Test Number 014 Test Series 188 NAME ______________________ __

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

REGISTRATION EXAMINATION FOR PATENT ATTORNEYS AND AGENTS

April 13, 1988

Morning Section (100 Points) Time: 3 Hours

DIRECTIONS

This section of the examination is an open book examination in that you may use books, notes, or other written material that you believe will be of help to you except for prior registration examinations and/ or answers. Books, notes or other written 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. You may use blank pages 22 and 23 of this test booklet. Do not remove these pages from the test booklet. No additional paper is needed. Use a No. 2 (or softer) lead pencil to record your answers on the answer sheet. Darken completely the circle corresponding to your answer. You must keep your mark within the circle. Stray marks may be counted as answers. Erase completely all marks except your answer.

This section of the examination consists of two subsections: Section 1 which consists of forty ( 40) true/ false questions and Section 2 which consists of sixty (60) multiple choice questions. Do not assume any additional facts not presented in the questions. You may write anywhere on this examination booklet. However, only answers recorded on the answer sheet will be graded. You must obtain a score of at least 70 points to pass the morning 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 ON SECTION 1 OF THE ANSWER SHEET. I~ the answer to the question is true, darken completely the crrcle on your answer sheet having "A" inside the circle. If the question is false, darken "B". Do not darken circles having "C" 1 "D" 1 or llE'I in them. Questions answered both true and false will be considered to be incorrectly answered.

1. In a second or subsequent action on the merits, an examiner cannot make the rejection final where all or part of the claims are rejected on a prior art reference previously not of record in the applica­tion.

2. The correct joint inventors A, Band C were originally named in a patent application. During prosecution some of the subject matter was cancelled so that now only A and B are the inven­tors of the remaining claimed subject matter. When correcting the inventorship, a patent prac­titioner need only file a petition with a statement identifying only A and B as the inventors of the subject matter in the application.

3. A declaration under 37 CFR 1.131 from a Japanese national applicant containing allegations of acts in Tokyo, Japan to antedate a reference is valid to remove such reference as affecting the pat­entability of an application.

4. Karl conceived an improved radiation detecting apparatus on March 7, 1984 and re-

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duced it to practice on April 19, 1985. Taylor conceived the same apparatus on June 14, 1984, and reduced it to practice on August 25, 1985. Taylor, however, was diligent in reducing his invention to practice between the date of concep­tion and the date he reduced the invention to practice. Assuming that all activities were in the United States, Taylor should be awarded priority of invention in an interference between Karl and Taylor.

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5. Hal Wholesaler has learned that Bob Brilliant filed a U.S. patent application on June 1, 1987 covering a widget that Hal had disclosed in a trade publication in April, 1986. Hal can file a protest to the grant of a patent to Brilliant, but that once the protest has been filed, Hal will not be permitted to participate in the proceeding.

6. A patentee may acquire through reissue, claims which are slightly broader than the originally granted patent claims, if such claims were prose­cuted in the original application and deliberately cancelled in order to obtain allowance of the original application.

7. On February 1, 1985, Jones filed a patent application claiming a certain method of molding. On April 1, 1986, the examiner rejected Jones' claims on the ground that Jones' specification does not sufficiently enable a person of ordinary skill in the art to make and use the claimed inven­tion. To show enablement in view of the state of the art, Jones may rely upon a patent to Williams filed on January 2, 1985 and issued on March 4 ' 1986.

8. On January 10, 1985,LipsfiledatimelyNotice of Appeal to the Board of Patent Appeals and Interferences from the decision of the examiner finally rejecting all of the claims in the Lips patent application. On February 12, 1988, following oral argument, the Board affirmed the examiner's re­jections on all grounds. On February 25, 1988, Lips requested reconsideration of the Board's February 12th decision. On March 9, 1988, the Board denied the request and adhered to its original decision. On Monday, April 11, 1988, Lips filed a notice of appeal from the Board's decision to the Court of Appeals for the Federal Circuit. A motion thereafter filed by the Commis­sioner with the Court seeking dismissal of the appeal as untimely filed should be granted.

9. In drafting a patent specification for an improvement on a machine, the entire machine as improved must be described, and it is not neces­sary to point out the particular parts of the machine to which the improvement relates.

10. As a registered patent attorney or agent, you are responsible for disclosing to the patent exam­iner handling the application you are prosecuting, any information which is material to the examina­tion of the application. You have collected a hirge number of recently discovered prior art U.S. pat­ents material to the examination of the application: The application relates to a highly complex tech­nology and you have noticed a very pertinent disclosure buried in one of the references. You have sent a copy of each of the references to the ex­aminer including the reference with the buried dis­closure. You have complied with the PTO re­quirements for disclosure.

11. Kato files an application in Japan on May 1, 1985 claiming SM-1 and disclosing SM-2 as background information. Smith files an applica­tion in the U.S. on June 3, 1985 claiming SM-2. Kato files an application in the U.S. on April 10, 1986, that corresponds exactly to and properly claims the benefit of the prior filing in Japan under 35 U.S. C. 119. On October6, 1987, a U.S. patent issues to Kato. The Kato U.S. patent con­stitutes prior art against Smith's claims.

12. Jack discovered and asexually reproduced a new and distinct variety of an apple bearing fruit tree. After filing an application for a plant patent, Jack received a requirement from the examiner to submit a speciman of the tree for inspection and study. It is not possible for Jack to forward a speciman to the examiner. In this situation Jack can satisfy the examiner's requirement by making the tree available for official inspection where grown.

13. During a reexamination proceeding, only the claims may be amended.

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14. If there is no indication on the filing receipt that a license has been granted to file the applica­tion in a foreign country, you must wait until six months from the filing date before filing the appli­cation in a foreign country.

15. Dave Distributor has learned that Irving Inventor filed a U.S. patent application on August 4, 1987 covering a widget that Dave has been mar­keting for Irving since March 1986. Dave can file a petition to institute a public use proceeding. However, once the public use proceeding is insti­tuted by the PTO, Dave will no longer be permit­ted to participate.

16. Following the first Office action in which some claims of an application are rejected, the attorney of record and the inventor/owner of the application jointly interview the examiner. After discussion of the cited references, the attorney agrees to make certain changes in the rejected claims which will narrow their scope. The exam­iner indicates, orally as well as on the Interview Summary Form, that subject to further search, the claims will be allowed if so amended. Contrary to what was agreed to at the interview, an amend­ment signed by the inventor/owner is subse­quently filed in the PTO expanding the scope of most of the rejected claims. No revocation of the existing power of attorney is of record in the application. The amendment should not be en­tered.

17. In rejecting claims in a patent application for lack of novelty or for obviousness, the examiner may rely on admissions by the applicant.

18. Upon request, an examiner will grant an interview to an unregistered attorney, provided the interview is limited to a patent application in which the attorney is the applicant.

19. The issuance of a U.S. patent gives the patent owner the right to make, use or sell the patented invention in the U.S.

20. In rejecting claims in a patent application for lack of novelty or for obviousness, the examiner may rely on facts within his or her own personal knowledge.

21. An application filed in the PTO that has received a foreign filing license as part of the filing receipt does not need a further license when the case is revised from English to metric units and the claims are redrafted for filing in a foreign country.

22. In a reissue application, prior art used to reject claims in the original patent application as well as newly discovered prior art may be used to reject reissue claims. However, rejections not based on prior art grounds should be, limited to those made in the original application.

23. Patent practitioner Adams received from a patent agent in France a patent application for filing in the USPTO, claiming the priority of a French patent application. Unknown to Adams, the French patent agent also had a corresponding patent application filed in Sweden through a Swedish patent agent. The Swedish patent exam­iner cited a Swedish patent which was more rele­vant than any cited in the French application or the United States application. The French patent agent did not tell Adams about this reference. Consequently, the United States patent issued without the Swedish patent having been brought to the attention of the U.S. examiner. Although patent practitioner Adams never knew of the Swedish reference, there has been a failure to comply with the requirements of 37 CFR § 1.56.

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24. Patent practitioner Jones filed a patent application under 35 U.S.C. 111 disclosing both a new type of widget and a new process for making that widget. The application included a set of claims to the widget and a set of claims to the process of making the widget. In the first Office action, the examiner required restriction to one of the two sets of claims. Jones believed the restric­tion requirement was improper because the proc­ess as claimed can only make the new widget and

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the new widget cannot be made by another, mate­rially different process. In responding to the restriction requirement, Jones pointed this out and argued that the requirement was therefore im­proper and should be withdrawn. Jones then stated that because the requirement had been shown to be improper, election of one of the two sets of claims for further prosecution was unnec­essary. This was a complete response to the Office action.

25. A double patenting rejection may be based on a commonly assigned patent by a different inven­tor.

26. You have filed an application with informal drawings and have just received the filing receipt. Your draftsman advised you that the formal draw­ings are finished and that they are ready for filing. You must file these formal drawings immediately.

27. An information disclosure statement is construed by the PTO as a representation that no other information exists that might be material to the examination of an application.

28. As a registered practitioner, you are preparing an application on a tubular ceramic device where metal caps are to be attached to each end. The preferred method for attaching the caps is a com­plicated multistep brazing process. This process will be used in the commercial production of the tubular devices. However, instead of disclosing the brazing process in the application, you may properly disclose an alternate process which is operable, namely, to use epoxy glue and, thus, sat­isfy the requirements of 35 U.S.C. 112.

29. If a practitio_ner is aware of prior art that he believes to be material to subject matter that is claimed in an application, the practitioner is not required to disclose the prior art to the PTO, provided he writes claims which, in his opinion, patentably distinguish the claims over the prior art in question.

Answer questions 30,31 and32 based on the facts set forth in the following paragraphs:

Dr. Ido Research discovered an extract of blood­root which appears beneficial in inhibiting dental caries. He also developed unique machinery to produce the extract. After extensive testing under the supervision of Dr. I.M. Painless at his dental laboratory, the efficacy of the extract was estab­lished.

While at a spa in Europe, Dr. Research discovered a family with flawless teeth all of whom have regularly drunk an herbal tea prepared by their grandmother who lives in Austria. The grandmother's process, while done by hand in Austria, was similar to that performed by the unique machinery developed by Dr. Research. The grandmother's tea contained the very same bloodroot extract.

After learning of the grandmother's process, Dr. Research received a draft of his patent application. He crossed out claims directed to the extract and inter linea ted a limitation in each process claim to distinguish the claims from the grandmother's process, and executed the application with claims directed to the machinery and the process as lim­ited by the interlineations. A patent was granted to Dr. Research on September 9, 1986.

Dr. Research filed a broadening reissue applica­tion on April 13, 1988 to eliminate the interlin­eated limitations and to add claims to the extract. In his reissue oath, Dr. Research asserted that the original patent was wholly or partly inoperative or invalid because he claimed less than he had a right to claim. He disclosed all relevant facts surround­ing his discovery of the herbal tea stating that he was in error because he thought the grandmother's process was prior art.

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30. As to the process claims, the reissue is ap-propriate.

31. The examiner may properly issue a require­ment for restriction in the reissue application as between process and machinery claims based on facts demonstrating that the broader process claims require a distinctly different field of search.

32. As to claims to the extract, the examiner can appropriately reject the claims holding no error occurred because Research did not manifest an "intent to claim".

33. A statutory invention registration has the defensive attributes of a patent but does not confer any right to exclude others from making, using or selling the invention.

34. Each inventor's post office address must be supplied in the oath or declaration or elsewhere in the application, even if the application contains a different address to which communications about the application are to be directed.

35. Patent attorney I.M. Smart, is prosecuting a patent application for inventor, Egar Beaver. Beaver informs Smart of a publication which Beaver says should be disclosed to the PTO. Smart studies the publication and concludes cor­rectly that there is no likelihood a reasonable examiner would consider it important in deciding whether to allow the application to issue as a patent. Smart has no duty to disclose the publica­ton to the Office.

36. If an applicant failed to file a timely divi­sional application for a non-elected invention before the parent application issued as a patent, re­course may be had by presenting the non-elected claims in a reissue application.

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37. As outside counsel for Ace Superconducting Co., you have written a patent application for Ace's new magnetically levitating golf cart. You are attorney of record in the case, and you are now prosecuting the case with a response to a final rejection due tomorrow. You learn today that the application was assigned last week to the Deep Divot Golf Cart Company and that the assignment was recorded at the PTO. You should not prepare the response because as a result of the assignment, you no longer have any power of attorney in the case.

38. While descriptive matter on drawings is not permitted by the PTO, labeled representations may be employed to illustrate conventional elements.

39. An inventor is D..Q1 presumed to know all prior art which is material to the examination of his or her patent application to comply with his or her duty of disclosure.

40. On June 6, 1986, an assignee files a broaden­ing reissue application on an original patent which issued on December 3, 1985. On April 11, 1988, the application is rejected on the ground that the reissue was improper because the reissue oath was not executed by the original inventor. Because more than two years has passed since the patent issued, the assignee is now precluded from cor­recting the reissue by filing a supplemental reissue oath by the inventor.

GO TO SECTION 2

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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 "Each of the above", "None of the above", "(a) and (b)", or the like is the most correct answer, no other answer will be considered correct for receiving credit for the question. No points are awarded for incorrect answers or unanswered questions. 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 preceeding the answer chosen. Questions answered by darkening more than one circle will be considered as incorrectly answered.

1. An application you have flied has been allowed and in an attachment to the Notice of Allowance which was dated and mailed on Febru­ary 4, 1988, you have been notified that formal drawings are now required and must be submitted within the three month statutory period set for payment of the base issue fee. Your draftsman is behind in his work and in late March advises you that he cannot have the formal drawings ready for filing before May 10, 1988. The most appropriate course of action would be to:

a) Pay the issue fee within the three month statutory period and thereafter submit the formal drawings when they are finished along with a request for an extension of time for one month with the appropriate fee.

b) Immediately file a petition for an extension of time with the appropriate fee to both pay the issue fee and submit the formal drawings.

c) Immediately a file a petition for an extension of time to submit the formal drawings.

d) Immediately pay the issue fee and thereafter submit the formal_ drawings when they are finished on or after May 10, 1988.

e) Pay both the issue fee and submit the formal drawings on or after May 10, 1988.

2. When more than one inventor is named in a patent application, which of the following best describes what an examiner may require during examination of the application?

a) The inventive entity of the subject matter of each claim.

b) The invention date of the subject matter of each claim.

c) The ownership of the subject matter of each claim on the date of the invention.

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

3. A terminal disclaimer is filed to overcome a double patenting rejection based on a commonly assigned patent. Which of the following most correctly describes what the disclaimer must con­tain?

a) A statement disclaiming the portion of the term of any patent issuing from the rejected appli­cation which would extend past the expiration of the reference patent.

b) A statement that the term of any patent issuing from the rejected application will expire immediately if it ceases to be commonly owned with the reference patent.

c) A statement that the term of any patent issuing from the rejected application will expire immediately if the named inventors are ever amended to become different from the inventors named in the reference patent.

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

4. Which one of the following statements is false?

a) Upon filing a request and the appropriate fee within the fourth month after the date of the

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Examiner's Answer, an extension of time of three months rna y be obtained to pay the fee for a request for an oral hearing before the Board of Patent Appeals and Interferences respecting the rejection of claims in a patent application ..

b) Upon filing a request and the appropriate fee within the fourth month after the date of the Notice of Appeal, an extension of time up to two months may be obtained for filing a Brief on Appeal.

c) Upon filing a request and the appropriate fee within the fourth month after the date of the Examiner's Answer, an extension of time up to four months may be obtained to pay the fee for a request for an oral hearing before the Board of Patent Appeals and Interferences respecting the rejection of claims in a reexamination proceeding.

d) After the three month shortened statutory period set for response has ended, no extension of time is required to hold an interview with the examiner although an extension of time by pay­ment of the appropriate fee is required to file an amendment.

e) An extension of time by payment of the ap­propriate fee is proper for the purpose of achieving continuity of a parent and divisional applications provided the request and fee are filed in the parent application.

5. You prosecuted a design application which issued as a design patent on April 30, 1985. What is the latest date you can pay the maintenance fee for the design patent on its third anniversary with­out being subject to a surcharge?

a) April 30, 1988. b) July 30, 1988. c) October 30, 1988. d) January 30, 1989. e) None of the above.

6. In a patent application where the applicant has given a power of attorney to registered practitio­ners X and Y who now wish to withdraw from the application, which of the following is true? (Se­lect the most correct answer.)

a) The request to withdraw by X and Y can be signed and filed by X only and be effective even though there is no clear indication that X is also signing for Y.

b) The request to withdraw can be signed by both X andY.

c) The request to withdraw signed and filed by both X andY is effective upon receipt in the PTO.

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

7. You filed a patent application for Smith on a can opener on January 2, 1987. There is no indication on the filing receipt that a license and secrecy order have been granted. On December 1, 1987, you filed a CIP application covering an improvement of the can opener. On December 15, 1987, Smith instructed you to file both the parent and the CIP applications in a number of foreign countries before January 9, 1988. Your best advice to Smith would be that:

a) No foreign filing license is required to file an application on a can opener in a foreign country.

b) You can immediately file the parent appli­cation in a foreign country, but a license will be required before filing the CIP in a foreign country.

c) You can immediately file the CIP applica­tion in a foreign country since the parent applica­tion has been on file in the U.S. for over six months.

d) A petition for license must be filed and a license granted prior to filing the parent applica­tion in a foreign country.

e) Both applications can immediately be filed in any foreign country.

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8. Which of the following most correctly sets forth when an international filing date will be accorded by the U.S. Receiving Office?

a) The date a U.S. resident or national appli­cant files the international (PCf) application in English.

b) The date the international application con­tains an indication that it is intended as an interna­tional application.

c) The date on which an international applica­tion contains the name of the applicant in the pre­scribed manner and at least one designation of a contracting PCT country.

d) The date on which part of the international application appears to be a description while a part of the application appears to be a claim.

e) All of the above.

9. Which one of the following papers should IlQ1

be denied entry when submitted to the PTO?

a) An amendment in an application signed by an unregistered attorney.

b) An amendment cancelling all the claims in an application without express abandonment of the application.

c) An amendment containing only claims previously suggested by the examiner, but sub­mitted outside the set time limit or extensions thereof.

d) An amendment which includes new matter added to the specification.

e) An amendment cancelling all the claims which read on the elected invention and presenting no new claims directed to the elected invention.

10. Smith'sapplication wasfiledonJune 1, 1987. In which of the following situations would it be proper to file an affidavit under 37 CPR 1.131? (Select the most correct answer.)

a) A rejection is made under 35 U.S.C. 103 with a U.S. patent issued on October 21, 1986.

b) A doublepatentingrejectionismaderelying on a U.S. patent issued on October 21, 1986.

c) A rejection is made under 35 U.S.C. 102(b) over a reference which has obviously been missin­terpreted by the examiner.

d) Theclaimsarerejectedunder35U.S.C.103 over a U.S. patent issued on November 12, 1985.

e) Each of the above.

11. A patent application is filed on behalf of Lord and Roberts. Lord and Roberts are joint inventors· of a generic invention which is the subject of claim 1. They are also inventors of a first species of the generic invention which is the subject of claim 2. Roberts is the sole inventor of a second species which is set forth in claim 3. The examiner required an election citing a patent which dis­closed a species of the generic invention which was different from the species set forth in claims 2 and 3. Which of the following would be an appropriate response to the Office action? (Select the most correct answer.)

a) Cancel claims 1 and 3, elect the species of claim 2, and file a divisional application in the name of Roberts for claim 3.

b) Cancel claims 1 and 2, elect the species of claim 3, and traverse the restriction.

c) Cancel claim 1 and traverse the restriction. d) Cancel claim 1, elect the species of claim 2,

and filed a petition and amendment to delete Roberts as an inventor.

e) Each of the above.

12. Which of the following most correctly sets forth what must be filed before the PTO will publish a statutory invention registration?

a) A specification, including at least one claim, meeting the requirements of 35 U.S.C. 112.

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b) A statement that the claimed invention, which in the opinion of the applicant, is novel and nonobvious.

c) A waiver of the applicant's right to obtain a patent, effective upon the date of publication.

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

13. Which of the following statements about ex parte patent appeals to the Board of Patent Ap­peals and Interferences is true?

a) An appellant who desires an oral hearing before the Board of Patent Appeals and Interfer­ences must include a written request to that effect in his Notice of Appeal to the Board.

b) Whenever an appeal is filed with the Board of Patent Appeals and Interferences, an oral argu­ment may be presented by or on behalf of the primary examiner.

c) Oral argument is limited to twenty minutes both for the appellant and the primary examiner.

d) Affidavits, declarations and exhibits filed after the case has been appealed will not be admit­ted under any circumstances.

e) None of the above.

14. Which of the following most correctly describes when a substitute patent specification would not be proper?

a) When it is required by the examiner. b) When it is clear to the examiner that accep­

tance of the specification would facilitate process­ing of the application.

c) When the substitute specification is accom­panied by a statement that the substitute specifica­tion includes no new matter.

d) When the examiner considers the number and nature of amendments to the specification render it difficult to consider the application.

e) None of the above.

15. Patent practitioner, Mary, filed a patent application. All of the claims are unpatentable under 35 U.S.C. 102 in light of a patent that had been issued to a competitor two years before Mar)r filed the application. The competitor's patent and Mary's application are classified in the same sub­class. Mary never disclosed the competitor's patent to the Office. In which of the following circumstances, if any, did Mary violate her duty of disclosure under 37 CFR 1.56? (Select the most correct answer.)

a) Mary learned of the competitor's patent before the patent application was filed, but de­cided not to disclose it to the examiner until the examiner issued a first Office action in order to obtain an examination of the application.

b) Mary learned of the competitor's patent after her client's patent application had issued as a patent.

c) Mary never learned of the competitor's patent because she had saved money by not doing a pre-filing search.

d) Mary learned of the competitor's patent after receiving a first Office action, but decided not to disclose the patent to the PTO and to let the application go abandoned.

e) Each of the above.

16. Which of the following statements is false?

a) The affirmance by the Board of Patent Appeals and Interferences of the rejection of a claim on any of the grounds specified constitutes a general affirmance of the decision of the ex}tm­iner on that claim, except as to any ground specifi­cally reversed.

b) When the Board of Patent Appeals and Interferences makes a new rejection of an· ap­pealed claim, appellant may submit an appropriate amendment of the claims so rejected and have it reconsidered by the examiner.

c) Should the decision of the Board of Patent Appeals and Interferences explicitly suggest that a claim may be allowed in amended form, appellant has the right to amend the claim in conformity with suggestion.

d) The Board of Patent Appeals and Interfer­ences normally will include in its decision in an ex parte appeal a review of the propriety of the examiner's refusal to enter an amendment after a final rejection.

e) When the Board of Patent Appeals and Interferences makes a new rejection of an ap­pealed claim, appellant may have the case recon­sidered by the Board upon the same record.

17. You filed an application in the PTO on November 5, 1987. You received a notice from the PTO on January 4, 1988 requiring you to submitadrawingtocomplywith 35 U.S.C. 113. A two month time limit was set for you to submit the drawing. The drawing was filed in the PTO on February 19, 1988 with a certificate of mailing under 37 CFR 1.8 dated February 16, 1988. The filing date of the application is:

a) November 5, 1987. b) January 4, 1988. c) February 16, 1988. d) February 19, 1988. e) None of the above.

18. Smith is employed by Smoke, Inc. as a patent agent. Smith files an application on an important new technology for Jones, president of Smoke. After the application has been filed, Smith learns that Jones is not the true inventor of the new technology, but that Jones had learned of the technology through a scientist named Wilson whom he had hired from Ash, Inc., Smoke's major competitor. Jones had declared the invention to be his own in order to conceal the fact that the

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technology came from Ash. Which of the follow­ing most correctly sets forth the best course of action which should be taken by Smith?

a) Promptly advise Jones that Jones must take action to attempt to rectify the situation by includ­ing Wilson as a coinventor in the patent applica­tion.

b) Promptly advise Jones that Jones must take action to attempt to rectify the situation. If Jones refuses to take action, advise the PTO of Jones' improper actions.

c) Withdraw from representing Smoke with­out informing the PTO of Jones' improper actions:

d) (a) or (b). e) (b) or (c).

19. Which of the following statements is true?

a) A reissued patent may be granted enlarging the scope of the claims of an original patent if applied for by the assignee of the entire interest within two years from the grant of the patent.

b) A claim which is the same as, or for the same or substantially the same subject matter as, a claim of an issued patent may not be made in any application unless such a claim is made prior to two years from the date on which the patent was granted.

c) Whenever a mistake in a patent, incurred through the fault of the PTO, is clearly disclosed by the records of the Office, the Commissioner may issue a certificate of correction stating the fact and nature of such mistake, provided a request for such correction is applied for within one year from the grant of the patent.

d) Action may be suspended in a patent appli­cation where a response by the applicant to an Office action is required.

e) None of the above.

20. Claim 1 of an unexpired patent involved in a reexamination proceeding reads as follows:

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"1. A cutting knife comprising: a handle portion; and a rotatable blade portion."

Assuming that none of the proposed amendments below contain new matter and that each is accom­panied by appropriate remarks, which of the fol­lowing most correctly sets forth the proper proce­dure for amending the claim?

a) Claim 1, line 1, before "cutting" insert­dough; line 2, before "handle" insert - heat­insulated-; and line 3, before "rotatable" insert -serrated-.

b) Claim 1, line 1, before "cutting" insert -dough - ; line 2, before "handle" insert- heat­insulated - ; and line 3, delete "rotatable" and substitute therefor - serrated -. Before the period insert -in the form of a rotatable wheel.

c) 1. (Amended) A dQygh cutting knife comprising: a handle portion; and a [rotatable] blade portion.

d) 1. A dough cutting knife comprising: a handle portion; and a serrated rotatable blade portion.

e) Each of the above.

21. Errors in a patent may be corrected by which of the following? (Select the most correct an­swer.)

a) Reissue. b) Certificate of correction. c) Disclaimer. d) Reexamination. e) Each of the above.

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22. You have prepared a patent application which includes the following claim:

A device for remotely controlling the operation of a TV set, said device compris­ing a means for sending sonic signals from a position away from a TV set to the TV set, and a means responsive to said sonic signals to turn the TV set on and off.

The team of Judith, Sarah, and George developed this invention in the Pittsburgh, Pennsylvania plant of your client. They worked closely together on each part of the invention. Paul was the department supervisor, but he did not directly work on the project. He reviewed project budgets and approved continuation of the project. Also, Jerry, in Geneva, Switzetland, suggested the idea of using a sonic signal during an overseas tele­phone call with Sarah. The test equipment was made under the direction of Sarah by Jim, the lab technician. The inventors of the claimed device would be:

a) Sarah, Judith, George and Paul. b) Sarah, Judith, George, Paul and Jerry. c) Sarah, Judith, George, Jerry, and Jim. d) Sarah, Judith, George, and Jerry. e) Sarah, Judith, and George.

23. In prosecuting a group of foreign applications based on a pending U.S. patent application, you have received several actions from foreign patent offices. Some of the foreign applications have had claims rejected that correspond to pending claims in the U.S. application, and references pertinentto the claimed U.S. invention have been citedras of interest by foreign examiners. Which one of the following would be the proper course of action for you to take to comply with the duty of candor and good faith?

a) Do not disclose any of the prior art cited in these foreign applications.

b) Disclose only the prior art that has been used to reject claims in the foreign applications corre­sponding to the pending U.S. application claims.

c) Disclose all prior art cited in the foreign applications, including a copy of each foreign patent office action received so far, but do not send any future Office actions or material prior art.

d) Disclose prior art cited at any time in the foreign applications where there is a substantial likelihood that a reasonable examiner would con­sider it important in deciding whether to allow the application to issue as a patent.

e) Wait until all foreign applications have been acted on and then send the examiner a copy of the actions in each foreign application.

Answers to questions 24-29 are based on the facts in the following paragraph.

Smith, a British citizen residing in the United States on a student visa, came to you on April 30, 1987 for the purpose of obtaining a patent for his invention. He conceived the invention on January 1, 1986in College Park, Maryland. While visiting his brother in England, he made a working model of the invention on May 15, 1986. You filed his U.S. patent application on July 24, 1987. Con­sider each of the questions 23-28 separately and determine under what paragraph, if any, of 35 U.S.C. 102 the patent, application, event or act bars issuing a patent to Smith.

24. In June of 1986, while visiting his brother in England, Smith demonstrated the working model to representatives of several U.S. manufacturers.

a) 35 U.S.C. 102(a). b) 35 U.S.C; 102(b). c) 35 U.S.C. 102(e). d) 35 u.s.c. 102(f). e) None of the above.

12

25. The invention was described in detail in a June 30, 1986 issue of the University of Maryland student newspaper.

a) 35 U.S.C. 102(a). b) 35 u.s.c. 102(b). c) 35 U.S.C. 102(c). d) 35 U.S.C. 102(e). e) None of the above.

26. Smith admits with respect to the claimed invention that it was only after the model included two component parts designed and added by a research associate at the University of Maryland that the model worked on May 15, 1986.

a) 35 U.S.C. 102(b). b) 35 U.S.C. 102(c). c) 35 U.S.C. 102(f). d) 35 U.S.C. 102(g). e) None of the above.

27. Smith's invention was claimed in a U.S. Patent to Thomas granted on January 5,1988 on an application having a filing date of June 13, 1986 and based upon a perfected foreign priority claim to an application filed in Great Britain on June 15, 1985.

a) 35 U.S.C. 102(a). b) 35 U.S.C. 102(b). c) 35 U.S.C. 102(c). d) 35 u.s.c. 102(f). e) None of the above.

13

28. The invention is described in a U.S. Patent to Williams granted on August 4, 1987 and having a filing date of April 19, 1985.

a) 35 U.S.C. 102(a). b) 35 u.s.c. 102(b). c) 35 U.S.C. 102(e). d) 35 u.s.c. 102(f). e) None of the above.

29. The invention is described in an Italian patent to La Rosa patented on December 28, 1983 with a filing date of June 29, 1982.

a) 35 U.S.C. 102(b). b) 35 U.S.C. 102(e). c) 35 U.S.C. 102(f). d) 35 U.S.C. 102(g). e) None of the above.

30. The examiner rejected the claims in an appli­cation you are prosecuting. The rejection was made final and was mailed on January 6, 1988. A three month shortened statutory period was set for response to the Office action. You prepare a Notice of Appeal which includes a certificate of mailing dated April 6, 1988. You give the Notice to your secretary who, on her way to work the next day, personally delivers the Notice of Appeal to the PTO Examining Group handling the applica­tion. The Group date stamped the Notice of Appeal as being received on April 7, 1988. What is thelastpossibledateon which you may file your Appeal Brief without an extension of time?

a) May 6, 1988. b) May 7, 1988. c) June 6, 1988. d) June 7, 1988. e) None of the above.

31. Jane Doe consults you about filing a patent application on her invention. She tells you that she has an obligation to assign the invention to Oxford University in Oxford, England. The university employs over 5000 persons. Which of the follow­ing would be proper advice to Jane regarding the filing of a small entity statement in her patent application? (Select the most correct answer.)

a) Jane would qualify for small entity status. b) Jane would not qualify for small entity

status because Oxford University is not a non­profit organization.

c) Jane would not qualify for small entity status because Oxford University employs more than 500 employees.

d) Jane would not qualify for small entity status because she is under an obligation to assign her invention to a business concern which is not lo­cated in the United States.

e) (c) or (d).

32. Which of the following steps is D.Q1 part of the PCT preliminary examination procedure?

a) The International Bureau in Geneva (WIPO) must approve both the examiner's action and applicant's response as to form.

b) A Written opinion akin to a first Office action is issued by the examiner.

c) Any response by applicant must be made within the time limit set, usually 2 months from the date of the mailing of the written opinion.

d) The examiner must determine whether or not unity of invention exists in the claims.

e) The International Preliminary Examinatioq Report must be prepared by the examiner.

33. The president of Widget, Inc. felt that a product being sold by Knockoff Corp. infringed a patent owned by Widget and sent a letter to

Knockoff enclosing a copy of the patent and ac­cusing Knockoff of infringement of the patent. The president of Knockoff felt that the patent claims were vague and impossible to understand and also knew that two years before the applica­tion for the patent had been filed in the United States, a similar product had been sold in the United States by Amalgamated Company and an article had been published at the same time in a French technical journal describing a similar product. Knockoff filed a request for reexamina­tion of the Widget patent, paying all necessary fees and contending that the patent claims were invalid under 35 U.S.C. 112 because of vagueness and under 35 U.S.C. 103 because of obviousness. With the request, Knockoff submitted an affidavit by the chief engineer of Amalgamated stating that the product shown in the sketch which was at­tached to the affidavit had been on sale more than two years before the filing of the Widget patent application. The chief engineer had made the sketch at the time the affidavit was prepared. In addition, Knockoff submitted with the reexamina­tion request a copy of the French publication, with a certified translation, and an explanation of the pertinency and manner of applying the cited prior art to every claim in the Widget patent. An examiner in the PTO reviewed the reexamination request, found that a substantial new question of patentability, and ordered reexamination of the patent. Widget did not file any paper in response to the order for reexamination, but Knockoff sub­mitted a paper rearguing that the claims were vague and that the claimed invention was obvious not only in view of the French publication but also in view of the Amalgamated product. Which of the following is most correct as to what the exam­iner should consider in response to the papers filed in the reexamination proceeding?

a) Knockoff's initial argument that the patent claims are invalid under 35 U.S. C. 112.

b) The French publication and the certified translation.

14

c) The affidavit and sketch by Amalgamated's chief engineer.

d) The second paper from Knockoff, rearguing that the claims are vague and that the claimed invention is obvious both in view of the French publication and in view of the Amalgamated prod­uct.

e) Each of the above.

34. Which of the following is most correct as to what is required in the oath or declaration accom­panying a patent application?

a) A statement that the applicant believes the claimed invention is patentable.

b) A statement that the applicant believes the claimed invention "is useful.

c) A statement that the applicant understands the contents of the specification.

d) A statement of whether the applicant has appointed an attorney or agent.

e) Each of the above.

35. Which of the following, if done unintentionally, may be misconduct under the PTO Code of Professional Responsibility?

a) Giving false or misleading information to a client or the PTO.

b) Aiding and abetting a practitioner sus­pended or excluded from practice before the PTO.

c) Failing to inform a client or former client when correspondence is received from the PTO which could have a significant effect on a matter pending before the PTO.

d) Causing to be filed a frivolous complaint alleging a violation of the PTO Code of Profes­sional Responsibility.

e) None of the above.

36. Which of the following statements is true concerning an abstract of the technical disclosure in a patent application? (Select the most correct answer.)

a) The abstract must be on a separate sheet. b) The abstract shall be used in interpreting the

scope of the claims. c) The abstract is preferably before the speci­

fication under the heading" Abstract of the Disclo­sure".

d) The purpose of the abstract is to enable only the PTO to determine quickly from a cursory inspection the nature and gist of the technical disclosure.

e) Each of the above.

37. Under PTO duty of disclosure requirements, which of the following statements most correctly sets forth the duty of each patent attorney or agent with regard to the application he or she is prosecut­ing?

a) Conduct a search for and disclose prior art that might be material to the extent that there is a substantial likelihood that a reasonable examiner would consider it important in deciding whether to allow an application.

b) Disclose to the PTO all information in his possession that relates to a particular patent appli­cation.

c) Disclose to the PTO material information only in the form of printed prior art that a reason-: able examiner would consider important in allow­ing a particular application.

d) Disclose to the PTO information which he is aware of that is material to the examination of a particular patent application.

e) Disclose to the PTO information which he is aware of that is material to the examination of a particular patent application, and explain why the claims of the application are patentable over the disclosed information.

15

j~. A request for reexamination has been filed against a patent you prosecuted. It is based on the same references relied upon by the patent exam­iner who issued the patent. Which of the following most correctly describes your responsibility as patent agent for the patent owner?

a) File a response prior to the time the exam­iner considers the request and before he deter­mines whether there is substantial new question of patentability affecting the claims.

b) File a response within the time period set by the order for reexamination and argue that a reex­amination proceeding based on the previously considered art is improper and citing 35 U.S.C. 282 for the proposition that the patent has a pre­sumption of validity over any art of record consid­ered by the PTO.

c) File a response within the time period set by the order for reexamination and amend the claims to enlarge their scope so they include new subject matter clearly not shown by the cited prior art.

d) File a response in duplicate within the time period set by the order for reexamination in the event service on the requestor is not possible.

e) None of the above.

39. In responding to a final rejection of claims 1 to 5 under 35 U.S.C. 103, applicant's patent agent, I.M. deLaw, argued only that the references ap­plied in the rejection neither taught nor suggested the claimed invention. Examiner Tough issued a Notice of Allowability to which was attached a statement of reasons for allowance. In that state­ment, Examiner Tough explained his reasons for the allowance of the claims. Upon receipt of the statement from the examiner, which of the follow­ing most correctly describes the proper response which deLaw must take with regard to the examiner's reasons for allowance?

a) Mr. deLaw must file a timely response to the examiner's statement to prevent the application from going abandoned.

b) Mr. deLaw should object to the examiner's statement to avoid any implication that applicant agrees with or acquiesces in the examiner's rea­soning.

c) Mr. deLaw may file a response commenting on the examiner's statement, even though the failure to do so will not give rise to any implication that applicant agrees with or acquiesces in the examiner's reasoning.

d) Undercurrent Office policy and procedures, Mr. deLaw cannot respond to the examiner's statement.

e) None of the above.

40. Constructive reduction to practice occurs when:

a) A working model of the invention is prepared.

b) The invention is described in a printed publication.

c) An application for patent is filed in the PTO. d) The inventor discloses the invention to his

or her patent agent or patent attorney. e) An application for patent is filed in a foreign

country whose benefit is not claimed.

41. You are a patent agent representing a com­pany involved in developing a test for AIDS. The examiner has questioned whether the claimed invention meets the utility and disclosure require­ments under 35 U.S.C. 101 and 112. You have conferred with an eX;pert in the field and prepared an affidavit for the expert. There have been some successful test results, but some of the tests have had inconclusive or negative results. The tests have been on animals and humans. Experimental data sheets will be attached to the affidavit to support the expert's statements. In selecting the data to send, your best approach would be to:

a) Send all the data the expert selected that supported the successful test results.

16

b) Review all the data and send only the data showing successful test results.

c) Examine, with the help of the expert and the inventor, all the test results and send all data involving the claimed invention.

d) Rely on the inventor to select the appropri­ate data to send, without giving any guidance on what should be included.

e) Not to send any data related to testing of the invention on animals because they were inconclu­sive or negative.

42. Which one of the following is true regarding extensions of time under 37 CPR 1.136(a)?

a) The fee can be paid outside the statutory six­month period for response to an Office action.

b) Timely filing the appropriate extension fee is to no avail unless a paper containing a request for an extension of time is also filed.

c) Where an Office action dated November 3, 1987 sets a one month period for response, the response is considered complete when a request for a three month extension of time and appropri­ate fee are received in the PTO on March 1, 1988, and the response which does not include a certifi­cate of mailing is received in the PTO on W ednes­day, March 4, 1988.

d) Where a timely and complete response to a non-final Office action has been filed, an extension of time is required to permit filing and/or entry of an additional amendment after ex­piration of the shortened statutory period for re­sponse.

e) Where a timely response has been filed after an Office action containing a final rejection of claims, an extension of time is not required to file a timely Notice of Appeal after expiration of the shortened statutory period for response.

43. Which of the following amendments will.n.Ql be entered as a matter of right? (Select the most correct answer.)

a) Amending finally rejected claims. b) Adding new claims after a final rejection. c) Reinstating a previously cancelled claim. d) Cancelling rejected claims prior to a fmal

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

44. Which of the following should nQ1 be consid­ered as evidence of obviousness?

a) Evidence of acts occurring after the inven-tion was made.

b) Scientific facts. c) Long-felt commercial need. d) Commercial success due to the invention. e) U.S. government's unsuccessful efforts to

solve the problem solved by the inventor.

45. Which one of the following statements con­cerning reexamination is false?

a) When a registered patent agent requests reexamination of a patent and is in fact acting in the interest of a party other than the patent owner, the agent need not reveal the identity of the real party in interest.

b) Questions involving violation of the duty of disclosure will be resolved in the reexamination proceeding

c) In a reexamination, the question of whether a claim in a patent under reexamination that issued on a continuing application is adequately sup­ported by the specification of a parent application as required by 35 U.S.C. 112 and 120 may be considered in order to determine whether inter­vening patents or printed publications constitute prior art.

d) The examiner can find a substantially new question of patentability relying on printed publi­cations other than those cited by a requester.

e) No interviews for discussing the patentabil­ity of the claims will be granted prior to the first Office action.

17

46. In the printing of a patent grant, a significant error was made by the PTO. Which of the follow­ing most correctly describes what a patent practi­tioner can do to obtain a certificate of correction? (Select the most correct answer.)

a) File a request in the PTO by the patent owner to issue the certificate of correction along with the text of the corrections to be made.

b) File a request in the PrO by the patentee, who has assigned all right, title and interest to another, to issue a certificate of correction along with the text of the corrections to be made.

c) File a request in the PTO to issue a certificate of correction along with the text of the corrections to be made.

d) File a request to the PTO on behalf of a person not owning any interest in the patent to issue a certificate of correction along with the text of the corrections to be made.

e) Each of the above.

47. A response to an Office action was signed by patent practitioner Jones on February 11,1988, the last day of a shortened statutory period for re­sponse set in the Office action. The response contained a certificate of mailing by "Express Mail" which was filled in by Jones' secretary, Jane, and placed in an appropriate package having an Express Mail label. On the certificate, Jane certified that the response was mailed by "Express Mail Post Office To Addressee Service" on Febru­ary 11,1988. BecauseJones'officeisremotefrom the main Post Office. Jane deposited the package in a convenient "Express Mail" maibox which was just outside Jones' office. She deposited the pack­age on February 11, 1988,justafterthelastpickup of the day. The Post Office picked up and proc­essed the package on Friday, February 12, 1988. The Express Mail label shows a February 12, 1988 "Date In". The package was received in the PTO on Tuesday, February 16, 1988. Which one of the following is true?

a) The response will be considered by the PTO to have been deposited with the Postal Service on February 12, 1988 and filed in the PTO on Febru­ary 16, 1988.

b) The response will be considered by the PTO to have been filed in the PTO on February 11, 1988.

c) The response will be considered by the PTO to have been filed in the PTO on February 12, 1988.

d) The response will be considered by the PTO to have been deposited with the Postal Service on February 11, 1988 and filed in the PTO on Febru­ary 11, 1988.

e) The response will be considered by the PTO to have been deposited with the Postal Service on February 11, 1988 and filed in the PTO on Febru­ary 16, 1988.

48. Which of the following most correctly describes when an examiner may properly issue a requirement for restriction in an application which was properly filed under 35 U.S.C. 111?

a) An application discloses and claims a product and a process specially adapted for the manufacture of that product. The process as claimed cannot be used to make other and materi­ally different products. The product as claimed can be made by another, materially different proc­ess.

b) An application discloses and claims a product and a process for using that product. It is not possible to practice the process as claimed with any other materially different product. The prod­uct as claimed can be used in a materially different process.

c) An application discloses and claims a product, a process specially adapted for the manu­facture of that product, and a process of using the product. As claimed, the process for manufacture of the product cannot be used to make other and materially different products, and the process of

18

using the product cannot be practiced with any other materially different product. In the first Office action, the examiner rejects the product as claimed under 35 U.S.C. 103.

d) An application discloses and claims a process and an apparatus specifically designed for carrying out the process. The apparatus cannot be used to practice any other, materially different process. The process as claimed cannot be prac­ticed by any other apparatus but can be practiced by hand.

e) Each of the above.

49. When a document filed in the PTO concerns a patent application, which of the following most correctly sets forth the identification criteria that should be included on the document for proper identification of the patent application?

a) The name of the applicant. b) The name of the applicant and the title of the

invention. c) The name of the applicant and the serial

number of the application. d) The serial number of the application and the

title of the invention. e) The name of the applicant, the title of the

invention, the serial number of the application, and the filing date of the application.

50. Which of the following papers can be filed by utilizing the certificate of mailing by "Express Mail" and be considered as having been filed in the PTO on the date the paper is shown to have been deposited with the United States Postal Service, unless that date is a Saturday, Sunday, or federal holiday within the District of Columbia? (Select the most correct answer.)

a) A National patent application only. b) Any paper except for an agreement between

parties to an interference under 35 U.S.C. 135(c). c) Any paper except a notice and reasons of

appeal under 35 U.S.C. 142. d) Any paper to be filed in the PTO. e) None of the above.

51. Which of the following most correctly iden­tifies individuals who may make an oath or decla­ration?

a) A legal representative of a deceased or legally incapacitated inventor.

b) A joint inventor on behalf of himself and another joint inventor who was willing to sign but was not immediately available when the oath or declaration was presented for execution.

c) A research director or chief scientist on behalf of a large team of joint inventors who would find it burdensome to sign individually.

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

52. Which of the following statements is true?

a) Oral hearings will be granted in connection with a request to the Commissioner provided the request is accompanied by a $140 fee.

b) No fee is required for a petition to invoke the supervisory authority of the Commissioner.

c) A petition to the Commissioner not filed within two months from the action complained of shall be dismissed as untimely.

d) The filing of a petition to the Commissioner will stay the period for reply to an examiner's action which may be running against an applica­tion.

e) None of the above.

19

53. Where a patent is concurrently being reexam­ined in the PTO and is the subject matter of a pending Ia w suit, which of the following state­ments, if any, is false?

a) Where the court has stayed the suit and ordered reexamination, the request for reexamina­tion will be taken up by the examiner for decision six weeks after the request is filed.

b) Once a trial has commenced, the PTO will suspend proceedings. "

c) When a court decision favorable to the patentee becomes final, the PTO will promptly vacate the reexamination proceedings.

d) As a matter of policy, the PTO will not initiate a reexamination proceeding as to a patent over the same art considered by a court in a final decision sustaining that patent.

e) None of the above.

54. When there is more than one registered agent of record in a patent application and there has been no correspondence address specified, the PTO will:

a) Send correspondence to all agents of record. b) Send correspondence to the agent with the

lowest registration number (i.e. the most senior­ity).

c) Send correspondence to the last agent made of record.

d) Send correspondence to the frrst agent made of record.

e) Send correspondence to the inventor or inventors.

55. In a plant patent application, which one of the following statements is true with regard to the drawing?

a) It must be in color even though color is not a distinguishing characteristic.

b) It cannot be a color photograph. c) It need not include figure numbers and

references unless required by the examiner. d) It need not disclose all the distinctive char­

acteristics of the plant capable of visual represen­tation.

e) Only one copy of the color drawings must be submitted.

56. During prosecution of a patent application naming A, Band Cas inventors and assigned to the Baker Corporation, you as the patent agent for Baker learn that D should be named as inventor instead of C. Which one of the following are you nQ1 required to do?

a) File a petition with a statement of facts verified by the original named inventors establish­ing when the error in inventorship without decep­tive intention was discovered and how it occurred.

b) Amend the application to only name the actual inventors A, Band D.

c) File a written consent by any known infring­ers.

d) Pay a fee for filing the petition. e) File a written consent by the Baker Corpo­

ration.

57. In reviewing the frrst Office action on the merits, you note that the examiner did not set the time for response even though the Office action was stamped "Mailed December 8, 1987". The due date for a proper response to avoid abandon­ment would be which of the following?

a) January 8, 1988. b) March 8, 1988. c) April8, 1985, if accompanied by a petition

for an extension of time with the appropriate fee. d) May 8, 1988. e) June 8, 1988.

20

58. A request for reexamination of a patent may be filed any time during the period of enforceabil­ity of a patent. What is this period of enforceability of a utility patent?

a) Seventeen years from the date of filing of the patent application.

b) Seventeen years from the date of issue of the patent.

c) Seventeen years from the date of issue of the patent plus <?ne year after the end of the term.

d) Seventeen years from the date of issue of the patent plus six years after the end of the term during which infringement litigation may be insti­tuted.

e) None of the above.

59. You receive an Office action in which the examiner has made a restriction requirement be­tween claim 1 drawn to a brick (Group I) and claim 2 drawn to a method of making a brick (Group II). Which of the following responses to the restriction requirement is appropriate?

a) Traverse the restriction requirement specifi­cally pointing out your reasons why the require­ment is in error.

b) Amend claim 2 to depend from claim 1 and argue that claim 2 now requires all the limitations of claim 1.

c) Elect the invention of Group II, claim 2, and cancel claim 1.

d) Cancel claims 1 and 2, provide six new claims to the brick, and elect to prosecute Group II.

e) None of the above.

21

60. Which of the following applications will receive a filing date as of the date it is received in the PTO? (Select the most correct answer.)

a) An application in the name of Bums et al with no declaration or oath, but a proper specifica­tion, claim, drawing and filing fee.

b) An application in the name of Smith with proper declaration, specification, drawing, fee and one claim which is clearly not in compliance with 35 U.S.C. 112 second paragraph.

.. c) An application in the name of Anderson with proper declaration, specification including description of Figures 1-9, three claims, drawing Figures 2-9 and filing fee.

d) A complete application in the name of Williams properly filed with a certificate of mail­ing by "Express Mail".

e) Each of the above.

END OF THE MORNING SECTION OF THE EXAMINATION

Test Number 014A Test Series 188 NAME ______________________ __

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

REGISTRATION EXAMINATION FOR PATENT ATTORNEYS AND AGENTS

April 13, 1988

Afternoon Section (100 Points) Time: 3 Hours

DIRECfiONS

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

There are three (3) essay questions. Question 1 has two options. You must present an answer to either Option 1 or Option 2. Questions 2 and 3 are based on a continuing fact pattern. The facts of Question 2 carryover to Question 3. 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. You must initial each page of the Answer Book beneath the page number.

Points will be deducted for any claims written which are indefinite, add new matter, 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 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 the afternoon 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 (30 Points)

D I RECTI 0 N S: This question consists of two optional problems. You must select one of the options. Option 1 is directed to a device for binding wires. Option 2 is drawn to a thin fllm resistor device. Do not present an answer to both options inasmuch as only the first option answered will be graded. Points will be deducted for claiming a catalog of elements without relating the elements to each other or claiming subject matter not within the scope of the description of the invention, adding new matter, including language which is indefmite or does not have antecedent basis, or for any other objection or rejection that would nonnally result in the course of an examination of a patent application.

Option 1: Draft a single claim to a device for binding wires shown in FIG. 4 on page 3. The claims must interrelate at least all of the following elements: band (10), lock grooves (11), coupling hole (13), buckle (20), buckle body (21), insertion hole (22), ratchet pawl (24), lock member (25), lock pawl projections (25b and 25c ), and wing portions (26a and 26b ). Points \vill be deducted for describing or relating any of the above elements as a "means for" or the like.

Figs. 1 through 4 on page 3 illustrate a device for binding wires. Band 10 has a plurality of parallel lock grooves 11. Plate-like coupler 12 has a central coupling hole 13 for coupling with buckle 20. Lock member 25 of the buckle is forcibly inserted into the coupling hole of the coupler of the band. Locking member 25 is an anchor-type member, having plate-like portion 25a and lock pawl projections 25b and 25c extending obliquely from portion 25a. Buckle 20 is frrrnly secured to coupling hole 13 by the elastic or resilient restoring forces of wing portions 26a and 26b against the band when lock pawl projections 25b and 25c engage the sides of the coupling hole at 25b' and 25c'.

Band 10 is coupled to the buckle 20 by inserting end lOa through the insertion hole 22 of the buckle. End lOa of the band is pulled away from buckle body 21. Ratchet pawl24 which extends obliquely from an inside wall of the insertion hole engages lock grooves 11 so as to retain the band within the insertion hole such that the band is slidable only in one direction, thus contracting the loop formed by the band and firmly binding the wires W therebetween. Further, band 10 in the state of binding wires W may be released by merely releasing the engagement between the ratchet pawl projection 24b and lock groove 11 of band 10 by raising the end portion 24a of the elastic ratchet pawl 24.

2

",

, I

FIG. 1

11

FIG. 3

26a 24a 24b

22

24

'l50/

25

26

2Sc\

26b

25a 20

GO TO PAGE 4 FOR OPTION 2

3

FIG. 2

\ 25

FIG.4

Option 2: Draft a single claim to a thin flimresistordevice shown inFig.JH on page 5 within the scope of the description below. The claim must include all critical or essential features of the invention as well as all perferred embodiments. A product-by-process claim will not be accepted.

Figs. 1A through 1 G on page 5 illustrate the sequential information of the thin film resistor device shown in Fig. 1 H. Preferably, substrate 10 is silicon dioxide, glazed ceramic glass or a silicon oxynitride. Layer 12 is formed by depositing a layer of aluminum or aluminum-copper alloy by conventional sputtering or chemical vapor deposition techniques (Fig. 1A). The thickness of layer 12 is 0.5 to 2.0 microns. The layer has a resistivity of 2 to 3 ohm-em. The layer is patterned using conventional photolithographic etching techniques to form a patterned conductive metal layer 14 (Fig. lB).

An insulating layer 16 of silicon dioxide, silicon nitride, or silicon oxynitride is formed on pattern conductor layer 14 and substrate 10 as shown in Fig. 1 C by plasma enhanced chemical vapor deposition or by low pressure chemical vapor deposition techniques. Silicon oxynitride is preferred. The layer is then etched to provide for opening 18 (Fig. lD). The thickness of layer 16 is 1.0 to 2.0 microns.

Resistive layer 20 which is 1.0 to 2.0 microns thick is deposited using conventional sputtering or chemical vapor deposition techniques (Fig. IE). The resistive layer can be polycrystalline silicon, carbon, silicon carbide, indium tin oxide, or cadmium sulfide. The layer is masked and etched to leave resistor pad 22 (Fig. lF). The resistivity of the resistor pad must be 0.5 to 3.0 ohm-em. In a preferred embodiment, a PN junction is formed in resistor pad 22 by frrst forming a pad 22 ofpolycrystalline silicon using, for example, low-pressure chemical vapor deposition, and then implanting phosphorus ions into the polycrystalline silicon pad by a conventional ion implantation technique. The concentration of the phosphorus dopant in the polycrystalline silicon pad is between 1019 to 1021 ions per cubic centimeter. After formation of the PN junction, the pad is annealed in a nitrogen atmosphere for 3 to 4 hours. The concentration of the phosphorus in the polycrystalline silicon and the thickness of the resistor pad are critical features of the preferred embodiment.

Finally, a top metal layer 24 is deposited over the resistor pad 22 and insulating layer 18 (Fig. lG). It is essential that the metal layer be gold, tantalum gold, or tantalum silicide. The layer is 1.0 micron thick and is deposited using a conventional sputtering technique. The resistivity of the layer is between 2 and 3 ohm-em. The metal layer is further defmed by selective etching to leave a metal barrier layer pattern 26 as shown in Fig. 1 H.

4

.. .

/0

Fig. lA

Fig. IB

16

Fig. IC

Fig. ID

5

QUESTIONS 2 and 3 (70 Points)

DIRECTIONS: Questions 2 and 3 are based on a hypothetical fact pattern. All prior art patents, engineering and scientific terms in the fact pattern are hypothetical. Do not assume any facts or scientific information outside the fact pattern. You are to vigorously represent your client to the limits of advocacy, but you are to explicitly follow your client's instructions. For purposes of this examination, you cannot propose or add any new claim. If in your answer, you propose to amend a claim, you must specify how the claim would be amended following controlling rules and regulations and proper Patent and Trademark Office procedures. If in your answer. you are relying on a procedure stated in a statute, rule or procedure set forth in the Manual of Patent Examining Procedure (MPEP). you must explain how you would meet the requirements ofth~ statute, rule or procedure. Mere citation of a section of the MPEP, statute or rule will not suffice to demonstrate your knowledge of the requirements of the cited statute, rule or MPEP section. If in your answer. you propose to disclose information to the Patent and Trademark Office, cite and discuss only information "material" within the meaning of 37 CFR 1.56(a). Points will be deducted for disclosing information not material to the examination of the application. Points will also be deducted for failing to properly follow and employ all controlling statutory provisions and regulations as well as Patent and Trademark Office procedure and for employing irrelevant or incorrect reasoning.

Question 2 (25 Points): Since 1975, Seaboxtop Corporation has marketed a framus protected by a single layer of polypentasuchnso which is 0.5 em thick. After manufacture of the framus body, a layer of polypentasuchnso is heat bonded onto one exposed surface of the framus. The exposed surface must be protected from the rain, snow and ice in order to assure a sufficient useful life of the framus. Seaboxtop's framus was placed on sale in 1975 and was fully described in a patent to Hermans, U.S. Patent No. 4,099,313. Polypentasuchnso has a variety of uses and is sold by Seaboxtop as PPS-COA T. It is available in sheets having thicknesses of0.25 em and 0.5 em. The framus sold by Seaboxtop enjoyed

. great commercial success, accounting for 58% of the world's market of framus sales in the period 1978-1983.

Inventor, Will B. Genius, an employee of Seaboxtop, developed an improved framus. On February 4, 1987, a patent application for the improved framus was filed naming Dr. Genius as the sole inventor. The improved framus differs from the original product sold by Seaboxtop in two respects. First, the one surface of the framus that is exposed to the rain, snow and ice has three polypentasuchnso layers, each layer being 0.5 em thick. When the total thickness of the polypentasuchnso layers is at least 1.5 em thick, there is complete weatherproofing. Heat bonding the layer of polypentasuchnso layer as taught by Hermans did not completely protect the framus from the elements. Often, damage resulted because of moisture coming into contact with the framus for prolong periods of time at temperatures above 60oc. Second, a bonding agent, stickonit acid, is used between the· fra.mus and the first layer of polypen­tasuchnso and between all succeeding layers of polypentasuchnso to bond the layers to the framus and the layers to each other. The use of stickonit acid as a bonding agent in thicknesses greater than 0.01 mm (preferably 0.04 mm) gives unexpected results in the sense of patent law. Furthermore, the use of stickonit acid as a bonding agent would have been completely unexpected by a worker skilled in the art

at the time the Genius patent application was filed. The Hermans patent did not disclose bonding the layer of polypen~asuchnso to the framus using a bonding agent. The patent application, excluding the oath or declaration, abstract of the disclosure, and other formal papers, is as follows:

6

'•

. . PATENT APPLICATION OF WILL B. GENIUS

BONDED FRAMUS

Background of the Invention

A framus is protected from rain, snow and ice on all sides, save one, by the housing into which the framus is mounted. It is important to protect the exposed side from rain, snow and ice. A framus is known in the prior art where the the exposed side was protected as de­scribed in Example I of Hermans, U.S. Patent No. 4,099,313, granted September 14, 1979. The exposed side of the framus is described in the patent as having a 0.5 em thick layer of pDlypentasuchnso heat bonded to the framus. Polypentasuchnso is sold by Seaboxtop Corpora­tion under the trademark PPS-COAT.

The Hermans patent discloses applying a single 0.5 em thick layer of polypentasuchnso over the exposed side of the framus and then heating the framus to 200°C. to bond the polypentasuchnso layer to the fra­mus. The Hermans patent discloses that weather resistance is ob­tained for the resultant polypentasuchnso protected framus at tem­peratures less than 60°C. Stickonit acid is a known chemical which is disclosed in the patent to Adhesive et al., U.S. Patent No. 4,233,292, issued on April 13, 1982. The only utility disclosed for stickonit acid in the Adhesive et al. patent is as a pharmaceutical intermediate. The complete method for making stickonit acid is disclosed by Adhesive et al.

Summary of the Invention

A framus is provided which includes one side that in normal operation is exposed to rain, ~now and: ice. The exposed surface is protected by at least one layer of polypentasuchnso which is bonded to the surface of the framus by a thin layer of stickonit acid. In a pre­ferred embodiment, the total thickne~~ of the polypentasuchnso layer is at least 0.5 em.

Detailed Description of the Invention

The framus of the invention has at least one layer of polypen­tasuchnso, 0.5 em thick, bonded to the framus with stickonit acid. Preferably, the total thickness of the polypentasuchnso layers is at least 1.0 em and compri~es at least two separate layers, each layer being at least 0.5 em thick and each layer bonded to each other with stickonit acid. The thickness of the stickonit acid layer must be at least 0.01 mm thick to be effective. Any thickness of stickonit acid less than 0.01 mm results in unsatisfactory adhesion. The thickness is preferably about 0.04 mm. The following examples serve to illus­trate the invention:

Page 1

7

Example 1

An unfinished framus identical to the one disclosed in the Hermans patent is used as the starting material. In the present example, instead of heat bonding the polypentasuchnso layer to the framus, the framus is coated with a thin film (0.04 mm thick) of stickonit acid. While the stickonit acid coating on the framus is still moist, a 0.5 em thick layer of polypentasuchnso is applied over the thin film coating. Five, half pound weights, are placed on the polypen­tasuchnso layer for two ho~rs, after which the weights are removed.

Example 2

The framus produced in Example 1 with the single layer of stickonit acid bonded polypentasuchnso is used as the starting material for this example. The outer surface of the polypentasuchnso is coated with a further thin film (0.04 mm thick) of stickonit acid, and a further 0.5 em layer of polypentasuchnso is applied to the still­moist surface of the stickonit acid. Five, half pound weights, are placed on the framus to ensure a tight bond is formed. Drying is permitted to take place for two hours, after which the weights are removed. The resultant framus has a total polypentasuchnso thickness of 1. 0 em.

Example 3

The product of Example 2 is coated further with a thin film (0.04 mm thick) of stickonit acid, and further a 0.5 em layer of polypen­tasuchnso is placed on the still-moist surface of the stickonit acid. Five, half pound weights, are placed on the framus to ensure a tight bond. Drying is permitted to take place for two hours, after which the weights are removed. The total thickness of the polypentasuchnso layer on the resultant framus is 1.5 em.

All of the framus products of the invention operate for a prolonged periods at temperatures of above 60°C. It has become important to protect the exposed surface of the framus from damage due to mois­ture. The table below compares the useful life in hours for framus made in accordance with the prior art to the products made in accor­dance with the present invention.

50°C E.t:iQ.t: Art Hermans 200

!he InYention Example 1 200+ Example 2 600+ Example 3 600+

60°C

50

50 200 600+

Page 2

8

70°C

25 100 600+

50 600+

..

Measurements were conducted beginning at 50 hours. If there is no result given, the framus deteriorated before the first measurement. A "+" sign following a value means that the framus did not deterio­rate before the measurements were discontinued at the value given. Thus, a measurement of 600+ means that the framus did not show any signs of deterioration after 600 hours.

The use of three discrete layers of polypentasuchnso provides a framus which has superior resistance to the elements at temperatures up to 80°C, whereas the framus products with less than three layers of polypentasuchnso deteriorate as the temperature is raised from 60°C to 80°C.

WHAT IS CLAIMED IS:

1. A framus having one side that in normal operation is exposed to rain, snow and ice, said side having at least one layer of polypen­tasuchnso bonded to said side by a 0.04 mm thick layer of stickonit acid.

2. A framus of claim 1, wherein the total thickness of the polypen­tasuchnso layer is at least 0.5 em.

Page 3

9

Concurrently with the filing of the patent application, an Information Disclosure Statement was filed under 37 CFR 1.97(a), which stated that "the closest prior art known to the applicant is the prior art cited in the 'Background of the Invention'." As to the prior art cited, all formalities under 37 CFR 1.97 were met, i.e., full discussion of the cited references, tabulation of the references, and a copy of each reference.

The examiner issued an Office action dated February 16, 1988, which set a three month shortened statutory period for response. The action included only the following rejection:

"Claims 1 and 2 are rejected under 35 U.S.C. 103 as obvious over Hermans in view of Adhesive et al. Hermans shows a framus with a 0.5 em thick layer of polyypentasuchnso. The claims read on a framus with 0.5 em thick layer of polypentasuchnso. The only feature not shown by Hermans is a layer of stickonit acid. Stickonit acid is old, as shown by Adhesive et al. It would be obvious to include this known material in the Hermans framus because sticknonit acid was well known in the art at the time of the invention.

You are a patent agent employed by a law fmn which is representing Seaboxtop Corporation. The patent agent who prepared the patent application for the improved framus recently resigned from the frrm, and you have been given the application to prosecute. Seaboxtop's President, Sam Smith, is the firm's contact with the corporation. He instructs you to prepare a response to the Office action. He further instructs you that the objective of Seaboxtop' s management is to obtain the broadest possible protection for the improved framus. Smith reminds you to amend the claims if and only if an amendment is consistent with management's objective. Prepare a response to the Office action which is consistent with the instructions from Smith.

Question 3 (45 Points): Question 3 is based on the following facts in addition to the facts provided in the fact pattern for Question 2. After filing the response to the Office action dated February 16, 1988, you are notified by the examiner that the application has been allowed. You received the Notice of Allowance on April1, 1988. Since you made a reasonable inquiry before filing the response to the Office action regarding known prior art and statutory bars and found none, you completed the Issue Fee Transmittal'Form and authorized the paytnent of the issue fee from your firm's general account. On April 8, 1988, you write a letter to Mr. Smith, Seaboxtop's President, telling him that the application has been allowed and that the issue fee has been paid. Today, you received a letter from Mr. Smith. The body of the letter is as follows:

"The allowance.of the improved frarnus patent application is great news since the patent is central to our marketing effort. When I told the Board of Directors ¢e good news, we discussed the subject matter of the patent application. During our discussion, facts relating to an article published in the Journal of Framus Technology (JFf), as well as a Baltimore display were raised. We decided that you should be made aware of the facts. No one on the Board, including myself, feel that any of these facts are relevant to Dr. Genius' patent application.

10

•' .

..

"The February 1986 issue of JFT included a research article by the inventor, Dr. Genius, which explained in full all details of making his improved framus. It also disclosed details of how the bonding agent, stickonit acid, and polypentasuchnso layers are made and how applying three layers of polypentasuchnso layers substantially increase the useful life of the framus. The JFT article concluded with the following passage:

'Everyone in the framus art is trying to make the better mousetrap. In the framus art, I think that I have come up with the better framus. Everyone is familiar with my retired colleaque, Harry Hermans, and his framus which is disclosed in U.S. Patent No. 4,099,313. I apply the same layer ofpolypen­tasuchnso as used by Hermans, but instead of heat bonding, I coat the framus with a layer of stickonit acid and then bond a 0.5 em layer of polypen­tasuchnso to the framus using stickonit acid as the bonding agent. I have quite literally, built the better framus that we have all Sought for for so long.'

"Dr. Genius began his research in 1984 and except for disclosure to the pilot plant personnel who tested the improved framus under the direction of Dr. Genius, he kept his work secret until mailing it to the editors of JFT on November 6, 1985. The February 1986 issue of JFf was received by subscribers on or about February 14, 1986. A copy of the February issue received in the Corporate Library is enclosed. It shows a receipt date of February 14, 1986.

"However, quite independent of the article in JFT, the manager of the marketing department revealed to the Board information about an isolated display of a particular framus unit. Neither the rnanager nor any one in his department were aware that a patent application on Dr. Genius' improved framus had been filed.

"On January 2, 1986, and throughoutthe rest of that month, a framus was placed in a store window of Jake's Home Center in Baltimore, Maryland. A sign in the window advertised the framus as follows:

THE SEABOXTOP IMPROVED FRAMUS $135.00 EACH

IN STOCK AND READY FOR IMMEDIATE DELIVERY!

"This particular framus had one 0.5 em thick layer of polypentasuchnso bonded to the exposed surface of a frame with a thin layer (0.04 mm thick) of stickonit acid. Seaboxtop had these framus models left over after a successful experimental test of Dr. Genius' early models of his improved framus. The marketing manager thought that he would simply get rid of these extra framus models and also make an experimental market test to see whether customers would find this type of framus acceptable. Ten units were in I ake' s stock room in addition to the one in the window. After one month of the prominent display, all units were returned unsold. No sales were ever made. The experimental purpose was to determine marketability of the framus. In fact, although the framus

11

display did catch the eye of Jake's customers and could have been inspected by anybody, nobody even bothered to inspect the framus on display, and all models were returned to Seaboxtop in their sealed cartons. Neither Dr. Genius nor I were aware of the Baltimore display. A copy of the invoice of the framus models sent to Jake's Home Center is enclosed as well as Jake's letter returning all of the models.

"We hope that this information will not affect the status of the patent application. This patent is very important to us, especially the improved framus having the characteristics of Example 3 of the patent application, which we expect will eventually be 60% of our total sales. You must obtain the broadest patent protection possible in the present patent application on the improved framus and do whatever you must do to insure that the present application issues as soon as possible."

You were fully aware of the contents of the Genius article in JFf before preparing the response to the Office action because a copy of the article was in the frrm's file. However, you had no knowledge of the Baltimore display. Explain fully and completely what you must do to further prosecute the pending application to comply with the instructions received from Smith, and explain why your approach complies with statutory requirements for patentability and PTO regulations and procedures. You understand your instructions from Smith as precluding youfromfiling any continuing application at this time.

END OF THE AFTERNOON SECTION OF THE EXAMINATION

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