Test Number 014

Test Series 196 NAME ----------------------

U.S. DEPARTMENT COMMERCE UNITED STATES PATENT AND OFFICE

REGISTRATION EXAMINATION FOR PATENT ATTORNEYS AND AGENTS

Au gust 28, 1996

I\tlorning Section (1 00 Points) Time: 3 Hours

DIRECTIONS

This section of the exam inmion is an open book examination. You may usc books, notes, or Olher written materials that you believe will be of help to you except you may not usc prior registration examination questions and/or answers. Books, notes or other writ­ten materials containing prior rcgisiiation examination questions and/or answers cannot be brought into or used in the room where this examination is being administered. If you have such materials, you must give them to the test administrator before this section of the examination begins.

AJI questions must be answered in SECTION 1 of the Answer Sheet which is provided to you by the testadminisiiator. You must usc 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. Erase completely aJI marks except your answer. Stray marks may be counted as answers. No points will be awarded for incorrect answers or unanswered questions. Questions answered by darkening more than one circle wilJ be considered as being incorrectly answered.

This section of the examination consists of fifty (50) multiple choice questions, each worth two (2) poims. Do not assume any additional facts not presented in the questions. When answering each question, unless otherwise stated, assume that you are a registered patent practitioner. Any reference to a practitioner is a reference to a registered patent practitioner. The most correct answer is the policy, pructicc, and procedure which must, shall, or should be followed in accordance with the U.S. patent statutes, the PTO rules of practice and procedure, the Manual of Patent Examining Procedure (MPEP), and the Patent Cooperation Treaty (PCT) articles and rules, unless modified by a subsequent court decision or a notice in the OfficiaL Gazette. There is only one most correct answer for each question. Where choices (A) through (D) are correct and choice (E) is "All of the above", the last choice (E) will be the most correct answer. Where a question includes a statement with one or more blanks or ends with a colon, select the answer from the choices given to complete the statement which would make the statement true. Unless otherwise explicitly stated, all references to patents or applications are to be understood as being U.S. patents or regular (non-provisional) utility applications for utility inventions only, as opposed to plant or design applications for plant or design inventions. Where the terms "USPTO", "PTO" or "Office" arc used in this examination, they mean the U.S. Patent and Trademark Office.

You may write anywhere on this examination booklet. However, do not remove any pages from the booklet. Only answers recorded in SECTION 1 of your Answer Sheet will be graded. YOU MUST SCORE ATLEAST70 POINTS TO PASS THIS SECTION OF THE REGISTRATION EXAMINATION.

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

1. V, a registered practitioner, previously worked as a patent examiner for the PTO examining bread makers. Years after leaving employment as an examiner, J, a noted patent litigator, approached V and asked V to serve as an expert witness in a patent infringement case involving a patent on a bread maker. J also indicated that ifV did not want to serve as an expert witness at trial, then J would gladly hire V as a consultant for trial preparation purposes and that V would not have to testify at trial. While employed at the PTO, V was the examiner who examined and allowed the application that matured into the patent-in-suit. In addition to V' s full-time patent practice, V is a noted expert in the bread maker art, who often gave speeches concerning the bread making art ~d who wrote a weekly syndicated column on home bread making. V also served as a consultant to a number of multinational appliance manufacturers. V, flattered by J' s interest, told J that V would consider the offer. V should:

(A) Accept the offer to serve as an expert witness because 37 CFR § 10.10 only prohibits a former PTO employee from prosecuting patents.

(B) Accept the offer to serve as an expert witness because the PTO has no interest in a "former" employee. ·

(C) Accept the offer to serve as an expert witness because Vis a known expert in the field.

(D) Decline all.offers because 37 CFR § 10.111 prohibits former public employees from working on matters in which the employee had a personal responsibility.

(E) Decline the offer to serve as an expert witness, but accept the offer to work as a non-witness consultant because an undisclosed consultation would not violate any PTO rule.

2. J, a patent practitioner, submitted a patent application to the PTO listing two inventors, A and D. The original application contained 10 claims. The first office action rejected all ten claims under 35 U.S.C. § 103. J then submitted an amendment canceling claims 5 and 6 and adding claims 11 and 12. Before the amendment was acted on by the examiner, J discovered that in the original application, A was a co-inventor only in claims 5 and 6. D was the sole inventor of the remaining claims. For the two claims submitted with the amendment, D was the sole inventor of claims 11 and 12. What should J do to rectify any inventorship questions?

(A) Nothing, because the inventorship question does not affect the validity of the patent and is mainly concerned with ownership rights which implicates state law, not Title 3 5. Therefore, the PTO does not allow applicants to correct errors in naming inventors.

(B) File a petition and amendment with fee requesting deletion of A as an inventor. (C) Abandon the application and file a continuation application listing only A as the

inventor.

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(D) Send the PTO a petition with the appropriate fee, after receiving a notice of allowance, explaining the problem and asking the PTO to correc~ the clerical error in the application.

(E) Abandon the application and file a continuation application listing only D as the inventor.

3. With regard to her application for a U.S. patent, your client wishes the benefit of the date she filed a patent application for the same invention in another country which affords similar privileges in the case of applications filed in the U.S. Which of the following is the latest you can file a certified copy of the foreign patent application and perfect her claim for foreign priority during the pendency of her application?

(A) At the time of filing her application in this country. (B) Within six months after filing an application in this country. (C) Before the patent is granted, with a petition and fee, if after paying a patent issue

fee. (D) Prior to paying any patent issue fee. (E) In a reissue application.

4. Which of the following is not a small entity entitled to certain fee reductions?

(A) A nonprofit organization. (B) A ·small business concern. (C) An independent inventor. (D) An institution of higher education. (E) A government agency.

5. After one of your client's claims has been allowed, another stands rejected for double patenting because it is a substantial duplicate of the allowed claim, and you and your client agree that it is a substantial duplicate. Which of the following could NOT overcome the rejection?

(A) Canceling the rejected claim to permit issuance of the allowed claim. (B) Canceling the allowed claim to obviate the rejection. (C) Filing a divisional application that includes the rejected claim. (D) Amending the allowed claim consistent with the specification. (E) Amending the rejected claim consistent with the specification.

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6. On March 20, 1992, A invented an environmentally friendly and disposable grocery cart. He filed a continuation-in-part application on December 14, 1995,. that claimed benefit of an earlier copending patent application filed on May 14, 1992, now abandoned. The claims in the December 14, 1995, application are sufficiently supported by the earlier filed application. The examiner rejected the claims in the CIP application citing three references. The first reference was a newspaper article from a small town in Northern Idaho about A on April4, 1993, that discussed his plans and efforts to commercially develop the disposable grocery cart for use in urban settings. The examiner stated that the article anticipated the invention under 35 U.S. C. § 1 02 because it was printed one year prior to the application date. The two other references were U.S. Patents issued in 1988. Patent #1 disclosed, but did not claim, a grocery cart with inflatable tires for use on roads. Patent #2 disclosed a disposable and environmentally friendly snow sled. Concerning these two patents, the examiner stated the invention was obvious under 35 U.S. C. § 1 03 because the two patents, when viewed together, taught all the features on the claimed invention. You are the patent practitioner prosecuting this application and you are preparing a response to the rejection. Your best course of action is to:

(A) ·Petition the Commissioner under 37 CFR § 1.18l(a)(3) stating that the examiner improperly relied on an obscure newspaper that is not widely available to many people and that Patent # 1 did not claim the technology upon which the examiner based the rejection.

(B) Submit an amendment that avoids the cited references and a statutory disclaimer. (C) Submit a response to the examiner arguing that the claims are patentably distinct

from the cited patent references and arguing the newspaper article is not prior art. (D) Submit an affidavit under 3 7 CFR § 1.131 showing that A's invention predates

the April 4, 1993, newspaper article and an affidavit under 3 7 CFR § 1.132 showing that the two cited patents do not teach all that is claimed by applicant.

(E) Submit an affidavit under 37 CFR § 1.131 showing that A's invention predates th~ April 4, 1993, newspaper article.

7. You have filed a patent application on behalf of John Q. Inventor on January 15, 1994. You receive an office action from the examiner. The claims have been rejected under 35 U.S.C. § 103 in light of a U.S: patent. Your client informs you that the examiner cannot possibly be correct, because he clearly was the sole inventor and the first to conceive of the idea and reduce it to practice in the U.S. in February 1993. The U.S. patent had an effective filing date of April13, 1993, but was based on a foreign filing date of January 2, 1993. What should you do?

(A) Tell your client that there is nothing he can do except to amend the claims. (B) File an antedating affidavit by John Q. establishing reduction to practice prior to

Aprill3, 1993. (C) File an affidavit by a co-worker establishing that John Q. conceived the idea back

in September 1992. (D) Refer the examiner to the disclosure document your client filed at the Sunnyvale

Center for Innovation, Inventions and Ideas on October 12, 1991. (E) Request an interference be declared.

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8. Examiner Conner sent a first office rejection on August 14, 1994, giving a shortened statutory time limit of three months. The five claims in the application were rejected under 35 U.S~C. § 112 and under 35 U.S.C. § 103. On November 1, 1994, the applicant submitted a response that added an additional five claims and addressed the § 103 rejection, but failed to address the § 112 · rejection. On November 23, 1994, the Office sent a n·otice to applicant stating that the November 1, 1994, response was nonresponsive to the August 14, 1994 Office action. In the November 23, 1994, letter the Office gave applicant 1 month to correct the deficiency in the November 1, 1994, response. Assuming that applicant never responded to the Office's last notice, the application became abandoned on which date?

(A) November 15, 1994. (B) November 14, 1994. (C) December 24, 1994. (D) February 14, 1995. (E) February 15, 1995.

9. Subsequent to receiving a Notice of Allowance, and prior to paying the issue fee, applicant explained to a practitioner that two additional claims should be included in the patent application. The practitioner immediately prepared an amendment to add the claims to the patent application before the issue fee is paid. Which of the following are true:

I. Practitioner may have the amendment entered as a matter of right. II. Practitioner must file a petition showing good and sufficient reasons why

the amendment is necessary, III. Practitioner must point out that the new claims are patentably novel.

(A) I. (B) II. (C) III. (D) II 6C III. (E) None of the above.

10. In all cases, a petition to revive .an abandoned patent application must be accompanied by all of the following except:

(A) A proposed response or a continuation application unless one has already been filed.

(B) A statement or showing regarding the delay in prosecution. (C) The appropriate petition fee. (D) A terminal disclaimer. (E) None of the above must be included in all cases.

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11. On March 1, 1996, applicant received an Office action containing a final rejection of the three remaining claims in the application. The examiner gave the applicant six months to respond to the Office action. On May 1, 1996, the applicant submitted a notice of appeal to the Board of Patent Appeals.and Interferences. When is applicant's appeal brief due?

(A) Two months from the final Office action. (B) Two months from the notice of appeal. (C) Five months from the final Office action. (D) Six months from the final Office action. (E) Sixty days from the notice of appeal.

12. Hand F, Austrian scientists employed by the U.S. based pharmaceutical company StrongS tuff, Inc., have invented a new class of anabolic steroids at their laboratory in Austria. StrongS tuff, Inc. filed a U.S. patent application on January 2, 1996, which claims the new steroids. On J?ebruary 1, 1996, StrongS tuff received the u.·s. filing receipt, which said nothing about the grarit of a foreign filing license. On May 1, 1996, StrongS tuff, Inc. filed patent applications in Japan and Europe claiming priority to the U.S. application. On July 1, the CEO of StrongS tuff, Inc. comes to see you. He is concerned because he had just heard about a U.S. statute that requires applications to obtain a foreign filing license before filing patent applications outside the United States. What advice should you give him?

(A) Refile the applications in Japan and Europe. (B) File a petition for a retroactive foreign filing license that includes: (1) a listing

each of the foreign countries in which the unlicensed patent application material was filed; (2) the dates on which the material was filed in each country; (3) a verified statement stating: that the subject matter in question was not under a secrecy order at the time it was filed abroad; that it is not currently under a secrecy order; that the license has been diligently sought after discovery of the proscribed foreign filing; and an explanation of why the material was filed abroad through error and without deceptive intent without the required license; and ( 4) the required fee.

(C) Do nothing since the invention was made in Austria, not the United States, and therefore no foreign filing license is required.

(D) Send a letter to the application branch requesting that the filing receipt be corrected to show the granting of a foreign filing license.

(E) Advise him to file a statement in the PTO that the application has a potential violation of35 U.S.C. § 184.

13. Bill, Mike and Jake invented a new beer cap remover and retained practitioner P to prepare and file a patent application thereon. The application was prepared and filed in the PTO and included a power of attorney naming P as the attorney. Six 11?-onths after the application was filed, P and Jake have a disagreement about strategy and Jake decides he needs a new attorney. Bill and Mike, however, feel that P is doing a great job and that there is no need to change the

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power of attorney. Jake comes to you and requests that you take over prosecution of the application. He wants to revoke P' s power of attorney and have you prosecute the patent application for him. He informs you that Mike and Bill won't agree to revoke the power of attorney; What is the best way for you to proceed on J's behalf to revoke P's power of attorney?

(A) File a revocation of P' s power of attorney in the application signed by Jake. (B) File a revocation and a petition pursuant to 37 CFR § 1.182 setting forth a good

and sufficient reason why the revocation of the power of attorney signed by Jake should be accepted, including the appropriate fee.

(C) File a new power of attorney naming you as attorney and signed by Jake. (D) File a revocation of the power of attorney and a new power of attorney signed by

Jake, with Mike and Bill's signatures signed by you, including the appropriate fee. (E) File a document wherein P grants you an associate power of attorney to prosecute

the application.

14. On Tuesday, August 30, 1994, a chef who had been developing an automatic kitchen pot­stirring device became aware of a magazine article published on February 28, 1993. The article disclosed a pot stirring-device that was not as good as the chefs invention. The chef rushed to the U.S. Patent and Trademark Office and filed a patent application with a filing date of August 31, 1994. The chef also filed a counterpart patent application in a foreign patent office on March 1, 1995. On Monday, April3, 1995, the foreign patent office cited the 1993 magazine article in a communication in the counterpart foreign application.

On Monday, May 1, 1995, the examiner in the PTO issued an Office action containing only a restriction requirement. On Monday, July 3, 1995, the chef filed an election with traverse in opposition to the PTO restriction requirement. No PTO Office action treated the patentability of the chefs claims before Tuesday, August 1, 1995. On August 1, 1995, the PTO issued an Office action withdrawing the restriction requirement and including a Notice of Allowance. On Friday, September 1, 1995, the chef paid the issue fee. On Tuesday, October 2, 1995, a U.S. patent issued to the chef. Sometime in 1995, the chef prepared a package containing:

an information disclosure statement fully disclosing the 1993 magazine article; a petition requesting consideration of the 1993 magazine article; a petition for extension of time, citing Rule 136; no certification; and no fee.

What was the last day that the chef could have filed the package in the PTO and definitely be entitled to consideration of the 1993 magazine article in the U.S. application filed on August 31, 1994?

(A) May 1, 1995. (B) June 1, 1995. (C) July 3, 1995. (D) July31, 1995. (E) August31, 1995.

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15. You are a patent agent, and work in-house for a corporation. One of the corporation's employees, L. G., has invented a one-piece bracket for separating items while drying. You drafted a patent application for L.G. and instructed an outside attorney, F.D., to file it in the PTO. The application contains claims 1, 2, and 3. F .D. filed the application, and you will be supervising F.D. 's work in prosecuting the application. L.G. has an obl~gation to assjgn the application to the corporation.

L.G. told you that a two-piece bracket ·was publicly used at a trade show more than one year before the filing date. The two-piece bracket is material to the patentability of claim 2 only. At a company picnic, another employee, L.M., comes to you and credibly claims that L.G. stole the idea for the invention of claim 3 from L.M.

Which one of the following actions satisfies your duty of disclosure?

(A) Ensure that F.D. cancels claim 2, and instruct F.D. to provide to the PTO the ·'information about L.M.

(B) Provide to the PTO the information about L.M. (C) Instruct F.D. to provide to the PTO the information about the two-piece bracket. (D) Do nothing. (E) Provide to the PTO the information on the two-piece bracket after L.M. quits the

company.

16. You represent a number of different inventors. In which of the following applications should you not file a petition for special status for examination purposes?

(A) An application filed by a sole inventor who is 72 years old. (B) An application for an invention that materially enhances the quality of the

environment. (C) An application for an invention that involves superconductivity technologies. (D) An application for an invention that involves semiconductor technologies. (E) An application for an invention that involves the treatment of HIV I AIDS or

cancer.

17. You mailed a response to a first Office action on the merits to the PTO on April 18, 1996. The response is received in the PTO on May 9, 1996. On May 10, 1996, you discover a typographical error in one of your claims and mail a supplemental amendment correcting the error to the PTO. The supplemental amendment is received in the PTO on May 20, 1996. On that same day, May 20, 1996, the examiner mails a Notice of Allowance in the case. On May 31, 1996, the examiner receives the supplemental amendment. The amendment:

(A) Will be entered as a matter of right because the amendment was mailed before the examiner mailed the Notice of Allowance.

(B) Will not be entered as a matter of right.

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(C) Will not be entered as a matter of right because the amendment was received by the examiner after the examiner mailed the Notice of Allowance.

(D) Will not be entered as a matter of right because the amendment was received in the PTO on the same day that the examiner mailed the Notice of Allowance.

(E) Will usually be responded to by way of a supplemental action.

18. You filed in the PTO a patent application on November 20, 1995. The application claims a new pharmaceutical compound and a method of using the pharmaceutical compound to treat hypertension. On January 31, 1996, you received a restriction requirement from the examiner requesting election between the following groups of claims: group (I), directed to the product; and group (II) directed to the method of use. Which of the following is not a proper response to the restriction requirement?

(A) You file a written response traversing the restriction requirement and setting forth specific reasons why you believe the restriction requirement is improper.

(B) You file a written response electing group I for prosecution on the merits, without traverse of the restriction requirement.

(C) You file a written response provisionally electing group I, with traverse and set forth the reasons why you believe the restriction requirement is improper.

(D) You file a written response electing group I for prosecution on the merits and an amendment canceling the method claims of group II.

(E) You file an amendment canceling the product claims of group I.

19. Your client Sam, a U.S. resident, invented the Wigerator, a new device for the manufacture of toupee's. On May 10, 1995, Sam secretly went to Cleveland, Ohio and sold four of his Wigerators to Ted's Big Hair, Inc., a Canadian manufacturer of toupees. No restriction was placed on the use of the machines. On July 5, 1995, Ted started using the Wigerators in his Mexico factory to manufacture his revolutionary new Shag 2000 hairpiece. In order to boost the sales of his new line, Ted has widely publicized in Mexico, Cana~ and the U.S. both the Shag 2000 and the Wigerator. On June 1, 1996, Sam came to your office seeking advice about patenting his machine. Which of the following is the most correct advice?

(A) Sam is not barred from obtaining a U.S. patent on the Wigerator because the Wigerator was not publicly sold more than one year before today' s date.

(B) Sam is barred from obtaining a U.S. patent on the Wigerator because the Wigerators were sold more than one year before the present date.

(C) Sam is not barred from obtaining a U.S. patent on his device because the Wigerator was not publicly used more than one year before today' s date.

(D) Sam is barred from applying for a patent on the Wigerator because Ted now owns the Wigerator.

(E) None of the above.

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20. In July 1996, a recently registered patent agent, who is not a lawyer, asked a registered patent attorney to help the agent establish a practice. Which one of the following choices best comports with the professional responsibilities of both the agent and the attorney?

(A) The agent advertises as a registered practitioner authorized to practice before the Office in patent and trademark cases, and the attorney supervises all the trademark work done by the agent.

(B) The agent advertises on television and radio as a registered patent agent and accepts patent cases on a contingent fee basis.

(C) The attorney has the agent prosecute trademark applications before the Office and the attorney signs all the papers submitted to the Office without reading the papers.

(D) The attorney and agent enter a partnership agreement that has no health or retirement benefits and that specifies that after termination of the partnership, the agent and the attorney will not practice in each other's neighborhoods or accept

-··each other's established clients. · (E) · Without receiving anything of value from the agent, the attorney refers patent

application clients to the agent, the agent informs the clients that the agent is a registered patent attorney, and the agent competently represents clients in patent cases.

21. The existence of a particular U.S. patent application becomes apparent due to the publication of its foreign counterpart. The application could greatly affect a domestic industry that is at a critical juncture. Public concern, as well as private concern among potential domestic licensees runs high, with the following individuals wanting to know how the prosecution of the application is proceeding. The individuals obtain the following powers and access:

U obtains a power to inspect from the applican~ having no time limit. V gets a power to inspect from the Attorney of Record having no time limit. W acquires a power to inspect from the Assignee of Record having no time limit. X, an attorney with the Security and Exchange Commission, acquires a power to inspect from the Assignee of Record having no time limit. Y has a petition for access granted by the Commissioner having no time limit.

U, V, W, X, & Y inspect the file. Eighteen months later, no patent has issued. In the interim, U, V, W, X, & Y come back to the PTO to inspect the file for a second time. Which party will not be permitted to inspect the application?

(A) U (B) V (C) W (D) X (E) y

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22. E gives a sole power of attorney to Practioner to draft and prosecute an application for an improved powerwidget. E received a first Office action, mailed March 30, 1996, with a shortened statutory response period of three months. On July 30, Practitioner finds that his law firm can no longer represent E on this matter and must withdraw. In addition to contacting the applicant, Practitioner should:

(A) File a request for withdrawal and request that the Commissioner approve his request to withdraw him from the case.

(B) File a request for withdrawal and ask that the application be immediately forwarded to Office of Petitions for prompt action on his request for withdrawal and pay a one month extension fee.

(C) File a request for withdrawal and ask that the application be immediately forwarded to Office of Petitions for prompt action on the request for withdrawal, have all attorneys in the firm request permission to withdrawal, and pay a one month extension fee.

(D) File a request 'for withdrawal and ask that the application be immediately forwarded to Office of Petitions for prompt action on his request for withdrawal and pay the fee extension for two months because withdrawal will not be approved unless 3 0 days remain in the set response period.

(E) File a request for withdrawal and ask that the application be immediately forwarded to Office of Petitions for prompt action on his request for withdrawal.

23. Attorney receives a patent application written in the Japanese language on May 3, 1996, from applicant. The applicant, A W, a citizen and resident of Japan, indicates that she offered the invention for sale in U.S. Virgin Islands on May 4, 1995. She also published an article describing the invention on May 30, 1995. She is concerned about loss ofU.S. rights and wants you to protect those rights. To protect and preserve your client's rights, you should:

(A) File the patent application in the Japanese language in the Office on May 30, 1996.

(B) Request a certified translation from the Translations Branch of the Scientific and Technical Information Center (STIC) and include the appropriate fee under 37 CFR § 1.17(k). .

(C) Add any necessary fees and the Oath, and file the patent application in the Japanese language at the PTO and follow up with a continuation application as soon as a translation is available.

(D) File the patent application in the Japanese language in the U.S. Receiving Office on May 4, 1996, under the Patent Cooperation Treaty and follow up with a U.S. National Stage application claiming it as priority.-

(E) File the patent application in the Japanese language in-the Office on May 3, 1996.

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24. Scotty lives and works in a non-NAFTA country. He files an original U.S. patent application for machinable transparent aluminum on January 4, 1995. On January 4, 1996, he files a first Continuation-in-Part patent application (CIP) for a transparent aluminum widget. A preliminary amendment is filed with the CIP that adds a claim to a nuclear transparent aluminum widget. Scotty's Oath contains all of the necessary materials but includes a declaration that he has reviewed and understands the contents of the specification, including any claims, as amended by the preliminary amendment. The first CIP claims benefit of the original U.S. patent application. The original patent application had no information regarding the manufacture and use of widgets. The specification for the first CIP contained no information on the manufacture and use of nuclear widgets. On March 27, 1996, Scotty files a second CIP with a specification that describes both the nuclear transparent aluminum widgets found in the preliminary amendment and an improved version of that nuclear transparent aluminum widget, the hyperwidget. Scotty's Oath follows 37 CFR § 1.63 to the letter. The second CIP claims benefit of the first CIP and original patent applications. Widgets were "well known and a matter of common knowledge" to every engineer of any skill in the widget art at least as early as 1995. Nuclear widge~s became "well known and a matter of common knowledge" at lea.St as early as January 1996. Moreover, any skilled engineer would be able to fabricate a widget, nuclear or otherwise, out of any machinable composition. However, hyperwidgets are a nonobvious variant of the nuclear widget.

Scotty asks you to draft new claims for his second CIP application. There is a great deal of art in this area. You must determine the priority dates for each invention in order to draft claims that avoid the prior art. Without filing any affidavits, what are the priority dates for the four claims of the CIP to: (1) a transparent aluminum; (2) a transparent aluminum widget; (3) a nuclear aluminum widget; and ( 4) a hyperwidget.

(A) The transparent aluminum has a. priority date of January 4, 1995; the transparent aluminum widget has a priority date of January 4, 1996; the nuclear transparent aluminum widget has a priority date of March 27, 1996; the hyperwidget has a priority date of March 27, 1996.

(B) The transparent aluminum has a priority date of January 4, 1995; the transparent aluminum widget has a priority date of January 4, 1995; the nuclear transparent aluminum widget has a priority date of January 4, 1996; the hyperwidget has a priority date of March 27, 1996.

(C) The transparent aluminum has a priority date of January 4, 1995; the transparent aluminum widget has a priority date of January 4, 1996; the nuclear transparent aluminum widget has a priority date of January 4, 1996; the hyperwidget has a priority date of March 27, 199.6.

(D) The transparent aluminum has a priority date of March 27, 1996; the transparent aluminum widget has a priority date of March 27, 1996; the nuclear transparent aluminum widget has a priority date of March 27, 1996; the:hyperwidget has a priority date of March 27, I 996.

(E) The transparent aluminum has a priority date of January 4, 1995; the transparent aluminum widget has a priority date of March 27, 1996; the nuclear transparent

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aluminum widget has a priority date of March 27, 1996; the hyperwidget has a priority date ofMarch 27, 1996.

25. M invented a computerized voice box for large draft animals and filed an application on May 3, 1993. Although the examiner provided helpful suggestions, M refused to follow them, and a fmal rejection was mailed on May 13, 1995, with a shortened statutory response time of three months. M deposited a responsive amendment in a mailbox on July 12, 1995, along with a proper certificate of mailing. The response arrived in the PTO on July 16, 1995. The examiner called M the next day, July 17, and suggested an amendment. On August 15, 1995, the examiner and M had another telephonic interview on the subject, but did not come to any agreement. The examiner sent the interview summary along with the advisory action on September 15, 1995. Several weeks later, on October 15, the examiner again called M and suggested an amendment. The examiner said that he would give M several days to think about the amendment and would send out a supplemental Advisory Action late the following week. Which of the following would be best forM to do on October 15?

(A) Fax the examiner and authorize the described examiner's amendment. (B) Fax in a petition for entry of the amendment and authorization to debit his account

for the appropriate fee under 37 CFR § 1.17(r) and authorize the described examiner's amendment.

(C) Fax in a petition for an extension of time and authorization to debit his account for the appropriate fee under 37 CFR § 1.17(a) and authorize the described examiner's amendment.

(D) Fax in a petition for an extension of time and authorization to debit his account for the appropriate fee under 37 CFR § 1.17(b) and authorize the described examiner's amendment.

(E) Fax in a petition for an extension of time and authorization to debit his account for the appropriate fee under 3 7 CFR § 1.1 7 (c) and authorize the described examiner's amendment.

26. A U.S. patent on a soccer ball was issued to inventor Kick on January 15, 1992. In April of 1992, Kick assigned the entire right and interest in the patent to Rubber Company. The assignment was executed on November 30, 1993. Rubber Company discovered an error in the patent which would render some of the patent claims invalid. If a reissue application was filed on January 14, 1994, to correct the error by broadening the scope of the claims, the reissue oath had to be signed and sworn to by:

(A)· Kick. (B) Kick, except as otherwise provided in 37 CFR §§ 1.42, 1.43, 1.47, and must be

accompanied by the written assent of Rubber Company. (C) Kick, except as otherwise provided in 37 CFR §§ 1.42, 1.43, 1.47, or Rubber

Company. (D) Rubber Company. (E) Kick or Rubber Company.

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27. Jack and Tom invented a nuclear battery and a novel method of attaching it to widgets. After four years of prosecution in the PTO of their joint patent application, Jack and Tom received a patent in July of 1994. Jack continued his research and came up with a new and improved widget, the hyperwidget. Jack filed a patent application which described and claimed the hyperwidget in December 1994. It issued as a patent on June 8, 1995. In October 1994, Jack discovered an improvement, and on June 8, 1995, filed a second patent application claiming benefit of his hyperwidget with the Jack and Tom nuclear battery. Jack's second application contained the following claims:

1) A hyperwidget with extended arms. 2) A hyperwidget with extended arms and a nuclear battery.

Claim 1 was an obvious improvement over the hyperwidget. The Examiner rejected claim 1 as obvious on grounds of obvious-type double patenting over the hyperwidget patent and rejected claim 2 as obvious over the hyperwidget patent in view of the Jack and Tom patent. As Jack's patent practitio#er, which would be the best course of action to overcome the rejection?

(A) File a terminal disclaimer of only claim 1 and argue that the two patents were from non-analogous arts.

(B) File an antedating affidavit explaining that the third invention was invented before the hyperwidget application was filed.

(C) File a terminal disclaimer of Jack's second patent application. (D) File a terminal disclaimer of only claim 1 and argue that the Jack and Tom patent

was not by another. (E) Claim continuation-in-part status to original application with argument that the

original application fully enabled claim 1 and that the Jack and Tom patent was not by another.

28. R, a registered patent practitioner, filed a non-provisional patent application and a filing fee by Express Mail and included a postcard receipt listing "One complete patent application." Accidentally, on the next day, R filed a duplicate copy of the same non-provisional application and a filing fee by Express Mail and once again included a postcard receipt listing "One complete patent application." The PTO returned the postcards for both the original and the duplicate application with an indication that the applications were received with serial numbers for each application. Which, if any, of the following statements is true?

(A) The postcard receipt is R's prima facie proof that she filed a complete application.

(B) Upon request, the duplicate of the application will be returned toR. (C) Upon request, R is entitled to a full refund of the filing fee for the

duplicate of the application. (D) R must immediately inform the Office and expressly abandon the

duplicate of the application. (E) None of the above is true.

14

29. The following independent claims are filed in an original, non-provisional application: claims 1, 2, 3, and 10. The dependent claims are as follows: claim 5 depends from claims 1 or 2; claim 7 depends from claim 3; claim 8 depends from claims 1, 3, or 7; and claim 9 depends from claims 1, 5, or 10. Which of the following are true?

(A) Claim 8 is improper because it depends from multiple dependent claims. (B) Claim 9 is improper because it depends on claim 10. (C) Claim 9 is improper because it depends from a multiple dependent claim. (D) Claim 5 counts as two claims for fee calculation purposes .

. (E) All but (A) are true.

30. Which of the following, if any, is NOT an ele~ent of a prima facie case of obviousness under 35 U.S.C. § 103?

(A) One or more references which are prio.r art within the meaning of 35 U.S.C. § 102.

(B) A suggestion or motivation in the prior art or in the knowledge generally available to one of ordinary skill in the art, to modify or combine the prior art references.

(C) A reasonable expectation, based on the applicant's disclosure, that the claimed combination would be successful, supported, if necessary, by secondary considerations.

(D) A teaching or suggestion in the referenced prior art of each claim limitation. (E) All of the above are required elements of a prima facie case of

obviousness.

31. On November 14, 1994, applicant filed an international patent application under the Patent Cooperation Treaty in the Swedish Receiving Office. The United States was specifically designated in the application. The application claimed priority of an earlier Swedish national application filed on November 15, 1993. A copy of the international application was communicated to the United States Patent and Trademark Office under Article 20 of the PCT on May 25, 1995. A demand for international preliminary examination, in which the United States was elected, was properly filed on June 12, 1995. In order to prevent abandonment of the international application as to the United States, what was the last day on which the applicant may pay the basic national fee?

(A) July 15, 1995. (B) September 15, 1995. (C) November 14, 1995. (D) May 15, 1996. (E) July 15, 1996.

15

32. R, a registered patent practitioner, received a first Office action with a three-month shortened statutory response period for an original application filed after June 8, 1995. The case fnvolved a foreign client, so R forwarded a copy of the Office action to the client for translation and comment. Four months later R received a response from the client. After reviewing the response, R realized that the commercial-success portion of the response would be stronger if it included a declaration from an officer of the client. By this time five-and-a-half months had passed from the mail date of the Office action and R knew that it would take another full month to obtain a translated, properly execl,lted declaration. R should:

(A) File the response immediately without the declaration and fulfill the requirements for a three-month extension of time.

(B) Wait the extra month to obtain the declaration and then fulfill the requirements for a four-month extension of time.

(C) Wait as long as necessary to obtain the declaration and then request an appropriate extension of time because there is no statutory response time

-for applications filed after June 8, 1995. · (D) Petition to revive the application because the application went abandoned

when he failed to respond after three months. (E) Petition the Commissioner to stay further action until the declaration is

completed.

3 3. You have filed an appeal brief for your appeal to the Board of Patent Appeals and Interferences. The primary examiner has furnished you with her examiner's answer dated August 1, 1996, which does not contain new points of argument or a new ground of rejection. On August 15, 1996, the U.S. Court of Appeals for the Federal Circuit entered a decision that directly affects the merits of your appeal-at the Board. You are aware of this decision today. Which of the following answer choices sets forth the appropriate way or ways to make the Board aware of this decision?

I. By filing a supplemental appellant's brief with the Board. II. By making a timely request for an oral hearing and presenting the decision

at the hearing. III. By addressing it in a reply brief.

(A) I and III. (B) II. (C) III. (D) II and III. (E) I and II.

34. C, a registered patent practitioner with a sole practice she operates out of her house, obtained a plant patent for a client on a commercial catnip hybrid. One morning, over four years later, as she was sorting through her cat' s toys, she came across a courtesy notice from the Patent and Trademark Office reminding her that a maintenance fee was due on the patent. Based on the date specified in the notice, the fee was already eight months overdue. C should immediately:

16

(A) Write the PTO that a mistake has been made and that no maintenance fee

(B)

.... (C)

(D)

(E)

is in fact owed. Pay the maintenance fee plus the surcharge for filing a maintenance during the grace period. Tender the maintenance fee and· submit a petition (with the required fee) for acceptance of payment where the delay was unintentional. Tender the maintenance fee and submit a petition· (with an affidavit blaming the cat and with the required fee) for acceptance of payment where the delay was unavoidable. Do nothing because the patent is irrevocably lost because of the· failure to pay the maintenance fee within the grace period.

35. L, a registered patent practitioner, responded to a "written description" rejection under 35 U.S. C. § 112, paragraph one, with an amendment with the ~o~lowing remarks:

I have attached a corrected drawing showing the structure that the stupid examiner did not know was a necessary part of the invention. This amendment should put the case in condition for allowance unless the examiner wants to make some more ridiculous rejections.

L should not be surprised when the amendment is not entered because:

(A) Amendments are not permitted in response to a "written description" rejection.

(B) An amendatory paper containing objectionable remarks may be returned to the sender.

(C) Amendments to drawings that appear to add new matter will not be entered until the new matter question is resolved.

(D) Amendments to drawings are not permitted in response to a "written description" rejection.

(E) (B) and (C) are both correct.

36. In a reexamination proceeding, an extension of time in which to respond to a first Office action:

(A) Will never be granted. (B) Will automatically be granted upon filing a petition for an extension of

time and payment of the appropriate fee. (C) Will automatically be granted upon filing a first timely response to the

Office action. (D) Will automatically be granted for a period of six months. (E) Will only be granted for sufficient cause, and a reasonable time specified.

17

37. Practitioner represents the inventor, a small entity, of an automatic diaper changer. When he had filed the patent application, Practitioner had indicated in his cover letter that the Commissioner was authorized to charge any fees under 3 7 CFR § § 1.16 and 1.1 7 which may be required during the entire pendency of the application to Deposit Account No. 00,000. He has received the Notice of Allowance. Practitioner does not want to have to put forth any more money on this case because his client has not kept his bill current and he currently has $500 in his deposiJ account. Practitioner should:

(A) Do nothing, knowing the issue fee has been authorized. (B) Forward the Notice of Allowance to his client and inform his client he will not

pay the issue fee because the client has not kept his bill current. (C) File the notice in the client's file, with an indication on Practitioner's calendar to

contact the client within four months to get the matter handled. (D) Return the Notice of Allowance to the PTO with an authorization to charge his

deposit account for the issue fee. (E) -File an extension oftime to pay the issue fee.under 37 CFR § 1.136.

38. Joe filed a patent application on June 1, 1996. The only description in the application of the best mode is made by way of a reference to a Japanese patent. Joe should:

(A) Do nothing because it is acceptable to disclose the best mode by an incorporation by reference.

(B) File an amendment which amends the specification to include the material incorporated by reference and file a petition the Commissioner stating that the incorporation by reference was inadvertent and requesting that the application be accorded the original filing date ..

(C) File an information disclosure statement that discloses the Japanese patent and is accompanied by a copy of the Japanese patent.

(D) File an amendment which amends the specification to include the material incorporated by reference along with an affidavit stating that the included material is the same as the material incorporated from the Japanese patent.

(E) Abandon the application and refile a new application that includes a description of the best mode in the specification without incorporating by reference.

3 9. Inventor files an application for a means for supporting a building that dampens structural vibration during earthquakes and claims priority based on an Inventor's Certificate issued by Thailand. Inventor is a citizen of Thailand and is employed by the Thailand National Office of Building Safety. Which of the following statements are true:

(A) Inventor will get benefit of foreign priority based on the Inventor's Certificate issued by Thailand.

(B) Inventor will get benefit of priority because he is employed by the Thailand government.

(C) Inventor will get benefit of priority if he files an affidavit stating that at the time of filing for the Inventor's Certificate he had the option to either file for a patent

18

or an Inventor's Certificate on the subject matter fanning the basis of the priority claim.

(D) Inventor will not get benefit of priority. (E) Both (A) and (C).

40. On January 2, 1995, S files a patent application in the U.S. for an improved mousetrap. Prior activities involving the mousetrap during the year 1993 will not be a bar under 35 U.S.C.

· § 102(b) ifthe activity was:

(A) Use of the mousetrap inS's warehouse to perfect the mousetrap. (B) Sale of the device to J to ascertain whether there was consumer demand for the

claimed invention. (C) Sale of the device to J to ascertain appropriate pricing strategy for future

marketing of the mousetrap. . . (D) Advertisement in a commercial publication with an indication that the device

would not be available until 1994. (E) Demonstration at a national trade show.

41. Inventor has been prosecuting his own patent application. He has just received a final rejection from the examiner under 35 U.S.C. § 103. In the spirit of"never say die," Inventor has hired Attorney to handle an appeal. Attorney, sole practitioner in his office, files the appellant's brief. Attorney does an excellent job of explaining how the specific limitations in the rejected claims are not described in the prior art. Upon reading this brief, the examiner maintains the 3 5 U.S. C.§ 103 rejection and enters a new ground of rejection under 35 U.S. C.§ 112. Attorney is presently tied up in an out-of-state trial which promises to last for two months. What should Attorney do with regard to the Examiner's Answer?

(A) File a reply brief which addresses all the arguments she had previously made as well as additional arguments directed to the 112 rejection.

(B) Not file a reply brief at all and let the Board decide based on the main briefs and the record.

(C) Authorize Attorney's law clerk to prepare and file a reply brief addressing only the new rejection raised by the examiner.

(D) File a petition with reasons for an extension of time to file a reply brief four months from the date of the Examiner's Answer.

(E) File a reply brief accompanied by an amendment appropriate to the 35 U.S.C. § 103 rejection.

19

42. On June 9, 1995, J files a Patent Cooperation Treaty (PCT) application designating the PTO as the International Searching Authority (IS A). J' s application contains three claims: ( 1) A process of manufacturing comprising steps A and B, with A differing from B; (2) Apparatus specifically designed for carrying out step A; and (3) An apparatus specifically designed for carrying out step B. The examiner holds a lack of unity and transmits a request for additional fees. J never responds to the request and the examiner examines claims 1 & 2. J then files a National Stage application (application A) containing claims 1, 2, & 3. J, by way of preliminary amendment, cancels claim 3 in application A, and simultaneously files a divisional application (application B) containing claim 3. The examiner sends out a first action allowance for application A but rejects application B for double patenting. J should:

(A) Point out that 35 U.S.C. § 154 mandates a term of twenty years from filing and so there cannot possibly be an extension of the patent monopoly due to issuance of the patent for B.

(B) Explain that 35 U.S.C. § 121 precludes the rejection of a divisional application u~ing a patent issuing on an application with respect to which a requirement for restriction was made.

(C) File a terminal disclaimer in application B. (D) Argue that under 35 U.S.C. § 371, application A was provided the same filing

date as application B. Consequently, application B could not be rejected by application A because the A invention was not described before invention B.

(E) Argue that the scope of invention B differs from the scope of invention A. Consequently, there could be no extension of the right to exclude use of invention A by the granting of a patent to invention B.

43. You are practicing with a small law firm in Ohio. You assisted a client in prosecuting their patent application, which was originally filed on June 1, 1995. In January 1996, you mailed an amendment in response to an examiner's Office action mailed December 6, which set a three month shortened statutory period. In August, you received a Notice of Abandonment of the application. You pull your client's file and see that the postcard you sent with the amendment has been stamped as timely received by the PTO and returned to you. Which of the following is the best course of action?

(A) Send a letter to the examiner stating there is some mistake because you know the Office received your amendment.

(B) Send a petition to the Commissioner setting forth the dates the Office action was received and when you responded, together with a copy·ofthe amendment you filed and a copy of the return postcard showing the Office received your amendment.

(C)' File a continuation application. (D) File a petition to the Commissioner requesting withdrawal of the abandonment

based on the. fact that you submitted a timely response. As part of your petition you provide: ( 1) an affidavit from your secretary stating that she put the amendment in the mail in January, together with the postcard and that the usual procedure in the firm is to place the matter on the attorney's docket for six months

20

after the letter to the PTO is mailed; (2) the petition fee; and (3) a copy of the responsive amendment.

(E) File a petition to revive the application together with a terminal disclaimer and the appropriate fees.

44. Carl and Elizabeth invented a method of organizing closets. On January 5, 1994, you filed a patent application for them claiming their invention (claims 1-5). Jack modified the method and Elizabeth was aware of the modification. On February 15, 1994, you filed another patent application disclosing and claiming the method of organizing the closet (claims 1-5) and the modified method (claims 6-1 0), and listed Jack and Elizabeth as inventors. You received an Office action in the Carl and Elizabeth application which contained a provisional rejection of claims 1-5 as unpatentable in view of claims 1-5 of the Jack and Elizabeth application, under 35 U.S.C. §§ 102(e)/103. Which of the following would be the most appropriate response to overcome the rejection?

(A) Abandon the Carl and Elizabeth application since Elizabeth is not entitled to the benefit of the January 5, 1994, filing date.

(B) File a 3 7 CFR § 1.13 2 affidavit showing unexpected results obtained by the improved method.

(C) File another application, listing as inventors Carl, Elizabeth, and Jack, disclosing and claiming the subject matter of the Carl and Elizabeth application and the Elizabeth and Jack application, claiming benefit of the January 5, 1994, date under 35 U.S.C. § 120.

(D) File a 3 7 CFR § 1.131 affidavit showing priority of invention. (E) File a response arguing that the 35 U.S. C.§§ 102(e)/103 rejection is improper.

45. Which of the following statements are true?

(A) Once you file a notice of withdrawal as attorney in a case, you are immediately relieved of further responsibility in prosecution of the case.

(B) Papers may be filed in patent applications by registered agents not of record. (C) If an attorney is suspended from practice before the Office as the result of a

disciplinary proceeding involving a patent matter, he or she can still represent trademark applicants before the office.

(D) A petition for reinstatement by a practitioner who is suspended from practice before the office for a period of 5 years will not be considered for the same period of time as another practitioner who has been excluded from practice before the Office.

(E) (B) and (D)

21

46. Your office is located in Arlington, Virginia. You prepared a patent application for an inventor, who is located in California. It is 3:00p.m. and you have just received the executed application from the inventor. Just as you are about to walk out the door and hand carry the application to the PTO for filing, the inventor telephones you and requests that the application include disclosure and additional claims· to cover a "minor improvement" of his invention. The application must be filed today to avoid a potential ''on sale" statutory bar. If the application is filed today, which of the following procedures would be most appropriate to insure that it will receive today' s filing date to cover the "minor improvement?"

(A) File the executed application, including the executed oath, along with a preliminary amendment to the specification of the application to add additional disclosure of and present new claims for the "minor improvement."

(B) Rewrite the specification to include a description of the ~'minor improvement" and present new claims to the application and then file the application with the r.ewritten specification and new claims along with the executed oath.

(C) File the executed application and the executed oath and then, after receiving the filing receipt, file an amendment to the oath, and an amendment to the specification presenting new claims and additional disclosure for the "minor improvement."

(D) Rewrite the specification to include a description of and claims to the ''minor improvement" and then file the application without the executed oath.

(E) Rewrite the specification to include a description of and present new claims to the "minor improvement" and fax the rewritten specification with a new oath to the inventor, have the inventor execute the new oath and h·ave the inventor fax the executed rewritten specification with the new oath to the PTO.

47. On July 10, 1995, your client published an article containing a complete and enabling disclosure of a new pharmaceutical compound he developed. On August 10, 1995, you prepared and filed a provisional application for the client containing an enabling disclosure of the pharmaceutical compound disclosed in the publication. The· provisional patent application was filed using the Express Mail Service of the U.S. Postal Service and included a proper certificate of express mailing. On Saturday, August 10, 1996, you deposit a complete (non-provisional) U.S. patent application that claims the new pharmaceutical compound and which claims priority to the filing date ofthe provisional application under 35 U.S.C. § 119(e) with the U.S. Postal Service using the Express Mail Service and include a proper certificate of express mailing. The application is received in the ~TO mail room on August 13, 1996. The claims to the pharmaceutical compound are:

· (A) Patentable over your client's article. The effective filing date of the complete application is August 1·0, 1995. Because the article was Written by the inventor and was published less than one year before the effective filing date of the complete application, the inventor can swear behind the article's publication date.

(B) Unpatentable. The effective filing date of the complete application is August 12; 1996, and thus the claims to the compound are barred by the publication of your client's article more than one year before the complete application's effective filing date.

22

(C) Patentable over your client's article. The effective filing date of the complete application is August 10, 1996. However, because the article was written by the inventor, the inventor can swear behind the article's publication date.

(D) Patentable over your client's article because the article is not prior art. (E) Unpatentable. The effective filing date of the complete application is August 13,

1996, and thus the claims to the compound are barred by the. publication of your client's article more than one year before the complete application's effective filing date.

48. On Aprill, 1995, you filed a patent application which describes and claims a chemical composition. The specification as originally filed teaches that the composition can contain up to 6% by weight of a required surfactant. This is the only reference to the amount of the surfactant in the specification. Original claim 1 recites a composition that contains up to 6% by weight of the surfactant. Original claim 2 recites a composition containj!lg 3 to 6% by weight of the surfactant. On December 5, 1995, the Examiner issues a non-final Office action rejecting claims 1 and 2 over a prior art reference that describes the claimed composition containing 1 to 2% by weight of the same surfactant. In January 1996, your client, while reviewing the application in light of the Office action, informs you that there ·is a typographical error in the application. The amount of surfactant in the specification should have been up to 60% by weight. The upper limits on claim 1 and claim 2 should also be 60% by weight. He asks you to correct this error when you respond to the Office action. On February 5, 1996, you file an amendment responsive to the non-final Office action dated December 5, 1995. In addition to arguing the patentability, which of the following courses of action is the most appropriate response to the Office action?

(A) Cancel claim 1. Amend the specification to recite that the surfactant is present in an amount from 3 to 6% by weight.

(B) Amend the specification and claim 1 to recite that the surfactant is present in an amount of up to 60% by weight. Amend claim 2 to recite that the sUrfactant is present in an amount from 3 to. 60% by weight.

(C) Cancel claim 1. Amend the specification to recite that the surfactant is present in an amount between: 3 and 60% by weight. Add new claim 3 reciting that the surfactant is present in an amount from 3 to 60% by weight.

(D) Cancel claim 1. Amend the specification to recite that the composition contains up to 60% by weight of the surfactant. .

(E) Cancel claims 1 and 2 and present a claim having surfactant present in the amount of 1 to 60% by weight.

23

49. Which of the following does not have to be included as part of a request for reexamination of a patent filed by the patent owner?

(A) An identification of every claim for which reexamination is requested, and a detailed explanation of the pertinepcy and manner of applying the cited prior art to every claim for which reexamination is requested.

(B) A statement pointing out each substantial new question of patentability based on prior patents and printed publications.

(C) A copy of every patent or printed publication relied upon as raising a substantial new question of patentability ..

(D) Proposed amendments to the patent claims for which reexamination is requested.

(E) The entire specification, claims, and drawings of the patent for which reexamination is requested in cut-up form.

50. In 1995, a professional laundry person came to a registered patent attorney to obtain a patent on an invention. The invention is a ball that slowly releases fabric softener into a washing machine. The attorney pro~ecuted an application for a patent on this invention in the PTO. The PTO properly issued a final rejection on January 2, 1996. The final rejection set a three-month shortened statutory period for response. On February 2, 1996, the attorney filed a response. On May 2, 1996, the examiner issued an advisory action refusing entry of the amendment. Which one of the following gives the attorney the best chance of having an amendment entered?

(A) On May 31, 1996, file a petition and fee for a one-month extension of time with an amendment merely removing issues for appeal, with no showing of good and sufficient cause why the amendment is necessary and was not earlier presented.

(B) On August 1, 1996, file a petition and fee for a three-month extension of time· with an amendment touching on the merits of the application, with a showing of good and sufficient cause why the amendment is necessary and was not presented earlier.

(C) On May 3, 1996, file an amendment requiring only a cursory review by the examiner to place the application in condition for allowance, and do not file any petition or fee. for extension of time.

(D) On August 2, 1996, file a petition and fee for a three-month extension of time with an amendment merely adopting the examiner's suggestions.

(E) On May 3, 1996, file a petition for extension of time without fee with an amendment having a showing of good and sufficient cause why the amendment is

. necessary. and was not presented earlier.

24

Test Number 014A

Test Series 196

U.S. DEPARTMENT OF COMMERCE UNITED STATES PATENT AND TRADEMARK OFFICE

EXAMINATION PATENTATTORNEYSANDAGENTS

1996

Afternoon Section (100 Time: 3 Hours

DIRECTIONS

This section of the examination is a CLOSED book examination. You MAY NOT use any books, notes, or other written materials during this section of the examination.

This section of the examination is directed to claim drafting and consists of three options: mechanical~ chemical, and electrical. You must SELECT ONE of the options. If you select more than one option, only the flrst option presented in your Answer Book will be graded. The directions for each option follow the fact pattern for each option.

You must write your answers in the Answer Book provided by the test administrator. When writing your answers in the Answer Book, USE BOTH SIDES OF EACH PAGE and DO NOT SKIP ANY PAGES. You are permitted to use only one Answer Book in which to write your answers. Your answers must conform to the policy, practice and procedure which must, shall or should be followed in accordance wilh the patent statutes, PTO rules of practice and procedure, and the Manual of Patent Examining Procedure (MPEP). Do noL assume any additional facts not given in the disclosures of the inventions.

You may write anywhere on this examination booklet However, do not remove any pages from the booklet. Only answers recorded in your Answer Book will be graded YOU MUST OBTAIN A SCORE OF AT LEAST 70 POINTS TO PASS THIS SECTION OF THE REGISTRATION EXAMINATION.

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

OR TO BEGIN THE EXAMINATION

Heterocylic Substituted 2-Acylamino .. s-Thiazoles

The present invention relates to heterocyclic 2-acylamino-5-th{azoJe compounds, which are useful in the treatment of gastric ulcers or intestinal dyskinesia and to methods of making the compounds. The following Table sets forth some of the compounds of the invention having formula (Ia) wherein R5 is -(CH2)m-X, R4 is phenyl or a substituted phenyl identified in the Table, and Z is indolyl:

R5 S NH-C(=O)-Z rr (I a)

R4

Compound X m R4

1 -OH 2 2-chlorophenyl 2 -C(=O)OCH3 1 phenyl 3 -0-C( ::::0 )CH3 3 2-tluorophenyl 4 -0-C(=O)phenyl 2 phenyl 5 -S-phenyl I 2-methylphenyl 6 -O-C(=O)NHCH3 1 phenyl 7 -phenyl 0 phenyl 8 -0-C( =O)NHCzHs 2 2-aminopheny I 9 -O-C(=O)NHC2H5 1 phenyl 10 -C( =0)N(CH3) 2 1 2-chlorophenyl 11 -0-C( =O)c;Ifs 1 phenyl 12 -0-C(=O)Ophenyl 2 2-aminophenyl 13 -0-C( =O)CH2CH2CH3 1 2-fluorophenyl

.14 -S-C( =0 )C2H5 1 phenyl 15 -S-cyclohexyl 3 2-methylphenyl

Compounds 3, 4, 6, 8, 9, 11, 13 and 14 are the preferred. compounds.

Heterocyclic 2-acylamino-5-thiazoles which are a)so part of the. invention are those, in which, instead of Z being an indolyl ring, Z is an isoindolyl ring; a benzimidazolyl ring; a quinolyl ring; an isoquinolyl ring; a benzoxazolyl ring; a benzofuranyl ring; or a benzothiazolyl ring. The following heterocyclic compounds are typical of the foregoing heterocyclic rings:

t\ ~fl~L(lb) ~

indolyl

~ ~(Ic) 0L-}d . isoindolyl benzimidazolyl

2

L (Id)

OJ L (Ic) ~

quinolyl

(O L(Ih)

~ ~

benzofuranyl

~N ~;TL(If)

isoquinolyl

cx:1L(Ii)

benzothiazolyl

In the foregoing heterocyclic compounds (formulas !a through Ih), L is

R5 $ NH-C(=O)-

'f-Y R4

o=:rL(IgJ benzoxazolyl

R4 and R5 are the same substiruents as shown in the Table on page 2 for formula Ia. In addition to the substiruents shown in the Table on page 2, it is understood that, in formulas Ia through Ii, R5 represents C1-C5 alkoxy, pyridinyl, pyrrolyl, piperazinyl, or -(CH2)m-X wherein m is 0 to 5, and X represents bromine, hydroxyl, C3-C7 cycloalkyl, phenyl, substituted phenyl, -C(=O)OH; -C(=O)ORl, -OC(=O)Rl, -SC(=O)Rl, -SRI, -C(=O)NRIR2, -OC(=O)NHRl, -NR1R2, or -OC(=O)ORl wherein Rl and R2 represents C1-C5 alkyl, phenyl or substituted phenyl. The phenyl substituent is halogen, C1-C3 alkyl, C1-C3 alkoxy, nitro, amino, hydroxyl, or trifluoromethyl. In formulas Ia through Ii, R4 represents the specific substituents shown in the Table on page 2, as well as C3-~ cycloalkyl, substituted C3-~ cycloalkyl, phenyl or substituted phenyl. The substituent on the cycloalkyl or phenyl is halogen, C1-C8 alkyl, C1-C3 alkoxy, C 1-C3 alkylthio, nitro, amino or trifluoromethyl.

All of the compounds of formulas Ia through Ii are useful in the treatment of gastric ulcers or intestinal dyskinesia.

Novel methods for preparing some of the compounds of the present invention are presented below. The remaining novel compounds of the present invention are prepared by known methods which need not be further disclosed for purposes of this test.

.., _,

PREPARATION METHOD A:

Heterocyclic 2-acylamino-5-thiazolcs of the present invention when R5 represents -(CH2)m-OH, which, in turn, are used to produce compounds of the invention wherein R5 is -(CH2)m-0-C(=0)-NHR1 or -(CH2)m-0-C(=0)-0-Rl are prepared as follows:

1) A ketomethylester is reacted with brmnine in the presence of cupric bromide in an organic solvent for the ketoinethylester, such as ethyl acetate, a chlorine containing solvent, or mixtures thereof, to produce an alpha-bromoketomethylester according to the following scheme:

2) The alpha-bromoketomethylester is reacted with thiourea in the presence of a conventional solvent, such as ethanol or propanol, to produce an ester-containing 2-an1ino-S-thiazole compound according to the following scheme:

(V)

· 3) The methylester group in the 2-amino-5-thiazole compound (V) is reduced with an alkali metal hydride, such as lithium aluminum hydride, in an aprotic solvent, such as tetrahydrofuran, to produce a 2-amino-5-hydroxyalkylthiazole of the formula:

(VI)

4) The 2-amino-5-hydroxyalkylthiazole is acylated with an acid of the formula Z-C(=O)OH, in the presence of a base, such as triethyl~ine or piperidine, to produce a substituted 2-acylamino-5-hydroxyalkylthiazole of the formula:

(VII)

Sa) When R5 in formulas Ia through Ih represents a carbamate, -(CH2)m-OC(=O)NHR 1, the 2-acylamino-5-hydroxyalkyl compound (VII) is reacted -with an isocyanate of the formula, Rl-N=C=O, in an aprotic solvent, for example, tetrahydrofuran or dichloromethane, at a temperature between 20°C and 1 00°C to produce a compound of the formula:

4

R I HNC(=0)0-(CH2)m~5 YNHC(=O)-Z \ ~ . . \\ N

/ R4

5b) When R5 in formulas I a through Jh represents a carbonate, -(CH2) 111-0C(=O)O-R 1, the 2-acylamino-5-hydroxyalkylthiazole (VII) is reacted with a chloroformate of the formula. CI-C(=O)O-R I, in the presence of a base, such as triethylamine or pyridine, to produce a compound or the formula:

Rl-OC(=0)0-(CH2)m~j(NHC(=0)-Z

R4

In the foregoing formulas used in Preparation Method A, Rl, R4, m, and Z are as defined above.

PREPARATION METHOD B:

The heterocyclic 2-acylamino-5-thiazoles wherein R5 represents an ester group, Rl-C(=0)0-(CH2)m- or thioester group, RlC(=O)S-(CH2)m-, may be prepared by the following method:

1) A ketochloride is reacted with sodium iodide in the presence of acetone to produce a keto iodide according to the following scheme:

2) The ketoiodide is reacted with a potassium or cesium carboxylate of the formula, Rl-C(=O)-W­K or R 1-C( =0)-W -Cs, wherein W is 0 or S to produce a ketoester according to the following scheme:

I Rl-C(=O)-W-K}

R4-C(=0)-(CH2)m+t-I + or · ~ R4-C(=O)-(CH2)m+t-W-C(=O)-Rl. R 1-C( =0)-W -Cs

3) The ketoester is reacted with bromine to produce an alpha-bromoketoester as follows:

4) The alpha-ketobromoester is reacted with thiourea in the presence of a conventional solvent, such as ethanol or propanol, to produce a 2-amino-5-thiazole ester compound according to the following scheme:

5

R4-C(=0)-CHBr-(CH,)m-W-C(=0)-RI + NH2C(=S)NH2 . ~ Rl-C(=O)-W-(CH,)., S ';(NH2

(Vllla, W = 0) )C J · (VIIIb, W = S) R4

5) The 2-amino-5-thiazole ester of formula (VTIIa) or (VTIIb) is acylatcd with an acid of the formula, Z-C(=O)OH, in the presence of a base, such as triethylamine or piperidine, to produce the ester of the formula:

Rl-C(=0)-0-(CH2)m~ ,_.,NH-C(=O)-Z

~ I[ N

R4

In the foregoing formulas of Preparation Method B, Rl, m, R4, W, and Z are as defined above.

PREPARATION METHOD C:

Compounds in which R5. represents a thioether group, -(CH2)m -S-R 1 may be prepared by reacting the ketoiodide, produced in accordance with step 1 of Preparation Method B, with a thiol, Rl-SH, to produce a ketothioether according to the following scheme:

3) The ketothioether is reacted with bromine at conventional temperatures to produce an alpha­bromoketothioether of the formula, R4-C(=O)-CHBr-(CH2)m-S-Rl.

4) The alpha-bromoketothioether is reacted with thiourea, NH2-C( =S)-NH2, in the presence of a conventional solvent, such as an alkanol, to produce a 2-amino-5-thiazole derivative according to the following scheme:

5) Acylation of the 2-amino-5-thiazole derivative with a compound of the formula, Z-C(=O)-OH, in the presence of a base, such as pyridine or trimethylamine, produces a 2-acylarnino-5-thioetherthiazole of the formula:

Rl-S-(CH2)m S NH-C(=O)-Z r_y R4 (X)

6

. In the foregoing formulas of Preparation Method C, R4, m, R 1, and Z are defined above.

PRIOR ART

Substituted thiazoles of the following fonnula are known in the art as possessing bactericidal and disinfectant properties:

s R-C(=O)-NH-\( "')-Rb

. N_i( Ra

in which Ra represents phenyl, cyclohexyl, or Cl-C7 hydroxyalkyl; Rb represents cycloalkyl or phenyl; and R represents benzimidazolyl, benzofuranyl, or benzoxazolyl.

INSTRUCTIONS FOR THE CHEMICAL OPTION: Draft FOUR (4) CLAIMS. Claim 1 must be an independent claim and must be directed to preparing only compounds 3, 4, 11, and 13 in the Table on page 2 according to Preparation Method B. Claim 2 must be an independent claim and it must be directed to preparing only compounds 6, 8, and 9 in the Table on page 2 using Preparation Method A. Claim 3, starting with a compound of the fonnula, R4-C( =0 )-( CH2)m+rl, must be· an independent claim directed to the preparation of all compounds of the invention wherein R5, is (CH2)m-S-Rl in fonnulas fa through Jh, according to Preparation Method C. Claim 4 must be an independent claim directed to all of the novel 2-acylaminothiazoles of the invention. You must present the broadest claims consistent with the foregoing instructions which are not anticipated by the prior art and which are inclusive of the preferred embodiments. Your claims must set out generic fonnulas or expressions within the scope of the disclosure whenever possible. Claims 1 to 3 must set forth all disclosed reaction conditions and ingredients except those described as being conventional. Claims 1 to 4 are worth twenty five (25) points each.

You may not be your own lexicographer to name or rename components or materials already named. Assume all infonnation provided is correct. A product-by-process claim or Jepson claim will receive. no credit. Any claim anticipated by the prior art will receive no credit. Points will be deducted for ( 1) claiming subject matter not within the scope of the invention disclosed above; (2) using language which is vague and indefinite; (3) using claim language which does not have antecedent basis or language which does not positively set forth the requisite steps, components or materials; ( 4) using claim language directed to means or using means plus function language; ( 5) reciting process or method steps in claim 4; (6) failing to interrelate or incorrectly interrelating the steps, components, or materials in the manner disclosed and shown above; (7) claiming unnecesary lilnitations; (8) presenting a claim that is incomplete or that defines an inoperative invention; (9) misspelling words or using poor grammar; ( 10) using means plus function language, and ( 11) not following these directions.

An error repeated in two or more claims will be treated as separate errors, as opposed to being a single error, and points will be deducted for each separate error.

7

MECHANICAL OPTION

CHAMPAGNE. BOTTLE CORK PULLER AND INSERTING

This invention relates to devices for removing ·and inserting_ bottle corks and, in particular, to an apparatus for removing and inserting champagne· bottle corks.

BACKGROUND OF THE INVENTION

Champagne is typically stored under high pressure in bottles with tightly inserted corks. In removing a cork from a champagne bottle, the pressure inside the bottle is so great that the cork is often propelled into the air and, despite care, occasionally causes eye injuries and/or sprays the clothe~ of the user and any person in the vicinity.

The most common method used to remove a cork from a champagne bottle involves pressing one's thumbs upward against the cork. This can cause personal discomfort and there is little

- · control in keeping the cork from being projected into the air.

Mechanical devices have been provided for removing. corks from wine bottles. One type of device drills a helical hole into the wine bottle cork. Such devices are inadequate for champagne bottle corks because champagne corks are often made of hard plastic, making drilling difficult. In addition, drilling a hole into the plastic cork will prevent it from being reusable, and may allow champagne to spray out of the drilled hole. Other types of mechanical devices use metal parts to contact the champagne bottle and to lift the cork. The metal against glass contact is highly likely to result in glass chips which may be hazardous to the consumer. ·

FIG. 1 depicts a perspective view of a typical prior art cork remover. Stirrup shaped body 1 forms the main part of the cork remover. An upper end of body 1 is provided with a neck 2 which ends in a ring flange 3. A handle 10 positioned atop ring flange 3 utilizes inwardly directed hooks 11 to grip ·ring flange 3 from below. Hooks 11 allow the handle 10 to be easily rotated. A lower bifurcated end 5 ofbody 1 is· provided with an open casing 6 formed with a groove 7 having a top ledge 8 and a bottom ledge 9. Casing 6 is open in order to be placed

8

sideways on a botrle without the necessity of any moving member.

A raising and lowering device 12 extends through a vertical bore 4 in neck 2. The raising and lowering device 12 has a threaded end 13 and is adapted to engage internal threads (not shown) in handle 10. Raising and lowering device 12 is mechanically attached to a cork engager 16 and secured thereto by a pin 15.

Cork engager 16 has a top face 17 and a pair of slanting faces 19 adjacent to top face 17. Leg members 20 extend perpendicularly and in parallel from a bottom face 18 of cork engager 16. Leg members 20 present a space for housing a disc 21 with an axial bore 22. Spaced outwardly from leg members 20 are a pair of jaw members 23, each of which is provided with an internally threaded bore at one end and an arcuate face portion with a chamfered bottom edge 26 at the other end. An axle 27 formed with grooves 28 has its ends threaded in opposite senses and is mounted through the axial bore 22 of disc 21 and internaJiy threaded bores of jaw members 23. Lugs (not shown), provided inside disc 21, project into grooves 28, thereby permitting rotation of axle. 27 to rotate disc 21.

Two lateral grooves 14 are provided on raising and lowering device 12. Projecting parts (not shown), on neck 2, engage grooves Consequently, raising and lowering device 12 can move upwardly and downwardly without turning. In this way, jaw members 23 are kepi within the plane of stirrup shaped body 1 and torsional effect on the cork is prevented.

When opening a corked champagne bottle, disc 21 of cork engager 16 is manually rotated to move jaw members 23 outwardly. Cork engager 16 is then placed onto the champagne bottle with ledge 8 resting on the top of the neck of the champagne bottle and ledge 9 lying below the neck of the champagne bottle. After lowering jaw members 23 as far as possible by turning handle 10 in one direction, disc 21 is rotated to move jaw members 23 inwardly and grip the head of the champagne bottle cork between the pair of arcuate face portions 25 and the pair of chamfered bottom edges 26. By turning handle 10 in a reverse direction, i.e., counterclockwise, cork engager 16 is forcibly lifted carrying along the cork which is gripped by the pair of jaw members 23.

OBJECTS OF THE INVENTION

A primary object of the invention is to provide an apparatus comprising a cork engager, a raising and lowering device, and a single piece body which includes a semi-cylindrical shaped shell which serves to deflect any spray away from the user. Another object of the invention is to avoid chipping a champagne bottle during use of the apparatus by making the body of a resilient material. A further object of the invention is to provide the body of the apparatus with an annular groove which is slightly srnaJJer than the spout rim of a champagne bottle and is adapted to frictionally fit around the rim and thereby maintain the body in a fixed relationship with respect to the champagne bottle during operation.

9

INVENTION

The present invention is illustrated in FIGS. 2, 3, 4, 5, and 6 of the drawings.

so

The champagne bottle cork puller and inserting apparatus 50 according to the invention is shown in FIG. 2. The major portions of apparatus 50 are cork engager 70, raising and lowering device 80, and body 90.

FIGS. 3 and 4 depict apparatus 50 in operating position with a corked champagne bottle comprising a bottle 60 and a cork 63 having a bulbous portion 64 and a stem portion 65. Cork engager 70 includes a head portion 71 from which depends a semi-cylindrical shaped wall 73 terminating in an interior ridge 75 defining a base opening 76. A lateral opening 74 is provided in wall 73. It is critical that lateral opening 74 be large enough to receive the bulbous portion of cork 63 and that base opening 76 be large enough to receive the stem portion of cork 63, but not large enough to receive the bulbous portion of cork 63.

Raising and lowering device 80 is made up of an externally threaded screw 81, a handle 82, and bolts 87 and 89. Bolt 87 fiXedly attaches handle 82 to an upper end of screw 81 by screwing into an internally threaded axial bore in screw 81. Bolt 89 rotatably mounts cork engager 70 to a lower end of screw 81 by screwing into an internally threaded axial bore in screw 81 through an axial hole 72 in head portion 71 of cork engager 70. Cork engager 70 is raised and lowered by turning handle 82 in a counterclockwise direction and a clockwise direction, respectively.

Body 90 is composed of a resilient material, such as plastic, and is configured as a semi­cylindrical shaped shell 91 having an upper end and a lower end. Shell 91 is substantially closed at its upper end with an axial integral hub 94, which is internally threaded and in operative engagement with externally threaded screw 81 (see FIG. 4), thereby serving to adjustably mount raising and lowering device 80, and is substantially open at its lower end with a bifurcated base 95, which is adapted to firmly engage the neck of a champagne bottle and maintain body 90 essentially immovable relative to the neck of the bottle. Cork engager 70 is housed within shell 91 and is slidably movable between its upper and lower ends, i.e., between hub 94 and bifurcated base 95. FIG. 3 depicts bifurcated base 95-as providing a seat for cork engager 70 when apparatus 50 is in operating position for pulling cork 63 from champagne bottle 60. However, as depicted in FIG. 5, a champagne bottle may have a spout 61 which extends within shell 91 such that cork engager 70 p1ust be lowered to an intermediate position between its upper and lower ends, in order to permit lateral opening 74 of cork engager 70 to properly receive bulbous portion 64 of cork 63. Bifurcated base 95 is

10

provided on its inner surface with an annular groove 96. The semi-cylindrical shape of shell 91 facilitates the use of apparatus 50 by allowing the user to comfortably grasp body 90 when attached to champagne bottle 60. The shape of shell 91 also prevents any spray from champagne bottle 60 from contacting the user. Also, body 90 can be quickly rotated to catch any spray issuing from beneath the portion of cork 63 adjacent the open portion of body 90. The use of plastic to form shell 91 is advantageous because it can be made with appropriate resilience to firmly engage the champagne bottle neck. Groove 96 is sized slightly smaller than the spout rim 62 of the standard champagne bottle so that shell 91 is frictionally held on the bottle. The use of plastic also prevents chipping of the champagne bottle neck when the bottle is engaged.

It is critical that shell 91 define a longitudinal slot 92 for a pin 100 connected to cork engager 70, and that pin 100 be slidably movable within slot 92 to prevent rotation of cork engager 70 and to maintain lateral opening 74 and base opening 76 exposed during raising and lowering.

5"0

I

/00

73

so

I

7!'· -,.,.;.(~.:... -==.-!..~,....

93

Shell 91 presents an outer rib 93 (see FIG. 4) formed along an outer surface adjacent groove 96, where shell 91 engages bottle 60. to provide a reinforced structure to shell 91.

11

8'1-

fiG. 6 depicts handle 82 as an elongated member with a pair of levers 83 extending an equal distance transversely of an axial cavity 85 and defining the ends of handle 82. Axial cavity 85 has a substantially rectangular cross-section and is adapted to receive a non-threaded. upper end of screw 81 having a mating cross-section. A

recess 86. coaxial with axial cavity 85. is provided in the upper surface of handle 82 and is adapted to receive the head 88 of bolt 87. A recess 84 is form~ between axial cavity 85 and each end of handle 82 for reducing weight and material cost.

In operation, cork engagcr 70 is lowered to a position where interior ridge 75 touches bifurcated base 95, as shown in FIG. 3. Next, apparatus 50 is placed onto champagne bottle 60 by sliding annular groove 96 of bifurcat~ base 95 about spout rim 62 of bottle 60, while simultaneously receiving bulbous portion 64 of cork 63 through lateral opening 74 of wall 73 of cork engager 70. Therefore, during operation, body 90 will in general be prevented from moving vertica.lly with respect to bottle 60.

With bottle 60 and cork 63 in place, as thus described, the user turns handle 82 counterclockwise causing cork engager 70 to be raised. Interior ridge 75 pulls upward against bulbous portion 64 of cork 63 causing cork 63 to be controllably pulled from spout 61. The user continues to turn handle 82 until cork 63 is completely removed from bottle 60) as shown in FIG. 5.

With cork removed from spout spout is removed laterally from shell 91 while simultaneously sliding spout rim 62 out of annular groove 96. Cork 63 can be manuaJly removed from cork engager 70, or be left in until reinsertion is desired.

The process of inserting cork 63 into bottle 60 is the opposite of the process described above. With cork engager 70 fully raised while holding cork 63, as shown in FIG. 5, annular groove 96 is sli~ around spout rim 62. Stem portion 65 is then controllably inserted into bottle 60 by turning handle 82 cJockw ise.

12

DIRECTIONS FOR THE MECHANICAL Draft FOUR (4) CLAIMS: a single independent claim and three dependent claims to the champagne cork puller and inserting apparatus. Claim I must be the broadest claim for a champagne cork puller and inserting apparatus, which defines the invention completely as set forth in the OBJECTS OF THE INVENTION, which includes all limitations recited in INVENTION as being critical, and which is not anticipated by the prior art. One dependent claint (Claim 2) must cover all those elements and sub-elenzents which make up the raising and lowering device. Another dependent claim (Claim 3) must be wn'tten in proper multiple dependent language, and cover (1) a specific resilient material of which the body is composed, (2) the specific element which provides the shell with a reinforced structure, and (3) the specific element which adjustably mounts the raising and lowering device. Claim 4 must be a dependent claim and include all those features which further define the handle. Independent claim 1 is worth 40 points, and each dependent ·claim is worth 20 points.

You may not rely on the Doctrine of lnherency for any reason, whether to support language having no antecedent basis or otherwise. You may not be ypur own lexicographer to name or rename elements or components of the invention. You may not employ means plus function language for any reason, whether to identify a named eLement or component of the invention, or otheJWise. Any method claim, Jepson claim, or any claim anticipated by the prior art wiLL receive no credit. Points will deducted for (1) clainu'ng subject maiter not within the scope of the invention disclosed above, (2) using claim language which is vague and indefinite, (3) using claim language which does not have literal antecedent basis or which does not positively set forth each element or component, (4) failing to interrelate or incorrectly interrelating the elements or components set forth in your claims, (5) claiming unnecessary limitations in independent claim 1, (6) presenting a claim that defines an inoperative invention or is anticipated by the prior art, (7) misspelled words or using poor grammar, and (8) failing to follow these directions. ·

NOTE- If a deduction for an unnecessary limitation is mode in claim 1, and such deduction relates to an element or component which the directions require be included in a dependent claim, then an additional deduction may be made for omitting the element or component in the dependent claim. The two deductions will not be regarded as a double penalty.

13

ELECTRICAL

SYSTEM FOR LASER DR.aLING AND MAGNETIC FLUX BREAKTHROUGH DETECTION

BACKGROUND OF THE INVENTION

Machining of a workpiece is a techniqu~ that is utilized to accomplish the day-to-day business of many industrial giants. Machining is widely used in metal working, plastics, glass, ship building, the automotive industry, and the tobacco industry, just to name a few. From drilling and shaping of intraocular lenses to improve vision and provide comfort to the eye, to the perforation of cigarette paper to reduce the intake of nicotine and tar, machining devices are used for n1.any purposes. Well known machine tools in the industry are electrode-discharge machines, plasma, laser, and electron beam machines.

Generally, lasers are used in various ranges of the electromagnetic spectrum to accomplish tasks ranging from heating to data transmission by way of an optical fiber. Industrial experts realize that the laser has made great strides eve·n in the medical field. Lasers have been used for such things as severing tissue, sealing a tom retina, and coagulation of blood. Carbon dioxide, ruby, yttrium­aluminum-garnet, dye, and excimer lasers are a few of the conventional types of lasers used in industry.

When a laser is used to drill a hole in a workpiece, it is useful to know when the beam has broken through the surface of the workpiece. Various arrangements have been utilized to determine when breakthrough occurs. Some breakthrough detection apparatus rely upon having phototransistor­type detectors located on the backside of a workpiece. Others use acoustic sensors located on the backside of the workpiece. A third type uses a photodetector, such as a photodiode, that is responsive to reflected radiation. Although phototransistor-type detectors and acoustic-type detectors located on the backside of a workpiece have been very useful in some applications, it is difficult to apply these devices to articles of minute size or those with odd or complex geometries.

THE PRIOR ART

It is well known in the prior art to control the operating parameters of a laser by sensing sounds emitted by the melting of a workpiece. In addition, one reference in the art shows a laser machining apparatus where infrared rays radiating from a workpiece are used to automatically adjust the intensity of an applied laser beam. Further, the prior art also teaches the provision of an arrangement for controlling depth in a laser drilling system by the utilization of an optical sensing arrangement at the backside of the drilled part to detect the depth of a hole which is drilled. Moreover, one reference in the art shows a laser drilling technique whereby holes are drilled in a material transparent or substantially transparent to laser radiation with the initial drilling arranged to start on the side of the workpiece opposite the side o~ which the laser beam impinges.

14

Although various known techniques for ~ontrolling laser machining processes have been useful, they have been subject to many disadvantages. Those techniques for breakthrough which rely upon optical sensing at the backside of the drilled part arc not suitable for use with work pieces having complex geometries. Those optical sensing arrangen1ents which. visually observe the drilling operation from the front or drill side of the workpiece may fail to properly operate because of interference from drilling debris. Many prior arrangements for controlling laser drilling operations, furthermore, require complex calibration procedures and complex circuitry.

SUMMARY OF THE INVENTION

It is a primary object of the invention to provide a method and apparatus of laser machining using a real-time breakthrough detector. It is a further object of the invention to provide for breakthrough detection of an applied laser beam to a workpiece of a complex or closed geometric structure. Further, the present invention is to provide for the detection of breakthrough of an applied laser beam to a workpiece without relying on acoustic or photoacoustic sensors that are placed to a side opposite the drill side of a workpiece. It is a further object of this invention to use a photodetector and threshold circuit along with a laser control to establish a laser breakthrough signal.

BRIEF DESCRIPTION OF THE DRAWINGS

Fig. 1 is a schematic of a real-time magnetic field breakthrough detection system 10 for laser drilling with real-time sensing and control of hole depth and magnetic field pick-up coils located around or to the side of an applied laser beam in a stream of plasma.

Fig. 2 is a real-time breakthrough detector circuit for use in the real-time magnetic field breakthrough detection system 10 of Fig. 1.

THE INVENTION

Fig. 1 shows a· real-time magnetic field breakthrough detection system 10 for laser drilling. System 10 applies a laser beam generated by laser source to a point on front surface 12D of work:piec~ 12 for the purpose of drilling a hole in the same. Workpiece 12 is shown in a flat geometric configuration; however, the invention is especially adapted to the drilling of a hole in a cylindrical workpiece or a workpiece of another complex shape wherein the location· of a detection system behind such a geometric configuration is prohibitive.

Fig. 1 shows what occurs when: a laser beam from laser source 14 strikes ·a drilling location on front surface 12D in the direction of a rear surface. Laser energy acting on surface 12D causes a portion of the surface to melt and vaporize. Further, transient magnetic fields are generated in a cloud of ionized particles or plasma which escapes from the drilling location.

15

FIG. 1 36

1.Q

LASER-ON SIGNAL 24

28 30

APPUC. POWER POINT CONTROL

CONTROL

20

BREAKTHROUGH 22 SIGNAL

When the beam from laser source 14 strikes or breaks through to the rear surface (i.e., the surface opposite drill surface 12D), the magnetic fields associated with the plasma change. By monitoring the level of the plasma-induced magnetic fields, therefore, the occurrence of laser breakthrough can be detected. Real-time magnetic field breakthrough detection system 10 detects the plasma-induced magnetic fields by using two magnetic-field pick-up coils, namely·, coils 16C and 168. Coil 16C is disposed in a concentric configuration with respect to the laser beam whereby it extends completely around the beam from laser source Side coil 168 is disposed to the side of the laser beam as shown in Fig. 1. It is necessary to use both coils 16C and 168 to fully detect magnetic field changes generated as laser source 14 drills through workpiece 12. Coils 16C and 168 could be· mounted on laser source 14 or mounted to a common support structure in any of various ways.

16

In the preferred embodiment, coils 16C and 16S are connected to a breakthrough detector 18. The breakthrough detector 18 is realtime, meaning that it actually detects and provides an output signal at the instant when breakthrough occurs, and d.oes not simply guess when breakthrough should occur based on prior experience. Detector 18 generates an acrual (i.e., realtime) breakthrough or penetration signal on line Breakthrough signal on line is supplied to laser control for control of laser source Breakthrough detector may also. but need not, generate a plasma-detect signal on line 20 when either or hath of the coils 16C and 16S have detected the magnetic field associated with the plasma. This signal indicates that drilling has started.

Laser control 24 includes a power control 30. The breakthrough signal on line 22 is supplied to power control 30, which has a laser control switch 32. Laser control switch 32 opens to stop laser source from emitting a beam (e.g., when breakthrough is sensed). Laser control 24 may also, but need not, include a data logger 26 and an application point control 28. Data logger 26 may be used to store data corresponding to the occurrence of the plasma-detect signal on line 20 and the breakthrough signal on line 22, or it may simply store the time lag between ~he two signals.

Control 24 may also, but need not, allow system 10 to be used for cutting a workpiece. When drilling a series of closely spaced holes in order to effect the cutting of the workpiece, breakthrough signal on line 22 may be fed to application point control 28. Upon the breakthrough signal occurring, application point control 28 causes the laser beam from laser source to strike a new application point on workpiece 12. Control 28 may be a robotic control to move workpiece 12 and/or laser source 14. Alternatively, the point control could be used to acruate a mirror in a reflective beam operation.

Photodetector 34, which is located adjacent to laser source and is connected to threshold circuit 36, senses the light emitted from the laser source and generates a photodetector signal. Threshold circuit 36 determines whether the signal generated by photodetector 34 is sufficient to indicate that the laser source is on. In that sense, threshold circuit may be a comparator. The output from the threshold circuit is the laser-on signal appearing on line 38. Accordingly, the output of threshold circuit 36 indicates one of two values: a frrst value indicating a laser-on signal, and a second value indicating that the laser source is not on. Line 38 is connected to breakthrough detector 18 so that the detector senses whether laser source is turned on.

17

16C 42C

FULL WAVE

RECTIFIER

425

FULL WAVE

RECTIFIER

V ref

FIG. 2

Fig. 2 shows a circuit for implementing breakthrough detector 18. Coil16C, shown in the circuit, is connected to instrumentation amplifier 40C, the output of which is voltage dependent on the magnetic field sensed by the coil. The output of amplifier 40C is fed to full-wave rectifier 42C for rectification purposes. The output of rectifier 42C is fed to amplifier 44C, which may be used to provide an appropriate level signal at its output for feeding to summing circuit 46. Summing circuit 46 also receives, by way of amplifier 40S, full-wave rectifier 42S and amplifier 44S, a signal dependent upon the magnetic field sensed by coil16S. Summing circuit 46 outputs a plasma detected­signal which appears on line 20. Data logger 26, shown in Fig. 1, is configured to keep track of the plasma-detected signal which appears on line 20.

It should be noted that in addition to being supplied to ~plifier 44C, the output of rectifier 42C is supplied to comparator 48C which compares the rectified signal to a reference voltage and provides an output to AND gate 50. Similarly, the output of rectifier 42S is supplied to comparator 48S which also compares the rectified signal to a reference voltage and provides an output to AND gate 50. The reference voltage used by comparator 48S may differ from that used by comparator 48C due to the different locations and the coil configuration, such as size, shape, or number of turns.

If the signal from rectifier 42C is lower than the reference voltage applied to comparator 48C, indicating that no plasma is present, AND gate 50 experiences the input of a logic "true" signal from comparator 48C. Comparator 48S also supplies an input to gate 50 in the same fashion as comparator 48C. When each comparator indicates an absence of plasma, gate 50 outputs a logic true signal; this signal is supplied to AND gate 52.

18

The absence of plasma· sensed by coils and indicates that one of the following conditions is present: (1) the laser source is not on; (2) the laser source is on but has not been on long enough to establish a plasma; or (3) breakthrough has occurred. To eliminate this ambiguity, gate supplies a breakthrough signal as its output only when the output of gate 50 is a true signal and when a laser-on signal is occurring and has been active for a predetermined minimum period of time (as established by delay line 54). The production of a breakthrough signal only upon the occurrence of a laser-on signal by the gating configuration of Fig. 2 helps to avoid a false breakthrough signal indication which might occur when a pulsed laser source is used.

INSTRUCTIONS

DIRECTIONS FOR ELECTRICAL OPTION: Draft THREE (3) CLAIMS. Claim 1 must be an independent apparatus claim drawn to the disclosed system for _lf!-ser drilling and magnetic flux . breakthrough detection. The claim must correctly and completely interrelate all necessary electrical/electronic circuits, parts and components with the exception of the components used to produce the laser-on signal and the internal structure of the disclosed mqgnetic field breakthrough detector circuit. The claim must include the junction with each element.

Claim 2 must be a dependent apparatus claim, drawn to the disclosed system for laser drilling and magnetic flux breakthrough detection, but which adds the internal structure of the disclosed breakthrough detector circuit. Claim 2 must correctly and completely int.er_connect and interrelate the necessary electrical/electronic circuits, parts and components comprising the disclosed breakthrough detector circuit. The claim must include the junction with each element.

Claim 3 must be a multiply-dependent apparatus claim drawn to the disclosed system for laser drilling and magnetic flux breakthrough detection, but which adds the components used to produce the laser­on signal. Claim 3 must correctly and completely interconnect and interrelate the necessary electrical/electronic circuits, parts and components. The claim must include the junction with each element.

You must present claims which are lJf11 anticipated by the prior art and which are inclusive of the preferred embodiments. · You may not be your own lexicographer to name or rename components already named. A Jepson claim will receive no credit. Points will also be deducted for (1) claiming subject matter not within the scope of the invention disclosed above; (2) using language which is vague and indefinite; (3) using claim language which does not have antecedent basis or which does not positively set forth the requisite steps or components; (4) using claim language directed to means or using means plus junction language; (5) reciting process or method steps in claims 1-3; (6) jailing to interrelate or incorrectly interrelating the steps or components in the manner disclosed above; (7) claiming unnecessary limitations; (8) presenting a cla!m that is incomplete or defines an inoperative invention; (9) misspelling words or using poor grammar; and (10) not following these directions.

Note: An error repeated in two or more claims will be treated as separate errors, as opposed to being a single error, and points will be deducted for each separate error.

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