TestNwnber 014 Test Series 189 NAME ____________________ __

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

REGISTRATION EXAMINATION FOR PATENT ATTORNEYS AND AGENTS

April 12, 1989

Morning Section (100 Points) Time: 3 Hours

DIRECfiONS

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

All questions must be answered on the Answer Sheet which is provided to you. Use a No. 2 (or softer) lead pencil to record your answers on the Answer Sheet. Darken completely the circle corresponding to your answer. You must keep your mark within the circle. Stray marks may be counted as answers. Erase com­pletely ali marks except your answer.

This section of the examination consists of two subsections: Section 1 which consists of fifty (50) true/false questions and Section 2 which consist of fifty (50) multiple choice questions. Do not assume any additional facts not presented in the questions. You may write anywhere in on this examination booklet, however, do not remove any pages from the test booklet. Only answers recorded on the Answer Sheet will be graded. You must obtain a score of at least 70 points to pass this section of the examination.

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

OR TO BEGIN THE EXAMINATION

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SECTION 1: TRUE/FALSE

DIRECTIONS: Each correct answer is worth one (1) point No points are awarded for incorrect answers or unanswered questions. The questions must be answered in Section 1 of the Answer Sheet. If the answer to the question is true, darken completely the circle on your Answer Sheet having "A" inside the circle. If the question is false,darl::en "B". Do not darken circles labe/~d "C", "D", or "E'. Questions answered both true and false will be cpnsidered as being in­correctly answered. For those questions involving PTO policy and procedure, the proper policy and procedure is that which must, shall, or should be followed in accordance with the Manual of Patent Examining Procedure unless modified by a subsequent court decision or a notice in the Official Gazette.

1. Attorney Jones is not registered to practice before the PTO. Jones has a client, Static Enter­prises, Inc. Static learns that a competitor, Dy­namic Enterprises Co., has filed a patent applica­tion claiming an apparatus that Static believes has long been in public use. Static requests that Jones submit information on the public use to the PTO without revealing its identity. Jones must engage the services of an attorney or agent who is regis­tered to practice before the PTO in order to be able to carry out his client's request.

2. In determining the anticipation and obvious­ness of a claimed invention vis-a-vis prior art,

patent application claims are given their broadest reasonable interpretation during examination proceedings.

3. Wilson, an employee of Cepe Corp., invents. a certain valve stem seal with a defined shape. ne seal is composed of a rubber material. Based on tests conducted by employees at Cepe Corp., Wilson concludes that the seal performs optimariy in preventing leaks when the surface of the rubber material is treated with sulfuric acid. The prior art discloses the use of such surface treatment for improving the sealing property of rubber. Wilson and Cepe Corp. decide that it will be neither necessary nor desirable to include surface treat­ment as a limitation in any independent or depend­ent claim because the essence of the invention lies in the shape of the seal. 'The specification of a

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patent application for the valve stem need not disclose the sulfuric acid treatment.

4. Although an applicant can amend an applica­tion after the frrst examination and Office action, the applicant cannot amend before the frrstexami­nation.

5. An interview with the examiner for the purpose . of discussing the patentability of the claimed in­vention in a pending substitute application cannot be properly held before the frrst Office action in

:the substitute application.

6. A retroactive license may be granted if an application has been filed abroad "through error and without deceptive intent".

7. Pat is a registered patent practitioner. Pat prepared, filed and is prosecuting a U.S. patent application for inventor Alex. On March 1, 1988, the examiner mailed a second Office action in which he finally rejected all of the claims under 35 U.S.C. 112, second paragraph. The examiner set a three (3) month shortened statutory period for response. Alex still owes Pat $940 for reimburse­ment of fees and disbursements and $2,000 for services in preparing an amendment and a re­sponse to the frrst Office action. Pat does not have to prepare a response and an amendment placing the application in condition for allowance pro­vided he submits to the PTO (with a copy to Alex at his last known address) a request for permission to withdraw as Alex's representative within 30 days prior to the expiration of the shortened statu­tory period for response.

8. In a reexamination proceeding, an amendment to the single ciaim in the patent may properly broaden the claim if the amendment is supported by the original disclosure in. the patent.

9. A European Patent Representative can file a Per application for his European client in the European Patent Office and thereafter, following a search and examination, prosecute applicant's U.S. National stage application before the PTO.

10. A rejection of claims as being rendered obvi­ous under 35 U.S.C. 103 by references published more than one year before the effective filing date of the patent application can be overcome by filing an affidavit or declaration with an appropriate showing swearing back of the references inas­much as the references do not anticipate the claimed invention.

11. For prior art purposes, the effective filing date of a U.S. patent claiming foreign priority is the foreign filing date to which the patentee is entitled under 35 U.S.C. 119.

12. Kim filed a patent application in India on ~anuary 10, 1987. India is a non-convention country. On January 29, 1987, Kim filed a corre­sponding patent application in Japan covering the same invention. A U.S. patent application, if filed by Kim on January 29, 1988, can properly claim the benefit of the Japanese flling date.

13. Pat is licensed to practice before the PTO. His client brings him a very complex interference problem of major economic importance. Pat has never handled an interference matter before and knows nothing about interference practice and procedure. He figures that he can learn about interference proceedings while representing his client. He proceeds with the interference in which his client is the junior party. He loses the interfer­ence because he failed to file a Preliminary State­ment disclosing dates which would have estab­lished by clear and convincing evidence that his client had a conception date prior to that disclosed by the senior party. Pat may have violated the PTO Code of Professional Responsibility.

14. At a trade show in London, England on July 20, 1987, a British inventor sold a device contain­ing his invention to a few U.S. manufacturers. He filed an application in Great Britain on July 22, 1987. Even though he files a convention applica­tion in the U.S: on Thursday, July 21, 1988 and properly claims foreign priority of the Great Brit­ain application, no valid U.S. patent can be granted to him.

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15. Any document to filed in the and which is required by any law, rule, or other regu­lation to be under oath may be subscribed to as follows if executed within the United States:

I declare [certify, verify or state] under penalty of perjury that the foregoing is true and correct. Executed on (date).

Signature

16. In a design patent application, multiple claims are permitted.

17. A patent owner is stopped from making any further amendments to patent claims in a reexami­nation proceeding if the owner amends the claims in response to an Order to reexamine the owner's patent.

18. No affidavit or declaration is required to be filed with an amendment cancelling essential ma­terial from an application that was filed with a complete disclosure, if such amendment substi­tutes the same material by reference to a U.S. patent and a copy of the patent is furnished with the amendment.

19. If a request for publication of a statutory invention registration (SIR) has been filed in a pending patent application, such request may be withdrawn after the date of the notice of intent to publish the SIR only by way of a petition to suspend the rules accompanied by the appropriate fee.

20. In submitting an information disclosure state­ment to the PTO, a statement to the effect that an item is listed because it was cited during the prosecution of a counterpart foreign application and is not material to the U.S. application is sufficient to satisfy the concise explanation re­quirement of 37 CFR 1.98(a).

21. A practitioner may properly advise a client to disregard a decision of the PTO if, in good faith, the practitioner believes the decision to be incor­rect.

22. When new matter is introduced into an appli­cation by amendm~nt, the proper procedure for acceptance of the new matter into the application by the examiner is for the applicant to file a supple­mental oath or declaration with the amendment.

23. All reissue applications filed after July 1, 1982 must state that the applicant believes the original patent to be wholly or partly inoperative or invalid.

24. If the Commissioner ·does not institute a reexamination proceeding, a partial refund of the reexamination fee is made to the reexamination requester.

25. A patent application claim that includes a mathematical algorithm is never patentable.

26. A party to an interference cannot properly petition for institution of a public use proceeding involving an application in the interference.

27. In an appeal to the PTO Board of Patent Appeals and Interferences from an examiner's final rejection, an applicant may file, as a matter of right, a reply brief within one month of the examiner's answer even though the answer does not raise new points of argument.

28. A request to withdraw by one of the partners of a law firm as attorney of record in the prosecu­tion of a U.S. patent application serves as a with­drawal of all of the practitioners of the firm named in the power of attorney if the request clearly specifies that the partner is signing on behalf of all other practitioners of record of the finn.

29. A new patent application for your client was assigned a filing date of February 6, 1989. How­ever, Application Branch noted that the filing fee was not paid. A "Notice to File Missing Parts of Application" was mailed to you on March 6, 1989.

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The "Notice" set a one month period within which to pay the fee. On April 6, 1989, you mailed the statutory fee and the required surcharge along with a proper certificate of mailing. Your letter arrives in the PTO Mail Room on April10, 1989. Your application will be accorded the filing date of February 6, 1989.

30. Practitioner Quick prepared and flied a patent application naming A and B as joint inventors. During the prosecution, the claims to which A was the sole inventor and the claims to which A and B were joint inventors were cancelled. Also during the prosecution, claims were added to subject mat­ter disclosed in the application, but not previously claimed, which are the joint invention of B and C. A notice of allowance was mailed to Quick allow­ing the claims of B and C. In order to correct the inventorship, all that is required is payment of a fee under 37 CFR 1.17 (h), filing a declaration exe­cuted by C, written consent of the assignee, and an amendment deleting A as an inventor together with a statement by A acknowledging that A's invention is no longer being claimed.

31. Maintenance fees are required for design patents· based on applications filed on or after December 12, 1980.

32. Any agreement or understanding between parties to an interference made in connection with or in contemplation of the termination of the interference must be in writing and a true copy of the agreement must be filed in the PTO within six . months following the effective date of the agree­ment.

33~ In a reexamination proceeding, where a re­sponse was not timely filed, the appropriate action to take would be to file a petition to revive.

34. __ Claims in a patent that are believed to be too broad based on newly discovered prior art can be corrected by filing a reissue application, even if the prior art is discovered more than two years

-after the grant of the patent sought to be reissued.

35. A request for reexamination filed by the patent owner must include a proposed amendment of any claims which the patent owner desires to amend.

36. ·Where a utility application is otherwise ready for issue but contains a requirement for correction of drawings, allowa!lce of the application must be held in abeyance by the PTO until the applicant submits acceptable drawing corrections to the PTO.

37. With respect to a request for reexamination, the examiner's detennination of a substantial new question of patentability affecting any claim of the patent must be based solely on the patents or printed publications cited in the request.

38. If the practitioner who prosecuted the original patent application misunderstood a reference and as a consequence cancelled the broadest, but al­lowable claim, the practitioner's error can be cor­rected by a reissue application filed any time during the term of the original patent.

39. Thomas Lee performed research activities while domiciled in Taipei, Taiwan and working in the research facility of a U.S. based company. He may establish a date of invention for antedating a patent by reference to his activities in Taiwan.

40. Kelly, who is registered to practice before the PTO in patent cases, was prosecuting a patent ap­plication for inventor Alan. Kelly received the first Office action on the application and sent a copy to Alan with a letter explaining that the claims had been rejected under35 U.S.C. 103 and 112, the meaning and significance of those rejec­tions, and possible approaches to responding to the Office action. The Office action was dated November 14, 1988,and thelettercorrectlypointed out that a response to the Office action was due on or before February 14, 1989, but that the fiJ?al date for response could be extended for up to another three months upon payment of a fee. The letter also stated that Kelly was involved in another

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major project at that time and so he would not be able to prepare a response to the Office action for at least two months. On December 2, 1988, Alan rushed into Kelly's office with a full, complete, and proper response to the Office action which he had prepared. Alan explained to Kelly that he had been contacted by a company which wanted to buy the invention frc;>m him as soon as the patent issued. Alan had carefully studied Kelly's letter, the Office action, and the references and had pre­pared the response in hopes of getting the patent issued as soon as possible. Because he was busy with the other major project, Kelly did not want to take the time to read the response, and so Alan spent three minutes orally outlining the response. Kelly signed the response and filed it in the PTO without reading it. As a result of the response, the application was allowed. Kelly's actions in repre­senting Alan were proper.

41. The statement, "This application is a continu­ation-in-part of patent application Serial No. 123,456, now abandoned," appearing in a patent, operates to incorporate in the patent any part of the parent application so referenced.

42. A U.S. patent application is based on an application filed in another country eleven months before the filing date of the U.S. patent applica­tion. The application filed in the other county was patented in that country one month before the U.S. patent application was filed. The U.S. and foreign applications are identical. The U.S. patent appli­cation is not patentable because the foreign patent issued before the U.S. patent application was filed.

43. Smith filed a U.S. patent application for a new widget on October 4, 1984. The application is­sued as a patent on November 8, 1988. Kelly filed a U.S. patent application on an improvement of Smith's widget on March 4, 1985. This applica­tion issued as a patent on September 27, 1988. Kelly can make, use and sell her improved widget without being concerned about infringing Smith's patent.

44. Smith filed a patent application on an inven­tion he had made. Smith assigned the patent appli­cation to his employer, XYZ, Inc. XYZ recorded the assignment and gave a power of attorney to prosecute the application to Morgan, a registered patentpractitioner,retained by the company. When the frrst Office action was received, Morgan sent a copy to Smith With a memorandum saying that he did not think the application would ever be .al­lowed. Smith took a copy of the application and the Office action to Jean, a renowned patent prac­titioner, and Jean reviewed everything and told. Smith that she felt that there was a reasonable ' chance of obtaining allowance of the application if certain amendments were made to the claims. Smith went home and prepared a paper identify­ing the application and captioned ''Revocation and New Power of Attorney" in which Smith revoked the power of attorney of Morgan and appointed Jean as attorney of record for the application. Smith mailed the paper to the PTO. The PTO can properly refuse to recognize Jean as the attorney of record in the application.

45. Ronald, a brilliant but eccentric researcher, was trying to develop a new widget He had completed most of the research and development, but he could not make one optional, though desir­able feature, to work properly. One evening at home he was discussing the problem as he and his family were having dinner. His seven year old daughter, Susan, pointed out that adding a frambus would solve the problem. The next day Ronald tried the widget with the frambus in accordance with Susan's idea, and the desired optional feature worked. Ronald was certain he never would have thought of the frambus himself. Ronald had a patent application prepared on the widget with claims directed to the widget without the frambus and with the frambus. The patent application should name both Ronald and his seven year old daughter as inventors.

46. In response to a restriction requirement be­tween a method of making a product and a method of using the product, you elect claims to the

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method of making the product. After further prosecution, the restriction requirement is made final and you obtain allowance of the claims di­rected to the elected method of making the prod­uct. Since the Examiner held the elected claims allowable, he must now examine the other remain­ing claims to the. method of using the product.

47. Reexamination requesters who are not owners of the patent being reexamined may participate in interviews with examiners if such participation is requested by the patent owners.

48. Patent agent Kelly is prosecuting a patent application with 10 claims in which the examiner issued a final rejection on May 16, 1988, rejecting all of the claims. On October 10, 1988, Kelly filed a response amending claims 1-10 along with a petition for a two month extension of time and a fee in accordance with 37 CFR 1.136(a). On November 11, 1988, Kelly received an advisory action dated November 7, 1988 from the examiner refusing to enter the amendment but indicating that claims 5-lOwould be allowable if presented in a separate amendment. On November 16, 1988, Kelly flied a notice of appeal with the appropriate appeal fee under 37 CFR 1.17(e). The notice of appeal is not effective because the application is abandoned.

49. On June 1, 1988, patent agent Alex filed a patent application which included a specification, ten claims, drawings, and a declaration. As was

. his usual custom, he authorized the PTO to charge the filing fees to his deposit account. Unknown to him, the deposit account did not contain sufficient funds to cover the filing fees. As a result, the application will not be accorded the June 1, 1988 filing date.

50. The Commissioner of Patents and Trademarks may initiate a reexamination proceeding on his own initiative without a request from outside the Patent and Trademark Office.

SECTION 2: MULTIPLE CHOICE

DIRECTIONS: Each correct answer is worth one (1) point There is only one correct answer to each question. Select the answer which is the MOST CORRECT. When several answers are correct and "Each of the above", "(a) or (b)", "(a) and (b)", or the like is the most correct answer because it groups several correc~ answers, no other answer except the most correct answer will be considered correct for receiving credit for the question. For those questions involving PTO policy and procedure, the most correct answer will the policy and procedure which must, shall or should be fol­lowed in accordance with the Manual of Patent Examining Procedure unless modified by a subsequent court decision or a notice in the Office Gazette. No points are awarded for in­correct answers or unanswered questions. The questions must be answered on Section 2 of the Answer Sheet. Ques­tions are answered by darkening the circle on the Answer Sheet containing the letter corresponding to the letter pre­ceding the answer chosen. Questions answered by darken­ing more than one circle will be considered as being incor­rectly answered.

1. It is permissible to include as working ex­amples in the specification of a patent application examples drawn to:

a) Simulated tests and results. b) Tests actually conducted and results achieved. c) Predicted test results. d) Prophetical examples. e) Any of the above.

2. Which of the following statements is true? a) If a protest is filed after allowance of a patent

application, it will be entered in the file but will be considered by the examiner only if the protest includes a document that clearly anticipates an allowed claim.

b) The procedures' for the entering protests are the same for both original and reissue patent appli­cations.

c) A member of the public may submit more than one protest, provided that a second or subse­quent protest clearly raises new issues that could not have been earlier presented.

d) (a) and (c) only are true. e) (a), (b) and (c) are true.

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3. You filed a patent application on January 3, 1989, without an oath and without a drawing referred to in the description. The PTO notified you in a communication dated January 16, 1989 that the oath and drawing were· missing and set a two month period from the date of the communi­cation within which to submit the missing parts. You filed the drawing on February 3, 1989, and you filed the oath with appropriate surcharge on March 3, 1989. The filing date of the application is:

a) January 3, 1989. b) January 16, 1989. c) February 3, 1989. d) March 3, 1989. e) Not assigned.

4. You are a registered patent agent representing Jones. You received a telephone restriction re­quirement from the examiner requiring you to elect between your client's method and apparatus claims. You elected the apparatus claims. The examiner rejected the elected claims. You re­sponded to the rejection, but you did not request reconsidereation of the restriction requirement. The examiner made the restriction requirement final and again rejected the apparatus claims and made the rejection final. You filed an amendment and successfully obtained allowance of the appa­ratus claims. The examiner mailed a notice of allowanceto you and also required drawing cor­rections. He set a period of three (3) months within which to submit the corrected drawings .. Your client now wants to have the method claims ex.am­ined. Your petition to review the restriction re­quirement will be granted:

a) If filed after you receive the notice of allowance.

b) If filed before you submit the corrected drawings.

c) If filed after you pay the issue fee. d) (a) or (b) only. e) None of the above.

Answer Questions 5 and 6 based on the following paragraph. Consider each question independ­ently of the other.

On June 4, 1986, Smith conceived in the United States a cobalt st~el alloy comprising certain amounts of iron, cobalt, carbon, chromium, and tungsten. Upon reviewing Smith's research rec­ords and after talking to Smith, you conclude that Smith, without diligence, reduced the invention to practice in the UnitedStatesonJuly 15,1986. You filed a patent application for Smith in the PTO on April9, 1987. The only claim in the application is as follows: "A cobalt steel alloy comprising 70.5 to 77.5% iron, 15 to 17% cobalt, 0.5 to 1.0% carbon, up to 2.5% chromium, and 7 to 9% tung­sten."

5. A U.S. patent application was filed by Jones on May 9, 1986 and matured into a patent granted on July 5, 1988. The patent discloses, but does not claim, an alloy consisting of 75.95o/o iron, 15.1 o/o cobalt, 0.75% carbon, 8.2% tungsten. In deter­mining the patentability of Smith's cobalt steel alloy invention, Jones' alloy disclosure is:

a) Prior art by virtue of 35 U.S.C. 102(a). b) Prior art by virtue of 35 U.S.C. 102(b). c) Prior art by virtue of 35 U.S.C. 102(e). d) Prior art by virtue of 35 U.S. C. 102(f). e) None of the above.

6. An Austrian patent application tiled by Weenger on May 29, 1985 matured into a patent on July 8, 1986. The Austrian patent specification discloses" an alloy consisting of72% iron, 15% cobalt, 1.0%" carbon, 8.5% tungsten and 3.5% nickel. In deter­mining the patentability of Smith's cobalt steel alloy, Weenger's disclosure is:

a) Prior art by virtue of 35 U.S.C. 102(a). b) Prior art by virtue of 35 U.S.C. 102(b). c) Prior art by virtue of 35 U.S.C. 102(d). d) Prior art by virtue of 35 U.S.C. 102(f). e) None of the above.

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7. Within the statutory periOd set for responding to a final rejection, an applicant can properly:

a) Cancel claims. b) Comply with any requirement as to form which has been made by the examiner.

c) Present rejected claims in better form for consideration on appeal.

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

8. An amendment on the merits filed in an appli­cation may be entered upon a showing of good reasons why the amendment is necessary and not earlier presented in which of the following circum­stances:

a) After final rejection. b) After an appeal has been taken. c) When the amendment might not otherwise

be proper. d) (a) and (c) only. e) (a), (b) and (c).

9. Which of the following statements regarding design patents or applications is false?

a) No description, other than a reference to the drawing, is ordinarily required in a design applica­tion.

b) The title of the design must designate the particular article claimed.

c) Design patents remain in force for a period of fourteen years from date of issue. d) A design application filed in the PTO is entitled to foreign priority rights provided it is fil¢ within six months of its foreign counterpart.

e) Obviousness is not a test for patentability of a claimed design.

10. Kelly, a registered patent practitioner, is representing his client, Ajax Corporation, in a complex interference against Big Company which is represented by registered patent practitioner Jean. The interference has become very expen­sive, and Kelly is uncertain that Ajax Corporation can win based upon the evidence he has gathered. Accordingly, Kelly advises the president of Ajax

Corporation to directly contact the president of Big Company to enter into negotiations in an effort to resolve the interference to minimize further legal expenses. Which of the following state­ments best describes Kelly's advice?

a) Kelly's advice is unethical because it is im­proper for the pres~dent of Ajax to communicate directly with the president of Big without consult­ing with Jean.

b) Kelly's advice is ethical because it is proper for a practitioner to encourage a client to meet whh an opposing party for settlement discussions.

c) Kelly's advice is unethical because direct: negotiation between parties to an interference is not penni tted under PTO rules.

d) Kelly's advice is unethical because as the practitioner representing Ajax Corporation, he should himself carry out negotiations with Big representative, Jean.

e) Kelly's advice is unethical because· he cannot advise his client to contact the president of Ajax Corporation to enter into direct negotiations to settle the interference.

11. The expression "single-dependent claim" means a claim that depends from one claim only, and the expression "multiple-dependent claim" means a claim that depends from two or more

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other claims. Which of the following situations describe a claim which would be considered a proper dependent claim? a) The claim depends alternatively from frrst or second independent claims, or from a single-de­pendent claim, all previously set forth.

b) The claim depends from a single-dependent claim and an independent claim, both previously set forth.

c) The claim depends from frrst and second single-dependent claims, both subsequently set forth.

d) The claim depends alternatively from a frrst single-dependent claim previously set forth, or from a second single-dependent claim subsequently set forth.

e) The claim depends alternatively from a single­dependent claim or from a multiple-dependent claim, both previously set forth in the application.

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12. Which of the following statements is true? a) A protester must show service of a copy of

a protest upon the applicant or his or her attorney or agent or file duplicate copies of the protest in the Office before the protest will be entered into the application file.

b) A protester may submit any information demonstrating that the application lacks compli­ance with any statutory requirement of patentabil­ity.

c) If a person contemplating filing a protest to a pending patent application believes that the ap­plicant will deny the authenticity of documents or evidence that the protester intends to submit in support of an alleged public use and/or "on sale" bar, the person will find it advantageous to seek a public ·use proceeding rather than filing a protest.

d) (b) and (c) only are true. e) (a), (b) and (c) are true.

13. Two months after filing a patent application, you file an information disclosure statement. After the frrst Office action, the inventor brings to your attention a very pertinent reference in the Chinese language. You want the examiner to consider this reference. Which of the following procedures would be most appropriate under current PTO policy and procedure to have the examiner con­sider the reference?

a) Send only a copy of the reference to the ex­aminer, without sending any translation of the ref­erence.

b) Send a copy of the reference and an English language translation of it to the examiner, without explaining the relevance of the reference.

c) Send the reference and an English transla­tion of the reference to the ~xaminer, with an ex­planation of why it is pertinent and why it was not earlier filed.

d) Send only the reference to the examiner with an explanation of its relevance, and offer to have it translated if the examiner cannot obtain a trans­lation.

e) Give the examiner an oral explanation of the relevance of the reference.

14. Which of the following statements about interviews is true?

a) Interviews must be had in the examiner's rooms at such times as the examiners designate unless the Commissioner otherwise authorizes.

b) Interviews should be arranged for in ad­vance.

c) In every instance where reconsideration is requested in view of an intervi~w with an exam­iner, a complete written statement of the reasons presented at the interview as requiring favorable action must be filed by the applicant.

d) (b) and (c) only are true. e) (a), (b) and (c) are true.

15. Which of the following can serve as a basis for a detennination by ·the Commissioner that reex­amination of a patent should be ordered?

a) A substantial new question of patentability on th.e basis of prior art consisting of patents or printed publications.

b) A substantial new question of prior public use or sale under 35 U.S.C. 102(b).

c) A substantial new question of patentability concerning the adequacy of the specification under 35 U.S.C. 112.

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

16. Which of the following will prevent Robert Smith from obtaining a valid patent on his inven­tion?

a) Smith's U.S. patent application is filed thir­teen months after it is flrst actually reduced to practice.

b) A description of the invention is published in a magazine eleven months before Smith's U.S. patent application is filed.

c) Smith conceived the invention on January 3, 1986, worked on it every working day until it was actually reduced to practice on March 13, 1986. Jones conceived the invention on December 15, 1985, worked on it occasionally until it was actu­ally reduced to practice on April 15, 1986.

d) Smith files his patent application in the PTO on February 17, 1987. A full and complete de­scription of Smith's invention, as disclosed in his

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patent application showing it to be operative and useful, was published on February 1, 1986 in a university newspaper which states "Robert Smith is still conducting experiments on his invention."

e) None of the above.

17. On June 1, 1987, Wilhelm Henze, a citizen and resident of Switzerland, filed in the Swiss Patent Office an application for a patent on an invention he had made. The application was in the German language. On May 31, 1988, Wilhelm sent you by telecopier a copy of the Swiss patent application as " .filed and instructed you to file a patent application in the PTO on the same invention, so as to have the priority date of his Swiss application. Which of the following best describes the mininum essential documents that you, acting as Wilhelm's patent agent, must file in the PTO by June 1, 1988 in order to have filed a U.S. patent application for Wilhelm Heinzefor which the priority of his Swiss application can be properly claimed?

a) A copy of the German language specifica­tion and claims, a copy of the drawings from the Swiss application, and a letter stating that these papers constitute a patent application by Wilhelm Henze and giving his address.

b) In addition to a) above, a completed declara­tion according to 37 CFR 1.63, but unsigned.

c) An English language translation of the Swiss specification and claims, a copy of the drawings from the Swiss application, and a completed dec­laration according to 37 CFR 1.63, but not signed.

d) Same as (c) above, except that the declara­tion is signed by Wilhelm Henze.

e) Same as (d) plus payment of the filing fee.

18. Your client informs you that he is about to begin manufacture of an improved gizmo. He further informs you that a competitor has been marketingagizmounderU.S.PatentNo.4,900,000, and he wants to avoid infringing the patent. He further wants to obtain a patent for the innovative modifications he has made to the gizmo. You learn that Patent No. 4,900,000 was granted on an application ftled on June 1, 1987. The application was a continuation-in-part of an earlier applica­tion filed on August?, 1985, which is still pending.

The patent refers to the pending application by serial number and filing date. The competitor's gizmo has been on sale since May 1, 1985. The pending application may disclose subject matter not in the issued patent. Which of the following information is available to you from the PTO for analysis of what your client can claim in his patent application? ·

a) Subject matter in the file history of the pending application that is common to the issued patent.

b) History ·of the prosecution of the parent application, if any, relating to claimed subject matter in the issued patent.

c) The complete file history of the parent ap-plication. '

d) (a) and (b) only. e) None of the above.

19. An application must be filed today, April12, 1989, to avoid a statutory bar. You plan to file it using the "Express Mail" provisions of the PTO rules. Which of the following is the most correct way to proceed?

a) As the agent, you should sign the certificate of mailing by "Express Mail", date the certificate "April12, 1989", and have your secretary person­ally deliver the application to the U.S. Postal Service today.

b) Your secretary should sign the certificate of mailing by "Express Mail", date the certificate "April12, 1989", and personally deliver the appli­cation to the U.S. Postal Service today.

c) You should sign the certificate of mailing by "Express Mail", date the certificate "April 12, r

1989", and have your secretary deposit the appli-, cation in the "Express Mail" box receptacle in your office building today before the last pick-up ..

d) There is no need for a certificate of mailing on the application papers in this instance since the date of deposit will be indicated on the "Express Mail" label by the U.S. Postal Service clerk.

e) None of the above would be proper.

11

20. An affidavit or declaration swearing back of a reference is appropriate:

a) Where the reference, a prior U.S. patent to a different inventive entity, claims the same inven­tion.

b) Where the reference, a prior U.S. patent, is to the same inventive entity and claims the same invention.

c) Where the reference, a prior U.S. patent to a different inventive entity, with a patent date less than one year pri~r to the applicant's effective filing date, shows but does not claim the invention claimed by applicant.

d) Where the reference is a foreign patent issued to the applicant for the same invention just prior to the filing date of the applicant's U.S. patent application and the foreign patent is based on a foreign application filed more than twelve months prior to the filing date of the U.S. patent application.

e) Where the effective filing date of applicant's parent U.S. application ispriorto the effective date of the reference.

21. An applicant for a U.S. patent, who is dissat­isfied with the decision of the Board of Patent Appeals and Interferences affmning an examiner's rejection of the claims, may properly:

a) Appeal the decision to the U.S. Court of Appeals for the District of Columbia.

b) Appeal the decision to the U.S. District Court for the District in which the applicant re­sides.

c) Appeal to the Commissioner of Patents and Trademarks.

d) File civil action against the Commissioner of Patents and Trademarks in the U.S. District Court for the District of Columbia.

e) Appeal the decision to the U.S. Claims Court.

22. An invention was conceived by Green in the United States on October 13, 1986. Green actually reduced the invention to practice on November 10, 1986. A U.S. patent application based on the invention was filed on Monday, January 5, 1987. A valid U.S. patent will be prevented from iss'=!~g if:

a) An article by Blue was published in a French technical journal on January 4, 1987 disclosing the same invention.

b) The invention was described in a U.S. patent to Purple issued on November 8, 1988 with a U.S. filing date of November 19, 1986.

c) An article by Gray was published in a Cana­dian technical journal on October 11, 1986 dis­closing the same invention. The Canadian journal was not available in the United States until Octo­ber 14, 1986.

d) The same invention was made on Septem­ber 8, 1986 in England by Red, an American stu­dent studying at Oxford University. On his return home for Christmas he contacted a U.S. patent attorney and a U.S. patent application was filed on January 10, 1987.

e) None of the above.

23. Which of the following statements concerning prior art submissions to the PTO is false?

a) Prior art should always be submitted in accordance with the provisions of 37 CFR 1.98.

b) When an information· disclosure statement conforming to· PTO regulations is filed after all claims are allowed in an application, the examiner must consider publications submitted in the infor­mation disclosure statement.

c) Copies must be supplied of references cited, even of U.S. patents.

d) PTO Rules do not require English language translations of foreign language publications if the translation is not readily available.

e) The concise explanation of each listed pub­lication may be nothing more than the identifica­tion of the particular figure or paragraph of the publication which has some relation to the claimed invention.

12

24. A decision of the Board of Patent Appeals and Interferences includes a new ground of rejec­tion that would have made claims 1-10 obvious over a certain reference, not previously of record in the application. Given the additional informa­tion recited below, which of the following state­ments is true?

a) Claims 1-8 only were on appeal. Claims 9 and 10 stood allowed by the examiner at the time of appeal. The Board's decision is final in the case regardless of whether claims 9 and 10 had been previously allowed.

b) Claims 1-10 were on appeal. Appellant has the right to reconsideration by the Board of its decision, provided a request for such reconsidera­tion is filed within one month from the date of the decision, accompanied by an affidavit containing a showing of facts to be added to the record.

c) Claims 1-10 were on appeal. Appellant has the right to have the new rejection of claims 1-10 considered by the primary examiner. The state­ment of the Board is binding on the examiner only to the extent that any amendment and/or new showing of facts submitted by the appellant fails to overcome the new ground of rejection.

d) Claims 1-8 only were on appeal. Claims 9 and 10 stood allowed by the examiner at the time of appeal .. The new rejection nullifies the final . rejection and reopens the prosecution. The claims may be amended and/or new claims may be sub­mitted limited to subject matter disclosed in the application, provided that any such amended or new claims avoid the new ground of rejection.

e) Claims 1-8 only were on appeal. Claims 9 . and 10 stood allowed by the examiner at the time of appeal. Upon remand to the examiner, the claims can be amended to avoid the new ground of rejection. A further rejection by the examiner of claims 1-10 on the basis of the Board's statement entitles appellant to appeal the examiner's rejec­tion to the Board.

25. Following a decision of the Board of Patent Appeals and Interferences affirming the examiner's rejection o~ all claims in the application, which of

the following is true? a) A notice of appeal to the Court of Appeals

for the Federal Circuit must be filed thirty (30) days after the decision of the Board.

b) Proceedings in the application are consid­ered terminated by failure to timely file an appeal to the court or a civi·l action except where claims stand allowed in the application or where the nature of the decision requires further action by the examiner.

c) A request for reconsideration or modifica­tion of the decision may be made if filed within sixty (60) days from the date of the decision.

d) (b) and (c) only are true. e) (a), (b) and (c) are true. ,

26. Which of the following statements concerning the conduct of a practitioner appearing in a profes­sional capacity before the PTO is ethical?

a) A practitioner may argue, based on his or her analysis of the evidence, as to the justness of any cause or the credibility of any witness.

b) A practitioner may ask any question even if the practitioner has not reasonable basis to believe the question is relevant to the issues in the case.

c) A practitioner may asserthisorherpersonal knowledge of the facts in issue except when testi­fying as a witness.

d) A practitioner may assert his or her personal opinion as to the justness of any cause.

e) A practitioner may assert his or her personal opinion as to the credibility of any witness.

27. U.S. patent application A incorporates certain .· material by reference to a particular publication. , Which of the following statements is true?

a) Essential material may be incorporated by reference to a U.S.patent which itself incorporates essential material by reference.

b) Non-essential material may be incorporated by reference to non-patent publications for the purpose of indicating the background of the inven­tion.

c) Essential and non-essential material may be incorporated by reference to a published foreign

13

patent application which, at the time application A was filed, had not matured into a patent.

d) If application A incorporates essential ma­terial by reference to pending and commonly owned application B in which the issue fee has not been paid, applicant will not be required prior to exami­nation of application A to amend the disclosure of application A to include the material incorporated by reference.

e) Essential material may be incorporated in application A by reference to a magazine article published in the U.S.

28. Which of the following is not required as part of the declaration when a declaration is used in lieu of an oath?

a) The country of citizenship of each inventor. b) A warning that willful false statements are

punishable by fine or imprisonment. c) A warning that willful false statements may

jeopardize the validity of the application or any patent issuing thereon.

d) The proper official seal of a person author­ized by law to administer oaths.

e) Signature of the inventor.

29. Which of the following components must be a part of every reissue application?

a) An offer to surrender the original patent. b) A statement specifying how the errors in the

original patent arose or occurred. c) An acknowledgement of a duty to disc~ose

infonnation the applicant is aware of which _is material to the examination of the application.

d) A statement that the errors arose without any deceptive intention.

e) All of the above.

30. Which of the following is not a required in a design patent application?

a) The name of the applicant. b) A drawing of the design. c) The title of the design. d) An abstract of the disclosure. e) An oath or declaration.

31. Which of the following is an issue which can be properly raised before the Board of Patent Appeals and Interferences on an appeal from an examiner's final rejection?

a) The propriety of an examiner's refusal to enter an amendment presented after the final rejec­tion.

b) The propriety of an examiner's refusal to enter the appellant's reply brief.

c) The prematureness of the final rejection. d) The examiner's requirement to cancel "new

matter" from the specification. e) None of the above.

32. The examiner issued a final rejection setting a three (3) month shortened statutory period for response beginning November9, 1988. You filed a response on January 6, 1989, which included an amendment of some of the rejected claims. The examiner issued an advisory action on March 16, 1989 advising you that the amendment would be entered for purposes of appeal, but the claims remained rejected for the reasons of record. A notice of appeal and fee may not be filed later than:

a) May 9, 1989 with a two month extension of time fee.

b) May 9, 1989 with a three month extension of time fee.

c) May 16, 1989 with a two month extension of time.

d) May 16, 1989 with a three month extension of time.

e) July 6, 1989.

33. A public use proceeding has been instituted on design and utility applications for a novel zy cabinet invented in the United States by an inven­tor employed by Ajax Corporation. A miniature model of the cabinet has been built and the produ·c­tion drawings were finished before the patent applications were filed. A statutory bar would occur if the applications were filed:

a) Within one year of the date the flrst produc­tion units of the cabinet were made.

b) Within one year of the flrst shipment of the cabinet to a customer.

14

c) Within one year of the date the first full size, operational cabinet was built and successfully tested.

d) More than one year after the marketing department of Ajax showed the drawings and the model cabinet to several manufacturers of TV sets at their corporate headquarters in Chicago, illinois and represented to the manufacturers that the cabinet could be built immediately in any quantity needed.

e) None of the above.

34. Which of the following changes can be made in a patent by a certificate of correction?

a) Correcting arecentlydiscovered typographi­cal error made by your secretary in the original patent specification.

b) Adding an example of a recently discovered preferred embodiment to meet your on-going best mode disclosure requirement.

c) In a patent having process claims, adding product-by-process claims to claim the resulting product which is produced by your client's novel process.

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

35. A and B are inventors. Each is employed by a different department of the same company. A and B at different times, but in communication with one another, invent a new widget having inventive features X and Y. A is the inventor of feature X. B is the inventor of feature Y. A files a U.S. patent application on Friday, January 8, 1988 disclosing both features X andY, but claim­ing only feature X. B ftles a U.S. application on Monday, January 11, 1988 disclosing features X andY, but claiming only feature Y. OnJanuary9, 1987, B publis~ed an article describing the new widget in detail including features X andY. As the company's in-house registered patent practitio­ner, '._Vhich of the following courses of action should you pursue in order to serve your employer's best interests in obtaining optimum patent protec­tion on the new widget?

a) Amend B 's application to indicate that it is a continuation-in-part of A's application and prose­cute both applications.

b) File a divisional of A's application with A and Bas joint inventors claiming the feature Y aJ}d the new widget wit~. features X andY. · ·

c) File an amendment adding the claims for feature Y to A's application, without joining Bas inventor and expressly abandoning B 's applic~-tion. ·

d) Add Bas a joint inventor in A's application and add claims to feature Y and claim to the new widget having features X andY.

e) File an information disclosure statement including the published article in B 's application, and prosecute both A and B applications sepa­rately.

36. A U.S. utility patent issued on Tuesday, February 12, 1985. The patent was filed on Au­gust 4, 1982 and is a continuation application of an application filed on December 11, 19&0. Small entity statements were flled in both applications. If the maintenance fee was paid on Tuesday, February 14, 1989, what was the fee due?

a) $225 b) $280 c) $335 d) $560 e) No maintenance fee was due.

37. Which of the following statements about a drawing is true?

a) A drawing is required for all applications. b) A drawing cannot be filed if it is informal. c) A drawing may be required by the examiner

in an application that has been accepted without a drawing.,

d) A drawing may never be filed in color. e) Photographs are never acceptable as draw­

ings.

15

38. Which of the following statements is false? a) Inventors may apply for a patent jointly even

though they did not physically work together or at the same time.

b) Inventors may apply for a patent jointly even though each did not make the same type or amount of contribution.

c) Inventors may apply for a patent jointly even though each did not make a contribution to the subject matter of every claim of the patent.

d) An assignee showing sufficient propriety interest cannot file an application on its own behalf if the inventor refuses to execute the application.

e) If a joint inventor refuses to join in making an application for patent, the application may be made by the other inventor on behalf of himself and the refusing inventor.

39. In which of the following situations is the use of a terminal disclaimer proper?

a) To obviate an obviousness-type double pat­enting rejection of claims in an application over claims of a patent having the same inventive entity.

b) To overcome a rejection under 35 U.S.C. 102(e)/103.

c) Where there is no patentable difference be­tween the claims in different applications of the same inventive entity, and the claimed inventions are identical.

d) Where there is no common ownership be­tween two applications.

e) All of the above.

40. Which of the following is not appropriate subject matter for a petition?

a) PTemature final rejection. b) Holding of abandonment. c) The form and sufficiency of an affidavit. d) The form and sufficiency of a claim. e) Denial of a request for reexamination.

41. Applicant appealed from the final rejection of claims 1-10. The Board of Patent Appeals and Interferences issued a decision in which it (1) sustained the examiner's rejection of claims 1-3 under 35 U.S.C. 102, (2) reversed the examiner's rejection of claims 4-7 under 35 U.S.C. 102, (3) raised a new ground of rejection of claims 4-7 under 35 U.S.C. 103, and (4) reversed the examiner's rejection of claims 8-10 under 35 U.S.C. 103. Which of the following options, if any, is or are available to applicant?

a) File an inunediate appeal to the Court of Appeals for the Federal Circuit.

b) Submit an amendment of claims 4-7 and/or a showing of facts in response to the new ground of rejection and have them considered by the examiner.

c) File a civil action in the District Court for the District of Columbia.

d) Do nothing and allow the case to be passed to ~ssue by the examiner with claims 8-10.

e) All of the above.

42. Which of the following statements is true re­specting the proper disclosure in a patent applica­tion?

a) An applicant must disclose the best mode known for practicing the invention at the time the application was filed.

b) An applicant must make an enabling disclo­sure.

c) An applicant must satisfy a description re­quirement.

d) The specification and claims must be defi­nite and this requirement is separate and apart from the description requirement.

e) All of the above are true.

43. Agent is prosecuting a patent application. The examiner issued a final rejection on May 15, 1988, rejecting all 10 claims in the application. Agent filed a timely responsive amendment amending claims 1-3 and 5-10. Agent also submitted an affidavit of Dr. Techie under 37 CFR 1.132 in an

16

effort to show unexpected results achieved by the claimed invention. The examiner issued an advi­sory action refusing to enter the amendment or consider the affidavit, but allowed claims 5-10. Which of the following courses of action, upon the advice given to and consent of the client, would be a proper course of action for an agent to take?

a) Do nothing. The rejected claims will be automatically cancelled by the PTO and the appli­cation will proceed to allowance with claims 5-l 0.

b) File an amendment cancelling claims 1-4 with any necessary petition for extension of time

~ and fees. c) File a notice of appeal from the final rejec­

tion'of claims 1-10. d) File a civil action in the appropriate District

Court with any necessary petition for extension of time and fees in order to have the affidavit evi­dence considered.

e) (b) or (c) only.

44. As a registered practitioner acting for a client, which of the following statements is or are true?

a) If your client assigns the application to a third party, your power of attorney or authoriza­tion of agent is revoked.

b) When filing a paper in the PTO acting in a representative capacity, you must sign your name over the word "Representative".

c) A principal attorney or agent of record may appoint an associate attorney or agent wpo shall then be of record.

d) Your clienf was a sole inventor. Before he died, he assigned to you a part interest- in the application. The power of attorney in the applica­tion authorizing you to represent the inventor before the PTO is automatically tenninated by the inventor's death.

e) (c) and (d) only are true.

45. Which of the following statements concerning petitions to the Commissioner is true?

a) Any petition to the Commissioner filed two or more months from the action complained of will be dismissed· as untimely.

b) A petition to the Commissioner taken from a premature final rejection by an examiner in an ex par!e prosecution of an application need not be preceded by arequestthattheexaminerreconsider the prematurity of the final rejection.

c) Petitions to the Commissioner must be ac­companied by affidavits or declarations.

d) An oral hearing will be granted in connec­tion with any petition to the Commissioner re­questing a hearing.

e) None of the above are true.

46. Rick filed a U.S. patent application on an invention he had made. He assigned the applica­tion to ABC Company. The company recorded the assig!lment in the PTO and filed a power of attor­ney in the application authorizing Morgan, a reg­istered practitioner in Chicago, illinois near where ABC Company is located, to prosecute the appli­cation. The power of attorney directed all corre­spondence to be sent to Morgan. Morgan then filed a paper giving associate power of attorney in the application to Sam. The paper includes Sam's business address in Arlington, Virginia. To whom will the PTO send correspondence related to the application?

a) Rick b) ABC Company c) Morgan d) Sam e) (c) or (d) only.

47. Which of the following may represent an applicant for patent before the PTO?

a) A registered patent agent or attorney who is : under investigation pursuant to 37 CFR 10.131.

b) A person registered to practice before the . PTO.

c) A person not registered to practice before the PTO, but who has been given limited recogni­tion by the PTO Director of Enrollment and Pi sci­pline to prosecute applicant's application. ·

d) (b) or (c) only. · e) (a), (b) or (c).

17

48. Which of the following persons may properly be named as theapplicanton a United States patent application?

a1 A person who visited Tibet and had the invention explained to him by a Tibetan monlc The monk has never left Tibet and is the only person who previously knew of the invention.

b) The executrix of the estate of an inventor who, before she died, had made the invention and had disclosed it to no one. The inventor left a complete written description of the invention in a sealed envelope with her will. The description was found by the executrix.

c) The wife of the inventor, where the inventor felt he did not have enough money to afford the expense of a patent application, but the wife used money she had saved on her own and wanted to surprise the inventor by presenting him with the issued patent for his birthday.

d) A co-worker of the inventor. The co-worker had nothing to do with the making of the invention, but the inventor agreed that the co-worker should be named as inventor because the co-worker needed the bonus their employer gives to inventors when a patent application is filed.

e) None of the above.

49. When filing a patent application in the PTO addressed to the Commissioner of Patents and Trademarks, Washington, D.C. 20231, which of the following statements is true?

a) The "Express Mail Post Office to Ad­dressee" service of the U.S. Postal Service can be used provided the application papers include a proper certificate of mailing by "Express Mail".

b) Federal Express® can be used provided the application papers include a proper certificate of mailing by "Expre_ss Mail".

c) The "Express Mail Post Office to Post Of­fice" service can be used provided the application papers include a proper certificate of mailing by "Express Mail".

d) (a) and (c) only are true. e) (a), (b) and (c) are true.

50. Which of the following acts, if any, would ··result in the abandonment of a pending patent ap­plication?

a) File a response. on July 14, 1989 to a non­final rejection dated February 1, 1989 in which the examfner ~e( a tPfee .month shortened statu~ory

.. period _for respo~. The response includes a ,. ~proper petition f«?r extension of ktne and autliori­

zatioa to ,charge· the appropriate extension of time fee to the practitioner's deposit account which has

· a balance of $10,000. . . ' b) File a response on July 14, 1989 to a restric­

·tion requirement dated F~bnlary 1, 1989 in which the examiner set a one month shortened statutory

.. period for respon~e .. The respon~e includ.es ~ pe~ tition for extension. of time and authorization to .charge the extension fee t9 the practitioner's de­posit ~~coun~ which has a balance of $10,000 . · · c) File a -continuation. application under 37 CFR 1.60 on-Aprill2, 1989 with the appropriate f~es in response to a fmal rejection dated Febru­arY 12. 1989 in which the examiner set a three month shortened statutory period for response,

d) File an application for a patent on the inven­tion in a foreign country seven months after the United State.s application was filed without obtain­ing a license for foreign filing from the Commis­sioner of Patents and Trademarks. The record of the U.S. application includes an opinion of the Secretary of Defense that the disclosure of the in­vention would be detrimental to the national de­fense.

e) None of the above.

END OF THE MORNING SECTION OF tHE EXAMINATION

18

Test Number 014A

Test Series 189 NAME ____________________ __

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

REGISTRATION EXAMINATION FOR PATENT ATTORNEYS AND AGENTS

April12, 1989

Afternoon Section (100 .Points) Time: 3 Hours

DIRECTIONS

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

This section of the examination consists of three (3) essay questions. The point value for each question is indicated at the beginning of each question. All answers must be written in the Answer Book provided to you.

Points will be deducted for any claims written which are indefinite, add new matter, not within the scope of the invention as described or shown in any drawings, contain poor English grammar or would be open to any other objection/rejection that would normally result in the course of patent examination. Points will also be deducted for failure to properly follow and employ all controlling statutory provisions and regulations as well as Patent and Trademark Office policy and procedure. Citation of actual cases is not required, however, wrong citations will be basis for deduction of points. Points will be deducted in essay answers for employing irrelevant or incorrect reasoning, failing to follow instructions, using poor English grammar, and failing to answer the question posed. Do not assume additional facts not found in the questions. You must obtain a score of at least 70 points to pass this section of the examination .

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

OR TO BEGIN THE EXAMINATION

1

QUESTION 1 (25 Points)

Instructions: This question is directed to claim drafting and consists of three options. You must SELECT ONE of the options and draft the claim or claims as directed. If you select more than one option, only the ftrst option appearing in your Answer Book will.be graded. Points will be deducted for claiming subject matter not within the scope of the invention as described or as shown in L.e figures, for including language which is indefinite or does not have antecedent basis, or for failing to interrelate the elements or components of your claim (Options A and B) or to present claims to compounds providing unexpected activity (Option C).

OPTION A: The invention in the figures below is directed to a novel scissors for cutt~ng hair having a pair of cutting blades and a pointer loop.

22

I ,..-:,r: I •

I "" J ., I \ I \ < 22 I '~I

;' \ ~,) I / ' /1 ... ,LI v' r ' I

' I ' I \ I \I I

10

FIG I

FIG 2

2

46

12

F/ G 3

~2 , ,

18

34

The scissors include a pair of cutting members 12 and 24 with cutting edges 18 and 32, respectively, which are pivotally secured to each other at their mid-points by screw 26.

An important feature of the invention is a thumb screw 42 which is threaded through an aperture 40 (see Fig. 3) in cutting member 12 and which bears against the bearing surface 44 to adjust the proximity of the cutting points 28 and 34.

Another important feature of the invention is that the pointer loop 46 is positioned su~h that when the user positions the pointer finger (see Fig. 1) through the pointer loop 46, the scissors 10 is substantially balanced horizontally without tilting to one side. Finger loop 36, pointer loop 46, and cutting member 24lie in a plane through the center A of finger loop 36 and center B of of pointer loop 46 (see Fig. 2). With such a feature, the scissors 10 may be held in comfort to produce a more accurate cut.

Draft a claim to a scissors for cutting hair as shown in Figure 2. Your claim must include and interrelate at least all of the following elements: thumb screw 42, cutting members 12 and 24, thumb loop 22, finger loop 36, pointer loop 46, bearing surface 44, arcuate shaped finger brace 38, cutting edges 18 and 32, and threaded aperture 40. The object of this question is to demonstrate your ability to draft a claim which clearly defines how the claimed elements interrelate to each other as opposed to being able to merely draft a broad claim. For purposes of this examination, you may not be your own lexographer to name the elements identified above. You must the use the terminology set forth in the above description. Your claim must define a scissors that is operative in the manner described and shown above. You may not describe any of the above mentioned required elements in terms of means plus function. A claim drafted to any method or method of use will receive no credit.

GO TO PAGE 4 FOR OPTION B

3

-~···-·---

OPTION B: The inven.tion in the figures below is directed to a novel emergency exit light circuit.

/36 ~ - - -- - - - - ~ - - ·- - - - -' i

15

16

10

4

Under normal operating conditions, dual filament lamps 24 and 25 of the emergency exit sign 10 are lighted from house current coming in through lines 15 and 16 shown in Fig. 1 to the primary 17 of transformer 18. From a secondary 20, filaments 22 and 23 of lamps 24 and 25 are energized. The circuit includes power indicating light 30 which illuminates when the normal power supply is on. If the lights 24 and 25 go out and the light 30 is still on, the trouble is not with the power supply but with the internal circuit.

An auxiliary power_ supply 32, preferably a rechargeable nickel-cadmium battery, is normally kept in a stand­by condition and is kept charged by a current regulating circuit 34 having a diode and re~istor operating from secondary 33. No power is drawn from the battery 32 except when the main power supply fails or is cut off from the transformer 18; then a changeover circuit 36 (the area enclosed by broken lines in Fig. 1) puts the battery 32 into the lamp circuit.

The changeover circuit includes a transfer relay 37 and switch 38. The switch 38 is closed when the relay coil 37 is de-energized and is open when the relay 37 is energized; the relay 37 is energized so long as the house power is on; so the switch 38 is usually open. Failure of house current de-energizes the transfer relay 37 and causes the switch 38 to close against contact 40. This causes the capacitor 43 to discharge. The diode 42 blocks the discharge so that the discharge energizes the voltage relay coil44, thereby closing the switches 45 and 46: Closure of the switch 45locks the voltage relay coil to the battery current and keeps the switch 46 closed, thereby keeping the battery 32 in circuit with the filaments 47 and 48 and lighting the lamps 24 and 25. Power failure may be simulated, for test purposes, by a button switch 50 that, when pressed, opens the power line 15.

Draft a claim to an emergency exit lighting system employing dual filament lamps and changeover relays as shown in Fig. 1 and described above. Your claim must include and interrelate at least the following elements: main power supply 15 and 16, capacitor 43, diode 42, relay coils 37 and 44, transformer 18, switches 38, 45 and 46, primary 17 of transformer 18, secondary 20 of transformer 18, rechargeable battery 32, contact 40, and lamps 24 and 25. The object of this question is to demonstrate your ability to draft a claim which clearly defines how the claimed elements interrelate to each other as opposed to being able to merely draft a broad claim. For purposes of this examination, you may not be your own lexographer to identify the elements described above. You must use the terminology set forth in the description of the invention. Also, you may not describe any of the above mentioned required elements in terms of means plus function. Any claim to a method or method of use will receive no credit.

GO TO PAGE 6 FOR OPTION C

5

OPTION C: This invention relates to fungicidal compounds. In particular, the fungicides are derivatives of a 3,4-dihydro-2H-l-benzopyran heterocyclic ring having the following position numbers:

2H-1-

The compounds of the invention are represented bv the following formulas:

~0 1 ;:·0 ~CHz/NJCHJ

Cl-C~4-CX). 0

6

cH2-N-ClH7 I CH3

7

-~------------------~----- ..... ···------

In the foregoing formulas, some of the compounds included one of the following additional heterocyclic rings, whose identity and ring numbering system are furnished for your convenience.

H H 1

6(:) sc:) ~o N H N

H

morpho line piperidine . .

ptperaztne

The inventor discovered that or the fungicidal compounds listed above, those having a substituent in the 2-position of the 2H-l-benzopyran heterocylic ring, as well as their acid addition salts, unexpectedly provide activity against fungi in vitro respecting post-harvest diseases ori fruit. The a~id fonning the acid addition salt is found to have little effect on this fungicidal activity. Your client has further found that among those compounds producing the unexpected result, those further substituted as listed above in the 6-position are particularly preferred for their ability to move acropetally in the plant tissue.

Draft two claims: a generic claim directed to the compounds which produce the unexpected anti-fungi result discussed above and a sub generic claim limited to the particularly preferred compounds discussed above. Both claims must not ~ anticipated the following prior art, which includes not only the compounds represented by the following formulas, but also the acid addition salts of the compounds:

0(l I

~ 0 _..(CH,-<' J Each of the generic and sub generic claims must include only one generic formula, the substitutents being defined in terms of different R groups. You may use Mar kush groups to define _substituents. This is not an exercise to demonstrate how broadly you can draft claims, but to presenting claims· directed to preferred embodiments. If more than two claims are presented, only the first two claims will be considered, and no credit will be given for any claim presenting a process of making or using the fungicides, or a Markush grouping of formulas.

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QUESTION 2 (15 Points)

The framus seal has been an integral part of internal combustion engines since the turn of the century. As performance requirements increased, leakage developed because the framus seal would wear out too soon. The late Stanley Crowe of Akron, Ohio, invented the framus seal in 1910, which revolutionized the use of the seal. From such humble beginnings grew the Crowe Seal Company ("Croweseal"), the industry leader that withstood competition from Germany and France in the early part of this century, and still leads Nippon Seal K.K. (NSKK), although both now share about the same part of the market.

In 1983, Robert M. Crowe, research director at Croweseal and grandson of its founder, came up with a radical new design for Crowseal's seal. The first prototype was put on the market on March 15, 1983, and was an immediate commercial success. The prototype comprised a seal having a cylindrical end portion which was 3. 5 em long. The cylindrical end portion had an inner "core" made of rigid "Pol ythis", a well known polymer. The cylindrical core had a cylindrical end with a diameter of 1.20 em. Surrounding the rigid Polythis core. was a sheath of a resilient, plastic material known as "Polyslip" which had a total thickness of0.02 em. Thus, the total cross-sectional diameter of the cylindrical end was 1.24 em. The outer surface of the cylindrical end portion of the seal was coated with a lubricant. The original commercial embodiment marketed in March, 1983 used graphite as the lubricant. Later, molybdenum disulfide supplanted graphite. The commercial embodiment using molybdenum disulfide was sold to the public for the first time on December 15, 1983.

On January 10, 1984, you filed a patent application on behalf of Robert Crowe. The application included the following original claims:

1. A framus seal including an end portion, said end portion having lubricating material on the outer surface thereof.

2. A framus seal of claim 1, wherein said lubricating material is molybdenum disulfide.

3. A framus seal of claim 1, wherein said lubricating material is graphite.

The specification of the application discloses that .

"Greatly improved results are achieved when a framus seal has a lubricant material applied to the outer surface of the seal. Preferably, the lubricating material is molybdenum sulfide or graphite".

An employee of NSKK, Tetsu Sockitou, independently invented a framus seal including a cylindrical end portion coated with molybdenum disulfide. NSKK filed a patent application in Japan on Aprill5, 1984, and filed a United States counterpart application on March 1, 1985. Both the Crowe and Sockitou applications were examined by the same examiner, and the original claims in each application were found to be patentable. Because the claims were directed to identical subject matter, an interference was declared.

In the interference proceeding, Sockitou unsuccessfully asserted his priority date of invention due to the proscription against foreign activity (35 U.S.C. 104). The interference was won by Crowe, followed by a civil action under 35 U.S.C. 146, NSKK v. Crowe, which was settled, without decision, on November 1, 1988, with a concession of priority from Sockitou to Crowe.

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On February 1, 1989, a notice of allowance was mailed to you, Croweseal's outside patent counsel. You immediately sent the notice of allowance to Robert Crowe by facsimile. Crowe diligently searched his records to bring any new developments up to date. On February 14, 1989, you received a letter from Crowe in which he said the following:

"I am, indeed, most grateful for your persistence and excellent work in getting allowance of my patent application. This will help us in maintaining our competitive edge against our arch competitor, NSKK, for the coming years.

"We regret to inform you that we have not kept you very well informed about the state of the art and, more importantly, I have failed to inform you about the marvelous Polylub lubricating material. We expect to shift our entire production to seals using Polylub as the lubricant, giving up altogether using molybdenum disulfide and graphite lubricants.

"Thus, as of today, the best mode contemplated for carrying out the invention is the seal which is coated with Polylub as the lubricant, in place of the graphite or molybdenum sulfide. I am pleased to inform you that, like the other embodiments, I am the sole inventor of the framus seal using the Polylub lubricant.

"I frrst used Polylub as the lubricating material for framus seals on August 15, 1986. For a limited percentage of framus seals sold since January 30, 1988 in the Ohio and Indiana regions, we used Polylub as the lubricating material. It has been a smashing success. The only reason we didn't immediately shift our entire production to Polylub back in January of 1988 was the fact that we had difficulty obtaining production tools to shift our entire line over to this improved embodiment.

"We have two objectives. First, we wish to make it clear that it is imperative that the scope of the patent that is granted is broad enough to cover a framus seal which has Polylub lubricating material. Second, we want a patent as soon as possible which is valid and enforceable. I admit that the best mode I have known for carrying out the invention as of January, 1988 is a framus seal with Polylub as the lubricating material.

"If you feel that, to meet our objectives, nothing needs to be done other than paying the issue fee, please do so. You are free, however, to deviate to meet the objectives of this letter, including any amendment, continuation, continuation-in-part and/or information disclosure statement. Please take such alternate action only if necessary to meet our two business objectives."

Should you pay the issue fee and not file an information disclosure statement or an amendment to the claims? If yes, explain fully why paying only the issue fee would meet the business objectives of your client. Discuss all issues presented in the problem which must be considered relative to the patentability of the claims in the application. If no, provide a detailed explanation of an alternative course of action apd explain why your alternative solution would be superior to merely paying the issue fee and would meet the business objectives of your client.

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QUESTION 3 (60 Points)

Instructions: This question is composed of four (4) problems: A, B, C and D. Each problem is worth 15 points. Each prob­lem is based in part on the fact pattern set forth below. Consider each problem independently of the others unless otherwise in­structed. The mere citation of a statute, rule or other authority; or a statement to the effect that a statute, rule or other authority would be complied with is not acceptable as an answer and will receive NO CREDIT. Your answers must demonstrate how you would comply with all controlling statutory and rule provisions as well as PTO policy and procedure, i.e. you must relate the facts presented in the questio~ to show how you would meet the requirements of any statute or rule, or meet the requirments of a policy or procedure set forth in the Manual of Patent Examining Procedure.

FACTPATIERN

When Leslie Smith began employment with Acme Tobacco Co. (A TC) in Charlotte, ·North Carolina, she signed an employment contract in which she agreed to assign to A TC any and all inventions she would make related to tobacco and tobacco products during her employment with ATC whether or not such inventions were made while she was at home or at work. While employed by. ATC, Leslie developed a cigarette case having an ash tray. Leslie conceived the invention while watching TV at home on January 5, 1986. She reduced it to practice in her basement at home on January 12, 1986 using materials from her husband's workshop. In March of 1987, she revealed her invention to Pat Smith, a registered patent agent, who is a member of the A TC patent staff employed to prepare and prosecute patent applications for inventions developed by A TC employees. Pat prepared a patent application respecting Leslie's invention, and sent it to her together with an assignment to be executed.

In the application, the invention is described in pertinent part as follows:

"A cigarette case 1 having an aperture Ia disposed on one side wall thereof, and an ash tray 5 pivotally dispo_sed in the aperture of the side wall. The ash tray has a spout configuration with flanks 4a and 4b. The flanks rotate into spaces disposed between the case and a cigarette package (not shown) which can be inserted into the case. A platform 3 is disposed within the lower portion of the case, and the platform portion near the aperture Ia is angled upward to form conduit 7. The platform 3 has an upper surface for supporting a cigarette package, and a lower surface which together with the bottom portion of the case constitute areceptical2 for receiving ash and butts. The ash and butts are introduced to container 2 through conduit 7.-'.'

Figure 1 in the application is reproduced below:

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Just after receiving the application papers from Pat, Leslie had a serious disagreement with her supervisors respecting the ownership of the invention. Leslie left ATC on April25, 1987. Upon leaving ATC, Leslie took the application with her and, shortly thereafter, sought the advice of a registered patent agent, Morgan Field. Morgan reviewed the application prepared by Pat, and concluded that except for the declaration and power of attorney, Leslie could use all the papers Pat had prepared for filing her own patent application. Leslie signed a new declaration and authorization of agent giving Morgan power to file, prosecute and conduct all other business before the PTO in connection with the application. Morgan filed the application in the PTO on May 1, 1987. The application was assigned Serial No 07/123,456. Morgan also filed with the application a small entity statement signed by Leslie. The specification and claims of Leslie's applica­tion are identical in all respects to the application Pat prepared. The claims in the application are the claims Pat and ATC considered to be fully protective of the invention. By letter dated May 3, 1987, Leslie advised Pat that in view of disagreements with A TC, she refused to sign the declaration and power of attorney and assignment sent to her by Pat, and that she had filed her own patent application using as the specification and claims Pat had prepared for her.

PROBLEMA: For this problem, you are Pat. YoureceivedLeslie'sletteronMay 5, 1987,andduly advised the Officers of A TC of the situation, that Le~lie obviously has an earlier filing date that any application you can now file, and that the claims fully protect the invention vis-a-vis known prior art and competition. The President of A TC asks you whether the PTO Commissioner can or will determine if A TC owns the invention and, if not, why? He also asks what procedure would be available to ATC to determine ownership of the invention if the PTO Commissioner can or will not determine ownership? He further asks how could A TC gain control over the prosecution of Leslie's application without filing its· own application to preclude Leslie from controlling any rights A TC might have if Leslie amends the claims or abandons the application. Explain fully how you would properly advise the President of ATC.

PROBLEM B: For this problem you are Morgan. Original claim 4 in the patent application depends from and further limits claim 1. Claim 4 is directed to a combination cigarette case and ash tray having an "ignition means for lighting matches and attachment means for attaching the ignition means to the cigarette case." In the frrst Office action, claim 4 was rejected over an article published February 12, 1987 by Alex Pond, an employee of ATC and a former coworker of Leslie's. The article disclosed a cigarette case having a book of matches attached to the case by a common adhesive or Velcro®. In discussing the rejection with Leslie, you find that Leslie has memoranda on A TC letterhead stationary between herself and Alex Pond clearly es­tablishing that Leslie and Alex collaborated together on January 7 and 8, 1986 about attaching a match book to the cigarette case using a common adhesive or Velcro®. Alex's employment contract with A TC does not contain any provisions about invention rights or assignment of invention rights to A TC.

You discussed the memoranda with Alex and properly conclude that Alex and Leslie are joint inventors of · the subject matter of claim 4. Based on further discussions with Leslie, you conclude that the failure to name Alex occurred through error without deceptive intent on the part of Alex and Leslie. You ask Alex to join Leslie in the application as a joint inventor. Alex states that on advise of Pat he will not further cooperate with you. Pat informs you that A TC will not cooperate with Leslie if Leslie will not assign ownership of her application to A TC. Leslie refuses to assign the application and instructs you to do whatever is necessary to keep claim 4 in the application and to overcome the rejection without filing another patent application.

Explain fully what PTO procedures, if any, you should follow and what papers, if any, should be filed in the PTO to comply with Leslie's instructions. If you propose to file any papers in the Office, you must specify the amount of any fees due with respect to such papers.

12

PROBLEM C: For this problem you are Allyn Boyd, a registered patent agent. Your office is located in Atlanta, Georgia. The claims in Leslie's application have been twice rejected. The last Office action, dated October 19, 1988, was a final rejection setting a three (3) month shortened statutory period for response. Leslie came to your Office yesterday, April11, 1989 and told you that she fired her previous representative, Morgan Field, and filed a revocation of the power of attorney in the PTO on February 15, 1989. She has not assigned the application to any party, and Morgan is unwilling to release to Leslie his file respecting her patent application. Morgan confrrms in a telephone conversation with you today that he will not release his files to Leslie or to you. Leslie does not have a copy of the final rejection or the application because Morgan never forwarded any copies to her. Leslie instructs you to prepare and file a response before the application becomes abandoned. You must obtain a copy of the application file history in order to prepare a response, but you cannot go to the PTO due to other commitments. You have an unregistered associate located in Washington, D.C., Dusty Bee, a public stenographer, who occasionally assists you.

Can Dusty obtain a copy the file history of Leslie's application? If yes, explain fully what PTO procedures must be followed to get a copy of the file. If no, explain fully why a copy of the file cannot be obtained.

PROBLEM D: In this problem you are Allyn Boyd. A patent was granted to Leslie on December 27, 1988 for her cigarette case and ash tray combination. On March 10, 1989, Leslie went to your associate, Don Druz, and informed Don of her opinion that claim 1 of her patent reads on the cigarette case-ash tray combination disclosed, but not claimed, in Kim et al, U.S. Patent No. 3,938,412, issued on February 3, 1981. She wants Kim et alto pay her a royalty for any cigarette case-ash trays they manufacture which are within the scope of claim 1 of her patent. Upon review of the Kim et al patent, Don concluded that depending on how claim 1 of her patent is interpreted, the claims may or may not cover the combinations disclosed in Kim et al.

Leslie told Don that she came upon the Kim et al patent after the issuance of her patent. Don informed Leslie of his uncertainty whether the claim reads on the combination disclosed in Kim et al, and that if it does read on the combination, the Kim et al pate.nt could be prior art which would invalidate claim 1. Leslie instructs Don not to amend her patent in any way because she is not ready to restrict her rights at this time without confirmation from the PTO that claim 1 is unpatentable. She also tells Don that she is aware that a patent can be corrected by reissue. Leslie further instructs Don to file an application for reissue without amendments to the claims to ascertain whether the disclosure in Kim et al presents a question of patentability of claim 1.

Pursuant to Leslie's instructions, Don prepares the specification and claims of an application for reissue by cutting up a soft copy of her original patent and mounting single columns of the printed patent on separate sheets of paper. No amendments are made to specification or claims. Don prepared a reissue declaration for Leslie's signature wherein she states, in pertinent part, that she

"believes the original patent may be wholly or partly inoperative or invalid because of the disclosure in Kim et al, U.S. patent 3,938,412 of a combination cigarette case-ash tray manufacture, further applicant believes that the disclosure in the Kim et al patent was not previ9usly considered by the Patent and Trademark Office, further applicant believes that the disclosure in Kim et al might cause the examiner to deem the original patent to be wholly or partly inoperative or invalid, and further applicant believes the original patent may be wholly or partly invalid by reason of the patentee claiming more or less than she had a right to claim in the patent if the examiner deems the disclosure in Kim et alto render claim 1 wholly partly inoperative or invalid."

13

Don presents his work to you for review. Is the reissue application prepared by Don proper and will it accomplish Leslie's desire to have the examiner determine if the Kim et al disclosure would render claim 1 of her patent unpatentable? If yes, state when the reissue application must be flied and explain fully why the application is proper under PTO rules, policy and procedure. If no, explain fully why the application is not proper and explain fully what PTO procedures should be followed to comply with Leslie's desire to · have the examiner make a determination of the patentability of claim 1.

END OF THE AFTERNOON SECTION OF THE EXAMINATION

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