a first portion of said air received in said plenum and re-circulating a second portion of said air back into the interior of said reel.

The written description of the specification supports the means-plus-function recitation of claim 1 as noted below:

The specification discloses the function of circulating in the context of drawing air through the reel in order to dry the food product, and discloses recirculation as a separate function involving the return of a portion of the drying air back into the reel. In the summary of the invention, the specification states that the reel is rotatable and permits the circulation of drying air there through. 683 patent, col. 1, ll. 56-58. The specification further states that the product is presented as a tumbling bed which is agitated as it passes through the reel with drying air circulated there around. Id. at col. 1, l. 67 to col. 2, l. 1. In the next paragraph, the specification then explains that in preferred forms, the housing is configured to draw additional air through the openings at each end of the reel whereby both fresh and re-circulating air is introduced into the reel. Id. at col. 2, ll. 4, 11-14. Later, in describing the preferred embodiment, the specification states that the circulating component 22 and exhaust fan 122 create positive air flow, which causes the air to flow in a substantially closed circuit through the housing. Id. at col. 5, ll. 30-33. In the preferred embodiment, after the air is drawn from the interior of the reel into the housing, air may either be exhausted from the housing or returned back to the reel for recirculation. Wenger at 1234-35.

Issue: Does the disclosure that supports the claimed air circulation means also have to disclose and link to a corresponding structure that re-circulates air to properly support the claimed function in accordance with the requirements of 112 ¶ 6 and avoid an indefiniteness rejection?

A) Yes, is sufficiently distinct application of a method of circulating in the context of drawing air
B) Yes, do not reject the claim because the specification sufficiently describes the structure of the method of circulating air.
C) No, reject the claim even though the examiner can cite sufficient invocation of 112 ¶ 6, upon further examination and the Slim-Jim method of recalculating recalculated air introduces sufficient vagueness in language further defined in 112 ¶ 2 to offer allowance of this application
D) No, since Slim-Jim has been putting-out similar product using a substantially equivalent process for processing food by-products allow this claim to pass
E) None of the above is true.

In the matter of described in re Dossel, 115 F.3d 942 (Fed. Cir. 1997) U.S. Patent Application Serial No. 07/543,600 application (the ‘600 application), now U.S. Patent 5,885,215 (the 215 patent)

The claimed subject matter is drawn to a method of reconstructing the spatial current distribution in a biological object, i.e. the generation of medical images of a patient. The relevant claim language of independent issued claim 1 (Claim 8 on appeal) is as follows:

. . . and means for reconstructing the current distributions of the volume elements which are situated on said surfaces on the basis of said measured values.

The written description of the specification supports this means-plus-function recitation with the following disclosure:

A reconstruction unit 11 reconstructs the density of the impressed current at the individual voxels Vi (1 . . . i . . . s, where s is the number of voxels on the marked surface) from the measuring values of the magnetic flux density at the various pixels at each time the same instant. Known algorithms can be used for this purpose. ˜215 patent, col. 4, ll. 5-11.

Issue: Does the disclosure of specific equations to perform the function of reconstruction coupled with the disclosure that known algorithms can be used to solve those equations satisfy the corresponding structure, material or acts requirement of 112 Â¶ 6 to avoid an indefiniteness rejection?

A) No, reject the claim since the application invokes 112 Â¶ 6 but should be allowed based on further analysis defined under the Examination Guidelines for evaluating 112 Â¶ 2.
B) Yes, the application invokes a judicial exception under 112 Â¶ 6 and upon further examination the specification does not directly state that a computer or computer code is used to implement the function of reconstruction but the written description combined with the claims disclose a device that receives digital data words from a memory and data input from a user as found in 112 Â¶ 6.
C) No, reject the claim since using voxel-based parsing have been widely dismissed by leading subject matter experts since the late 1990s. based on bad science
D) Yes, allow the claim since it does not invoke limitations contained in other prior voxel-based rejections previously considered under the broadest interpretation(s) under 112 Â¶ 6
E) No, the examiner should reject the claim since previously established science using voxel-based morphometry (VBM signaling) all involved using a voxel-wise comparison based just on the local concentration of gray matter between two groups of subjects. The data referenced in studies cited in the application do not contain statistically sufficient data sets, (which cite only two controversial studies). Reject the claim base on insufficient supporting evidence_x009d_

In MIT v. Abacus Software, 462 F.3d 1344 (Fed. Cir. 2006), the Federal Circuit considered U.S. Patent No. 4,500,919. The claimed subject matter relates to computer assisted color processing and editing systems for use is in color printing. The relevant claim language of independent claim 1 of the ‘919 patent is as follows:

… display means connected to the scanner for receiving the appearance signals and aesthetic correction circuitry for interactively introducing aesthetically desired alterations into said appearance signals to produce modified appearance signals; …

Does the claim limitation “aesthetic correction circuitry for” invoke 35 U.S.C. 112, sixth paragraph?

A) Yes, the use of aesthetic correction circuitry for interactively introducing aesthetically desired alterations_x009d_ is sufficiently broad enough to warrant a preliminary rejection.
B) No, since using and aesthetic correction circuitry for interactively introducing aesthetically desired alterations_x009d_ is sufficiently precise to allow the claim
C) No, since using and aesthetic correction circuitry for interactively introducing aesthetically desired alterations_x009d_ is sufficiently precise to allow the claim
D) No, since aesthetic correction circuitry for" does not employ claim language that requires a presumption that 35 USC 112 sixth paragraph is invoked.
E) Maybe, but the examiner must first request that the applicant provide a further definition of the meaning of appearance signal(s)_x009d_ and further use of correction circuitry for interactively introducing aesthetically desired alterations_x009d_ language before issuing a first rejection.

In Mas-Hamilton Group, v. LaGard, Inc., 156 F.3d 1206 (Fed. Cir. 1998) in the matter of U.S. Patent No. 5,307,656, the claimed subject matter is drawn to an electro-mechanical lock. The relevant claim language from claim 3 of the ‘656 patent reads as follows:

. . . a substantially non-resilient lever moving element for moving the lever from its disengaged position for engaging the protrusion of the lever with the cam surface on the cam wheel so that the rotation of the cam wheel thereafter in the given direction changes the locking mechanism from the locked condition to the unlocked condition; . . . .

The structure of the “lever moving element” is not defined in the specification, it has no dictionary definition connoting structure, and it does not have a known structural meaning in the relevant art. Does the claim limitation “lever moving element for moving” invoke 35 U.S.C. 112, sixth paragraph?

A) No, the claim language does not invoke 35 U.S.C. 112, sixth paragraph.
B) Yes, the claim language used in describing the manipulation of a lever from its disengaged position sufficiently contains language that may invoke 35 U.S.C. 112, sixth paragraph.
C) No, the claim is sufficiently distinct as to provide a defensible argument that it does not invoke 35 U.S.C. 112, sixth paragraph.
D) No, because the functional term is accompanied by a structural modifier.
E) None of the above.

In Lighting World, Inc., v. Birchwood Lighting, 382 F.3d 1354 (Fed. Cir. 2004) expressed in U.S. Patent No. 5,448,460 (the 460 patent) and U.S. Patent No. 5,221,139 (the 139 patent)

The claimed subject matter relates to a fluorescent light fixture. The relevant claim language of independent claim 1 of the 460 patent is as follows:

c) a connector assembly for connecting each pair of adjacent support members, said connector assembly being pivotally connected to said pair of adjacent support members;¦

Issue: Does the claim limitation connector assembly for connecting invoke 35 U.S.C. 112, sixth paragraph?

A) No, but the claim should be dismissed for anticipation since it recites nothing more than a simple variation of a common fluorescent light bulb
B) Yes, the claim includes a recitation of a connector assembly for connecting light element that is sufficiently close to a read upon the guidance contained in common fluorescent light bulbs
C) No, allow the claim since it avoids any potential 35 USC 112 claim limitations
D) Yes, reject the claim for being in conflict with 74618 Federal Register / Vol. 79, No. 241 / Tuesday, December 16, 2014 / Rules and Regulations
E) No, but still reject the claim for infringing on previously defined methods for connecting an assembly employed in light assemblies

Aristocrat Techs. Australia Pty Ltd, v. Intl Game Tech., 521 F.3d 1328 (Fed. Cir. 2008) originally filed as U.S. Patent No. 6,093,102:

The claimed subject matter is drawn to a gaming machine, e.g. a slot machine. All the claims are at issue with the relevant claim language of independent claim 1 as follows:

. . . game control means arranged to control images displayed on the display means, the game control means. . .

The written description of the specification supports this means-plus-function recitation with the following disclosure:

In the following detailed description, the methodology of the embodiments will be described and it is to be understood that it is within the capabilities of the non-inventive worker in the art to introduce the methodology on any standard microprocessor base gaming machine by means of appropriate programming. 102 patent, col. 2, l. 65-col. 3 l. 5.

Is the disclosure of only a standard microprocessor-based gaming machine with appropriate programming sufficient to avoid an indefiniteness rejection?

A) Yes, reject the claim based on the fact that 8051, 6809 and Z80 series microprocessors have been widely employed in various embedded devises and the disclosure of this application cites using an equivalent microprocessor / microcontroller in, including those commonly found in portable gaming_x009d_ devices
B) No, accept the claim since the use of an embedded microprocessor executing a highly directed and specific algorithm in a self-contained apparatus
C) Yes, reject the claim since it fails to disclose a sufficient definition of a sufficient algorithm necessary to pass the machine or transformation_x009d_ test
D) No, reject the claim for failing to disclose a sufficient algorithm that passes the proverbial machine or transformation test
E) None of the above

In the case of Blackboard, Inc., v. Desire2Learn Inc., 574 F.3d 1371 (Fed. Cir. 2009) U.S. Patent No. 6,988,138 (the 138 patent)

The claimed subject matter is drawn to a system and methods for implementing education online. All the claims are at issue with the relevant claim language of independent claim 1 as follows:

. . . means for assigning a level of access to and control of each data file based on a user of the system’s predetermined role in a course; . . .

The corresponding structure is disclosed in the specification as follows:

Access control manager 151 creates an access control list (ACM) for one or more subsystems in response to a request from a subsystem to have its resources protected through adherence to an ACM. Education support system 100 provides multiple levels of access restrictions to enable different types of users to effectively interact with the system (e.g. access web pages, upload or download files, view grade information) while preserving the confidentiality of information. 138 patent, col. 9, ll. 37-45.

Issue: Does the disclosure of an access control manager (ACM) provide support for the means for assigning limitation of claim 1 to satisfy the corresponding structure, material or acts requirement of 112 Â¶ 6 to avoid an indefiniteness rejection?

A) Recognize that Access Control Lists may read on the more broadly defined use access control lists defined in the standard OSI seven layer computer networking model section describing Layer Two of the standard and reject the claim.
B) Reject the claim since it does not define sufficient and/or necessary structure to be allowed under the guidance contained in 74618 Federal Register / Vol. 79, No. 241 / Tuesday, December 16, 2014 / Rules and Regulations regarding 35 USC 112 and indefinite under 35 USC 112 Â¶ 2
C) Allow the claim since the use of an Access Control Manager to manage a Access Control List is a novel application contained in embedded managed networking.
D) Reject the claim since the use of an Access Control Manager has been already anticipated under Access Control Manager, found in US Patent 20150089625 A1 as well as being indefinite under 35 USC 112 Â¶ 6
E) Allow the claim since the definition contained in an Access Control Manager previously filed and issued as US Patent 20150089625 A1 do not fully anticipated the scope of the more generalized use of a Access Control List as defined in this application.

In the matter of All Voice Computing PLC v. Nuance Commcns, Inc., 504 F.3d 1236 (Fed. Cir. 2007) U.S. Patent No. 5,799,273 (the 273 patent)

The claimed subject matter is drawn a data processing used in the output from a speech recognition engine. The relevant claim language of independent claim 60 is as follows:

. . . output means for out-putting the recognized words into at least any one of the plurality of different computer-related applications to allow processing of the recognized words as input text; . . .

The written description of the specification discloses the following in support of the means-plus function recitation of claim 60:

The speech recognition interface application 12 receives the recognized word at the head of the alternative list shown in FIG. 3 and outputs the word using the dynamic data exchange (DDE) protocol in the Windows operating system. 273 Patent col.7 ll.3-7.

Issue: Does the disclosure that supports the claimed means for outputting also have to disclose and link to a corresponding structure that must alternately output data to a plurality of different word processing or other application programs to satisfy the requirements of 112 ¶ 6 and avoid an indefiniteness rejection?

A) Disallow the claim because claiming to output[ting] data to more than one program does not sufficiently disclose a means or structure describing a method of performing a machine transformation of said data.
B) Allow the claim under the broadest interpretation of 112 ¶ 2.
C) Allow the claim based on Claim1, which reads as: A method for providing voice dynamics of human utterances converted to and represented by text within a data processing system, said method comprising…:The scope of the claim contained in Claim 1 is broad enough to overcome a rejection based on a further reading 35 USC 112
D) Reject the claim since the use of capture and the application of sender voice dynamics to an enhance[d] communication system in a speech-to-text environment was previously cited as established prior art in previously established expert testimony proffered in the field regarding the capture of sender voice dynamics and is further prohibited to be considering based on the prior art established in US 6175820 B1.
E) Do Nothing

Al-Site Corp., v. VSI Intl, Inc., 174 F.3d 1308 (Fed. Cir. 1999) regarded U.S. Patent Nos. 5,144,345 (the 345 patent & 5,260,726 (the 726 patent) .
The claimed subject matter relates to retail displays for eyeglasses. Claim 1 of the 345 patent and claim 1 of the 726 patent both set forth the following relevant claim language:
an eyeglass hanger member for mounting a pair of eyeglasses . . .; said eyeglass hanger member made from flat sheet material and having an upper edge, a lower edge and a width dimension, the width dimension of said hanger member being greater than the width of the bridge; . . .
Does the claim limitation eyeglass hanger member invoke 35 U.S.C. 112, sixth paragraph?

A) Yes, the claim employs language that can be construed as requiring the presumption that 35 USC 112 sixth paragraph is invoked.
B) Yes, the examiner should reject the claim for using overly broad claim language and put the practitioner on notice for being subject to a second and possible, final rejection.
C) No, the examiner should allow the claim since it does not employ so-called means for (a.k.a. means plus function) claim language.
D) (A) and (B)
E) None of the above

Which of the following is in accordance with the patent laws, rules and procedures as related in the MPEP?

A) Disclosure of the best mode is no longer required under the first paragraph of 35 U.S.C. 112.
B) Disclosure of the best mode is required under the first paragraph of 35 U.S.C. 112.
C) A specific example is required to meet the statutory requirements for best mode.
D) The best mode must be designated as such within the specification.
E) If the best mode contemplated by the inventor at the time of filing the application is not disclosed, such a defect can be cured by submitting an amendment.

In Classen Immunotherapies Inc. v. Biogen IDEC, 2008 WL 5273107 (Fed. Cir. Dec. 19, 2008) (unpublished), the Federal Circuit affirmed the district court’s grant of summary judgment of invalidity under 35 U.S.C. 101. The Classen patent claimed a method of determining whether an immunization schedule affects the incidence or severity of a chronic immune-mediated disorder in a treatment group of mammals, relative to a control group of mammals. The application contained the following claim: A method of determining whether an immunization schedule affects the incidence or severity of a chronic immune-mediated disorder in a treatment group of mammals, relative to a control group of mammals, which comprises immunizing mammals in the treatment group of mammals with one or more doses of one or more immunogens, according to said immunization schedule, and comparing the incidence, prevalence, frequency or severity of said chronic immune-mediated disorder or the level of a marker of such a disorder, in the treatment group, with that in the control group. In light of various recent circuit and Supreme Court rulings, and following guidance set forth in Diamond v. Chakrabary, and more recently defined by Molecular Pathology v. Myriad Genetics, how should the examiner proceed when confronted with this claim in a future application?

A) Reject the claim based on prosecutorial overreach citing Bilski, et al.
B) Reject the claim based on applying a scientific method to what is an essentially a naturally occurring phenomena inherently defined in the human body guidelines within definition contained in the 35 USC 101 natural phenomena eligible subject matter criteria.
C) Allow the claim, because allowing this claim will expedite treatment(s) for multiple cancer indications never addressable before, bypassing the FDAs lengthy approval process in the interest of justice
D) Allow the claim based on a very broad read of 35 USC 101 using a recent ruling from the Supreme Court speaking to affordable drug pricing
E) Allow the claim based based on 35 USC 101

An examiner in the computer technology department encounters the following claim: A non-transitory computer-readable storage medium with an executable program stored thereon, wherein the program instructs a microprocessor to perform the following steps: “sorting results of a search into groups based on a first characteristic; “ranking the results based on a second characteristic using a mathematical formula [f]; and “comparing the ranked results to a predetermined list of desired results to evaluate the success of the search.How should the examiner treat this claim? Is the claim directed to an apparatus of manufacture and / or is the claim directed to substantially all practical applications of the mathematical algorithm?

A) Reject the claim, since computer readable media are considered transitory, there is no need to continue to the second prong of a traditional machine or transformation test for subject matter eligibility.
B) Reject, the claim even though the claim explicitly claims a non-transitory storage medium, it would fail the second prong of the machine or transformation test due to the inherent algorithmic nature of the claim, It is an attempt to circumvent the gist of the law in order to obtain patent rights on what is essentially a method of sorting and storing data on a virtual drive, be it a hard drive or on the cloud as further defined in dependent claim(s) 10-12.
C) Reject the claim, since it is not directed to a real apparatus, but it is a real effort to perform a machine or transformation exacted by writing the output to a dedicated hard drive, be it a local drive or on the cloud as defined in dependent claim(s) 10-12.
D) Reject the claim, while it passes the machine or transformation test and incorporates elements of incorporating real devices, in our case the microprocessor, it fails to further incorporate a true transformation of said data which is just the output of a machine translation.
E) Accept, and allow the clam.

In the case of Fiers v. Revel, 984 F.2d 1164, 25 USPQ2d 1601 (Fed. Cir. 1993) the practitioner presented the following Interference Count:

A DNA which consists essentially of a DNA which codes for a human fibroblast interferon-beta polypeptide.

Background: In a three-way interference proceeding involving Sugano, Fiers, and Revel, the Board had awarded priority to Sugano. The Board had found that Fiers had not proved conception of the invention prior to his British filing date because despite evidence of an enabling disclosure, Fiers had not actually isolated and sequenced a DNA coding for human fibroblast interferon-beta polypeptide (Î²IF). Similarly, the Board had determined that Revel was not entitled to rely on the filing date of his Israeli application because it did not contain a complete written description of a DNA coding for Î²-IF. Suganos Japanese application, however, disclosed the complete nucleotide sequence of a DNA coding for Î²-IF and a method for isolating that DNA.

What would have been to correct reply for the examiner to reply to the practitioner on this claim?

A) Award the senior infringing standing to Sugano recognizing that even though certain sequencing had not been completed, Sugano Japanese application contained a more complete definition of the transcriptional coding that was missing in the Fiers application as contained in the the Fliers filing.
B) Overrule the preliminary findings of the Technical Center that failed to award Revel an earlier filing date that should have been properly attributed based on their compliant coding of Î²-IF.
C) Reply with a first rejection citing prior art that were expressed on the human fibroblast interferon-betta polypeptide by investigating prior art in transcriptional factors regulating recombinant proteins found only in human Î²-IF chains.
D) Direct all parties to file for a derivation proceeding since the application was filed before Sep 16, 2012.
E) Allow the Sugano application to issue, but award Fiers with standing to complete prosecution of their application in accordance with pre-AIA rules.

A Scientist files a patent application on April 3, 2013. The examiner cites a technical document that was published on April 2, 2013 by someone other than Scientist. The technical document describes work that Scientist performed in September 2012. What is the outcome?

A) Technical documents are not considered publication prior art
B) The document may cite the document as prior art, but Scientist will be able to overcome it if he can show that the document came from his own work.
C) The document is not considered prior art as it was published <1 year from Scientist's filing
D) The document is considered prior art and will bar Scientist from obtaining a patent.
E) None of the above

Patent holder Bill sued alleged infringer Bob for infringement on September 19, 2011. After reviewing the patent in question, alleged infringer Bob determines that patent holder Bill failed to disclose the best mode in the patent. In accordance with the patent laws, rules and procedures as related in the MPEP, which of the following is correct?

A) Alleged infringer Bob can assert that all the claims of the patent should be cancelled for failure to disclose the best mode.
B) Alleged infringer Bob can assert that some of the claims of the patent should be cancelled for failure to disclose the best mode.
C) Alleged infringer Bob can argue that all claims of the patent are invalid for failure to disclose the best mode.
D) Alleged infringer Bob can argue that some of the claims of the patent are invalid for failure to disclose the best mode.
E) None of the above.

Inventor Smith files a nonprovisional application on March 17, 2013, claiming domestic benefit to a different application filed before September 12, 2012. Inventor Smith then deletes the domestic benefit claim during prosecution. What will happen to the application (in terms of being subject to the first-to-invent provisions vs the first-inventor-to-file provisions)?

A) When the domestic benefit was deleted, the nonprovisional application switched from being subject to the first-to-invent provisions (as there were claims being referenced filed PRIOR to March 16th, 2013) to the first-inventor-to-file provisions because the claims will have an effective filing date that is after March 16, 2013.
B) When the domestic benefit was deleted, the nonprovisional application switched from being subject to the first-to-invent provisions (as there were claims being referenced filed PRIOR to April 2nd, 2013) to the first-inventor-to-file provisions because the claims will have an effective filing date that is after April 2nd, 2013.
C) Deleting domestic benefit does not alter the effective filing date of the application
D) Since the application was filed prior to April 2nd, the app will still be considered subject to first-to-invent.
E) None of the above.

What is the effective date of the first-inventor-to-file provisions?

A) March 15th, 2013
B) March 15th, 2012
C) March 16th, 2012
D) March 16th, 2013
E) None of the Above

Do the first-inventor-to-file (FTF) provisions apply to all applications filed on or after March 16, 2013?

A) Yes: Any application filed on or after March 16th, 2013 is subject to FTF.
B) No: Only applications filed after March 16th, 2013, are subject to FTF.
C) No. It depends on the effective filing date of the claimed invention. Thus, an application filed on or after March 16, 2013 may still be subject to the first-to-invent provisions if its "effective filing date" is before March 16, 2013.
D) No, design patents filed on or after March 16th 2013 are not subject to FTF.
E) None of the above is correct.

Which of these will NOT automatically trigger a 35 USC 112 (6th paragraph) rejection?

A) "a module for"
B) "a component for"
C) "an element for"
D) "a member for"
E) None of the above.

How can an applicant with a business method invention (or a method pertaining to business) argue that his invention is patentable?

A) Show / amend the claim(s) so that it is an application of an abstract idea to a useful end.
B) Prove that the invention will bring in large profits
C) Show / amend the specification so that it is an application of an abstract idea.
D) A and C
E) None of the above.

Mr. Roberts, an American citizen touring a vineyard in France, saw a unique grape-squeezing machine. The machine was highly efficient, and produced excellent wine. The vineyard owner was not hiding the machine. It was out of public view and was the only one of its kind. The vineyard owner had built it himself several years earlier, and no drawing or technical description of the machine was ever made. The vineyard made only local sales of its wines. Using his photographic memory, Roberts went back to his hotel and made technical drawings of what he had seen. Upon his return to the United States, Roberts promptly prepared and filed a patent application directed to the machine on January 10, 2012. Which of the following statements is correct?

A) Roberts may not obtain a patent on the machine because it was known by others before Mr. Roberts made technical drawings of the machine.
B) Roberts may not obtain a patent on the machine because wine made by the machine had been sold more than a year before Roberts application filing date.
C) Roberts is entitled to a patent because a goal of the patent system is public disclosure of technical advances, and the machine would not have been disclosed to the public without Roberts efforts.
D) Roberts may not obtain a patent on the machine because the vineyard owner was not hiding the machine and therefore the machine was in public use more than a year before Roberts application filing date.
E) Statements (A), (B), (C) and (D) are each incorrect.

Inventor Ivan discovers that shoe polish is found to help grow hair. How can he claim this invention?

A) you cannot claim the invention..shoe polish has already been patented
B) You cannot claim the invention, as shoe polish is just being used in another way
C) Claim the method of growing hair using shoe polish
D) Provide a list of supporting references backing the findings that hair grows with shoe polish
E) None of the above are possible

An inventor submits a method patent claiming a method of advertising and gathering data and then using the data to target ads to consumers. The USPTO rejects the claim over Bilski, stating the claim doesnt meet the machine-or-transformation test and that the claim is abstract. How should the prosecutor respond?

A) Examiner should allow the claim because the Supreme Court said the machine-or-transformation test is no longer valid.
B) Prosecutor should amend the claim so that it depends on a non-generic machine and should emphasize that this claim, even though it involves the application of an abstract idea, has satisfied the M-or-T test's "machine" branch.
C) Examiner should allow the claim because the method transforms the data.
D) Prosecutor should give up because he cannot overcome the rejection.
E) (B) and/or (C)

Can market force, or evidence from the market, be used to determine obviousness?

A) Yes
B) No
C) Yes, but only if the market force is determined to be substantial
D) Yes, but only in cases that deal with international commodities
E) Yes, but only if an expert in the field would appreciate the market force

An inventor files an application for a patent with a claim to “a signal, encoded with data by the process of … “. The examiner rejected the claims under 35 USC 101. Is this a proper rejection?

A) No, a 101 rejection is improper. instead, the examiner should have made a rejection under 35 USC 112.
B) No, because only the Board can make 101 rejections.
C) Yes, because signals are generally not patentable subject matter.
D) No, because a claim contains patentable subject matter.
E) None of the above.

An inventor comes up with an idea about computer related subject matter, however, the sole practical application of the computer program was for general programming purposes. Is this patentable?

A) Yes, but only after providing overwhelming evidence that the computer program is important.
B) No, computer programs are never patentable.
C) No, its not patentable when the sole practical application of the algorithm was in connection with the programming of a general purpose computer.
D) Yes, as long as the entire code of the program is included in the specification.
E) None of the above.

An applicant, Joe, submits a patent application claiming a toy plane comprising wings that are covered in aluminum foil. The specification of the application describes a toy plane that has wings covered in foil, but the body of the plane is not covered. A related reference discloses a plane that is covered entirely in chewing gum wrapper (which is actually comprised of aluminum foil and another material). Joe’s claim is rejected by the examiner as anticipated. How can Joe rebut the prima facie showing of anticipation?

A) Joe should submit a reply citing unexpected results with the use of foil on the wings
B) Joe should submit a report listing detailed experimentation proving longer flight times and a more stable trajectory.
C) Joe should submit a report listing detailed experimentation proving longer flight times and a more stable trajectory.
D) Joe cannot rebut the anticipation as the claims stand. He should amend his claim(s) to avoid the prior art.
E) None of the above

In accordance with USPTO rules and procedures set forth in the MPEP, which of the following statements regarding operability or enablement of a prior art reference is the most correct?

A) The level of disclosure required for a reference to be enabling prior art is no less if the reference is a United States patent than if it is a foreign patent.
B) A reference is not presumed to be operable merely because it expressly anticipates or makes obvious all limitations of an applicants claimed apparatus.
C) A non-enabling reference does not qualify as prior art for the purpose of determining anticipation or obviousness of the claimed invention.
D) A reference does not provide an enabling disclosure merely by showing that the public was in possession of the claimed invention before the date of the applicants invention.
E) All of the above are correct.

Practitioner files application X for a fan/lamp/charger combination, where his drawings show the 3 items are each of a specific size to efficiently fit on a single module. The claim is rejected under 103 because of patent Y, which discloses the combination of these three things. Practitioner argues that the size of the saucers shown in the reference are not the same as that in his drawing and argues that the rejection improper because the size of the Patent Y reference is different than the dimensions given in X. What should examiner do?

A) allow the claim because the dimensions are different enough to overcome the rejection
B) allow the claim because Y does not have the same features that X possess
C) Maintain the rejection because the scale of the drawing does not matter
D) Maintain the rejection because the examiner does not like the applicant
E) none of the above

Inventor Z filed a patent application on March 22, 2013, however, the examiner cited a Foreign patent application filed March 16, 2013 that was never filed as a U.S. patent application, and never printed. Is the Foreign patent application prior art to his application?

A) Yes, it is considered prior art.
B) No, it is not considered prior art because it was filed < 1 year from Inventor Z 's filing
C) No, it is not considered prior art because it was not translated into English
D) No, it is not considered prior art because it was filed without referring to a US patent application.
E) No. The foreign patent application would not be considered prior art as it was not "laid open" or available in printed form

Jill files a patent application on March 17, 2013. The examiner cites a technical document that was published on March 16, 2013. However, the technical document (published by another) describes work that Jill performed prior to March 16th, 2013. Is the document prior art to Jill’s application?

A) Yes, the document is considered prior art and will preclude Jill from obtaining a patent.
B) Yes, the document is considered prior art, but Jill will be able to overcome the it by filing an affidavit.
C) No, the document is not considered prior art as it was published <1 year from Jill's filing
D) No, technical documents are not considered prior art publications.
E) None of the above are correct.

Which of the following statements is true regarding a product-by-process claim?

A) Product-by-process claims cannot vary in scope from each other.
B) Product-by-process claims may only be used in chemical cases.
C) A lesser burden of proof may be required to make out a case of prima facie obviousness for product-by-process claims than is required to make out a prima facie case of obviousness when the product is claimed in the conventional fashion.
D) It is proper to use product-by-process claims only when the process is patentable.
E) It is proper to use product-by-process claims only when the product is incapable of description in the conventional fashion.

Sven filed a patent application on March 17, 2013, however, the examiner cited a foreign patent application filed March 16, 2013 that was laid open but never filed as a U.S. patent application or published. Is the foreign patent application prior art to his application?

A) Yes, the foreign patent application is considered prior art.
B) No, the foreign patent application is not considered prior art because it was filed < 1 year from Sven's filing
C) No, the foreign patent application is not considered prior art because it was not translated into english
D) No, the foreign patent application is not considered prior art because it was filed without referring to a US patent application.
E) No. ˜First to file only applies to applications that are filed in the U.S, even if the application started out life in another country.

Able and Baker conceived an improved gas grille for cookouts. Using elements A, B, C,D, E and F found in their backyards, as well as elements G, H, I, J, K, L, M and N purchased at a local hardware store, they successfully constructed and used a gas grille conforming to their concept. The grille includes subcombination of elements K, L and M conceived by Able, and subcombination C, D, F, G and M conceived by Baker. Able and Baker conceived their respective subcombinations separately and at different times. Able and Baker retain you to prepare and file a patent application for them. You are considering whether and what can be claimed in one patent application. Which of the following is true?

A) For Able and Baker to properly execute an oath or declaration under 37 CFR 1.63 in a patent application claiming not only the grille, but also the two subcombinations, Able and Baker must be joint inventors of the grille, and each of the two subcombinations.
B) A characteristic of U.S. patent law that is generally shared by other countries is that the applicant for a patent must be the inventor.
C) If Able and Baker execute an oath or declaration under 37 CFR 1.63 as joint inventors and file an application claiming the grille (a combination of elements A,B, C, D, E, F, G, H, I, J, K, L, M and N), the existence of the claim to the grille is evidence of their joint inventorship of the individual elements.
D) Able and Baker may properly execute an oath or declaration under 37 CFR 1.63as joint inventors and file an application containing claims to the grille (a combination of elements A, B, C, D, E, F, G, H, I, J, K, L, M and N), claims to the subcombination conceived by Able, and claims to the subcombination conceived by Baker.
E) Able and Baker could not properly claim the combination unless they successfully and personally reduced the grille to practice.

Which of the following is most likely to be considered in a proper obviousness determination?

A) Evidence demonstrating the manner in which the invention was made.
B) Evidence that a combination of prior art teachings, although technically compatible, would not be made by businessmen for economic reasons.
C) Evidence demonstrating the level of ordinary skill in the art.
D) Evidence that an expert in the field, after reading another's application, would readily be able to make and use the invention without undue experimentation.
E) Evidence that a similar product described in an earlier-published golf magazine has enjoyed great commercial success.

An examiner makes an obviousness rejection based on the TSM (teaching, suggestion, motivation) test. How should the applicant respond using the KSR holdings?

A) Applicant cannot respond using KSR holdings.
B) Applicant can reply in an appeal by arguing that the examiner should relied on the TSM test too heavily and should have provided evidence of obviousness.
C) Applicant can submit a petition arguing that the examiner relied too heavily on the TSM test.
D) Applicant can prove with evidence that the examiner relied too strictly on the TSM test and that other factors proved non-obviousness.
E) Applicant can argue a case of non-obviousness. He cannot submit evidence because this is not yet at the appeal stage.

Rapidity with which innovations are made can be used for determining which, if any, of the following?

A) The level of ordinary skill in the art
B) The level of prior art knowledge
C) The likelihood of the claim being found as novel
D) All of the above
E) None of the above

An application had a range of 5%-9% molybdenum, but a prior art document specifically said only 6%. The examiner rejected the claim as obvious (103 rejection). How can the applicant overcome the argument?

A) Change the range to make the range broader
B) Submit an appeal citing references from outside the art as to why the claimed invention is novel
C) Narrow the ranges
D) Argue that the claimed range achieves unexpected results relative to the prior art range, or that prior art teaches away from the range
E) You cannot overcome the rejection

An application had claimed a chemical that was useful for relieving headaches. The application shows the formula but did not disclose how to make chemical. No prior art shows how to make the chemical in question either. What of the following is correct?

A) Reject written description
B) reject both written description and enablement
C) enablement is distinct from written description requirement.
D) require enablement request from applicant
E) none of the above

Which of the following is in accord with the MPEP?

A) The best mode requirement is the same as enablement requirement as described in 35 USC 112.
B) At time of filing, an inventor must disclose the best mode they know of, even if that best mode was discovered by another person.
C) An inventor must disclose which particular embodiment (if there are multiple) is the best mode.
D) Failure to provide the best mode known by the inventor at time of filing can be corrected after issue of the patent by amending the specification.
E) An inventor can keep the best mode secret to exploit it later for financial gain, so long as he still provides a method of use in his application.

An inventor files an application for a biycle, with claim for handle bars, frame, wheels, and spokes. Sometime later, the applicant attempts to add rubber tires to the application, but the examiner rejected the addition as new matter. Is the examiner correct in this rejection?

A) If, when examining the application, it's clear that the wheel has certain dimensions, properties (such as grip strength, rigidity or flexibility, ability to roll, a diameter, etc) that are inherent to rubber tires, then the addition of "rubber tires" would not constitute as new matter as this is inherent to the wheel itself, and the application may be amended (The examiner is incorrect in making the rejection)
B) If, when examining the application, it's clear that the wheel is rubber, has certain dimensions, etc, then the addition of "rubber tires" would not constitute as new matter. However, as the application has already been submitted, an amendment cannot be made
C) The examiner is correct in making the rejection based on the grounds that "rubber tire" was not originally specified in the application
D) The examiner is correct in making the rejection based on a lack of substantial evidence for adding "rubber tires"
E) None of the above is correct.

Imagine someone invents a device that has a mirror component. They file a patent application claiming the invention, but the specification does not include the reflective qualities of the mirror in the specification. Which of the following would comply with the USPTO procedures

A) Because the definition of mirror automatically includes its reflective qualities, there is no need to amend the specification to include the reflective qualities
B) Any attempt to amend the specification to include the reflective qualities of the mirror would be impermissible addition of new matter.
C) The claims would be rejected under 112 as indefinite.
D) The specification must be amended to include the reflective qualities of the mirror component, or else the claims will be rejected for failing to satisfy the written description requirement..
E) The mirror in one part of the specification is "parallel," and the mirror in another part is "perpendicular." The specification is conflicting and one who has knowledge in the art would not be able to tell the difference, so amend the specification.

Inventor Z has filed an application for a new type of motorcycle design. The application includes separate claims for the handle bars, frame, wheels, and shocks. At a later date, Inventor Z attempts to add a claim for a special type of rubber tire to be used on the motorcycle, but the examiner rejects the claim as new matter. Which of the following statements is/are true regarding the examiner’s rejection of the rubber tire according to the MPEP? I. If the rubber tire has certain dimensions and has certain properties (such as grip, strength, diameter, etc) that are common to tires then the addition of “rubber tires” would not constitute new matter as these are inherent to the wheel itself, and the application may be amended. II. If the wheel is rubber and has certain dimensions, etc, then the addition of “rubber tires” would not constitute new matter. However, given that the application has already been submitted, an amendment cannot be made III. Since “rubber tire” was not originally specified in the application the examiner is correct in making the rejection based on the grounds that a tire can be assumed to be rubber.

A) I
B) II
C) III
D) I, III
E) II, III

An applicant has one utility claim and more than 900 claims covering small ornamental differences. What should the examiner do?

A) nothing. The examiner should allow the application as is
B) the examiner should call the applicant and have him select a few claims for examination.
C) The examiner should elect a few claims arbitrarily to examine
D) The examiner should send an office action to the applicant asking for a reduction of the number of claims
E) all of the answers are wrong

Which of the following is most in accordance with the MPEP regarding whether a claim containing the word “high” (instead of disclosing a specific number or range of numbers) is indefinite?

A) The fact that claim language, including terms of degree, may not be precise, does not automatically render the claim indefinite under 35 U.S.C. 112, second paragraph. Acceptability of the claim language depends on whether one of ordinary skill in the art would understand what is claimed, in light of the specification.
B) Relative terminology is always allowed in claims.
C) The fact that claim language, including terms of degree, may not be precise, automatically raises a rebuttable presumption that the claim is indefinite under 35 U.S.C. 112, second paragraph.
D) Claim language must be precise and specific, relative terminology is never allowed in claims.
E) None of these.

A U.S. patent application discloses a first embodiment of an invention, a composition made of known materials in equal amounts by weight of A, B, and C. The application discloses a second embodiment of the invention comprising equal amounts by weight of A, B, and C, and an effective amount of D, a known material, to reduce excess moisture from the composition. The application also discloses a third embodiment of the invention comprising equal amounts by weight of A, B, and C, and an effective amount of D to reduce the acidity of the composition. The application fully discloses guidelines for determining an effective amount of D to reduce excess moisture from the composition, and determining an effective amount of D to reduce the acidity of the composition. The application discloses that the amount of D needed to reduce excess moisture from the composition differs from the amount of D needed to reduce the acidity of the composition. Which of the following claims, if included in the application, provides a proper basis for a rejection under 35 U.S.C. 112, second paragraph?

A) Claim 1. A composition comprising: equal amounts by weight of A, B, and C, and an effective amount of D to reduce the acidity of the composition.
B) Claim 1. A composition comprising: equal amounts by weight of A, B, and C, and an effective amount of D.
C) Claim 1. A composition comprising: equal amounts by weight of A, B, and C, and an effective amount of D to reduce excess moisture from the composition.
D) Claim 1. A composition comprising: equal amounts by weight of A, B, and C.
E) None of the above.

An applicant submits an application with 1 independent claim and 984 dependent claims. What should the examiner do?

A) Nothing. This is a valid submission
B) The examiner should arbitrarily select a few claims and examine based on those
C) The examiner should call the applicant and request for a selection of a few claims (ask the applicant to reduce the number of claims)
D) The examiner should reject the submission
E) none of the above

Factors that may be considered in determing the level of ordinary skill in the art may include:

A) type of problems encountered in the art
B) prior art solutions to those problems
C) rapidity with which innovations are made
D) sophistication of the technology
E) All of the above

A specification discloses a composition A comprising 25-60% x and 6-11% y with a preference for 36% x and 8% y. One of the claims is for a composition containing 30-60% and 6-11% y. The claim was rejected under 35 USC 102 based on prior art that discloses a compound with 30% x and 8% y. Applicant amends the claim to contain “at least 35% x” and 9% y. The claim is now rejected again under 35 USC 102 and also under 35 USC 112 for no written description. Applicant amends the claim to 35%-60% x and 9% y. In the next office action, what will the examiner do?

A) Remove the 102 rejection
B) Remove the 112 rejection
C) Keep both rejection
D) Remove both rejections
E) Send another official action requesting more detail

Inventor Smith files a nonprovisional application based on a method on April 1, 2013, properly claiming domestic benefit for some of the claims to a provisional application filed on April 1, 2012. However, the rest of the claims in the nonprovisional application are not supported by the provisional application. Will the application be subject to the first-inventor-to-file provisions?

A) Yes. The nonprovisional application will be examined under the first-inventor-to-file provisions because the application contains claims to matter added after the first-inventor-to-file provisions became effective on March 16, 2013.
B) Yes. Any nonprovisional application will be examined under the first-inventor-to-file provisions if it was submitted after March 16, 2013.
C) No. The nonprovisional application will not be examined under the first-inventor-to-file provisions because the application claimed benefit to an application filed prior to March 16, 2013.
D) No: Inventor Smith can file a petition to have his application reviewed under first to invent because he claimed prior benefit to an application filed before March 16th, 2013.
E) No: Patent applications based on methods are not subject to the first-inventor-to-file provisions.

Which of the following, if any, are true:

A) A practitioner may overcome a 35 USC 103 rejection by amending the claims and the specification, introducing new matter not disclosed in the prior art, to demonstrate non-obviousness.
B) An examiner may sustain a 35 USC 103 rejection even if he/she cites one prior art/reference.
C) They examiner may consider an applicant's demonstration of the commercial success of his/her invention as evidence of nonobviousness.
D) (B) and (C)
E) (A), (B), and (C)

What basis may an examiner rely upon for an obviousness rejection?

A) Examiner does not use the Graham factors but instead uses the KSR guidelines.
B) Examiner uses only the Graham factors.
C) Examiner uses the Graham factors AND uses the KSR guidelines.
D) All of the above
E) none of the above

Jo invented a new and unobvious technique for inexpensively manufacturing a chemical that has been used in paper mills for years to bleach paper. Tommie developed a new and unobvious technique to clean-up toxic waste spills. Jo and Tommie collaborated to invent a method to clean-up toxic waste spills using the chemical made according to the unobvious technique invented by Jo. The inventions have been assigned to your client Dowel Chemical Company. You prepared a single patent application fully disclosing and claiming each invention. Claims 1-9 were directed to the method of manufacturing; claims 10-19 were directed to the method of cleaning up toxic waste spills; and claim 20 was directed to a method of cleaning up toxic waste spills using the chemical manufactured in accordance with claim 1. Both inventors approve the application, but Tommie is unavailable to sign an oath before an upcoming statutory bar. Accordingly, you are instructed to immediately file the application without an executed oath. On June 1, 1999, you file the application along with an information sheet to identify the application. However, you do not notice that Tommie was inadvertently left off the list of inventors on the information sheet, which listed Jo as the sole inventor. After receiving a Notice to File Missing Parts, you submit an oath executed by both Jo and Tommie. No paper was filed to change the named inventive entity. You later receive an Office action requiring restriction between Jos invention and Tommies invention. In reply to the restriction requirement, you elect Jos invention, cancel claims 10-20, and immediately file a divisional application directed to the invention of claims 10-19. Claim 20 was omitted from the divisional application. The divisional application includes a specific reference to the original application and is files with an inventors oath executed by Tommie only. The divisional application incorporated the original application by reference. Which of the following statements is most correct?

A) Since claim 20 was omitted from the divisional application as filed, it cannot be added to the divisional application by subsequent Amendment because such an Amendment would constitute new matter.
B) It was improper to include Tommie and Jo as joint inventors in the patent application.
C) The examiner may properly make a provisional obviousness-type double patenting rejection in the divisional application based on the parent application, but that rejection may be readily overcome with the filing of a terminal disclaimer.
D) Because the inventive entity of the amended parent application is different than the inventive entity of the divisional application, the examiner may reject the claims of the divisional application under the provisions of 30 U.S.C. 102(e).
E) Statements (A), (B), (C) and (D) are each incorrect.

What is the date by when all applications will be treated as FITF applications?

A) May 1, 2013
B) June 15, 2015
C) May 1, 2015
D) June 15, 2013
E) None of the above.

An applicant filed a provisional application on March 15, 2013. How will the provisional and/or a nonprovisional application stemming from it be reviewed?

A) The provisional application will be examined under pre-AIA law, but if the non-provisional is filed on after Mar 16, 2013 it will be reviewed under FITF.
B) The nonprovisional application will be examined under pre-AIA law so long as it finds support for the claims in the provisional application's disclosure.
C) The provisional application will be examined under pre-AIA law, but if it is amended on or after Mar 16, 2013, it will be reviewed under FITF.
D) (A) and (B)
E) None of the above.

For AIA (FITF) applications, how does the addition of new matter into the application impact the effective filing date?
(i) Introduction of new matter is prohibited by 35 U.S.C. 132(a).

(ii) For an application filed on or after March 16, 2013 that discloses and claims only subject matter also disclosed in a previously filed pre-AIA (FTI) application to which the application is entitled to priority or benefit under 35 U.S.C. 119, 120, 121, or 365, an amendment (other than a preliminary amendment filed on the same day as such application) seeking to add a claim that is directed to new matter would not convert the application into an AIA (FITF) application.

(iii) The AIA does not change the existing rules for introducing new matter in an application under examination.

(iv) A new drawing should not be entered if the examiner discovers that the drawing contains new matter (MPEP § 608.02); and amendments to the written description or claims involving new matter are ordinarily entered, but the new matter is required to be cancelled from the written description and the claims directed to the new matter are rejected under 35 U.S.C. 112(a).

(v) For an application filed on or after March 16, 2013 that discloses and claims subject matter not disclosed in a previously filed pre-AIA (FTI) application to which the application is entitled to priority or benefit under 35 U.S.C. 119, 120, 121, or 365, an amendment (other than a preliminary amendment filed on the same day as such application) seeking to add a claim that is directed to new matter would convert the application into an AIA (FITF) application.

A) (i), (ii), (iii), (iv) and (v)
B) (i) and (iii)
C) (i), (ii) and (iii)
D) (v)
E) (iii) and (v)

Is examination under AIA (FITF) or pre-AIA (FTI) law determined by the actual or the effective filing date of the application?

A) Examination under AIA (FITF) law is conducted in accordance with the effective filing date of the application.
B) Whether an application filed on or after March 16, 2013 is an AIA (FITF) or a pre-AIA (FTI) application is determined by the effective filing date (as defined in 35 U.S.C. 100(i)) of the claimed invention.
C) Examination under pre-AIA (FTI) law is conducted in accordance with the actual filing date of the application.
D) Whether an application filed on or after March 16, 2013 is an AIA (FITF) or a pre-AIA (FTI) application is determined by the actual filing date (as defined in 35 U.S.C. 100(i)) of the claimed invention
E) A and C

If an invention was made prior to March 16, 2013 but was not filed until after March 16, 2013, does the invention date matter under the AIA?

A) No, the date of invention does not matter under the AIA.
B) Yes, the date of invention matters if the application was invented prior to Mar 16, 2013.
C) No, unless the applicant can show that the date of invention was prior to Mar 16, 2013.
D) B and C
E) None of the above

What is the effective filing date for a nonprovisional application filed on March 1, 2013 claiming priority to a foreign application filed on March 1, 2012?

A) March 2, 2013
B) March 1, 2013
C) The actual filing date of the Mar 1, 2013 application.
D) The date the foreign application was published.
E) The effective filing date of the provisional application claiming foreign priority describing the nonprovisional application filed on Mar 1, 2013.

What is the effective filing date of a claimed invention in a nonprovisional application filed on March 17, 2014 claiming priority to a foreign application filed on March 17, 2013?

A) The effective filing date of a claimed invention in the nonprovisional application is March 17, 2013.
B) The effective filing date of a claimed invention in the nonprovisional application is March 17, 2014.
C) The effective filing date of a claimed invention in the nonprovisional application is March 17, 2014, but the foreign priority date may be used to overcome certain prior art (e.g., pre-AIA 35 U.S.C. 102 (a)).
D) The effective filing date of a claimed invention in the nonprovisional application is March 17, 2013, only if the claimed invention is fully supported by the foreign priority application.
E) (A) and (D)

Regarding time limitations for claiming foreign priority or domestic benefit of foreign or domestic priority and perfecting a claim for priority:

(i) Any foreign priority or domestic benefit claim must be filed within four months of the actual filing date of the application or sixteen months of the filing date of the application for which priority or benefit is claimed.

(ii) The AIA no longer considers foreign priority or domestic benefit claims in determining the effective filing date of an application.

(iii) Foreign priority or domestic benefit claim(s) must be filed at the time of the actual filing date of the initial application.

(iv) To perfect a foreign priority claim, an applicant must provide a certified copy of the foreign application before a patent is granted and the issue fee is paid.

(v) The applicant must provide a certified copy or interim copy of the foreign application within four months of the actual filing date of the application or within sixteen months from the filing date of the prior foreign application.

A) (i), (iv) and (v)
B) (ii)
C) (iii)
D) (i) and (iv)
E) (i) and (v)

When is a U.S. patent or a published U.S. or PCT application available as prior art?

A) A U.S. patent, a published U.S. application, or a published PCT application designating the United States is available as prior art on the date that the U.S. patent or published application is “sufficiently available to the public”.
B) A U.S. patent, a published U.S. application, or a published PCT application designating the United States is available as prior art on the date that the U.S. patent stemming from the application issues.
C) A U.S. patent, a published U.S. application, or a published PCT application designating the United States is available as prior art on the date that the U.S. patent or published application is “effectively filed.”
D) A U.S. patent, a published U.S. application, or a published PCT application designating the United States is available as prior art on the date that it is published.
E) (A) and (D)

Does 35 U.S.C. 102(a)(2) change the definition of a different inventive entity with the language “names another inventor”? For example, for an application naming A and B as joint inventors, would a U.S. patent, a U.S. patent application publication, or a WIPO published application naming B alone be available as prior art under 35 U.S.C. 102(a)(2)? Would a U.S. patent, a U.S. patent application publication, or a WIPO published application naming A, B, and C be available as prior art under 35 U.S.C. 102(a)(2)?

A) A U.S. patent, a U.S. patent application publication, or a WIPO published application naming B alone would be prior art under 35 U.S.C. 102(a)(2) with respect to an application naming A and B as joint inventors. However, the exception under 35 U.S.C. 102(b)(2) would apply.
B) A U.S. patent, a U.S. patent application publication, or a WIPO published application naming A, B, and C would be prior art under 35 U.S.C. 102(a)(2) unless the applicant shows that the subject matter being relied upon was obtained from A and/or B. In that case, the exception under 35 U.S.C. 102(b)(2)(A) would apply.
C) (A) and (B)
D) A U.S. patent, a U.S. patent application publication, or a WIPO published application naming B alone would be prior art under 35 U.S.C. 102(a)(2) with respect to an application naming A and B as joint inventors, and no exceptions under 102(b) would apply.
E) A U.S. patent, a U.S. patent application publication, or a WIPO published application naming A, B, and C would never be prior art under 35 U.S.C. 102(a)(2).

Does “PCT application” include national stage applications under 35 U.S.C. 371 but not all PCT applications?

A) The term “PCT application” as used in the guidelines and training materials covers all PCT applications regardless of whether the PCT application enters the national stage in the United States under 35 U.S.C. 371. A PCT application that designates the United States is not required to enter the national stage in the United States under 35 U.S.C. 371 for the WIPO publication of the PCT application to have a prior art effect under 35 U.S.C. 102(a)(2).
B) The term “PCT application” as used in the guidelines and training materials covers all PCT applications only if the PCT application ultimately enters the national stage in the United States under 35 U.S.C. 371. A PCT application that designates the United States is not required to enter the national stage in the United States under 35 U.S.C. 371 for the WIPO publication of the PCT application to have a prior art effect under 35 U.S.C. 102(a)(2)
C) The term “PCT application” as used in the guidelines and training materials covers all PCT applications only if the PCT application ultimately enters the national stage in the United States under 35 U.S.C. 371. A PCT application that designates the United States is required to enter the national stage in the United States under 35 U.S.C. 371 for the WIPO publication of the PCT application to have a prior art effect under 35 U.S.C. 102(a)(2)
D) The term “PCT application” as used in the guidelines and training materials covers all PCT applications only if the PCT application ultimately enters the national stage in the United States under 35 U.S.C. 371. A PCT application that designates the United States is required to enter the national stage in the United States under 35 U.S.C. 371 for the WIPO publication of the PCT application to have a prior art effect under 35 U.S.C. 102(a)(2) if the PCT application claims foreign priority.
E) The AIA has effectively eliminated the pre-AIA requirements for a “PCT application” to be considered prior art with respect to national applications to have a prior art effect under 35 U.S.C. 102(a)(2).

An examiner is confronted with the meaning of “deemed published”. What does the term “deemed published” in AIA 35 U.S.C. 102(a)(2) mean?

A) Under 35 U.S.C. 374, the WIPO publication of a PCT application designating the United States shall not be “deemed” a publication under 35 U.S.C. 122(b). The term “deemed published” in AIA 35 U.S.C. 102(a)(2) encompasses only those WIPO published PCT applications that are “deemed” a publication under 35 U.S.C. 122(b) by virtue of 35 U.S.C. 374.
B) Under 35 U.S.C. 374, the WIPO publication of a PCT application designating the United States shall be “deemed” a publication under 35 U.S.C. 122(b) if the application is used as a “bypass application”. The term “deemed published” in AIA 35 U.S.C. 102(a)(2) encompasses WIPO published PCT applications that are “deemed” a publication under 35 U.S.C. 122(b) by virtue of 35 U.S.C. 374.
C) The term “deemed published” is a catch-all for all modalities of application publications that do not otherwise fall under the rubric of standard application publication.
D) Under 35 U.S.C. 374, the WIPO publication of a PCT application designating the United States shall be “deemed” a publication under 35 U.S.C. 122(b). The term “deemed published” in AIA 35 U.S.C. 102(a)(2) encompasses WIPO published PCT applications that are “deemed” a publication under 35 U.S.C. 122(b) by virtue of 35 U.S.C. 374.
E) B and C

Must priority have been perfected in order for a U.S. patent or U.S. patent application publication that claims priority to a foreign application published in a language other than English to be used as prior art under 35 U.S.C. 102(a)(2)?

A) Yes, if the relevant subject matter is described in the priority document, a U.S. patent, U.S. patent application publication, or WIPO published PCT application is prior art as of its earliest priority date, regardless of whether the applicant perfected the right to priority in that patent or application.
B) Yes, if the relevant subject matter is described in the priority document, a U.S. patent, U.S. patent application publication, or WIPO published PCT application is prior art as of its earliest priority date, the applicant must perfect the right to priority in that patent or application.
C) No, if the relevant subject matter is somewhat described in the priority document, a U.S. patent, U.S. patent application publication, or WIPO published PCT application is prior art as of its earliest priority date, the applicant does not have perfected the right to priority in that patent or application to preserve the right to benefit.
D) No, provided that the relevant subject matter does not raise substantive questions of patentability in the priority document, a U.S. patent, U.S. patent application publication, or WIPO published PCT application is prior art as of its earliest priority date, regardless of whether the applicant perfected the right to priority in that patent or application.
E) No, provided that the relevant subject matter is described in the priority document, a U.S. patent, U.S. patent application publication, or WIPO published PCT application is prior art as of its earliest priority date, regardless of whether the applicant perfected the right to priority in that patent or application.

Are all applications filed on or after March 16, 2013 subject to the first-inventor-to-file provisions in the AIA?

(i) Yes.
(ii) No. If a request for continued examination under 37 CFR 1.114 is filed after March 16, 2013, in an application that was filed before March 16, 2013, the application is subject to first-inventor-to-file provisions

(iii) If some of the claims of an application have an effective filing date before March 16, 2013, and other claims have an effective filing date on or after March 16, 2013, then the application will be subject to the first-inventor-to-file provisions.

(iv) If some of the claims of an application have an effective filing date before March 16, 2013, and other claims have an effective filing date on or after March 16, 2013, then the claims in the application that have an effective filing date before Mar 16 will be examined under first-to-invent provisions, while the claims in the application that have an effective filing date on or after Mar 16, 2013 will be subject to the first-inventor-to-file provisions.

(v) If a request for continued examination under 37 CFR 1.114 is filed after March 16, 2013, in an application that was filed before March 16, 2013, the application remains subject to pre-AIA 35 U.S.C. 102 and 103.

A) (i)
B) (iii) and (v)
C) (ii)
D) (iv)
E) (iv) and (v)

Joe Practitioner filed an application on Mar 16, 2012 but failed to respond to several office actions and the application was abandoned on March 15, 2013. Joe managed to revive the application on March 17, 2013. Should Joe expect for the examiner to apply AIA or pre-AIA when examining the revived application?

A) Since the application was revived on Mar 17, 2013, the effective filing date of the application falls under the provisions of the AIA.
B) Joe can be sanctioned by the OED.
C) The examiner should apply AIA law
D) The examiner should apply pre-AIA law.
E) Since Joe allowed the application to lapse due to his lack of timely responses to an office action, Joe should expect the revived application to be examined under AIA law.

Joe Practioner filed numerous nonprovisional patent applications before March 16, 2013, but examination on all of his cases begins long after March 16, 2013, will Joe’s application be subject to the first-inventor-to-file or first-to-invent provisions

A) The applications will be subject to the first-to-invent provisions.
B) The applications will be subject to the first-inventor-to-file provisions.
C) The applications will be subject to transitional application provisions.
D) Joe Practitioner will be sanctioned.
E) Joe Practitioner may be disbarred.

If an applicant files a nonprovisional application on April 1, 2013, and may properly claim domestic benefit for all of the claims to a provisional application filed on April 1, 2012, will the application be subject to the first-inventor-to-file provisions?

A) The applicant’s provisional application may be cited by the examiner as prior art under 102(a)(1).
B) The nonprovisional application will be examined under the first-inventor-to-file provisions.
C) The applicant’s provisional application may be cited by the examiner as prior art under 102(a)(2).
D) The applicant cannot overcome an examiner’s rejection under 102(a)(1) by invoking a 102(b)(1)(A) exception.
E) The nonprovisional application will be examined under the first-to-invent provisions.

If an applicant files a nonprovisional application on April 1, 2013, properly claiming domestic benefit for some of the claims to a provisional application filed on April 1, 2012, and also adds new claims not supported by the provisional application, will the application be subject to the first-inventor-to-file provisions?

A) The AIA no longer permits an applicant to claim domestic benefit to a provisional application.
B) Yes. The nonprovisional application will be examined under the first-to-invent provisions.
C) No. The nonprovisional application will be examined under the first-to-invent provisions.
D) No. The nonprovisional application will be examined under the first-to-invent provisions because the application contains claims newly added after the first-inventor-to-file provisions became effective on March 16, 2013.
E) Yes. The nonprovisional application will be examined under the first-inventor-to-file provisions because the application contains claims newly added after the first-inventor-to-file provisions became effective on March 16, 2013.

Joe Practitioner files a nonprovisional application on March 16, 2013, claiming domestic benefit of or foreign priority to a different application filed on March 16, 2012, but subsequently deletes the domestic benefit or foreign priority claim during prosecution. Will the application switch from being subject to the first-to-invent provisions to the first-inventor-to-file provisions?

A) Yes. When the domestic benefit or foreign priority claim is deleted, the nonprovisional application will switch from being subject to the first-to-invent provisions to the first-inventor-to-file provisions.
B) No. When the domestic benefit or foreign priority claim is deleted, the nonprovisional application will not switch from being subject to the first-to-invent provisions to the first-inventor-to-file provisions.
C) No. There are no provisions in 37 CFR for switching from first-to-invent provisions to first-inventor-to-file provisions for deleting domestic priority.
D) B and C
E) None of the above

If a provisional application is filed on January 1, 2013, and a nonprovisional application claiming the benefit of the provisional application is filed on April 1, 2013 with two claims, claim 1 being supported by the provisional application and claim 2 not being supported by the provisional application, how should the examiner treat the application?

A) The examiner should apply the first-to-invent provisions in this application.
B) The examiner should apply the first-to-invent provisions when examining claim 2 and first-inventor-to-file provisions when examining claim 1.
C) The examiner should apply the first-to-invent provisions when examining claim 1 and first-inventor-to-file provisions when examining claim 2.
D) The examiner should see if Joe Practioner is the applicant in this case.
E) The examiner should apply the first-inventor-to-file provisions in this application.

An applicant filed an application on March 17, 2013. Should the examiner apply the first-inventor-to-file provisions of the AIA if the application has a parent application filed before March 17, 2012?

A) An application filed on or after March 16, 2013 that claims priority to or the benefit of an application filed prior to March 16, 2013 is a pre-AIA application and the examiner should apply first-to-invent law.
B) The examiner should apply the first-to-invent law unless: (1) the application contains or ever contained a claim to a claimed invention having an effective filing date on or after March 16, 2013; or (2) the application contains or ever contained a benefit or priority claim to a prior filed application that contains or ever contained a claim to a claimed invention having an effective filing date on or after March 16, 2013.
C) (B) and (A)
D) An application filed on or after March 16, 2013 that claims priority to or the benefit of an application filed prior to March 16, 2013 is a pre-AIA application and the examiner should apply first-inventor-to-file law.
E) The examiner should reject the application citing 35 USC 102(a)(1)(A).

Is an application filed on or after March 16, 2013 that is a continuation, divisional, or continuation-in-part of a pre-AIA (FTI) application examined under the first-inventor-to-file provisions of the AIA or the first-to-invent provisions of pre-AIA law?

A) A continuation-in-part filed on or after Mar 16, 2013 is a AIA (FITF) application since the subsequent application may add subject matter not present in the prior application.
B) A continuation filed on or after Mar 16, 2013 is a AIA (FITF) application since the subsequent application may add subject matter not present in the prior application.
C) A divisional filed on or after Mar 16, 2013 is a AIA (FITF) application since the subsequent application may add subject matter not present in the prior application.
D) (A), (B) and (C)
E) A continuation or divisional application of a pre-AIA (FTI) application is also a pre-AIA (FTI) application since the application does not add subject matter not present in the prior application

When filing a continuation application, can an applicant choose whether to apply the AIA (FITF) or pre-AIA (FTI) if the parent application is a pre-AIA (FTI) application?

A) An applicant may choose of designating an application as AIA or pre-AIA if the applicant does not provide a statement if an application filed on or after March 16, 2013, claims priority to or the benefit of an application filed prior to March 16, 2013, and contains or ever contained a claim to a claimed invention having an effective filing date on or after March 16, 2013
B) An applicant may choose of designating an application as AIA or pre-AIA if the applicant does not provide a statement if an application filed on or after March 16, 2013, and all of the claims can claim priority to or the benefit of an application filed prior to March 16, 2013, and contains or ever contained a claim to a claimed invention having an effective filing date on or after March 16, 2013
C) An applicant does not have a “choice” of designating an application as AIA or pre-AIA. The applicant is required to provide a statement if an application filed on or after March 16, 2013, claims priority to or the benefit of an application filed prior to March 16, 2013, and contains or ever contained a claim to a claimed invention having an effective filing date on or after March 16, 2013
D) (A) and (B)
E) All of the above

John files a continuation-in-part application adds subject matter after March 16, 2013, but has support for some claims prior to March 16, 2013. Which of the following is true?

A) The continuation-in-part application is an AIA (FITF) application. If any claim of the application does not have support in an application filed prior to March 16, 2013, then the application is an AIA (FITF) application, and each claim in the application is subject to the AIA.
B) The continuation-in-part application is an AIA (FITF) application; however, the claims that find support in pre-March 16, 2013 disclosures will be subject to pre-AIA rules.
C) If an application contains, or contained at any time, any claimed invention has, or had at any time, an effective filing date that before March 16, 2013, all claims will be subject to pre-AIA laws.
D) If an AIA (FITF) application also contains, or contained at any time, any claimed invention having an effective filing date that occurs before March 16, 2013, each claim is also subject to pre-AIA 35 U.S.C. 102(g).
E) (A) and (D)

If an application is filed as an AIA (FITF) application, but applicant later shows that all claims have support in an application filed before March 16, 2013 and submits a delayed claim for domestic benefit or foreign priority to the application filed before March 16, 2013, will that application be changed to a pre-AIA (FTI) application?

A) Yes, where an application is filed as an AIA (FITF) application but it is later shown that the application is a pre-AIA (FTI) application, the applicant is allowed to “switch” the guise under which law an application will be examined; thus the application will be examined under pre-AIA (FTI) law.
B) No, where an application is filed as an AIA (FITF) application but it is later shown that the application is a pre-AIA (FTI) application, the application will still be examined under AIA (FITF) law. The applicant is not allowed to “switch” the guise under which law an application will be examined.
C) No, because the later filing date means that the application should remain an AIA (FITF) application.
D) (B) and (C)
E) None of the above.

Can a child application be an AIA (FITF) application where its parent is a pre-AIA (FTI) application?

A) Yes, if the child application contains a claim to a claimed invention having an effective filing date before March 16, 2013, then the child application is an AIA (FITF) application, even if the parent application is a pre-AIA application
B) Yes, if the child application contains a claim to a claimed invention having an effective filing date after March 16, 2013, then the child application is an AIA (FITF) application, even if the parent application is a pre-AIA application
C) Yes, a child application may be a pre-AIA (FTI) application or an AIA (FITF) application depending upon whether the child application contains or ever contained a claim to a claimed invention having an effective filing date on or after March 16, 2013.
D) A and C
E) B and C

In a continuation-in-part application, what if a dependent claim is added with a new feature, and the new feature is only supported in an application filed on or after March 16, 2013? Is the continuation-in-part application an AIA (FITF) application?

A) No, the continuation-in-part application is not an AIA (FITF) application. If any claim of the application has support in an application filed prior to March 16, 2013, then the application is an AIA (FITF) application, and each claim in the application is subject to the AIA.
B) No, the continuation-in-part application is not an AIA (FITF) application.
C) No, the continuation-in-part application is an AIA (FITF) application. If any claim of the application does not have support in an application filed prior to March 16, 2013, then the application is an AIA (FITF) application, and each claim in the application is subject to the AIA.
D) Yes, the continuation-in-part application is an AIA (FITF) application. If any claim of the application has support in an application filed prior to March 16, 2013, then the application is an AIA (FITF) application, and each claim in the application is subject to the AIA.
E) Yes, the continuation-in-part application is an AIA (FITF) application. If any claim of the application does not have support in an application filed prior to March 16, 2013, then the application is an AIA (FITF) application, and each claim in the application is subject to the AIA.

If an examiner determines that a claim in a continuation application filed after March 16, 2013 is not supported by the parent specification filed before March 16, 2013, and the applicant cancels that claim, are the remaining claims examined under pre-AIA regime?

A) Yes, if any claim ever presented in the application does not have support in an application filed prior to March 16, 2013, then the application is a pre-AIA application
B) Yes, if the claims are amended so that they all find support in the parent application or all claims that do not find support in the parent application are canceled, the application then the application should be treated under pre-AIA law.
C) (A) and (B)
D) No, even if every any claim ever presented in the application has support in an application filed prior to March 16, 2013, then the application is an AIA (FITF) application.
E) No, if any claim ever presented in the application does not have support in an application filed prior to March 16, 2013, then the application is an AIA (FITF) application.

Are U.S. national stage applications (35 U.S.C. 371) with an international filing date before March 16, 2013 always considered pre-AIA?

A) No, under 35 U.S.C. 363, the filing date of a U.S. national stage applications (35 U.S.C. 371) is not the filing date of the international application. The filing date is the date of publication by WIPO
B) No, under 35 U.S.C. 363, the filing date of a U.S. national stage application (35 U.S.C. 371) is not the filing date of the international application. The filing date is the effective filing date of entry onto the national stage.
C) No, under 35 U.S.C. 363, the filing date of a U.S. national stage application (35 U.S.C. 371) is not the filing date of the international application. The filing date is the effective filing date of fulfillment of the requirements of U.S.C. 371.
D) Yes, under 35 U.S.C. 363, the filing date of U.S. national stage applications (35 U.S.C. 371) is the filing date of the national application.
E) Yes, under 35 U.S.C. 363, the filing date of a U.S. national stage application (35 U.S.C. 371) is the filing date of the international application.

If a provisional application filed before March 16, 2013 fully discloses an invention but does not claim it, and a nonprovisional application is filed on or after March 16, 2013 and all claims are drawn to the invention disclosed in the provisional application, will the nonprovisional application be examined under the first-inventor-to-file provisions of the AIA?

A) No; the nonprovisional application is a AIA (FITF) application. Support in a provisional application is not a factor is not considered in deciding examination under pre-AIA or AIA law.
B) Yes. As long as each claim ever presented in the nonprovisional application is supported under 35 U.S.C. 112(a) by the disclosure of the prior provisional application filed before March 16, 2013, the nonprovisional application is a AIA (FITF) application.
C) Yes. As long as each claim ever presented in the nonprovisional application is supported under 35 U.S.C. 112(a) by the disclosure of the prior provisional application filed before March 16, 2013, the nonprovisional application is a AIA (FITF) application and the application is in accordance with the provisions of 102(a)(1)(A).
D) No. As long as each claim ever presented in the nonprovisional application is supported under 35 U.S.C. 112(a) by the disclosure of the prior provisional application filed before March 16, 2013, the nonprovisional application is a pre-AIA (FTI) application
E) No; the nonprovisional application is a AIA (FITF) application. Support in a provisional application is not sufficient to aford examination under pre-AIA law.

An applicant filed an application filed in Japan on January 2, 2013 disclosing two embodiments and five claims, but with claims directed to only one of the embodiments, and a corresponding application is filed in the United States on or after March 16, 2013, with claims directed to both the first and the second embodiment, is the later filed corresponding U.S. application a pre-AIA (FTI) application?

A) Yes, as long as each claim ever presented in the corresponding U.S. application is fully supported under 35 U.S.C. 112(a) by the disclosure of the prior filed Japan application; the U.S. application is a AIA (FTI) application, regardless of whether the Japan application actually contained claims to the invention.
B) No, if any claim presented in the corresponding U.S. application is not fully supported under 35 U.S.C. 112(a) by the disclosure of the prior filed Japan application; the U.S. application is a pre-AIA (FTI) application, regardless of whether the Japan application actually contained claims to the invention.
C) Yes, as long as each claim ever presented in the corresponding U.S. application is fully supported under 35 U.S.C. 112(a) by the disclosure of the prior filed Japan application; the U.S. application is a pre-AIA (FTI) application, regardless of whether the Japan application actually contained claims to the invention.
D) (A) and (B).
E) (B) and (C).

An applicant filed a provisional application filed on January 1, 2013 and filed a nonprovisional application claiming the benefit of the provisional application on June 1, 2013 where the claims in the nonprovisional application are not supported word-for-word in the provisional application, but one of ordinary skill would understand such support to be present in the provisional application. Does the AIA (FITF) apply to the nonprovisional application?

A) Yes. As long any claim ever presented in the nonprovisional application is fully supported under 35 U.S.C. 112(a) by the disclosure of the provisional application, the nonprovisional application is a AIA (FTI) application
B) Yes. As long as any claim ever presented in the nonprovisional application is fully supported under 35 U.S.C. 112(a) by the disclosure of the provisional application, the nonprovisional application is a pre-AIA (FTI) application
C) (A) and (B)
D) No. As long as any claim ever presented in the nonprovisional application is fully supported under 35 U.S.C. 112(a) by the disclosure of the provisional application, the nonprovisional application is an AIA (FITF) application
E) No. As long as each claim ever presented in the nonprovisional application is fully supported under 35 U.S.C. 112(a) by the disclosure of the provisional application, the nonprovisional application is a pre-AIA (FTI) application

If the claims are amended after March 16, 2013 in an application in which all claims have an effective filing date prior to March 16, 2013, will the application remain a pre-AIA (FTI) application?

A) Yes
B) Yes, if all the claims contain support in the original filing.
C) Yes, if all the claims are supported in the provisional application to which the application claims benefit.
D) No, if the amended claims are not verbatim or very close to the originally presented claims.
E) No

What happens if an application claims priority to multiple foreign applications, some of which have a filing date before March 16, 2013, and some of which have a filing date after March 16, 2013?

A) If any claimed invention in an application filed on or after March 16, 2013 does not have support in a priority or benefit application filed before March 16, 2013, the application is an AIA (FITF) application.
B) The effective filing date of the claimed invention is the filing date of the earliest priority application that provides support for the claimed invention.
C) The claims which are supported in foreign applications which are fully supported filed before Mar 16, 2013 will be examined under the provisions of pre-AIA law.
D) The claims which are supported in foreign applications which are fully supported filed on or after Mar 16, 2013 will be examined under the provisions of AIA law.
E) (A) and (B)

If an application has a filing date on or after March 16, 2013 but includes a foreign priority claim to an application filed before March 16, 2013, which of the following is true regarding the effective filing date of the claimed invention?

A) If any claims in the application have support in a domestic benefit application, the effective filing date is prior to March 16, 2013 and the application will be examined under pre-AIA (FTI) law.
B) If any claims in the application have support in the foreign priority application, the effective filing date is prior to March 16, 2013 and the application will be examined under pre-AIA (FTI) law.
C) The definition of “effective filing date” depends on whether AIA or pre-AIA law applies to the application.
D) If all claims in the application have support in the foreign priority application, the effective filing date is prior to March 16, 2013 and the application will be examined under pre-AIA (FTI) law.
E) (C) and (D)

If a reference is prior art under pre-AIA law, but is not prior art under the AIA, can the applicant “switch” by refilling the case under AIA?

A) Yes
B) If an applicant has a pending application being treated under pre-AIA law, the applicant may choose to file another application claiming the same subject matter, without claiming benefit of the earlier application may become subject to a 102(a)(1)(B) rejection.
C) If an applicant has a pending application being treated under pre-AIA law, the applicant may choose to file another application claiming the same subject matter, without claiming benefit of the earlier application.
D) If an applicant has a pending application being treated under pre-AIA law, the applicant may choose to file another application claiming the same subject matter, without claiming benefit of the earlier application, effectively “switching” to pre-AIA rules.
E) No

What is the standard for “support” in a pre-AIA (FITF) application in order to avoid the application being examined under the AIA (FITF)?

A) For applications filed before March 16, 2013, which claim domestic benefit of or foreign priority to an application filed before that date, all claims in the later application must have support in the earlier pre-March 16, 2013 application in accordance with 35 U.S.C. 112(a) in order for the later application to be treated under pre-AIA law.
B) The examiner must follow the guidance for “support” contained in MPEP § 2144.02
C) There is no set standard for determining “support”. The Office will determine compliance on a case-by-case basis.
D) The examiner must cite the reason(s) for rejection in accordance with MPEP § 2144.02.
E) If an application is filed on or after March 16, 2013, but claims domestic benefit of or foreign priority to an application filed before that date, all claims in the later application must have support in the earlier pre-March 16, 2013 application in accordance with 35 U.S.C. 112(a) in order for the later application to be treated under pre-AIA law.

Under the first-inventor-to-file provisions, does a public use or sale activity have to occur “in this country” to qualify as prior art?

A) No. Under the first-inventor-to-file provisions, a prior use or sale activity may occur anywhere in the world and qualify as prior art under AIA 35 U.S.C. 102(a)(1).
B) Yes. Under the first-inventor-to-file provisions, a prior use or sale activity must occur anywhere “in this country” to qualify as prior art under AIA 35 U.S.C. 102(a)(1).
C) No. Under the first-inventor-to-file provisions, an offer to sell may occur anywhere in the world and qualify as prior art under AIA 35 U.S.C. 102(a)(1).
D) Yes. Under the first-inventor-to-file provisions, an offer to sell must occur “in this country” to quailify as prior art under AIA 35 U.S.C. 102(a)(1).
E) all the above

What is the effective prior art date of a Japanese patent application publication that was filed on December 12, 2013, and published on May 12, 2015?

A) December 12, 2015
B) May 13, 2015
C) December 12, 205
D) December 12, 2013
E) May 12, 2015

For AIA (FITF) applications, can an applicant swear behind a reference or show prior activity to overcome a prior art reference?

A) No, an applicant cannot swear behind a reference because "prior invention" is not considered in AIA (FITF) applications.
B) Yes, an applicant can show that: (1) a disclosure falls under the exception in AIA 35 U.S.C. 102(b)(1)(A) or 102(b)(2)(A) because the disclosure was made by the inventor or a joint inventor, or by another who obtained the subject matter disclosed directly or indirectly from the inventor or a joint inventor; or (2) a disclosure falls under the exception in AIA 35 U.S.C. 102(b)(1)(B) or 102(b)(2)(B) because the subject matter disclosed had been publicly disclosed by the inventor or a joint inventor before the date that the disclosure of the subject matter on which the rejection is based is effective as prior art.
C) Yes, an applicant can swear behind a reference in accordance with 37 CFR 1.130
D) Yes, an applicant can swear behind a reference in accordance with 37 CFR 1.131
E) A and B

How are affidavits and declarations filed under 37 CFR 1.131 different from affidavits and declarations filed under 37 CFR 1.130?

A) Every FITF application that may have maters of prior art is required to include a 37 CFR 1.130 affidavit.
B) Every FITF application that may have maters of prior art is required to include a 37 CFR 1.131 affidavit.
C) A 37 CFR 1.131 is a mechanism to show that an exception under AIA 35 U.S.C. 102(b) is applicable.
D) 37 CFR 1.130 is a mechanism to show that an exception under AIA 35 U.S.C. 102(b) is applicable
E) Neither 37 CFR 1.310 nor 37 CFR 1.131 affidavits are permitted under the provisions of the AIA.

Is there a duty for an applicant to disclose or point out the inventor’s journal articles published before the filing of the application?

A) The duty to disclose information pertinent to patentability as set forth in 37 CFR 1.56 along with disclosure of best mode does not remain in effect after the implementation of the AIA (FITF) provisions.
B) The duty to disclose information pertinent to patentability as set forth in 37 CFR 1.56 if the applicant does not disclose the best mode under the AIA (FITF) provisions.
C) The duty to disclose information pertinent to patentability as set forth in 37 CFR 1.56 along with disclosure of best mode remains in effect after the implementation of the AIA (FITF) provisions.
D) The duty to disclose information pertinent to patentability as set forth in 37 CFR 1.56 along with disclosure of best mode has been eliminated after the implementation of the AIA (FITF) provisions.
E) The duty to disclose information pertinent to patentability as set forth in 37 CFR 1.56 remains in effect after the implementation of the AIA (FITF) provisions.

Is the one year grace period given automatically?

A) Yes, an applicant must file an affidavit under 37 CFR 1.130 to be entitled to the grace period of 35 U.S.C. 102(b)(1)
B) Yes, an applicant must file an affidavit under 37 CFR 1.132 to be entitled to the grace period of 35 U.S.C. 102(b)(1)
C) An applicant must file an affidavit under 37 CFR 1.131 to be entitled to the grace period of 35 U.S.C. 102(b)(1)
D) Yes, the grace period exists by operation of 35 U.S.C. 102(b)(1).
E) C and D

If the effective filing date of a claimed invention is June 5, 2014, is June, 5, 2013 included in the grace period?

A) No, a disclosure made on June 5, 2013 (but no earlier) does fall within the grace period
B) Yes, a disclosure made on June 5, 2013 (but no earlier) falls within the grace period
C) No, the AIA has eliminated disclosures by the inventor. This citation by the examiner would be properly considered prior art under 35 U.S.C. 102(a)(1).
D) No, the AIA has eliminated disclosures by the inventor. This citation by the examiner would be properly considered prior art under 35 U.S.C. 102(a)(2).
E) (C) and (D)

If an AIA (FITF) application was filed less than one year after March 16, 2013, does the grace period cover one year or only up to March 16, 2013?

A) The applicant may file a petition requesting the grace period be extended beyond one year by filing an affidavit in accordance with 37 CFR 1.130.
B) The applicant may file a petition requesting the grace period be extended beyond one year by filing an affidavit in accordance with 37 CFR 1.131.
C) The grace period can extend prior to March 16, 2013.
D) The grace period can not be extended.
E) The applicant may file a petition requesting the grace period be extended beyond one year.

My co-inventor disclosed our invention at a trade show one month before we filed our U.S. nonprovisional application. Will that disclosure prevent us from obtaining a patent?

A) No. Regardless of whether the application was filed before or after the AIA first-inventor-to-file provisions took effect on March 16, 2013, a disclosure made one month prior to the filing date of the non-provisional application may be considered prior art to the claimed invention.
B) Yes. Regardless of whether the application was filed before or after the AIA first-inventor-to-file provisions took effect on March 16, 2013, a disclosure made one month prior to the filing date of the non-provisional application can be considered as prior art to the claimed.
C) No. Regardless of whether the application was filed before or after the AIA first-inventor-to-file provisions took effect on March 16, 2013, a disclosure made one month prior to the filing date of the non-provisional application is not prior art to the claimed invention by virtue of the one-year grace period available to an inventor.
D) Yes. Regardless of whether the application was filed before or after the AIA first-inventor-to-file provisions took effect on March 16, 2013, a disclosure made one month prior to the filing date of the non-provisional application can be considered prior art to the claimed. The inventor should consider commencing derivation proceedings against the co-inventor before the USPTO, and depending upon the outcome, file a civil damages suit.
E) A and C

Is an applicant required to submit his or her prior public disclosure made during the grace period before a first action on the merits for the applicant to get the benefit of the grace period?

A) Yes, an applicant must show a prior public disclosure in an affidavit or declaration under 37 CFR 1.130 in response to a rejection to expedite a patent review proceeding.
B) No, an applicant is not required to show a prior public disclosure in an affidavit or declaration under 37 CFR 1.130 in response to a rejection.
C) No, an applicant is not required to show a prior public disclosure in an affidavit or declaration under 37 CFR 1.130 in response to a rejection, but lacking a 37 CFR 1.130 statement, the application may be removed from expedited examination.
D) Yes, an applicant must show a prior public disclosure in an affidavit or declaration under 37 CFR 1.130 in response to a rejection. This is considered to be part of the compact reached with The Office in offering patent protection.
E) No, an applicant may show a prior public disclosure in an affidavit or declaration under 37 CFR 1.130 in response to a rejection. However, to facilitate compact prosecution, the applicant may identify a prior grace period public disclosure in the application upon filing under 37 CFR 1.77.

Do unpublished records of the inventions from the inventor establish the grace period?

A) Yes, unpublished records of the inventions from the inventor can always be used to establish the grace period from the effective filing date of the invention.
B) No, the grace period is the one-year time interval preceding the effective filing date of the claimed invention.
C) Yes, although an inventor’s unpublished records of invention may be used to show that a disclosure of subject matter is by another who obtained the subject matter disclosed directly or indirectly from the inventor or a joint inventor and therefore that the disclosure does not fall under the exception described in AIA 35 U.S.C. 102(b)(1)(B) or 102(b)(2)(B).
D) An inventor’s unpublished records of invention may be used to show that a disclosure of subject matter is by another who obtained the subject matter disclosed directly or indirectly from the inventor or a joint inventor and therefore that the disclosure falls under the exception in AIA 35 U.S.C. 102(b)(1)(B) or 102(b)(2)(B), but this is not grounds for a rejection.
E) An inventor’s unpublished records of invention can not used to show that a disclosure of subject matter is by another who obtained the subject matter disclosed directly or indirectly from the inventor or a joint inventor since the date of invention is no longer relevant under the AIA rules.

When the first-inventor-to-file provisions became effective on March 16, 2013, would someone who copied an idea and filed a patent application on the subject matter before another be entitled to a patent?

A) Yes. In accordance with 35 U.S.C. 101, if an inventor is entitled to a patent, and someone who copies another’s idea and files an application in accordance with first-inventor-to-file may be properly listed as the inventor and therefore will be entitled to a patent.
B) No. In accordance with 35 U.S.C. 101, inventors may be obligated to assign their invention(s) third parities as a condition of employment. A third party can thus be properly listed as the inventor and therefore will be entitled to a patent.
C) No. In accordance with 35 U.S.C. 101, only inventors are entitled to a patent. Someone who copies another’s idea cannot be an inventor and therefore will not be entitled to a patent. An aggrieved party must file a patent application, then petition by filing for a derivation proceeding if an inventor’s idea has been wrongly presented.
D) Yes. In accordance with 35 U.S.C. 101, inventors may be obligated to assign their invention(s) third parities as a condition of employment. A third party can then Be properly listed and entitled to a patent.
E) None of the above.

For applications examined under first-inventor-to-file provisions, how will an examiner address a situation of improper inventorship since the pre-AIA basis for rejecting under 35 U.S.C. 102(f) does not exist?

A) The applicant will be provided a minimum of three months to correct inventorship. After three months the applicant will need to re-file the application.
B) If it is clear that the application does not name the correct inventorship and the applicant has not filed a request to correct inventorship under 37 C.F.R. 1.48, the Office may reject the claims under 35 U.S.C. 101 and 35 U.S.C. 115.
C) The Office may not summarily reject the claims under 35 U.S.C. 101 or 35 U.S.C. 115. The examiner must afford the applicant a good faith opportunity to undergo examination defined by the MPEP.
D) 35 U.S.C. 102(f) has been supplanted by the AIA Derivation Proceedings, thus eliminating challenge of ownership.
E) The applicant will be provided with a minimum of sixty days to correct ownership, after sixty days the applicant will need to re-file the application,

How can an examiner determine that subject matter in a public disclosure by another was “obtained by the inventor or joint inventor” for the 35 U.S.C. 102(b)(2) exceptions?

A) The examiner will determine that subject matter in a public disclosure by another was “obtained by the inventor or joint inventor” for the 35 U.S.C. 102(b)(2) exceptions to apply.
B) An examiner is not expected to determine that subject matter in a public disclosure by another was “obtained by the inventor or joint inventor” for the 35 U.S.C. 102(b)(2) exceptions to apply.
C) In the absence of an appropriate affidavit or declaration under 37 CFR 1.130(a) establishing that subject matter disclosed originated from the inventor or a joint inventor the examiner will determine that subject matter in a public disclosure by another was “obtained by the inventor or joint inventor” for the 35 U.S.C. 102(a)(2) exceptions to apply.
D) In the absence of an appropriate affidavit or declaration under 37 CFR 1.130(b) establishing that subject matter disclosed originated from the inventor or a joint inventor the examiner will determine that subject matter in a public disclosure by another was “obtained by the inventor or joint inventor” for the 35 U.S.C. 102(b)(2) exceptions to apply
E) A and C

How does the examiner determine the validity of an inventor’s statement that the disclosure was “by another who obtained the subject matter directly or indirectly from the inventor or joint inventor?”

A) The examiner is not expected to determine the validity of an inventor’s statement that the disclosure was “by another who obtained the subject matter directly or indirectly from the inventor or joint inventor for the 35 U.S.C. 102(b)(2) exceptions to apply
B) The applicant would need to establish that the subject matter disclosed originated with the inventor or a joint inventor and that the subject matter was communicated by the inventor or a joint inventor, directly or indirectly
C) Any documentation which provides evidence of the communication of the subject matter by the inventor or a joint inventor to the entity that made the disclosure of the subject matter should accompany the affidavit or declaration.
D) B and C
E) All the above.

How will an applicant know whether his/her application will be examined under the first-to-invent provisions of pre-AIA law or the first-inventor-to-file provisions of the AIA?
(i) There is viewable field in the application contents tab of PRIVATE PAIR.

(ii) There is viewable field in the application contents tab of PUBLIC PAIR.

(iii) There are certain form paragraphs used for Office actions will state whether the application is examined under the first-to-invent provisions of pre-AIA law or the first-inventor-to-file provisions of the AIA

(iv) There are certain USPTO forms that accompany Office actions will indicate “AIA (First Inventor to File) Status: Yes or No”

(v) The application will not receive a filing date if the AIA fees are not included in the application transmission.

A) (i) and (ii)
B) (ii) and (iii)
C) (i) and (iii)
D) None of the above
E) All the above.

If an applicant is required to submit a statement under 37 CFR 1.55 or 1.78 to indicate that an application filed on or after March 16, 2013 with a domestic benefit or foreign priority claim before March 16, 2013, contains claim(s) lacking support in the application filed before March 16, 2013 (i.e., should be examined under the first-inventor-to-file provision), what is an example of a compliant statement?

A) “This application filed on or after March 16, 2013 which claims priority to an application filed before March 16, 2013, contains one or more claims NOT entitled to a filing date before March 16, 2013”
B) “This application claims priority to an application filed before March 16, 2013, and contains one or more claims NOT entitled to a filing date before March 16, 2013”
C) “This application contains one or more claims NOT entitled to a filing date before March 16, 2013”
D) “This application contains a claim having an effective filing date on or after March 16, 2013”
E) All the above.

If an applicant intends to file a 37 CFR 1.55 or 1.78 statement indicating that the application contains a claim that is supported only by an application filed on or after March 16, 2013, where should the applicant place the statement?

A) Application Data Sheet (ADS, Form PTO/AIA/14) and the 371 Transmittal Letter (Form PTO-1390).
B) For follow-on papers, the applicant may provide the statement or rescind such a statement in an IDS.
C) For follow-on papers, the applicant may provide the statement or rescind such a statement in a separate document
D) (A) and (C)
E) (A) and (B)

If a provisional application is filed before March 16, 2013, is a 37 CFR 1.55 or 1.78 statement required in the nonprovisional application filed on or after March 16, 2013?

A) Since this is a transitional application, a 37 CFR 1.55 or 1.78 statement is required
B) If all the claims in the nonprovisional application are fully supported in the provisional application, then a 37 CFR 1.55 or 1.78 statement is not required.
C) If the nonprovisional application introduces new matter that is supported by the provisional application, then a 37 CFR 1.55 or 1.78 statement is not required
D) If the nonprovisional application is filed more than one year after the effective filing date of the provisional application, then a statement is required.
E) If this is a design application, then a 37 CFR 1.55 or 1.78 statement is required.

If an pre-AIA application containing broad claims has been allowed and the applicant files a continuation-in-part application on or after March 16, 2013 disclosing and claiming a new narrow embodiment that is covered by the broad claims of the allowed parent application but which is not specifically described in the allowed parent application, does the applicant need to provide a 37 CFR 1.55 or 1.78 statement and what is effective file date for these very narrow claims?

A) No, since a continuation-in-part is not a transitional application.
B) If the narrow claims in the continuation-in-part application are not supported under 35 U.S.C. 112(a) by the disclosure of the prior pre-AIA (FTI) application, the effective filing date of these claims is the actual filing date of the continuation-in-part application
C) An applicant is not required to provide a statement in any application filed on or after March 16, 2013, claims priority to or the benefit of an application filed prior to March 16, 2013, and contains or ever contained a claim to a claimed invention having an effective filing date on or after March 16, 2013.
D) An applicant is required to provide a statement in an application filed on or after March 16, 2013, claims priority to or the benefit of an application filed prior to March 16, 2013, and contains or ever contained a claim to a claimed invention having an effective filing date on or after March 16, 2013
E) B and D

If a 37 CFR 1.55 or 1.78 statement is filed in an application, does a statement also have to be filed in response to every Office action submitted thereafter, and in every later-filed continuation or divisional application?

A) Yes. An applicant is required to file a 1.55/1.78 statement in in every later-filed continuation or divisional application.
B) Yes. An applicant is required to file a 1.55/1.78 statement in in every later-filed continuation or divisional application since the parent application is not paired in the Office file wrapper.
C) Yes. 1.55/1.78 statements filed in an application are not automatically carried over to the continuation or divisional applications.
D) All the above.
E) None of the above.

If an applicant files a 37 CFR 1.55 or 1.78 statement, how will the USPTO acknowledge the statement?

A) The OPAP will indicate this on the filing receipt if an applicant used the updated Application Data Sheet (ADS, Form PTO/AIA/14).
B) The OPAP will indicate this on the filing receipt if an applicant uses the updated 371 Transmittal Letter (Form PTO-1390)
C) (A) or (B)
D) All the above.
E) None of the above.

Can an applicant file a late 37 CFR 1.55 or 1.78 statement in a transition application, for example because the applicant unintentionally overlooked the need to file the statement?

A) Yes
B) No
C) An applicant should file a 1.55/1.78 statement as soon as the applicant becomes aware that the statement was needed and unintentionally overlooked.
D) An applicant must first petition the Office in order file a 1.55/1.78 statement that the statement was needed and unintentionally overlooked.
E) The applicant must first withdraw the application from issue and file an RCE in order for the 1.55/1.78 statement to be considered.

If an applicant erroneously files a 37 CFR 1.55 or 1.78 statement indicating that an application filed on or after March 16, 2013 with a domestic benefit or foreign priority claim before March 16, 2013, contains one or more claims lacking support in the application filed before March 16, 2013 (i.e., should be examined under the first-inventor-to-file provisions), how should an applicant correct the error?

A) If the applicant files the separate paper of rescission electronically, the applicant should note this in the updated 371 Transmittal Letter (Form PTO-1390).
B) If the applicant files the separate paper of rescission electronically, the applicant should note this using the updated Application Data Sheet (ADS, Form PTO/AIA/14).
C) The applicant must first withdraw the application from issue and file an RCE in order for the 1.55/1.78 statement to be considered.
D) If an applicant erroneously submits a statement under 37 CFR 1.55 or 1.78, the applicant should file a separate paper to rescind the statement.
E) (C) and (D)

If an applicant submits an interim copy of a foreign priority application, will the applicant still need to provide a certified copy of the foreign priority document? How will an interim copy submission be reflected in the USPTO’s records?

A) The AIA has eliminated the need for an applicant who submits an interim copy of a foreign priority application for the applicant to provide a certified copy of the foreign priority document
B) If an applicant files an interim copy of a foreign priority application, the applicant must provide a certified translation of the foreign priority document before patent grant in order to perfect the priority claim.
C) If an applicant files an interim copy due an unintentionally delayed foreign priority application, the applicant must provide a certified copy of the foreign priority document before patent grant in order to perfect the priority claim.
D) If an applicant files an interim copy of a foreign priority application, the applicant must provide a certified copy of the foreign priority document before patent grant in order to perfect the priority claim.
E) Under the AIA belated perfection of priority is no longer permitted.

Are there any special instructions for filing an interim copy of the foreign priority application?

A) Under the AIA any request to submit an interim copy of a foreign priority application must be filed via EFS-Web.
B) (C) and (D)
C) Application parts that were filed in a foreign patent office such as a Sequence Listing, lengthy Tables(s) or Computer Program Listing appendix, must be filed as a PDF file via EFS-Web (or as a compact disc submission).
D) Interim sequence listing over 100 MB must be split into multiple files under the 25 MB upload limit.
E) Main parts of the interim copy of the foreign priority application, i.e., Abstract, Drawings, Specification, Claims, and possibly Sequence Listing or Computer Program Listings, along with the separate cover sheet required by 37 CFR 1.55(i), may be filed as a single PDF file via EFS-Web or as a single paper document.

Does an applicant need to provide a translation of a foreign priority application to: (1) claim priority to the foreign application; (2) determine the effective filing date of the claims for purposes of determining whether the application is an AIA (FITF) application or a pre-AIA (FTI) application; (3) ensure that the subject matter of the U.S. nonprovisional application is supported by the foreign priority application; or (4) disqualify a reference with a prior effective date?

A) The applicant does not need to provide a translation of a foreign priority application to claim priority to the foreign application claim priority to the foreign application.
B) The applicant will be required to provide a certified copy of the foreign priority application and an English-language translation (if in a language other than English) if the filing date of the foreign priority application is necessary to overcome a rejection.
C) The applicant may need to provide an English-language translation of a foreign application to determine the effective filing date of the claims for purposes of determining whether the application is an AIA (FITF) application or a pre-AIA (FTI) application.
D) (A) and (B)
E) (A), (B) and (C)

How would an examiner verify that subject matter disclosed in a published application is supported by the foreign priority application?

A) Examiners may consult desktop electronic translation tools.
B) (A) and/or consult USPTO translators.
C) Examiners may consult any certified translator.
D) Examiners are prohibited from using freeware electronic translators.
E) All the above.

At the time of filing, an applicant uses an Application Data Sheet (ADS, Form PTO/AIA/14) to make a timely foreign priority claim to an application filed in a foreign intellectual property office that does not participate in the priority document exchange program. However, within 4 months of the actual filing date or 16 months from the filing date of the priority document, the applicant fails to submit either a certified copy of the foreign priority document (a certified copy was not filed in a parent or related application), form PTO/SB/38 to request retrieval of the priority document under 37 CFR 1.55(h)(4), or an interim copy of the foreign priority document under 37 CFR 1.55(i). What process and fees are required for submitting these documents after the 4/16 month time period?

A) If an applicant misses the 4/16 month deadline as set forth in 37 CFR 1.55 for filing either a certified copy, form PTO/SB/38, or an interim copy, the applicant can still timely file the foreign priority claim in the ADS.
B) If an applicant misses the 4/16 month deadline as set forth in 37 CFR 1.55 for filing either the certified copy, form PTO/SB/38, or an interim copy, the applicant can file a petition under 37 CFR 1.55(f) stating the for the delay was unintentional along with the petition fee set forth in 37 CFR 1.17(g).
C) If an applicant misses the 4/16 month deadline as set forth in 37 CFR 1.55 for filing either the certified copy, form PTO/SB/38, or an interim copy, the applicant can file petition under 37 CFR 1.55(f)
D) If an applicant misses the 4/16 month deadline as set forth in 37 CFR 1.55 for filing either the certified copy, form PTO/SB/38, or an interim copy, the applicant can file a petition under 37 CFR 1.55(f). If the applicant can provide a showing of good and sufficient cause for the delay, the petition fee a under 37 CFR 1.55(f) may ne refunded.
E) If an applicant misses the 4/16 month deadline as set forth in 37 CFR 1.55 for filing either the certified copy, form PTO/SB/38, or an interim copy, but timely made the foreign priority claim on the ADS, the applicant can along with a petition under 37 CFR 1.55(f), a separate written request form PTO/SB/38 to request retrieval of the priority document contained in an application filed with a participating foreign intellectual property office or an interim copy with the petition under 37 CFR 1.55(f), A mere statement that the delay was unintentional or that there was good and sufficient cause for the delay is insufficient. If the applicant identifies the parent or related application that contains the certified copy, a petition under 37 CFR 1.55(f) is not required.

What are the differences between an inventor, a joint inventor, and an inventive entity?
(i) The term “inventor” and “joint inventor” has been eliminated in the AIA.

(ii) The term “inventive entity” has been eliminated in the AIA.

(iii) The term “inventor” includes all individuals who collectively invented or discovered the subject matter of the invention.

(iv) The terms “inventorship” and “inventive entity” are synonymous.

(v) The AIA defines the terms “joint inventor” and “co-inventor” as any one of the individuals who invented or discovered the subject matter of a joint invention.

A) (i) and (ii)
B) (i), (ii) and (v)
C) (ii) an (iii)
D) (ii), (iii) and (iv)
E) (iii), (iv) and (v)

Does the AIA define a “third party” disclosure?

A) A “third party” disclosure means a disclosure that names a person or persons not named as the inventor or a joint inventor that does not include an owner-assignee.
B) The AIA does not use or define the term “third party” with respect to the first-inventor-to-file provisions of 35 U.S.C. 102 and 103.
C) A “third party” disclosure means a disclosure that names a person or persons not named as the inventor or a joint inventor in an application where the subject matter was obtain indirectly.
D) All the above.
E) None of the above.

Does the AIA change how patent term adjustment is calculated?

A) The fourteen-month time frame in 35 U.S.C. 154(b)(1)(A)(i) and the three-year time frame in 35 U.S.C. 154(b)(1)(B) are measured from the effective filing date of the application for applications filed under 35 U.S.C. 111(a).
B) Yes, patent term adjustment is now available in eligible applications.
C) The effective filing date of a claimed invention is now used in determining patent term adjustment under 35 U.S.C. 154(b).
D) The AIA does not change the patent term adjustment provisions of 35 U.S.C. 154(b) for applications filed under 35 U.S.C. 111(a). The AIA Technical Corrections Bill changes the patent term adjustment provisions of 35 U.S.C. 154(b) with respect to PCT applications entering the national stage under 35 U.S.C. 371.
E) The effective filing date of a claimed invention is used in determining patent term adjustment under 35 U.S.C. 154(b).

Does the AIA change the way PCT applications are reviewed by the USPTO as an International Search Receiving Office?

A) An applicant can receive a preliminary International Search Report of the application is filed using the Patent Prosecution Highway.
B) The USPTO will only use the date of entry onto the national stage as the effective filing date of a PCT application.
C) The USPTO will no longer follow PCT Rule 33.1 concerning search of the prior art, when acting as an International Search Receiving Office.
D) The USPTO will continue to follow PCT Rule 33.1 concerning search of the prior art, when acting as an International Search Receiving Office.
E) If the applicant did not timely file a demand for international preliminary examination with the IPEA, then an “International Preliminary Report on Patentability (chapter I of the Patent Cooperation Treaty)” reflecting the International Searching Authority’s (ISA’s) non-binding opinion regarding novelty, inventive step and industrial applicability will no longer be sent to the designated Offices.

How is double patenting affected by AIA?

A) An applicant can now file a terminal disclaimer under Post-AIA 37 CFR 1.321(b).
B) Under 35 U.S.C. 102(b)(2)(C), an applicant’s prior disclosures can be used as prior art under 102(a)(2) to support a rejection.
C) The provisions of the 35 U.S.C. 102(a)(2) have eliminated double patenting.
D) (B) and (C)
E) The AIA does not change double patenting.

The PTO notifies John and Paul that their pre-grant publication date is Dec 18, 2015. On Jan 19, 2016 Acme Corp. files a U.S. application covering X in which John is named as the inventor in the ADS. On Feb 17, 2017 Examiner rejects claim to X as anticipated under 102(a)(1) and 102(a)(2) by the disclosure of X in the U.S. pre-grant publication to John & Paul. There is no 37 CFR 1.63 inventor’s oath or declaration of record. The practitioner for Acme Corp. files a 130(a) declaration signed by John averring that he invented X as disclosed in the U.S. Pre-Grant Publication. Is the declaration sufficient to disqualify the disclosure of X in John and Paul’s U.S. PGPub as prior art under 102(a)(1), 102(a)(2), or both? If not sufficient, what else must the practitioner present to the Office to ensure a timely response?

A) Even if John avers that invention X originated from him, a proper inventor's oath/declaration under 37 CFR 1.63 is still necessary to overcome the rejection,
B) The examiner should use form paragraph 7.68.AIA, and explain in the next Office action why the declaration is insufficient and maintain the rejection.
C) The examiner should use form paragraph 7.68.AIA, and in the next office action allow the application.
D) The 130(a) declaration is not sufficient to disqualify the disclosure of X in the PGPub as prior art under either 102(a)(1) or 102(a)(2).
E) The 130(a) declaration is sufficient to disqualify the disclosure of X in the PGPub as prior art under both 102(a)(1) or 102(a)(2).

On June 17, 2013 Mike publicly discloses X. The examiner is unaware of this disclosure when the rejection is made. On February 17, 2014 third party Todd discloses X in a journal article. On March 16, 2014 Acme Corp. files U.S. application with claim 1 directed to X, and inventor’s 37 CFR 1.63 declaration signed by Mike. On March 16, 2014 Acme Corp. files a U.S. application with claim 1 directed to X, and an inventor’s 37 CFR 1.63 declaration signed by Mike. Acme Corp.’s practitioner files a 130(b) declaration signed by Mike in which Mike avers that he disclosed X at a conference on June 17, 2013. A copy of the printed conference proceeding, which is not prior art, is also filed. The proceeding indicates that the conference was held on June 17, 2013; it includes an abstract by Mike that discloses X. The practitioner points out that an inventor’s oath or declaration under 37 CFR 1.63 signed by Mike is already of record. Is the declaration sufficient to disqualify Todd’s disclosure of X in the journal article as prior art? What else if anything should the practitioner do?

A) The declaration is sufficient to disqualify the disclosure of X in Todd's journal article as prior art.
B) The declaration is not sufficient to disqualify the disclosure of X in Todd's journal article as prior art.
C) A copy of the printed conference proceeding is included with the declaration, is not required by 37 CFR 1.130(b)(1).
D) Todd’s disclosure should be investigated for the presence of a JRA.
E) Mike's inventor's oath or declaration under 37 CFR 1.63 does not properly establish that he invented X. The practitioner should file an ADS.

How should applicant’s admitted prior art be treated under the AIA?

A) The AIA no longer accords any standing to applicant’s admitted prior art under the AIA.
B) The AIA allows for the patent owner to make preissuance submissions that do not affect prior art admissions.
C) The AIA allows for the patent owner to make patent owner statements that do not affect prior art admissions
D) (B) and (C)
E) The AIA does not change the current policy discussed in MPEP § 2129 with respect to the use of applicant’s admissions as prior art.

Under section 35 U.S.C. 102(a)(1) introduced by the AIA, what does the term “effective filing date” of a claimed invention mean?

A) The “effective filing date” of a claimed invention is defined to be the earlier of: (i) the actual filing date of a nonprovisional application; or (ii) the actual date of the earliest application to which the nonprovisional application is entitled to a right of foreign priority or domestic benefit as to such claimed invention
B) The “effective filing date” of a claimed invention is defined to be the earlier of: (i) the actual filing date of a nonprovisional application; or (ii) the received date of the earliest application to which the nonprovisional application is entitled to a right of foreign priority or domestic benefit as to such claimed invention.
C) The “effective filing date” of a claimed invention is defined to be the earlier of: (i) the actual filing date of a nonprovisional application; or (ii) the date of the earliest application to which the nonprovisional application is entitled to a right of foreign priority or domestic benefit as to such claimed invention.
D) The “effective filing date” of a claimed invention is defined to be the earlier of: (i) the actual filing date of a nonprovisional application; or (ii) the later of the earliest application to which the nonprovisional application is entitled to a right of foreign priority or domestic benefit as to such claimed invention.
E) The “effective filing date” of a claimed invention is defined to be the later of: (i) the actual filing date of a nonprovisional application; or (ii) the later date of the earliest application to which the nonprovisional application is entitled to a right of foreign priority or domestic benefit as to such claimed invention.

What is the difference between the term “effective filing date” (35 U.S.C. 102(b)(1)) and the term “effectively filed” date (35 U.S.C. 102(d)) as used in the FITF provisions of the AIA

A) The “effective filing date” is relevant in the application under examination, and means the earliest date to which the claims under examination are entitled to priority or benefit under 35 U.S.C. 119, 120, 121, or 365.
B) The “effectively filed” date is relevant in a U.S. patent, U.S. patent application publication, or WIPO published PCT application being considered as prior art, and means the earliest foreign or domestic application to which a U.S. patent, U.S. patent application publication, or WIPO published PCT application claims priority or benefit under 35 U.S.C. 119, 120, 121, or 365 that describes the subject matter being relied upon in a prior art rejection where the prior art qualifies under 35 U.S.C. 102(a)(2).
C) (A) and (B)
D) None, “effective filing date” and “effectively filed” are synonymous terms depending on the whether and application is a national or foreign filing.
E) The “effective filing date” is the date the application for which the patent or application is entitled, as to such invention, to a right of priority under section 119, 365(a), 365(b), 386(a) or 386(b) or to the benefit of an earlier filing date under section 120, 121, 365(c), or 386(c).

Is there a difference between the term “effective filing date” (35 U.S.C. 102(b)(1)) and the term “effectively filed” date (35 U.S.C. 102(d))?

A) Yes, but only for applications that claim foreign priority. The first means the earliest date to which the claims under examination are entitled to priority benefit. The second is the date of the application if it were to be used as prior art in another's examination.
B) Yes, the first means the earliest date to which the claims under examination are entitled to priority benefit, while the second is relevant in a U.S. patent, U.S. patent application publication, or WIPO published PCT application being considered as prior art.
C) Yes, one refers to pre-AIA applications, while the other refers to AIA applications.
D) No
E) None of the above is correct

If an application claims priority to/the benefit of multiple applications (foreign or domestic), will the application have multiple effective filing dates to the claimed subject matter?

A) No, the AIA has eliminated current practice for determining priority (the effective filing date) for different claims within a claim set.
B) If it is an AIA application, all of the claims in the entire application will have the same effective filing date. it will be the earliest priority date claimed, even back to a foreign filing.
C) Maybe, because the effective filing date is determined on a claim-by-claim, and not on an application basis. Some claims in an application may be supported by a priority document having one filing date, and other claims in the application may be supported by a different priority document or none at all.
D) Maybe, but only if the application was split between pre-AIA and AIA filing/priority dates.
E) None of the above is correct.

Can a provisional application qualify as prior art under 35 U.S.C. 102(a)(2)?

A) No, provisional applications cannot qualify as prior art under 35 U.S.C. 102(a)(2) because they are not publicly available.
B) Yes, provisional applications will always be available as prior art under 35 USC 102(a)(2).
C) A provisional application may be prior art under 35 USC 102(a)(2) only if it is relied upon by a non-provisional application that issues as a patent.
D) No, provisional applications are always prohibited from being used as prior art under AIA 102(a)(2) because they are not published
E) (A) and (D)

Does an application need to be published to be prior art under AIA 35 U.S.C. 102(a)(2)? Can a nonprovisional application that contains a nonpublication request be prior art under AIA 35 U.S.C. 102(a)(2)?

A) All unpublished applications per se are considered as prior art under AIA 35 U.S.C. 102(a)(2). An application must be issued as a U.S. patent or published as a U.S. patent application publication or WIPO published PCT application to be prior art under AIA 35 U.S.C. 102(a)(2).
B) Unpublished applications are not per se prior art under AIA 35 U.S.C. 102(a)(2). An application does not be issued as a U.S. patent or published as a U.S. patent application publication or WIPO published PCT application to be prior art under AIA 35 U.S.C. 102(a)(2).
C) Unpublished applications are not per se prior art under AIA 35 U.S.C. 102(a)(2). An application must be issued as a U.S. patent or published as a U.S. patent application publication or WIPO published PCT application or otherwise deemed to be published under 122(b) to be prior art under AIA 35 U.S.C. 102(a)(2).
D) Uunpublished applications per se will be considered as prior art under AIA 35 U.S.C. 102(a)(2), if an application must has been issued as a U.S. patent or published as a U.S. patent application publication or WIPO published PCT application to be prior art under AIA 35 U.S.C. 102(a)(2).
E) Uunpublished applications per se will be considered as prior art under AIA 35 U.S.C. 102(a)(2), if an application must has been previously issued as a U.S. patent or published as a U.S. patent application publication or WIPO published PCT application to be prior art under AIA 35 U.S.C. 102(a)(2).

Does the date that subject matter is “effectively filed” under 35 U.S.C. 102(a)(2) include the filing date of any provisional application or foreign application for which priority or benefit is claimed in a U.S. patent, U.S. patent application publication, or WIPO published PCT application that designated the United States being used as prior art?

A) No, provisional applications and foreign applications can no longer be cited as prior art under AIA (FITF) USC 102.
B) No, the provisional application or foreign application for which priority or a benefit is claimed does not count in the effective filing date unless it was filed before March 16, 2013.
C) Yes, provided that the subject matter being relied upon is sufficiently described in the provisional application or foreign application for which priority or a benefit is claimed.
D) Yes, provided that the subject matter being relied upon is likely in the provisional application or foreign application for which priority or a benefit is claimed.
E) Yes, provided that the subject matter being relied upon is described in the provisional application or foreign application for which priority or a benefit is claimed and the priority document was filed before March 16, 2013.

Is subject matter on display in an inventor’s backyard during a neighborhood cookout a “public disclosure” under AIA 35 U.S.C. 102(a)(1)?

A) The public use provision of AIA 35 U.S.C. 102(a)(1) has the same substantive scope, with respect to disclosure by either the inventor only, as public disclosure under pre-AIA 35 U.S.C. 102(b) by inventors under pre-AIA 35 U.S.C. 102(a).
B) The public use provision of AIA 35 U.S.C. 102(a)(1) has the same substantive scope, with respect to uses by either the inventor only, as public uses under pre-AIA 35 U.S.C. 102(b) by inventors under pre-AIA 35 U.S.C. 102(a).
C) The public use provision of AIA 35 U.S.C. 102(a)(1) has the same substantive scope, with respect to uses by either the inventor or a third party, as public uses under pre-AIA 35 U.S.C. 102(b) by unrelated third parties or uses by others under pre-AIA 35 U.S.C. 102(a).
D) The public use provision of AIA 35 U.S.C. 102(a)(1) has the same substantive scope, with respect to uses by either the inventor or a third party, as public uses under pre-AIA 35 U.S.C. 102(b) by uses by others under pre-AIA 35 U.S.C. 102(a).
E) The public use provision of AIA 35 U.S.C. 102(a)(1) has the same substantive scope, with respect to public disclosure by either the inventor or third parties, as public uses under pre-AIA 35 U.S.C. 102(b) by inventors under pre-AIA 35 U.S.C. 102(a).

Many plant breeders grow or sell their seeds outside the United States prior to filing for a plant patent in the United States. Under AIA 35 U.S.C. 102(a)(1), will seeds grown or sold outside the United States be available as prior art?

A) All the below
B) Yes. The public use or sale of the seeds outside the United States may not constitute prior art under AIA 35 U.S.C. 102(a)(1), unless an exception provision in AIA 35 U.S.C. 102(b)(2) applies.
C) Yes. The public use or sale of the seeds outside the United States may constitute prior art under AIA 35 U.S.C. 102(a)(1), unless an exception provision in AIA 35 U.S.C. 102(b)(1) applies.
D) No. The public use or sale of the seeds outside the United States may not constitute prior art under AIA 35 U.S.C. 102(a)(1), unless an exception provision in AIA 35 U.S.C. 102(b)(1) applies.
E) No. The public use or sale of the seeds outside the United States may not constitute prior art under AIA 35 U.S.C. 102(a)(1), unless an exception provision in AIA 35 U.S.C. 102(b)(2) applies.

What is the status of the experimental use exception for a public use under the AIA?

A) The Office has defined the guidance on the subject of public use in Fed. Reg. 11059, 11063.There is not effective difference in AIA vs. pre-AIA guidance.
B) The Office has not issued a formal statement on the subject of public use.
C) The Office will consider the experimental use exception to be applied on a case-by case basis with regard to public use under AIA 35 U.S.C. 102(a)(1), or to a use that makes the invention available to the public under the residual clause of AIA 35 U.S.C. 102(a)(1).
D) Neither the AIA nor its legislative history expressly addresses whether the experimental use exception applies to a public use under AIA 35 U.S.C. 102(a)(1), or to a use that makes the invention available to the public under the residual clause of AIA 35 U.S.C. 102(a)(1).
E) The AIA requires the experimental use exception applies to a public use under AIA 35 U.S.C. 102(a)(1), or to a use that makes the invention available to the public under the residual clause of AIA 35 U.S.C. 102(a)(1).

What constitutes a secret sale for purposes of AIA 35 U.S.C. 102(a)(1)?

A) Under AIA law, an offer to sell must have been made within one year of a public disclosure.
B) Under AIA law, any offer to sell is considered a sale.
C) An activity (such as a sale, offer for sale, or other commercial activity) is secret if it is among individuals with an obligation of confidentiality to the inventor.
D) (A) and (B)
E) (B) and ( C )

Must a public use or sale be enabled to qualify as prior art under AIA 35 U.S.C. 102(a)(1)?

A) No, the enablement inquiry is applicable to the question of whether a claimed invention is described in a patent, published patent application, or printed publication, and is applicable to the question of whether a claimed invention is “in public use” or “on sale.”
B) Yes, the enablement inquiry is applicable to the question of whether a claimed invention is described in a patent, published patent application, or printed publication, but is not applicable to the question of whether a claimed invention is “in public use” or “on sale.”
C) No, the enablement inquiry is applicable to the question of whether a claimed invention is described in a patent, published patent application, or printed publication, but is not applicable to the question of whether a claimed invention is “in public use” or “on sale.”
D) Yes, the enablement inquiry is applicable to the question of whether a claimed invention is described in a patent, published patent application, or printed publication, and is applicable to the question of whether a claimed invention is “in public use” or “on sale.”
E) (B) and (D)

Which of the following is true regarding the phrase “otherwise available to the public before the effective filing date of the claimed invention” as used in AIA 35 U.S.C. 102(a)(1)?

A) It may include a student thesis in a university library.
B) It may include a poster display or other information disseminated at a scientific meeting.
C) It may include a commercial transaction that does not constitute a sale under the Uniform Commercial Code.
D) It is a “catch-all” phrase used to allow in other types of disclosures that make subject matter “available to the public” that are not already listed in 102(a)(1).
E) All of the above.

An applicant decides to raise an exception to prior art under AIA U.S.C. 102(b). Is this the proper mechanism for challenging a prior art citation?

A) Yes
B) The applicant should raise the issue of an exception being applicable via an affidavit or declaration under 37

Quiz Summary

Information

Results

Results

Categories

1. Question

2. Question

3. Question

4. Question

5. Question

6. Question

7. Question

8. Question

9. Question

10. Question

11. Question

12. Question

13. Question

14. Question

15. Question

16. Question

17. Question

18. Question

19. Question

20. Question

21. Question

22. Question

23. Question

24. Question

25. Question

26. Question

27. Question

28. Question

29. Question

30. Question

31. Question

32. Question

33. Question

34. Question

35. Question

36. Question

37. Question

38. Question

39. Question

40. Question

41. Question

42. Question

43. Question

44. Question

45. Question

46. Question

47. Question

48. Question

49. Question

50. Question

51. Question

52. Question

53. Question

54. Question

55. Question

56. Question

57. Question

58. Question

59. Question

60. Question

61. Question

62. Question

63. Question

64. Question

65. Question

66. Question

67. Question

68. Question

69. Question

70. Question

71. Question

72. Question

73. Question

74. Question