Test Number 014 Test Series 187 NAAE ... - law.uh.edu

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Test Number 014 Test Series 187

NAAE

DEPARTMENT OF COMMERCE UNITED STATES PATENT AND TRADEMARK OFFICE

REGISTRATION EXAMINATION FOR PATENT ATTORNEYS AND AGENTS

April 7, 1987

Morning Section (100 Points) Time: 3 Hours

TO PASS THE MORNING SECTION OF THE EXAMINATION, YOU MUST OBTAIN A SCORE OF AT LEAST 70 POINTS. THE POINT VALUE OF EACH QUESTION IS ONE (1) POINT.

INSTRUCTIONS

This examination is an open book in that you may use books, notes, or other written material that you believe will be of help to you except for prior registration examinations and/or answers. Books, notes or other written material containing prior registration examinations and/or answers can not be brought into or used in the room where this examination is being administered.

ALL QUESTIONS MUST BE ANSWERED ON THE ANSWER SHEET. No additional paper is needed. Use a No. 2 (or softer) lead pencil to record your answers on the answer sheet. Darken completely the circle corresponding to your answer. You must keep your mark within the circle. Stray marks may be counted as answers. Erase completely all marks except your answer.

This section of the examination consists of two subsections: Section 1 which consists of fifty (50) true/false questions and Section 2 which consists of fifty (50) multiple choice questions. Each subsection is weighted 50 points. You may write anywhere on this examination booklet. However, only answers recorded on the answer sheet will be checked and graded.

SECTION 1: TRUE/FALSE. Each correct answer is worth one (1) point. No points are awarded for incorrect answers or unanswered questions. Questions answered both true and false will be considered to be incorrectly answered. If the answer

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to the question is true, darken completely the circle on your answer sheet having "A" inside the circle. If the question is false, darken "B". Do not darken circles having "C", "D", or "E" in them. Answer questions 1 through 50 in Section 1 of your answer sheet.

Example: 3. The moon is made of cheese.

3• 0 - 0 0 0

SECTION 2: MULTIPLE CHOICE. Each correct answer is worth one (1) point. There is only one correct answer to each question. The correct answer is the answer which is MOST CORRECT. When "Each of the above", "None of the above", "Any of the above", "(a) and (b)", or the like is the most correct answer, no other answer will be considered correct for receiving credit for the question. No points are awarded for incorrect answers or unanswered questions. Questions answered by darkening more than one circle will be considered to be incorrectly answered. If the ans~~r to the multiple choice question is "C", as in the example below, darken completely the circle on your answer sheet having a "C" inside the circle. Answer questions 1 through 50 of Section 2 in answer lines 1 through 50, respectively, in Section 2 of your answer sheet.

Example: 3. Which of the following statements is true?

a) The moon is made of cheese.

b) '!'he moon is imaginary.

c) The moon has mountains.

d) The moon is a source of sunlight.

e) The moon is visible only at night.

3. 8 0 - 0 0 NOTE: IN ANSWERING THE QUESTIONS IN SECTIONS 1 AND 2, DO NOT ASSUHE ANY ADDITIONAL FACTS NOT PRESENTED IN THE QUESTION.

You have a total of three (3) hours to complete the morning section of the examination.

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DO NOT TURN THIS PAGE UNTIL YOU ARE INSTRUCTED TO

CHECK THE CONTENTS OF THIS EXAMINATION BOOKLET

OR TO BEGIN THE EXAMINATION

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SECTION 1: TRUE/FALSE

1. You prepare a patent application for filing just before a statutory bar date of April 8, 1987. The inventors, Robert F. Jones and Charles Smith, are out of town and cannot sign the application in time. Since the declaration will not be signed, your secretary does not prepare a declaration but types on the front page of the application papers under the title "Inventors: Jones et al". The application papers w·ithout a declaration are hand carried to the PTO where they were filed today, April 7, 1987. The application will be granted a filing date which avoids the statutory bar.

2. If some of the claims in a patent application are allowed while other claims are finally rejected, applicant's response to the final rejection need not comply with the objections or requirements as to form raised by the examiner in order to prevent abandonment.

3. Wise is prosecuting two closely-related applications, A and B, both of which are before the same examiner. The examiner rejects application A on a marginally relevant reference, but rejects application B on a highly-relevant reference. Wise believes the latter reference to be material with respect to both cases, but assumes that, since the same examiner is handling both cases, the examiner has determined that it is not material to application A. Wise has no need to call to the attention of the examiner the apparent materiality of the highly-relevant reference to application A.

4. Although only one claim is permissible in a design patent application, the examiner may require that the design application be restricted to one invention.

5. After an extended prosecution of a patent application in which your client has refused to pay your fees, you write a certified letter with return receipt to your client informing him you will no longer act as his attorney in this matter. As a result of writing that letter and your receiving the return receipt from the Post Office, you no longer have the duty to respond to the latest Office action in the patent application.

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6. When foreign language prior art references are cited by applicant as part of an Information Disclosure Statement, a translation of pertinent portions of the references should be filed if an existing translation is readily available to the applicant.

7. If drawing changes are required before a patent application is allowed, the changes will be made by the PTO if applicant requests the PTO to make the changes and pays the appropriate fee.

* * * *

Answer Questions 8 and 9 based on the facts in the following paragraph. Consider each question independently of the other.

Weltaut, a patent agent, filed a patent application containing a claim to a product X, a claim to a process specifically adapted for the manufacture of product X which process as claimed cannot be used to make any other materially different product, and a claim to a use of product X which use as claimed cannot be practiced with any other materially different product.

8. In an application filed under 35 U.S.C. 111, the examiner properly rejected the claim to product X as not allowable over prior art. In the same Office action rejecting the claim to product X, the examiner required the applicant to elect for further prosecution either the claim to the process for the manufacture of product X or the claim to the use of product X. This requirement was proper.

9. The examiner issued an Office action requiring election of one of the three claims but not acting on the merits of any of the claims. In his response to the Office action, Weltaut argued that the election requirement was improper and should be withdrawn and did not make an election. Welthaut's response was a complete response to the requirement.

* * * *

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10. In citing a foreign language patent or published patent application, the examiner must furnish the applicant with an English translation of at least the particular pages relied upon.

11. Necessary drawings in an international (PCT) application can be filed within 30 days after filing of the incomplete papers in order to be considered by the re~eiving office.

12. On January 10, 1986, the examiner issued a final rejection of all of the claims of the Jones application on the ground that they contained limitations not supported by the original Jones application disclosure, and were therefore unpatentable under 35 U.S.C. 112 (first paragraph). In the same Office action, the examiner also required deletion of an earlier amendment to page 7 of the Jones application on the ground it constituted new matter. On March 10, 1986, Jones petitioned the Commissioner to direct the examiner to withdraw his requirement that the amendment to page 7 be deleted, it being Jones' view that if he succeeded in his petition, the examiner would have to withdraw the §112 rejection since the amended page 7 supported the rejected claims. On August 15, 1986, the Commissioner denied the Jones petition. On October 15, 1986, Jones filed a notice of appeal with the appropriate fee from the examiner's final rejection. Since the notice of appeal was filed within two months of the denial of the petition, the appeal was timely filed.

13. A working model of an invention may be required by the examiner.

14. Failure to assert a difference in scope between the original patent claims and the reissue claims in a reissue oath or declaration is not a fatal defect to the reissue.

15. In a reexamination, the claims of an unexpired patent should be given the broadest reasonable interpretation consistent with the specification.

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16. An affidavit or declaration is required to be filed in order for an interference to be declared between an application and a patent when the effective filing date of the application is after the U.S. effective filing date of the patent.

17. If a continuation or divisional application is filed under the file wrapper continuing procedure by less than all of the inventors named in the parent application, an oath or declaration as required by 37 CFR 1.63 must also be filed.

18. A protest against a pending application may only be made by applicants of other pending patent applications.

19. An applicant's amendment containing evidence that an invention claimed in a patent application has been commercially successful should be given full consideration by an examiner who has only rejected the claims of the application as being unpatentable for failing to comply with the requirements of 35 U.S.C. 112.

20. If a question of patentability based on fraud is discovered during a reexamination proceeding, the question may be resolved in the PTO only if a reissue application is filed.

21. A patent application will receive a filing date when the PTO receives the specification and required drawings, even though the filing fee, claims and oath have not been submitted.

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22. McGreedy and Weltodo both worked at XYZ Company. Under a company policy, whenever a patent issued on an invention made by its employees, the company paid the inventors $1000, provided the patent application had been assigned to the company. Weltodo made an invention. McGreedy asked Weltodo to state that McGreedy was a joint inventor so that when the patent issued McGreedy would receive a share of the $1000. Weltodo agreed to this, and the patent application was filed naming them as joint inventors. The patent issued, and McGreedy and Weltodo shared the money. Six months later, after both McGreedy and Weltodo had retired, the patent agent who prepared and prosecuted the patent application learned that Weltodo was the sole inventor. By filing a petition with papers signed by McGreedy, Weltodo, and an officer of XYZ Company setting forth the actual facts as recited above and accompanied by the appropriate fee, the PTO will correct the inventorship on the patent to show Weltodo as sole inventor.

* * * * Answer Questions 23-25 below based on the facts in the following paragraph. Consider each of the questions independently of the others.

Ms. Harris reduced to practice a certain blood test using monoclonal antibodies (the "Alpha test") in the United States on April 1, 1984. She filed an application for a patent on the Alpha test on October 1, 1985. Consider each of the following documents or acts separately and indicate whether such document or act is prior art that may affect the patentability of Ms. Harris' claim to the Alpha test. In each instance, assume that Ms. Harris has made a proper showing of entitlement to a date of invention in the United States as of April 1, 1984.

23. A U.S. patent disclosing but not claiming the Alpha test issued to Jones on November 4, 1986. The patent is based on an application filed in the United States on May 1, 1984. It properly claims the benefit of an identical application filed in the United Kingdom on May 2, 1983 pursuant to 35 U.S.C. 119. The d~sclosure in the Jones patent is prior art to Ms. Harris' claim to the Alpha test.

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24. Ms. Harris incorporates a complete description of the Alpha test in her Ph.D. thesis submitted to Cascade University. A single copy of the thesis is deposited, catalogued and made available to users of the Cascade University Library on September 15, 1984. The thesis is published in a scientific journal in May of 1985. The thesis is prior art to Ms. Harris' claim to the Alpha test.

25. On August 10, 1984, Ms. Harris makes an unconditional offer to sell all rights in her invention to Genetic Concepts, Inc., a California biotechnology company. On November 1, 1984, Genetic Concepts accepts the offer, agreeing to pay Ms. Harris $50,000 plus 10% royalty in exchange for an assignment of all rights in Ms. Harris' invention. In January of 1985, Genetic Concepts begins development of a commercial version of the Alpha test. The offer for sale is prior art to Ms. Harris' claim to the Alpha test.

* * * *

26. A U.S. corporate assignee who files on behalf of a Canadian inventor can validly file an international (PCT) application through the USPTO Receiving Office designating the u.s., Germany and Japan.

27. The wording of an oath or declaration cannot be amended, altered or changed in any manner after it has been signed.

28. If a continuation-in-part application which adds and claims additional disclosure is filed under the file wrapper continuing procedure by less than all of the inventors named in the parent application, an oath or declaration as required by 37 CFR 1.63 must also be filed.

29. An applicant for reissue of a patent, or an owner of a patent under reexamination, may, upon the payment of the necessary appeal fee, appeal from the decision of the examiner to the Board of Patent Appeals and Interferences if the claims of the reissue application or patent under reexamination have been twice rejected.

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30. Where reconsideration of a previous Office action is requested by amendment or letter filed by applicant following an interview with the examiner, the paper filed must contain a complete written statement of the reasons presented at the interview in support of the action urged.

31. Testimony is obtained in an interference only by oral deposition.

32. The size of sheets of drawing filed in a patent application may be either 8~ x 14 inches or exactly 21.0 x 29.7 ern.

33. When filing an application for a plant patent, two copies of the specification and claim must be submitted.

34. On July 15, 1986, the examiner made a final rejection of all of the claims in the Dowdy application on the ground of obviousness under 35 U.S.C. 103. A three month shortened statutory period was set for response. On July 21, 1986, Dowdy filed a notice of appeal with the appropriate fee from the examiner's rejection. On September 23, 1986, Dowdy filed her brief and the appropriate fee. The brief was untimely since it was filed more than two months after the notice of appeal.

35. A person whose protest against a pending patent application has been entered and considered by the PTO is entitled to file a brief rebutting the arguments of the applicant against the information contained in the protest.

36. Maintenance fees required to keep a patent in force after the fourth, eighth and twelfth anniversaries of the date of grant may be paid as far in advance as the patentees desires, provided they are not paid before the date of grant.

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37. A U.S. patent attorney or agent registered to practice before the USPTO may represent a U.S. applicant before the International Bureau and the European Patent Office in connection with an international (PCT) application.

38. It is acceptable practice to include a flow diagram in a claim in a patent application.

39. In an interference proceeding, a party is entitled to raise a matter at a final hearing which could have been properly raised by motion during the motion period but was not raised at that time.

40. On January 16, 1987, Smith filed a notice of appeal with the appropriate fee from the examiner's final rejection. On March 13, 1987, Smith filed his brief and the appropriate fee. On April 3, 1987, the examiner mailed his answer which included two new points of argument that the examiner had not previously raised. Smith has until June 3, 1987, to file a reply to the answer and may, without payment of extension of time fees, include in that reply any amendment or material appropriate to the two new arguments raised by the examiner.

41. An examiner may reject a claim as unpatentable under Section 103 relying entirely on facts within his own personal knowledge, that is without relying on any patent, publication, or other document.

42. In order to be entitled to the benefit of the filing date of a prior U.S. patent application, the subsequently filed application need only contain a specific reference to the prior U.S. application in the specification.

43. Pursuant to your duty of disclosure, you file in a pending patent application copies of letters, memoranda and test results which are trade secrets of your client. A petition to expunge such information from the application file and request to return such material to your client will be granted if the information is found by the examiner not to be material to the examination of the application under~ CFR 1.56(a).

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44. The doctrine of equivalence cannot be relied upon to establish prior reduction to practice to matter outside the scope of the count in an interference proceeding.

45. On April 6, 1987, you receive a patent application from and prepared by an overseas colleague with instructions to file before the priority deadline which is tomorrow, April 8, 1987. You review the application papers and note that page 7 of the specification is missing. The contents of this page are necessary for a complete disclosure of the invention. There is no time to obtain a reexecuted patent specification which includes page 7. To preserve the priority filing date, the best approach would be to file the original application papers on April 8, 1987, and later amend the application to substitute reexecuted application papers which include page 7.

46. If a patentee involved in an interference files an application for reissue during the interference and omits all claims of the patent corresponding to the counts of the interference for the purpose of avoiding the interference, judgement may be entered against the patentee.

47. Extensive amendments filed in an international (PCT) application during international processing can be effected in the same way as in u.s. practice.

48. Johnson invents a novel fragrant compound and requests that you prepare a patent application for him. Shortly thereafter, Johnson's boss suggests mixing the novel compound with an extender material which he believes will result in a perfume product that can be produced at a much lower cost. You may file a single patent application separately claiming the compound and the perfume product with Johnson and his boss as co-inventors.

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49. A first Office action dated October 1, 1986 properly rejects the claims of a patent application under 35 u.s.c. 103 on prior art. On April 1, 1987, you prepare a full and complete response to the rejection and mail the response, a petition for extension of the period for responding, and all the necessary fees to the Commissioner of Patents and Trademarks, Washington, DC 20231 using an "Express Mail" mailing label for both the response and the petition. This was received in the Patent and Trademark Office on April 2, 1987. This was sufficient to prevent the application from becoming abandoned.

50. A u.s. national, who speaks and understands French and English fluently, may nevertheless file an application in French.

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SECTION 2: MULTIPLE CHOICE

1. Wise is employed by a large law firm representing a number of foreign clients. Wise filed numerous patent applications at the PTO on behalf of these clients. Soon after the applications were filed, the foreign clients sent Wise copies of references cited in these corresponding foreign patent applications. What should Wise do with these references?

a) File an Information Disclosure Statement as soon as possible, preferably within three months of filing the relevant applications, disclosing all references.

b) Hold the references in his file until the relevant applications have been allowed by the PTO and then file an Information Disclosure Statement.

c) Wait until a first action is received from the PTO, and then file an Information Disclosure Statement.

d) File an Information Disclosure Statement within a year after he receives the references, but disclose only the most relevant references.

e) Any of the above.

2. A client hands you a disclosure of an invention and requests that US and foreign applications be prepared and filed as soon as possible. The subject matter of the disclosure makes it highly unlikely that a secrecy order will be issued in the US application. Earlier applications on similar subject matter have never received secrecy orders. Considering only the filing of foreign applications, which of the following actions would be improper?

a) Based on the available disclosure, petition immediately for a license to file abroad. Then prepare and file US patent application. Initiate foreign filing if license is granted.

b) File US patent application and await filing receipt. Initiate foreign filing if filing receipt grants license to file abroad.

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c) Case (b) but filing receipt grants no license to file abroad. Petition for license and initiate foreign filing if granted.

d) Case (c). To speed up foreign filing after the. license is granted, send copies of the US application, as filed, to foreign patent agents with instructions to delay foreign filing until advised that license was granted.

e) Case (b) but filing receipt grants no license to file abroad. Initiate foreign filing six months after US filing date, provided no secrecy order is received in the interim.

3. A patent application discloses inventions X and Y. An Office action on the application rejects the claims to invention X. Claims to invention Y may be prosecuted as a matter of right in that same application in the following circumstances:

a) The application as filed contained claims to invention X and claims to invention Y. In response to a restriction requirement, the agent requested reconsideration and withdrawal of the requirement, giving reasons therefor, and provisionally elected the claims to invention X. The Office action which rejected the claims to invention X also rep~ated the requirement for election and made it final. In response to the rejection of the claims to invention X, the agent cancelled all the claims to invention X and argued that the claims to invention Y were allowable.

b) The application as filed contained only claims to invention X. In response to the rejection of those claims, the agent cancelled them and substituted claims to invention Y, which is independent and distinct from invention X, and the agent argued that the new claims were allowable.

c) The application as filed contained claims to invention X and claims to invention Y. In response to a restriction requirement, the agent elected the claims to invention X and did not request reconsideration or withdrawal of the requirement. In response to the rejection of the claims to invention X, the agent cancelled those claims and argued that the claims to invention Y were allowable.

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d) The application as filed contained claims to invention X and claims to invention Y. In response to a restriction requirement, the agent requested reconsideration and withdrawal of the requirement, giving reasons therefor, and provisionally elected the claims to invention X. The Office action which rejected the claims to invention X also withdrew the election requirement and rejected the claims to invention Y. In response to the rejection of those claims, the agent cancelled all the claims to invention X and argued that the claims to invention Y were allowable.

e) Each of the above.

4. Which of the following concerning appeals to the Board of Patent Appeals and Interferences is (are) false?

a) Should the Board make a new rejection of the claims on appeal, the appellant may not have the case reconsidered by the Board. ---

b) The Board will review the examiner's refusal to enter an amendment.

c) The Board must confine its decision to a review of claims rejected by the examiner and may not recommend any allowed claim.

d) When the Board recommends in its opinion the allowance of a claim in amended form and the appellant files an amendment conforming to the recommendation, the recommendation is binding on the examiner, who then must allow the claim.


5. When Jones makes an invention and assigns it to his employer, the XYZ Corporation, which one of the following may not execute the oath or declaration?

a) Jones.

b) Jones' legal representative (executor or administrator) if Jones dies before filing the application.

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c) Jones' legal representative (guardian or conservator) if Jones is insane or otherwise legally incapacitated before filing the application.

d) The XYZ Corporation if Jones agrees to execute the oath or declaration and is reachable.

e) All of the above.

6. Which of the following is not required in the oath or declaration accompanying a patent application?

a) Statement that the applicant has reviewed and understands the contents of the specification.

b) Statement that the applicant acknowledges the duty to disclose information which is material to the examination of the application.

c) Statement that the applicant believes the claimed invention to be non-obvious under 35 u.s.c. 103.

d) Statement as to the residence and country of citizenship of each inventor.


7. Which of the following must be accompanied by a $140.00 petition fee?

a) Petition seeking supervisory review by the Commissioner.

b) Petition to suspend 37 CFR 1.52(b).

c) Petition on a question not provided for in the rules.

d) (b) and (c).

e) (a) and (c) .

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8. Identify the incorrect statement below with regard to an amendment proposed in a patent involved in reexamination:

a) Matter deleted from the patent must be placed in brackets and matter added must be underlined.

b) The claims of the patent may not be renumbered and added claims must follow the number of the highest numbered patent claims.

c) Copies of the printed claims of the patent may not be used for amendment purposes.

d) The scope of the claims may not be enlarged.

e) New matter may not be added to the patent.

9. Which of the following is not reviewable upon appeal to the Board of Patent Appeals and-rnterferences?

a) The prematureness of an examiner's final rejection.

b) A requirement to cancel "new matter" from the specification.

c) The examiner's refusal to institute an interference.

d) The examiner's denial of a request for reexamination.


10. The transfer of all drawings from a pending patent application to another application may be done:

a) If the two applications are copending.

b) If a written notice of abandonment has been filed for the first application.

c) If the first application has been allowed and issued a patent number.

d) (b) and (c) .

e) {a), (b) and (c).

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11. In a reexamination proceeding, which of the following may be considered in determining the allowability of the claim of a patent?

a) Inequitable conduct by the patentee in failing to disclose a known prior art reference to the examiner during the original prosecution.

b) Public use by the inventor of the claimed invention more than one year prior to the filing of the application for the patent.

c) Indefiniteness of the language of the unamended original patent claim.

d) Obviousness-type double patenting in view of a prior patent by the same inventor.

e) None of the above.

12. Sidney Diligent, a registered patent agent, is having trouble obtaining the allowance of a patent application on a commercially valuable solar-powered calculator. Diligent decides to arrange a personal interview with the examiner handling his application in order to demonstrate the calculator. After the demonstration of the calculator, the examiner remains of the opinion that the device is not patentable. Finally Diligent and the examiner reach agreement. Diligent will give the examiner the demonstrated calculator for his personal use for an indefinite period of time, and the examiner will issue a patent with one very narrow claim so that there will be little risk of infringement unless someone copies every detail of the calculator. Which of the following best summarizes the interview?

a) This was a successful interview because the examiner was able to obtain a sample of the invention for further study.

b) This was a successful interview because it enabled Diligent to obtain an agreement by the examiner to allow a claim on a device that was apparently unpatentable.

c) Diligent violated the PTO code of ethics by improperly influencing the examiner in offering him the calculator.

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20. Which of the following statements concerning design patent applications is false?

a) Only one claim, in normal terms to the ornamental design for an article as shown and described, is permissible in a design application.

b) To obtain the benefit of an earlier filed foreign filing date, the u.s. design patent application must be filed within six months of the earliest date on which any foreign application of the same design was filed.

c) None of the rules relating to applications for patents for other inventions or discoveries are applicable to applications for patents for designs.

d) A double patenting rejection will not be made in cases where the utility application and design application are based on the same subject matter, but where clearly patentable distinctions exist between them.

e) The fact that an object is new and ornamental is not conclusive of its patentability as a design, since the ornate effect may be due to color, workmanship, finish, and the like, factors of appearance that play no part in determining the question of a patentable design.

21. Which of the following statements is (are) false?

a) A substitute application is entitled to the benefit of the filing date of the parent application if applicant refers to the parent application in the substitute application.

b) A claim in a continuation-in-part application reciting a feature which is neither disclosed nor supported in the parent application, but which was first introduced and supported in the continuation-in-part application, is not entitled to the filing date of the parent application.

c) A utility application may rely on the benefit of the filing date of an earlier filed design application by the same inventive entity if the design application discloses the utility invention in the manner required by the first paragraph of 35 u.s.c. 112.

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24. A patent application is filed naming five co-inventors. During prosecution, some of the claims were cancelled so that less than all of the original inventors are inventors of the remaining claims. Which of the following actions should be taken?

a) An amendment should be filed to delete the names of the inventors who are not the inventors of the remaining claims.

b) A petition should be filed which includes a statement identifying each named inventor who is being deleted and acknowledging that the inventor's invention is no longer claimed in the application.

c) A fee should be paid for filing a petition to the Commissioner to correct the inventorship.

d) (a) and (b) .

e) (a), (b) and (c).

* * * * Answer questions 25-27 below based on the facts in the following paragraph. Consider each of the following questions independently of the others.

The examiner made a final rejection of most of the claims in your client's patent application. He indicated that the remaining claims in the application were allowable. The examiner set a three (3) month shortened statutory period for response beginning December 22, 1986.

25. You filed a response to the final rejection on February 20, 1987, which included an amendment of some of the rejected claims. The examiner issued an advisory action on March 27, 1987 advising you that the claims remained rejected for the reasons of record and denied entry of your amendment. A notice of appeal and appropriate fee (37 CFR 1.17(e)) in the application would be due:

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a) June 20, 1987 without an extension of time fee.

b) June 22, 1987 with a three month extension of time fee.

c) June 22, 1987 with a four month extension of time fee.

d) June 27, 1987 with a three month extension of time fee.

e) June 27, 1987 with a four month extension of time fee.

26. You filed a response to the final rejection on March 19, 1987 with an amendment of some of the rejected claims. The examiner issued an advisory action on April 3, 1987 indicating that the amendment would be entered for purposes of appeal and that the claims as amended would remain rejected for reasons of record. A notice of appeal and appropriate fee (37 CFR 1.17(e)) in this situation would be due:

a) June 19, 1987 without an extension of time fee.

b) June 22, 1987 with a three month extension of time fee.

c) June 22, 1987 with a four month extension of time fee.

d) July 3, 1987 with a three month extension of time fee.

e) July 3, 1987 without an extension of time fee.

27. You filed a response to the final rejection on March 19, 1987 with an amendment of some of the rejected claims and a notice of appeal and fee (37 CFR 1.17(e)). The examiner issued an advisory action on March 31, 1987 denying entry of the amendment. Without requesting an extension of time, an appeal brief and fee (37 CFR 1.17(f)) would be due:

a) May 19, 1987.

b) May 22, 1987.

c) May 31, 1987.


d) June 22, 19R7.


* * * *

28. In order to seek postponement of the initial examination of a new pending application so that it is not taken up for examination in the order in which it was filed, an applicant is entitled to:

a) File a petition requesting suspension of action, and a petition fee.

b) File a petition requesting suspension of action for a specific time, and a petition fee.

c) File a petition requesting suspension of action for a specific time for good and sufficient reasons, and a petition fee.

d) File a petition requesting an extension of time and a petition fee.

e) None of the above because the PTO is required to examine applications in the order in which they were filed.

29. As a registered patent attorney or agent acting for a client, which of the following apply?

a) When filing a paper in the PTO acting in a representative capacity, you should specify your registration number with your signature.

b) When your client subsequently assigns the application, your power of attorney or authorization of agent is revoked.

c) When you file your power of attorney or authorization which has been duly executed, you may then appoint an associate attorney who shall then be of record.

d) (a) and (c) •

e) (a), (b) and (c).


30. When a claim is rejected as being anticipated by the disclosure in a foreign patent, the applicant may make an affidavit or declaration of prior invention if:

a) The foreign patent was neither published nor patented more than one year before applicant's United States filing date.

b) The facts prove conception of the invention in the United States prior to the effective date of the foreign patent coupled with due diligence from said date to the filing of applicant's application.

c) The facts prove prior invention occurred anywhere in the world and the inventor of the foreign patent is a civilian or military employee of the United States domiciled in the United States.

d) The facts prove actual reduction to practice of the invention in the United States before the date of the foreign patent.


31. Which of the following statements is (are) false?

a) In establishing the scope of a disclosure, the applicant may rely only upon the description and drawing as filed, but not upon the content of the originally filed claims.

b) A multiple dependent claim cannot serve as a basis for any other multiple dependent claim.

c) The following is acceptable wording for a multiple dependent claims: "Claim 12. An article according to claims 1-3 and 7-9, further comprising .... "

d) (a) and (c) .

e) (a) and (b) .


32. A petition filed in a pending application to institute a public use proceeding may result in a hearing before the Commissioner to determine whether such a proceeding should be instituted, if the examiner of the pending application has found a prima facie showing that the invention claimed in the application had been:

a) In public use before the filing of the application.

b) On sale more than one year before the filing of the application.

c) Disclosed in publications available to the public more than one year before the filing of the application.

d) Obvious to the public before the filing of the application.


33. If a secrecy order has issued in a u.s. patent application, which of the following requires no action by applicant in order to preserve applicant's full rights, including the right to have the secrecy order removed or modified?

a) Final rejection of application.

b) Notification that application is in condition for allowance.

c) Existence of another patent application not under secrecy order, which discloses a significant portion of the present application.

d) Existence of any issued patents, publications or other facts that would render the secrecy order ineffectual.

e) Denial of petition for recession of secrecy order.


34. In a first Office action, the examiner rejected the claims of a patent application, and Welreason, a patent agent, requested an interview to discuss the rejection. At the interview, Welreason orally described to the examiner amendments to be made to the rejected claims and explained why those amended claims would be allowable. The examiner agreed that the proposed amended claims would be allowable. The examiner completed an "Examiner Interview Summary Record" form stating that a "proposed amended claim" had been discussed and "appeared allowable over the art of record for reasons explained by patent agent Welreason." He placed the original copy of the form into the application file and gave one copy to Welreason. Which of the following would be proper as the next paper in the application?

a) A second Office action rejecting the amended claims on new art.

b) A written response to the first Office action from Welreason presenting the amended claims and in the "REMARKS" stating only "At the interview it was agreed the amended claims are allowable."

c) A written response to the first Office action from Welreason presenting the amended claims and repeating the explanation of why there were allowable.

d) A notice of allowance.


35. In a rejection of the claims in a patent application under 35 u.s.c. 103, the examiner:

a) May properly combine references.

b) May not reject a claim as being obvious in view of only one reference.

c) Should not consider evidence that research chemists had conducted experiments for fifteen years with no positive results before the applicant made the claimed invention, because this evidence can only be evaluated by a court in an inter partes proceeding.

d) Can consider only patents and printed publications.

e) (a) and (d).


+

36. Following a decision affirming the examiner's rejection by the Board of Patent Appeals and Interferences, which of the following is true?

a) A request for reconsideration or modification of the decision may be made if filed within one month from the date of the original decision.

b) Where no appeal or civil action has been filed, the date of termination of proceedings is the date on which the Board decision was rendered.

c) Failure to timely file an appeal or a civil action results, without exception, in the abandonment of the application.

d) (a) and (b).

e) None of the above is true.

37. A first petition to revive an unintentionally abandoned patent application does not require which of the following:

a) A petition to be filed within one year of the date on which the application became abandoned.

b) A statement that the abandonment was unintentional.

c) A showing of the causes for the delay.

d) A proposed response, unless previously filed.

e) A petition fee.

38. Jack, a patent agent, is preparing to file an Information Disclosure Statement. He has before him the following materials: u.s. patent A, u.s. patent B (a divisional of A having exactly the same disclosure as A), a French patent, a European patent in the French language that contains the same disclosure as the French patent, and a translation into English of the key portions of the European patent. What should Jack include in his Information Disclosure Statement?


a) A list of all references, a concise explanation of the relevance of each, a copy of either U.S. patent A or B, a copy of either the French patent or the European patent and a copy of the translation.

b) A list of all references and a copy of each.

c) A list of the U.S. patents and copies of all references except the U.S. patents (since the U.S. patents are readily available at the PTO) with a concise statement of the relevancy of each reference.

d) A list of all references and a detailed analysis of the relevancy of each.

e) A translation of the French patent and a detailed explanation of its relevance is all that is needed because the European patent contains the same disclosure as the French patent and the U.S. patents are already available at the PTO.

39. Your client has developed three better and alternate methods to produce a known product. He anticipates his competition will independently discover two of these methods, but not his third and preferred method. Your client instructs you to disclose in a patent application only the first and second methods, but not the third. He further instructs you to claim a method which encompasses all three. Your best advise to the client would be to:

a) Tell your client to rely on the law of trade secrets.

b) File an application disclosing the first method but not the second and third methods, while presenting claims which dominate all three.

c) File an application disclosing the first and second methods, but not the third method, while presenting a claim to dominate all three.

d) Advise your client that if patent protection is to be obtained, the third method must be disclosed in the patent application.

e) Refuse to represent your client.


40. In a non-PCT foreign filing, a license for foreign filing is not needed if:

a) There are no material changes in an application filed almost a year ago in PTO.

b) Filing receipt is obtained with automatic license thereon.

c) Three months have passed since filing the subject U.S. application.

d) (a) and (b).

e) (a) , (b) and (c) .

* * * * Answer Questions 41 and 42 based on the facts in the following paragraph. Consider each question independently of the other.

On May 1, 1985, Able synthesized and successfully tested compound A in the United States for use in a high impact polymer. Able kept the results of his research secret but continued research and ~ade confidential inquiries to companies who might be interested in developing A. On June 1, 1985, Baker synthesized and successfully tested compound B in the United States. Compound B is an obvious modification of compound A and is also useful in a high impact polymer. Able and Baker are self employed and independent inventors. On July 1, 1985, Acme Chemical Company purchased all rights, title, and interest in compounds A and B. Acme continued development work in secret. On August 1, 1985, Campbell, an employee of Acme who has assigned all of his patent rights to Acme, used the information supplied by Able and Baker to synthesize and successfully test compound C, another obvious modification of compound A. On August 2, 1985, Acme filed separate applications naming Able, Baker, and Campbell as inventors claiming compounds A, B, and C, respectively.


41. In determining the patentability of Baker's invention of B under 35 u.s.c. 103, Able's invention of A is:

a) Prior art by virtue of 35 u.s.c. 102 (g).

b) Prior art by virtue of 35 u.s.c. 102 (f).

c) Prior art by virtue of 35 u.s.c. 102(f) and (g) •

d) Prior art by virtue of 35 u.s.c. 102 (a).

e) Not prior art.

42. In determining the patentability of Campbell's invention of C under 35 u.s.c. Section 103, Able's invention of A is:

a) Prior art by virtue of 35 u.s.c. 102 (g).

b) Prior art by virtue of 35 u.s.c. 102 (f).

c) Prior art by virtue of 35 u.s.c. lOl(f) and (g) •

d) Prior art by virtue of 35 u.s.c. 102 (a).

e) Not prior art.

* * * *

43. Which of the following statements concerning service of papers to be filed in the PTO is true?

a) A paper may be served by leaving a copy at the usual place of business of the person served with someone in his employment.

b) When the person served has no usual place of business, a paper may be served by leaving a copy at the person's residence with anyone who resides there.

c) When a paper is served by mail, the date of receipt will be regarded as the date of service.

d) (a), (b) and (c).

e) None of the above are true.


44. When a claim is rejected as being anticipated by the disclosure of a prior patent, an affidavit in the form of an oath traversing the rejection may be presented. If executed in a foreign country, the affidavit must be sworn to or acknowledged before:

a) A diplomatic or consular officer of the United States.

b) A notary public whose authority is certified by a diplomatic or consular officer of the United States.

c) A notary public whose authority is certified by a special certificate, or apostille, executed by a foreign government officer in a country belonging to the Hague Convention Abolishing the Requirement of Legalization.

d) (a) and (b) .

e) (a) , (b) and (c) .

45. Which of the following is not an error which can be corrected by a reissue application filed less than two years after the grant of the patent sought to be reissued?

a) Claims that are believed to be too broad based on newly discovered prior art.

b) The attorney who prosecuted the original patent application misunderstood a reference and as a consequence cancelled a broad but allowable claim.

c) The attorney who prosecuted the original application used a specification written by the inventor, but did not claim one of the two properly disclosed inventions.

d) The inventor had told his attorney not to claim the process performed by his patented machine because, while on vacation to celebrate his successful machine, he learned Sicilian monks had for several years performed the process by hand.

e) The inventor, a student, had told his attorney not to claim a subcornbination because he thought it was anticipated by a question on an old examination question which he found in the files of his college fraternity after he had made his invention.


46. Prerequisites to the declaration of an interference between an application and a patent are:

a) But for the patent, the subject matter must be patentable to the applicant.

b) At least one claim of the application and one claim of the patent must define the same patentable invention.

c) The count(s) must not be narrower than the claims of the patent.

d) The application must claim the same or substantially the same subject matter within one year of issuance of the patent.


47. A first Office action dated October 1, 1986, includes a rejection of the claims and sets a shortened statutory period for response of three months. A full and complete response to the Office action is prepared. Assuming no unusual delays and assuming all papers are properly signed, which of the following acts, taken on January 2, 1987, constitutes proper filing of the response?

a) Mailing the response to the PTO by first class mail, together with a request for a one month extension of the period for response and the necessary fee.

b) Mailing the response properly addressed to the Commissioner of Patents and Trademarks by first class mail, together with a certificate stating only that the response was deposited with the U.S. Postal Service.

c) Mailing the response properly addressed to the Commissioner of Patents and Trademarks by "Federal Express", together with a certificate stating the date of deposit with "Express Mail".

d) Depositing the response at 11:30 p.m. in the box at the guard's desk at the lobby of Building 3 of the PTO at Crystal Plaza, Arlington, Virginia.

e) (a) and (d) .


48. Which of the following statements concerning petitions to the Commissioner is false?

a) Petitions to the Commissioner may be accompanied by affidavits or declarations.

b) Before a petition is taken from a premature final rejection by an examiner in the ex parte prosecution of an application, it is necessary that there first have been a proper request for reconsideration and a repeated action by the examiner.

c) Oral hearings will not be granted in connection with petitions to the Commissioner except when considered necessary by the Commissioner.

d) Except as provided by the PTO rules, any petition to the Commissioner not filed within two months from the action complained of may be dismissed as untimely.


49. Which of the following is (are) true?

a) Proceedings in a patent application are terminated six months after the date of an Office action setting a shortened statutory period for response of three months if no action is taken by applicant to prosecute the application.

b) Proceedings in a patent application are terminated as of the date of an issue fee is due and not paid.

c) Proceedings in a patent application are terminated as of the expiration of the limited time period for copying claims suggested for interference purposes if no action is taken to copy the same, no other response is or was due, and not all claims in the application are unpatentable over the suggested claims.

d) (a) and (b) .

e) (a) and (c) .


50. If properly mailed using the PTO certificate of mailing procedures, which of the following would be considered timely filed?

a) A new patent application claiming priority of a foreign application filed one year earlier.

b) An amendment in response to an Office Action in a pending patent application.

c) An agreement, under 35 u.s.c. 135(c), between parties to an interference.

d) A paper in connection with a disciplinary proceeding under 37 CFR Part 10.



END OF MORNING SECTION OF EXAMINATION


!

l

Test Number Test. Series

014A 187

NAME

DEPARTMENT OF COMMERCE UNITED STATES PATENT AND TRADEMARK OFFICE

REGISTRATION EXAMINATION FOR PATENT ATTORNEYS AND AGENTS

April 7, 1987

Afternoon Section (100 Points) Time: 3 Hours

TO PASS THE AFTERNOON SECTION OF THE EXAMINATION, YOU MUST OBTAIN A SCORE OF AT LEAST 70 POINTS.

INSTRUCTIONS

When instructed, review this test booklet . You should have 13 pages including this page. You aust nuaber and initial the upper right corner of all pages of your answer blue book on which you will write your answers.

There are FOUR (4) essay questions. In answering each question, assume that you are a registered patent agent. Answer each question independently of the others, and assuae no facts carry froa one question to the other. The point value for each question is indicated at the beginning of each question. In Question 4, there are two options. You aust present an answer to either Option 1 or Option 2.

Where claims are drafted or amended, they aust conform to Patent and Trademark Office form. Points will be deducted for any clains written which are indefinite, add new salter, contain poor English gramaar or would be open to any other objection/rejection that would normally result in the course of patent examination. Points will also be deducted for failure to properly follow and employ all controlling statutory provisions and regulations as well as Patent and Tradeaark Office procedure. Citations of actual cases are not required . However, wrong citations will be basis for deduction of points. DO NOT ASSUME ADDITIONAL FACTS HOT FOUND IN THE QUESTIONS. Points will be deducted in essay answers for employing irrelevant or incorrect reasoning, failing to follow instructions, using poor English grammar, and failing to answer the questions posed.

This examination is open book in that you may use books, notes, or other written material that you believe will be of help to you, except for prior registration examinations and/or answers thereto. Books, notes and other written materials containing prior exaainalions and/or answers cannot be brought into or used in the roon where this examination is being administered.

DO NOT TURN THIS PAGE UNTIL YOU ARE INSTRUCTED TO CHECK THE CONTENTS OF THIS EXAMINATION BOOKLET

OR TO BEGIN THE EXAMINATION

Afternoon Section - Page 1

QUESTION 1 <20 Points)

Analyze the following six (6) claims which have words and phrases underlined. Each underlined portion is designated by a number in the right margin. The underlined portions may or may not represent instances wherein the claims fail to comply with U.S. patent law or accepted claim writing practice. For each number associated with an underlined section, write a short statement (no more than 3 sentences) pointing out the claim writing defect or defects, if any.

1. A clipboard comprising and consisting of: <1>

a board having a bottom side and a top side;

two slots through said board;

a U-shaped bracket having a bottom portion

attached to the bottom side of said board and

having two tab portions extending through said

slots and protruding out of the top side of

said board;

a clamping member pivotally connected to said

tab portions of said U-shaped bracket;

a spring member disposed between said clamping

member and said board or said U-shaped bracket <2>

for biasing the front edge of said clamping <3>

member to firmly hold said front edge against

said top side of said board, whereby when said <4>

clamping member is depressed, said clamping

member pivots on an axle extending through holes

in said two tab portions of said U-shaped bracket.


2.

3.

4.

A clipboard as claimed in claim 1 wherein said

clamping member is useful for holding writing

paper in place on said top side of said board.

A clipboard as claimed in claims 1 and 2 further

comprising a clamping member and two lugs to

pivotally connect said clamping member to said

tab portions of said U-shaped bracket.

A method of manufacturing a clipboard according

claim 1 which comprises the step of forging said

U-shaped bracket and stamping and forming said tab

portions.

<5>

<6>

<7>

5. An article comprising a clamping member pivotally <8>

connected to the upper surface of a board for

holding writing paper in place on said surface of

said board. Said article also comprising a spring

biased between said clamping member and said board to

firmly hold the writing paper in place between said

board and said clamping member.

6. An article comprising a board, an axle, a bracket, <9>

a clamping member, and a spring to firmly hold in

place any object.


QUESTIONS 2 AND 3

Instructions: The fact background below at pages 4-8 applies to Questions 2 and 3 which are at page 9. Some additional facts unique to a particular question will be stated in that question. Consider each of Questions 2 and 3 independently of the other. Do not assume any scientific information outside the factual pattern. Any and all such s c i en t i f i c i n f or m a t i on w i l I be f o u n d i n t he f a c t pa t tern . The fact pattern is purely hypothetical and is purely for purposes of this examination. You are to vigorously represent !ti /widco to the I imifs of advocacy, but you are to explicitly follow the instructions of your client, !tilwidco, while fully complying with the duty of disclosure under 37 CFR 1.56(a).

* * * *

FACT BACKGROUND

On April 2, 1987, you have been retained by the Milwaukee Widget Company <Milwidco). You have been asked to take over a patent application prepared "in house" by a now retired patent counsel. Milwidco, America's leading widget maker, has provided you with the following information about its new "second generation" widget technology.

Prior to inventor Robert Farnum's instant "second generation" coated widgets, Milwidco had marketed for several years an older coated widget product <the "first generation" product> comprising a widget coated with a polyhexathisnthat resin coating. Polyhexathisnthat is sold by Milwidco's coatings division as WID-COAT. The first generation coated widget is fully disclosed in Patent No. 3,959,313 to Roberts which issued on April 5, 1977. The first generation commercial widgets sold by Milwidco had a WID-COAT coating having a thickness of 0.4 mm. Such widgets enjoyed a practical, useful life of ten years.

Milwidco's "second generation" coating, invented by the R&D Director Robert Farnum, differs from the first generation coating in two respects . First, the resin coating is from about 0.05 to about 0.10 mm thick. Second, the resin is advantageously made of a mixture of polyhexathisnthat and platonic acid, in any proportion, provided there is at least 0.2 parts by weight platonic acid per part by weight of polyhexathisnthat. Platonic acid and polyhexathisnthat are chemically totally dissimilar. It has never before been suggested nor is there any teaching in the art that platonic acid could be used as a coating material or mixed with resinous coating compositions. Methods of making platonic


acid are disclosed in issued on February 7,

Patent No. 4,002,292 to Tanabe which 1978.

The "second generation" coated widget was offered for sale at a trade show in Seattle, Washington, on January 15, 1986. A sizeable inventory had been created prior to the trade show for immediate delivery, and several orders were actually placed at the trade show. The "second generation" widgets offered for sale were coated with a resin mixture comprising one part by weight platonic acid and one part by weight polyhexathisnthat. The coating thickness was 0.07 mm. Prior to January 15, 1986, there had been no commercialization of the second generation coating. All details about the second generation coating project had been kept in total secrecy until the trade show.

The industry magazine, American Widgets, in its February 1986 issue, published a detailed article by Robert Farnum explaining the entire composition of the "second generation" widget coating, including a detailed explanation of the exact chemical components, how they are made, and how the coating is produced. The article further disclosed the thickness of the coatings to be from about 0.05 to about 0.10 mm. Mr. Farnum's article was submitted to American Widgets on November 10, 1985. The February issue was mailed to subscribers in the United States on January 13, 1986. A copy of the February issue was received in the Scientific Library of the U.S. Patent and Trademark Office on January 21, 1986.

On January 10, 1987, Milwidco's retired patent counsel was approached for the first time about patent protection for Milwidco's "second generation" widget. He recognized the need for prompt filing of the patent application, and with time limitations was able to quickly file the following patent application in the U.S. Patent and Trademark Office on January 14, 1987:

GO TO PAGE 6


PATENT APPLICATION Of ROBERT FARNUM

COATED WIDGET

Background of the Invention

Widgets are known in the prior art which are coaled with 0.4 mm resin coaling of

polyhexalhisnthat (WID-COAT brand, Milwaukee Widget Company, Milwaukee, Wisconsin).

Such widgets were comaercially successful and are disclosed in Roberts, U.S. Patent

No. 3,959,313. The disclosure of Roberts shows the preparation of such a widget and

coaling with WID-COAT to a thickness of 0.4 aa. Methods of making platonic acid are

disclosed in U.S. Patent No. 4,002,292 to Tanabe.

Suaaary of the Invention

A widget is provided having a resin coaling to about 0.1 ma thickness, said resin

coaling coaprising a mixture of polyhexalhisnlhat and platonic acid.

Detailed Description of the Invention

The widget of the invention has a resin coating of about 0.1 mm thickness. The resin

coaling coaprises a sixlure of polyhexathisnthat and platonic acid. Preferably the

resin mixture has about one part by weight platonic acid and about one part by weight

polyhexalhisnlhat. The proportion is not critical provided that there is at least

0.2 parts by weight platonic acid per part by weight polyhexathisnthat.

Page 1


Exaaple I

A commercial widget identical to the one disclosed in Example 1 of Roberts !U.S.

Patent No. 3,959,313! is used as the staling aalerial. A resin aixture is prepared

containing one part by weight platonic acid and one part by weight polyhexathisnthat.

Following the identical technique of Exa1ple 2 of Roberts, this resin 1ixlure is

applied to the widget to yield a resin coating having a thickness of 0.07 ~

WHAT IS CLAIMED IS:

1. A widget having a resin coating of up to 0.1 11 thickness, said resin coating

comprising a 1ixlure of polyhexathisnthat and platonic acid.

2. A widget of claim 1 wherein said 1ixture coaprises about one part by weight

platonic acid and about one part by weight polyhexathisnthat.

ABSTRACT OF THE DISCLOSURE

* * *

[End of Patent Application)

Page 2


In the case file that you received from Milwidco, there is the following memorandum from the retired patent counsel to the president of Milwidco:

HEMORANDUH

Date: Harch 2, 1987

To : U. R. Boss President

From: Wilsoon Begone Patent Counsel

Subj: Patent Protection for 0.2 mm Coated Widgets

In our meeting on February 17, 1987, you expressed your fears that Acme Coating Co. will be able to make a 0.2 mm thick embodiment and avoid any patent which might issue from our pending Farnun patent application. On February 25, 1987, a widget with a 0.2 mm thick coating of polyhexathisnthat and platonic acid was prepared and compared to the widget prepared in accordance with Example I of the Farnum patent application. Except for the difference in the coating thickness, the 0.2 mm coated widget had the same properties as the 0.07 aa coated widget. The 0.2 mm thick coating is novel and not disclosed in the prior art.

The following is a draft for an Example II that would be added to the Farnum case by means of filing a continuation-in-part application:

"following exactly the procedure of Example I, a resin coaling is made differing only by having a coating thickness of 0.2 nm. Identical results are achieved as in Example I, including how the resin mixture is made, how it is applied to the widget, and how the widget appears, works, and every other property."

Example II would be an excellent example for a continuation-in-part application.

I recommend that we abandon Farnum's pending application and file a continuation-inpart application including Example II. I propose replacing the original claims with the following new claims in the continuation-in-part application:

1. A widget having a resin coating of from about 0.05 to 1 mm thickness, said resin coating coaprising a mixture of platonic acid and polyhexathisnthat.

2. A widget of claim 1 wherein said resin coaling is about 0.2 mn thick.

3. A widget of claim 2 wherein said mixture comprises about one part by weight platonic acid and about one part by weight polyhexathisnlhat.

It is imperative to Milwidco management to obtain a patent that will effectively provide protection against infringers using a 0.2 rom thick coating.


QUESTION 2 (20 Points>

You are considering the filing of a continuation-in-part application which would include Example II and the claims proposed in the March 2, 1987 memorandum. Will the new claims meet the management objectives, i.e. to obtain a patent that will effectively protect the "second generation" coated widget with the 0.2 mm thick coating? Answer this question YES or NO. If your answer is YES, explain why the proposed new claims provide better protection than claims 1 and 2 of the original case filed January 14, 1987. If your answer is NO, explain why the filing of the continuation-inpart application will not meet the management objectives.

QUESTION 3 (40 Points>

The examiner has issued a first Office action in the application filed January 14, 1987 . The action includes the following rejections:

Claim 1 is rejected under 35 U.S.C. 112 for failing lo particularly point out and distinctly claia the subject aatter which the applicant regards as his invention. It is noted that the specification at page I, lines 17 and 18, states that: "The proportion is not critical provided that there is al least 0.2 parts by weight platonic acid per part by weight polyhexalhisnthat." The claias do not recite this limitation, and hence, fail to particularly point out and distinctly claia the invention.

Claims 1 and 2 are rejected under 35 U.S.C. 102(bl as anticipated by an article by the inventor, Robert Farnum, published in the February 1986 issue of American Widgets. The copy of the article enclosed with this action was made from the February issue located in the PTO Scientific Library.

Claias 1 and 2 are rejected under 35 U.S.C . 103 as obvious over Roberts in view of Tanabe. The Roberts patent discloses that it is known in the art to make widgets coated with a 0.4 a1 thick polyhexathisnthat coating. In addition, the Tanabe patent discloses that platonic acid is an old coapound. It would be within the skill of the art to aerely incorporate the known platonic acid into the otherwise known polyhexathisnthat coaling of Roberts.

Your client, Milwidco, has instructed you to obtain the earliest possible allowance and to acquiesce to the examiner's position on the 35 U.S . C. 112 rejection. You are also instructed to amend the claims to obtain protection against infringers using the 0.2 mm thick coating. Prepare a complete response to the Office action including the amendment to meet the client's objectives. Assume that the response is filed within three months of the Examiner's action. Your answer need not include formal headings or other prefatory information and the closing salutation.


QUESTION 4 <20 Points>

This question consists of two optional problems. You must select one of the options. Option 1 at pages 10 and 11 is directed to a jack. Option 2 at pages 12 and 13 is concerned with a glass cleaning composition. Do not present an answer to both options inasmuch as only the first option answered will be graded.

OPTION 1: Write a single claim to a jack describing the preferred embodiment as shown in Figures 1 and 2 below and described on page 11. For purposes of this examination, the claim must include and relate at least all of the following elements: tongue member, sleeve, elongated frame, ratchet mechanism, guide collar, threaded nut, threaded shaft having a rounded end and a square end, and support plate having a cup.

I

r--~

/


DESCRIPTION OF THE PREFERRED EKBODIHENT OF OPTIOM l

A generally rectangular bracket 10 is suitably secured to the underside of a trailer T, shown in the phantoa lines. The rectangular bracket includes a top side 12 and a bottoa side 14. As is best shown in FIG. 2, the bottoa side 14 is of a width saaller than the top side 12 so that a recess 16 is foraed. The top and bottom sides fora a slot 18.

A tongue member 20 or the like is insertable within the slot and is secured as by welding to a sleeve 21. An angle brace 22 is welded to the sleeve and to the underside of the tongue about one-third of the distance along the length of the tongue. The tongue aeaber is rectangular in shape. As is best shown in FIG. 2 the tongue member is inserted into the slot 18 with the brace 22 abutting against the lower side of the bracket. In this manner the weight of the trailer T is applied priaarily on the brace 22 and reduces the cantilever load on the tongue aeaber.

The sleeve 21 is generally tubular in shape and is adjustably aounted on an elongated frame 28. Any fora of adjustment aechanism eay be used to position the sleeve on the elongated frame. Preferably the aechanism is similar to a ratchet aechanism used on a conventional autoaobile bumper jack. For this purpose the elongated frame is provided with a series of vertical corrugations or teeth 30 vhich are engaged in a conventional manner by a ratchet 31. By pivoting the ratchet 31, the sleeve aay be raised or lowered along the elongated fraae

The elongated frame 28 is also supported for a fine adjustaent. For this purpose a nut 32 is welded to the botto~ of the frame and a guide collar 34 is welded to the top. A threaded shaft 36 is slidably supported in the guide collar and threads through the nut 32. The base of the threaded shaft is rounded and rests in an upturned cup 38 integrally foraed on a support plate 40. As is best shown in FIG. 2, the outer edge of the support plate is downturned to fora a lip 42. The lip will dig into the ground so that the support plate is self-anchoring. The universal-type connection between -the rounded end of the threaded shaft 30 and the cup 38 provides a self-leveling feature for the jack. The upper end of the threaded shaft 36 is provided with a square head 44 which may be suitably turned by a wrench or ratchet.

In operation, the trailer is brought to rest at the desired location and disconnected from the vehicle. The tongue 20 is inserted in a bracket 10 at one of the corners of the trailer. The sleeve 26 is then adjusted along the elongated fraae 28 until the rounded end of the shaft 36 rests in the cup 38 or is just above the cup 38. The shaft is then rotated with the use of the wrench or ratchet to elevate the corner of the trailer to approximately the desired height.

The procedure is then repeated for each of the three reaaining corners of the trailer until all four corners are supported on the jacks. It is then a simple procedure to raise or lower each corner of the trailer by rotating the threaded shaft of each jack until the desired level is obtained. When it is time to move the trailer, the reverse procedures are followed. That is, the threaded shafts 36 are rotated lowering the elongated frame until the tongue aeaber is loose in the bracket. The jack aay then be removed froa the trailer.


OPTION 2: Write a single claim to a glass cleaning composition describing the most preferred embodiment for the glass cleaning composition set forth below.

DESCRIPTION OF PREFERRED EMBODIMENT OF OPTION 2

The present invention is directed to an acidic composition for use in cleaning glassware, such as laboratory glassware used for conducting experiaents. The acidic glass cleaning composition of the invention has a pH value of less than about 1 and yet is substantially inert to human skin and clothing. Broadly, the acidic glass cleaning coaposition coaprises from about 1 to about 15 weight percent hydrofluoric acid and froa about 85 to about 99 weight percent of an aqueous acidic constituent. The aqueous acidic constituent, which also has a pH value of less than about 1, is prepared by a series of steps using selected inorganic and organic acids.

The exact chemical coaposition of the aqueous acidic constituent of the glass cleaning composition is not known. However, one theory is that during the mixing of the acid components employed in the foraation of the aqueous acidic constituent of the acidic glass cleaning coaposition, a high concentration of hydrogen ions (H+l are released into and reaain present in the aqueous acidic constituent. Thus, when hydrofluoric acid is admixed with the aqueous acidic constituent in specified amounts, the high concentration of hydrogen ions present in the aqueous acidic constituent prohibits the release of hydrogen ions from the hydrofluoric acid aolecule so that the resulting acidic glass cleaning composition is substantially inert to both human skin and clothing and does not become active until the acid molecules of the glass cleaning coaposition can release their hydrogen atoas by contact with deposits, residues, and iapurities on the surface of the glassware being cleaned.

The initial step is the preparation of the aqueous acidic constituent coaprises mixing from about 20 to about 30 weight percent hydrochloric acid with froa about 16 to about 26 weight percent phosphoric acid. It is essential that hydrochloric acid and phosphoric acid be thoroughly Dixed so as to provide a substantially hoaogeneous acidic aixture. The time required to provide the homogeneous aixture will vary and will depend on the rate of addition of the two acidic components, the amounts of the acids eaployed, and the rate of agitation .

The homogeneous acidic aixture foraed from hydrochloric acid and phosphoric acid is then mixed with an effective amount of water to produce an aqueous acidic aixture. The amount of water eaployed is an amount sufficient to provide from about 36 to about 62 weight percent water in the aqueous acidic aixture. The mixture is thoroughly stirred to insure substantially complete dispersion of the homogeneous acidic aixture in the water and to provide a substantially unifora aqueous acidic aixture. While aaintaining agitation of the aqueous acidic mixture, from about 5 to about 11 weight percent of a hydroxy carboxylic acid and from about 3 to about 7 weight percent of a dicarboxylic acid are aixed with the aqueous acidic mixture to produce the aqueous acidic constituent having a pH value of less than 1.

The aaount of each of the constituents employed in the production of the aqueous acidic constituent can vary within the ranges set forth above. However, it is aost preferred that the water, hydroxy carboxylic acid and dicarboxylic acid be incorporated into the acidic mixture of hydrochloric acid and phosphoric acid to provide the aqueous acidic constituent with from about 30 to about 50 weight percent water.

Any suitable hydroxy carboxylic acid can be employed in the preparation of the aqueous acidic constituent of the acidic glass cleaning composition. Typical of such hydroxy carboxylic acids are citric acid, tartaric acid, maleic acid, and the like. However, it is most preferred to eaploy about 7 to 9 weight percent of citric acid.


Siailarly, any suilable dicarboxylic acid can be employed in the preparation of the aqueous acidic constituent of the acidic glass cleaning coaposition. Typical of such dicarboxylic acids are oxalic acid, malonic acid, succinic acid, glutaric acid, and adipic acid. However, the most preferred dicarboxylic acid employed in the foraulation is oxalic acid. It is most preferred to mix 4 weight percent of oxalic acid to the aqueous acidic mixture.

The aqueous acidic constituent produced as set forth above is an essential ingredient in the formulation of the acidic glass cleaning composition of the present invention. In the preparation of the acidic glass cleaning composition froa about 1 to about 15 weight percent hydrofluoric acid is mixed with the aqueous acidic constituent until a substantially uniform aixture is obtained. Preferably, the aqueous acidic constituent is maintained under continuous agitation during the aixing of the hydrofluoric acid so that the resulting acidic glass cleaning composition is a substantially homogeneous solution.

The lime required to thoroughly mix the hydrofluoric acid with the aqueous acidic constituent to form the acidic glass cleaning composition will depend on the rate of addition of the hydrofluoric acid, the amount of hydrofluoric acid employed in the formulation, and the rate of agitation of the aqueous acidic constituent during the addition of the hydrofluoric acid.


Test Number 014 Test Series 187 NAAE ... - law.uh.edu

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