Test Number 014 Test Series 287 NAME - Houston, … of the Patent... · Test Number 014 Test Series 287 NAME ... Commissioner to review the requirement for restriction. ... u.s.c

Test Number 014 Test Series 287

NAME

DEPARTMENT OF COMMERCE UNITED STATES PATENT AND TRADEMARK OFFICE

REGISTRATION EXAMINATION FOR PATENT ATTORNEYS AND AGENTS

October 6, 1987

Morning Section (100 Points) Time: 3 Hours

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

INSTRUCTIONS

This examination is an open book 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 material 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. No additional paper is needed. Use a No. 2 (or softer) lead pencil to record your answers on the answer sheet. Darken completely the circle corresponding to your answer. You must keep your mark within the circle. Stray marks may be counted as answers~ Erase completely all marks except your answer.

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

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

Morning Section Page 1

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

Example: 3. The moon is made of cheese.

3. A c D E

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

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

a) The moon is made of cheese.

b) The moon is imaginary.

c) The moon has mountains.

d) The moon is a source of sunlight.

e) The moon is visible only at night.

3 ... A B 8 D E .

NOTE: IN ANSWERING THE QUESTIONS IN SECTIONS 1 AND 2, DO NOT ASSUME ANY ADDITIONAL FACTS NOT PRESENTED IN THE QUESTION.


DO NOT TURN THIS PAGE UNTIL YOU ARE INSTRUCTED TO

CHECK THE CONTENTS OF THIS EXAMINATION BOOKLET

OR TO BEGIN THE EXAMINATION


SECTION 1: TRUE/FALSE

1. Simon is a patent practitioner. In representing his client, Simon is confronted with a rejection based on a close reference that he believes can qnly be overcome by reliance upon an affidavit under 37 CFR 1.132. In particular, the rejection is based upon the PTO examiner's opinion that the claimed invention operates in the same manner as the invention disclosed in the reference. Simon believes that the claimed invention actually operates in a different manner. He asks the inventor to supply data regarding the operation of the claimed invention. When he reviews the inventor's data, he finds it ambiguous concerning the method of operation. Simon uses the data selectively to prepare a declaration under 37 CFR 1.132 that fully supports his position that the claimed invention operates in a different ~anner than the invention d~sclosed in the reference. The inventor signs the declaration prepared by Simon and Simon files it. Simon has not violated his duty of candor and good faith toward the PTO.

2. Robert Smith comes to you to prepare a patent application on a toy device. He tells you he got the idea from his darling daughter Debbie, who is 5 years old, but that he had to put a lot of effort into it to finally make it work. You can file a patent application with Robert and Debbie Smith as joint inventors.

3. Acting on behalf of inventor Jones, patent practitioner Green obtained allowance of a patent application including a claim to an electronic system having circuitry which the allowed claim recited as "operating at a frequency of between 1 to 20 MHz." Due to a printing error, the claim in the issued patent read "operating at a frequency of between 1 and 2 MHz." Green submitted the two following papers to the PTO:

(a) a letter requesting a certificate of correction, pointing out the page and line in the Jones application


at which the claim was typed with the correct frequency range, and correctly stating that since the error resulted through the fault of the Patent and Trademark Office, no fee was required, and

(b) a Form PT0-1050 setting forth the column and line in the issued patent at which the error in the claim was printed and properly setting forth the correction that should be made.

This was sufficient to obtain a Certificate of Correction, correcting the printing error.

* * * * Answer Questions 4 and 5 based on the facts in paragraph (A) below. Consider the questions independently of each other.

(A) Hans Schmidt, a German citizen, develops a new running shoe that has both novel functional elements and new ornamental features. Schmidt's rights are assigned to his employer, Stern AG. By letter received on February 1, 1985, by its exclusive United States distributor, Star Shoes, Inc., Stern provided a sample shoe embodying the Schmidt design and an offer to deliver up to 10,000 pairs of the shoe at $28.50 per pair. Star is independently managed even though Stern owns 40% of Star's stock. Star rejects the offer because of financial and market concerns. On April 1, 1985, Schmidt files for and is granted a design registration for the shoe under German law. Also on April 1, 1985, Schmidt files an application in Germany for a patent on the improved functional elements of the shoe. On May 1, 1985, an abstract of Schmidt's registration is published in Germany, including a full illustration of the design. On March 30, 1986, Schmidt files in the USPTO separate applications for a design patent and a utility patent, claiming priority under 35 u.s.c. Section 119 based on the two prior German filings.

4. Neither the German design registration nor the related publication bars issuance of a design patent to Schmidt.

5. Stern's offer to Star is a bar to issuance of a utility patent to Schmidt.

* * * *


6. Inventor I.M. Clever requests that the invention described in his patent application be published as a statutory invention registration (SIR). Within a few weeks after his SIR is published by the PTO, Clever files a new patent application, seeking to obtain a patent for the same subject matter that was claimed in the SIR. Clever has waived his right to a patent, and his application will be rejected.

7. In a series of three copending applications, the last filed application is entitled to the benefit of foreign priority of the first filed application by making reference only to the second copending application.

8. The preamble of a Jepson type claim is construed as being admitted prior art.

9. There are two kinds of double patenting rejections: same invention double patenting and obviousness-type double patenting.

10. To be patentable, an invention must be unobvious at the time a patent application claiming the invention is filed in the PTO.

11. In the first Office action in a pending application, the examiner required election between claims to the combination XY and claims to the sub-combination X. In response, patent practitioner Brown argued that the requirement was improper, requested reconsideration and withdrawal of the requirement, and provisionally elected the claims to XY. In the next Office action, the examiner repeated the election requirement, made it final, and acted on the merits of the claims to XY. Eleven months later, after otherwise routine prosecution,the claims to XY were finally rejected. Two months after the date of the final rejection, Brown filed a petition to the Commissioner to review the requirement for restriction. The next day Brown filed a notice of appeal of the final rejection. Assuming all necessary fees were paid, the petition to review the restriction requirement was timely filed.


12. Wiley Craftsman, a registered practitioner, is representing a junior party in an interference proceeding. After studying the senior party's patented file with great car~, Craftsman realizes that, in addition to other issues, he suspects that the senior party engaged in inequitable conduct in convincing the PTO to issue its claims. Although he has no evidence for inequitable conduct, Craftsman files a motion for judgment asserting that the senior part engaged in inequitable conduct. Craftsman wins the interference, although not on the basis of his position with respect to inequitable conduct. Craftsman did not violate the PTO Code of Professional Responsibility-.--

13. No appeal is possible until all of the claims under rejection have been at least twice rejected.

14. If applicant is given a shortened statutory period of three months to respond to an Office action, applicant may respond up to four (4) months after the shortened statutory period set if a petition for an extension of time and the prescribed extension fee are filed with the response.

* * * * Answer Questions 15 and 16 based on the facts in paragraph (B) below. Consider the questions independently of each other.

(B) Smith owns a u.s. patent relating to archery bows. On April 1, 1986, Smith requests reexamination of all of the claims of the patent on the basis of a new question of patentability based on a publication by Parsons. On June 15, 1986, an order for reexamination is granted.

15. On July 1, 1986, Jones, who has been accused by Smith of infringing the bow patent, submits a publication by Roy to the PTO. The Roy publication will not be entered in the record of the patent until the reexaminatiOn proceeding based on the Parsons publication is concluded unless a second reexamination fee is paid by Jones.

* * * *


16. In the reexamination proceeding, Smith expressly admits in writing that he had put a certain bow on sale in the United States more than one year prior to filing the application for the patent. Smith argues that the bow claimed in the patent is nevertheless unobvious over the "on sale" bow and other . art. The "on sale" bow may be considered by the examiner in determining the patentability.of the claims under reexamination.

17. A double patenting rejection of claims in an application can properly be based on a commonly assigned patent of a different inventive entity.

18. In the first Office action in an original application, Examiner Blue rejected generic claims to device D under 35 u.s.c. 103 and required restriction between claims to species D1 and claims to species D2. In response, practitioner Green elected the claims to species D1, cancelled the generic claims and the claims to species D2 and filed a divisional application under 37 CFR 1.60 with the same claims to species D2. Examiner Blue then allowed the original application, and the patent issued with the claims to species Dl. In the first Office action on the divisional application, Examiner Grey rejected the claims to species D2 on the ground of double patenting, contending accurately that the species D2 was obvious in view of the species Dl claimed in the issued patent. The rejection of the claims to species D2 was proper.

19. An amendment of at least one rejected claim is not required for a complete response to an Office action in which the examiner rejected at least one claim.

20. A protest against a pending patent application is limited to presenting 9nly prior art patents relied upon, and providing a concise explanation of the relevance of each listed patent and a copy of each listed patent.

21. Patent practitioner Cleopatra is drafting a patent application relating to a new chemical compound for a major u.s. corporation. The inventor provides Cleopatra with three highly relevant references. When the application is complete, Cleopatra discusses it with the inventor. The inventor then produces a fourth reference that is not nearly as pertinent as


the first three. After considering this fourth reference, Cleopatra decides she had better amend one of the dependent claims in the application to be sure it is clearly patentable over the fourth reference. Cleopatra then files the. application in the PTO together with a proper Information Disclosure Statement, citing only the three highly relevant references. Cleopatra has complied with PTO disclosure requirements.

22. Once an invention has been actually reduced to practice by one who is first to conceive and first to reduce to practice, delay in filing a patent application thereafter is not significant to a determination of priority.

23. Applicant, John Tellum, has assigned the entire right, title and interest in his patent application to the Acme Security Company. The assignment was recorded in the PTO. The company considers Tellum to be a "whistle-blower" and does not want him to have any say in limiting the claims. Acme may conduct the prosecution of the assigned application to the exclusion of Mr. Tellum by appointing its own registered attorney or agent.

24. A working model of an invention submitted with the application to the PTO becomes a part of the patent application and a part of the record of the patent, except in cases where the model is bulky or dangerous.

25. A continuation application which is not filed under the file wrapper continuing procedure results-rn express abandonment of the parent application.

26. Any question as to prematureness of a final rejection should be raised on appeal to the Board of Patent Appeals and Interferences.

27. Any patentee who is dissatisfied with the refusal of the PTO to accept and record a maintenance fee may file an appeal with the Board of Patent Appeals and Interferences.

28. An application can be properly rejected under 35 u.s.c. 101 on the ground of double patenting based on a patent claiming the same invention by the same inventor filed after the rejected application.


29. An application for a plant patent may include one or more claims reciting principal distinguishing characteristics, in addition to claiming the specified plant as described and illustrated in the application.

30. You have filed a complete patent application on a novelty dog biscuit on behalf of·your client, the Bite-Em Dog Food Company. The company pr~sident later realized that disparaging comments were made in the application concerning their competitor's Chew-Em biscuit. He requests you to retrieve the application from the PTO and delete those comments. The PTO will permit you to take the application file back to your office to remove the disparaging comments.

31. Although an oath or declaration can never be amended, in some cases a deficiency in an oath or declaration can be corrected by a supplemental paper.

32. An interference may properly be declared between a pending patent application and one or· more issued patents.

33. Failure to comply with a set time limit to copy a claim suggested by the examiner for purposes of interference results in abandonment of the application.

34. If an Office action allowing certain claims of a pending application states reasons for the allowance with which the applicant disagrees, applicant's failure to file a statement commenting on the reasons given for the allowance does not give rise to any implication that applicant acquiesces in the reasoning of the examiner.

35. A request for an interview prior to the first Office action ·is ordinarily granted in substitute applications.

36. A protest against a pending patent application can be made by the Department of Justice.


37. To obtain allowance of the broadest claim, the patent practitioner prosecuting an application filed a declaration under 37 CFR 1.132 containing data showing unexpected superior performance of the invention of the broad claim when compared with the prior art taught in the reference upon which it had been rejected. Narrower claims were not rejected on that reference. After the patent issued with the broad and narrower claims, the patent practitioner learns that the tests were not properly conducted, and that the invention of the broad claim performed no better than the prior art taught in the reference. The patent practitioner, realizing that the patent erroneously contains the broad claim, may properly correct the patent with a certificate of correction cancelling the broad claim.

38. A product-by-process clqim can be anticipated by prior art disclosure of the product made by a different process.

39. Only residents or nationals of the United States may file international applications in the United States Receiving Office.

40. When an invention is different from the invention claimed in a newly issued patent and is fully disclosed in the patent as required by 35 u.s.c. 112, and there is clear evidence in the file wrapper of the patent that applicant considered the different invention as his invention, the failure to claim the different invention is an error of the type for which correction can be properly sought in a reissue application.

41. An abandoned patent application is not a constructive reduction to practice for a subsequent n0n=copending application by the same inventive entity.

42. You filed an application for Jones on May 20, 1985. The claims of Jones' application are properly rejected under 35 u.s.c. 101 on the ground of double patenting over the claims of Jones' prior patent which issued on July 16, 1985. You can remedy this by filing a terminal disclaimer.

43. An amendment, submitted after a Board of Patent Appeals and Interferences decision affirming without qualification the rejection to all claims in the case, will be entered by the examiner if the amendment would clearly place the case in condition for allowance.


44. A claim for foreign priority under 35 u.s.c. 119 properly may be made in other than a 37 CFR 1.63 oath or declaration.

45. Double patenting cannot exist between a design application and utility patent.

46. Where a reissue application presents claims to different inventions which a primary examiner considers to be independent and distinct, and the original patent also claims the same inventions, the primary examiner may require restriction in the reissue application even though no restriction requirement was made in the original patent.

47. An applicant residing in New York City who is dissatisfied with an adverse decision of the Board of Patent Appeals and Interferences in an ex parte appeal may properly seek review of the decision at the Court of Appeals for the Federal Circuit or the U.S. District Court for Southern District of New York.

48. A continuation-in-part application cannot add claims directed to an invention not disclosed in the prior application.

49. A U.S. patent cannot be used as a secondary reference when rejecting claims of an application under 35 u.s.c. 103 if the patent date of the reference is after the u.s. filing date of the application.

SO. In a reexamination proceeding, an unamended patent claim may be reexamined for compliance with the requirements of 35 u.s.c. 112.


SECTION 2: MULTIPLE CHOICE

* * * * * Answer Questions 1-3 based on facts in paragraph (C) below. Consider the questions independently of each other.

(C) Irma Keystone is a chemist employed by Cosmic Chemical Co. All employees of Cosmic executed a written contract prior to beginning their employment agreeing to assign all patent rights in their inventions to Cosmic. On April 1, 1986, Keystone synthesizes compound X and determines that the compound is highly useful in promoting the growth rate of tomatoes. On May 1, 1986, Cosmic files an application in the PTO naming Keystone as the inventor and disclosing and claiming compound X and the method of promoting growth in tomatoes using compound X. On June 1, 1986, Keystone gives an oral presentation at a professional conference in which she thoroughly described the results of her research to persons attending the conference. She announced at the conference that·copies of her paper would be available upon request. Six persons responded and obtained copies within a week after the conference. On July 1, 1987, Barry Brett is hired as a chemist by Cosmic. Brett is assigned as an assistant to Keystone. Working together, Keystone and Brett discover that the property of compound X of promoting tomato growth is not unique to compound X and that ~ertain derivatives of compound X, i.e. compounds Y and Z, are similarly effective in promoting growth of many fruits and vegetables. (Assume that compounds Y and Z are structurally obvious derivatives of compound X.) On August 1, 1987, Cosmic files an application in the PTO, naming Keystone and Brett as inventors and disclosing and claiming the compounds Y and Z and the method of promoting growth in fruits and vegetables using compounds Y and Z. Cosmic has filed a statement in the PTO indicating that the respective inventions were made by employees who were under an obligation to assign their inventions to Cosmic. On November 1, 1987, a patent issues to Keystone on the May 1', 1986 application.

1. Keystone's act of inventing compound X and the tomato growth method in Apri.l, 1986 may be applied to determine the patentability of Keystone and Brett's joint invention of compounds Y and Z by virtue of which of the following sections?

a) 35 u.s.c. 102(f).

b) 35 u.s.c. 102(g).


c) 35 U. S.C. 102 (f) and 102 (g).

d) 35 u.s.c. 102(f) and/or 102(g) plus 35 u.s.c. 103.

e) None of the above.

2. Keystone's oral presentation at the conference and distribution of copies may be applied to determine the patentability of the joint invention by Keystone and Brett by virtue of which of the following sections?

a) 35 U.S.C. 102 (a).

b) 35 u.s.c. 102 (b).

c) 35 u.s.c. 102 (a) and 102 (b).

d) 35 u.s.c. 102(a) and/or 102(b) plus 35 u.s.c. 103.


3. The disclosures in Keystone's patent may be applied to determine the patentability of the joint invention by Keystone and Brett by virtue of which of the following sections?

a) 35 u.s.c. 102(e).

b) 35 u.s.c. 102 (a).

c) 35 u.s.c. 102(a) and (e) •

d) 35 u.s.c. 102(e) plus 35 u.s.c. 103. '-_...-;


* * * *

4. Which of the following is true?

a) A request for an interview will ordinarily be granted by the examiner before a first Office action.

b) A request for an interview will ordinarily be granted by the examiner before applicant's response to a first Office action.


c) A request for an interview will ordinarily be granted by the examiner during an interference.

d) A request for an interview will ordinarily be granted by the examiner to discuss a proposed amendment under 37 CFR 1.312.

e) A request for an interview will ordinarily be granted by the examiner following the filing of applicant's appeal brief.

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

a) A claim for a "nickel alloy comprising nickel, chromium, iron and at least one member selected from the group consisting of copper, silver and tin" reads upon "an alloy consisting of nickel, silver, chromium, iron, copper, and cobalt" described in a publication.

b) An independent claim 1 for an "article comprising a widget having a coating of from 0.05 to 1 mrn thickness," and a dependent claim 2 for "[a]n article according to claim 1 wherein the coating is about 0.3 mrn thick," both read upon "a widget having a coating of 0.5 mrn thickness" described in a publication.

c) A claim for a "soap composition compr1s1ng a maximum of 0.2 parts by weight of X per part by weight of Y" reads upon a soap composition disclosed in a publication as having 5 parts by weight of X per part by weight of Y.

d) A claim for "a laminate circuit material comprising a sheet of adhesive film, and a sheet of conductive material disposed on said sheet of adhesive film" does not read on an article consisting of an adhesive film disposed on one surface of a sheet of conductive material and a glass reinforced adhesive film disposed on the opposite surface of said sheet of conductive material.


6. Eager Waun, the oldest son of Congressman Aulder Waun, has a degree in electrical engineering and a law degree, and has recently been registered to practice before the PTO. He has established his office and now wants to build a large, lucrative practice in the field of patent and trademark law. Which of the following actions may be taken by Waun to build his practice without violating the PTO Code of Professional Responsibility?


a) Making an arrangement with a large general practice firm under which Waun pays the general p·ractice firm a set percentage of his fee in return for referral of patent work.

b) Assisting his brother, Yaunger Waun, who is about to take the PTO registration examination next April, in representing a friend before· the PTO.

c) Giving the chairman of the state lawyer referral service use of his beach house in return for referral of interesting prospective clients.

d) Paying the local television station for a 60-second commercial prepared by a Madison Avenue advertising agency, to be aired every evening during prime time, describing the legal services he plans to offer.

e) Publishing an advertisement in the local newspaper announcing the opening of his office and pointing out that he is the son of the well-known Congressman, Aulder Waun.

7. Subject matter disclosed in a parent application can be properly claimed in a continuation application filed under 37 CFR 1.60, if:

a) The continuation application is filed before the patenting, abandonment, or termination of proceedings in the parent application.

b) The continuation application is filed by more or less than all of the inventors named in the parent application.

c) The prescribed filing fee is paid.

d) (a) and (c).

e) (a) , ·(b) and (c) •

8. A protest was filed on February 15, 1987 against a pending patent application. After the examiner has carefully considered the protest, which of the following is(are) true?

a) The examiner should send an Office action to the applicant and a copy of the Office action to the protester.


b) The protester may properly appeal if the examiner does not agree with the protest.

c) The examiner should report the results of such consideration to the Group Director.

d) The protester's further participation is limited to additional arguments on the specific points raised in the protest.

e) (b) and (d).

9. A public use of a widget in the United States at an appropriate time is a bar to the issuance of a valid U.S. patent on that widget. Which of the following is(are) true?

a) The public use is a bar unless the use took place more than one year before the patent application was filed.

b) The public use is a bar unless the public use was by the inventor or the inventor's designee.

c) The public use will support a rejection of the claimed invention if the claimed invention would have been obvious in view of the public use.

d) The public use is a bar unless the use of the widget was licensed by the inventor more than one year before the patent application was filed.

e) (c) and (d).

10. Which of the following is not required as part of a petition seeking a certificate correcting the named inventor or inventors in an issued patent?

a) A statement of facts verified by the originally named inventor or inventors establishing how the error occurred, when the error was discovered, and that the error arose without deceptive intention.

b) An oath or declaration in accordance with 37 CFR 1.63 signed by each actual inventor.

c) An offer to surrender the issued patent for correction.


d) The consent of the assignee, if any.

e) Payment of a fee.

11. Restriction may properly be required in which of the following situations?

a) The application includes claims to a new and non-obvious device Al and claims to the combination AlB. The prior art shows devices A2 and A3 and the combinations A2B and A3B. Al, A2 and A3 are different species of generic device A.

b) The application includes claims to device A, device B, and combination AB. Both device A and device B are usable in other combinations.

c) The application contains a claim to a product, a claim to a process specially adapted for the manufacture of the product which process cannot be used to make any other materially different product, and a claim to a process of using the product, which process cannot be practiced with a materially different product. None of the claims is shown by or obvious in view of the prior art.

d) The application includes an independent claim to a generic product X, dependent claims to each of species Xl, species X2, and species X3. None of the claims is shown by or obvious in view of the prior art.

e) Each of the above.

12. Which of the following papers would be considered timely filed if sent by "FEDERAL EXPRESS" on the last date of the period for filing, properly addressed to the Commissioner of Patents and Trademarks, and including a signed certificate of express mailing stating the date of mailing?

a) An amendment in response to an Office action.

b) A certified check in p~yment of the issue fee for an allowed patent application.

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


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


13. Which of the following qualify as a "small entity" for purposes of fees within the PTO? ·

a) A university located in Warsaw, Poland.

b) A corporation which, with all of its affiliates, has 251 employees.

c) An inventor who has licensed rights to his invention to a corporation which, with all its affiliates, has 251 employees.

d) An inventor who has not assigned, granted,, conveyed or licensed, and who is under no obligation under contract or law to assign, grant, convey or license, any rights in his or her invention.


14. An application, filed without the appropriate basic filing fee, became abandoned for failure to respond within the time period given in a notice to complete the application. Which of the following is(are) true?

a) The application should be indefinitely maintained in abandoned files if the appropriate basic filing fee and other fees are not paid within one year of the mailing date of the notiCe.

b) The application may be revived if applicant, promptly upon becoming aware of the abandonment, files an adequate showing, verified under oath or declaration, of unavoidable delay; the appropriate filing fee; and the appropriate petition fee.

c) Applicant could not have avoided abandonment by filing a petition within one month after the given time period expired to extend the time for response to the notice together with all appropriate fees.


d) The application may be revived if applicant, within one year of the mailing date of the notice, files a petition requesting revival on the grounds of unintentional abandonment, together with all appropriate fees.

e) b) and d) .

15. The time in which appellant may file a reply brief to an Examiner's Answer which states no new ground of rejection is:

a) One month from the date of the Examiner's Answer.

b) 30 days from the date of the Examiner's Answer.

c) 20 days from the date of the Examiner's Answer.

d) 60 days from the date of the Examiner's Answer.

e) Two months from the date of the Examiner's Answer.

16. Which of the following may an examiner not properly use as evidence in considering questions of 35 u:S:c. 102(b)?

a) An assignment of the right to make, use and sell the claimed invention.

b) A display of samples of the claimed invention to prospective customers where the prices are only estimates.

c) Advertising in publicity releases.

d) Prototypes of the invention are demonstrated at a trade convention.

e) (b) and (d).

Morning. Section Page 20

17. Which of the following statements concerning reexamination is true?

a) A material prior art printed publication or patent must create a prima facie case of anticipation or obviousness in order to raise a substantial new question of patentability.

b) A substantial new question of patentability cannot arise when the cited prior art printed publication or patent has already been considered by the PTO.

c) Any question as to whether a substantial new question of patentability exists should be resolved in favor of granting the request for reexamination.

d) A substantial new question of patentability can be based upon a claim of the patent other than the ones for which reexamination is requested.

e) In determining whether a substantial new question of patentability exists, the examiner is limited to the patents and printed publications relied upon in the request.

18. Which of the following is(are) permissible multiple dependent claim wording(s)?

a) Claim 8. A gadget as in claim 5 (claim 5 is a multiple dependent claim) or claim 7, in which * * *

b) Claim 11. A gadget as in any one of claims 1, 2 or 7-10 inclusive, in which * * *

c) Claim 5. A gadget as in either claim 6 or claim 8, in which * * *

d) Claim 10. A gadget as in claims 1-3 or 7-9, in which * * *

e) (b) and (d).


19. Judgment in an interference settles all issues which:

a) Were raised and decided in the interference.

b) Could have been raised and decided in the interference by a timely filed preliminary.motion.

c) Could have been properly raised and decided in an additional interference with a timely filed preliminary motion.

d) (a) and (b).

e) (a) , (b) and (c) •

20. James Quicksilver writes a patent application for his best client on a novel telephone and data communication system. The application must be written quickly to avoid a bar under ·35 u.s.c. 102. The system is extraordinarily complex, having cost over $11,000,000 to develop, but Quicksilver completes an excellent application within the necessary time limit. Unfortunately, Quicksilver's client is upset with his bill for preparing the application and requests justification for what appears to be an excessive fee. Which of the following factors may not be relied upon by Quicksilver, in explaining the reasonableness of his fee?

a) The nature of the length of the professional relationship with the client.

b) The fee customarily charged for similar legal services.

c) Quicksilver's experience, reputation and ability in drafting such patent applications.

d) The time constraints imposed by the circumstances.

e) The relatively small cost of the application compared to the research and development cost of the invention covered by the application.·


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

a) A registered practitioner cannot properly form a partnership with a general practice lawyer if any of the activities of the partnership consist of the practice of patent law before the PTO.

b) A registered practitioner who was formerly a patent examiner in the PTO and is disqualified from participating in prosecution of a patent application being handled by his firm before the PTO due to his initial examination of the application may properly receive as his personal compensation from the firm a share of the fees derived from prosecuting the application. ·

c) A registered practitioner must maintain complete records of all property of a client coming into the practitioner's possession, including documents, models and prototypes.

d) A first registered practitioner may properly farm out work to a second registered practitioner who is not a partner or associate of the first registered practitioner without the knowledge or consent of the client if the first registered practitioner reminds the second registered practitioner against disclosing or using the invention.

e) (c) and (d).

22. Rachel Walsh is a practitioner representing a number of major foreign corporations based in Paris. Each year Rachel travels to Paris to pick up a few designer outfits and at the same time counsel her c1ients on u.s. patent law and practice. One client asks Rachel for advise on information disclosure statements. Rachel makes the following comments, most of which are not correct. Which comment or comments about information disclosure statements is(are) correct?

a) Every information disclosure statement must include an explanation as to why the claimed invention is patentable over the prior art cited.

M<?rning Section Page 23

b) It is best to wait until after the examiner has completed his search and issued at least one official action before filing an information disclosure statement.

c) There is no certainty that the PTO will consider any information not cited in accordance with 37 CFR 1.97-1.99.

d) If an information disclosure statement is submitted after the claims in an application have been indicated as allowable, references submitted with the information disclosure statement will be considered as long as they are not accompanied by any amendment of the claims.

e) (a) and (c).

23. A patentee wishes to obtain the following amended claim either through reexamination or reissue:

A ball valve comprising:

A

i) a housing;

ii) A valve [member] ball rotatably joined in the housing;

iii) a [flanged] seal engageable with surfaces of the [member] ball; and

iv) a linear spring [means] interposed between the housing and the seal and biasing the seal into engagement with the [member] ball.

claim so amended may properly be presented in:

a) A broadening reissue application;

b) A narrowing reissue application;

c) A request for reexamination;

d) (a) and (c) .

e) (b) and (c) •


24. Consistent with the sole object of the invention, all the claims of a patent are directed to an element of a fully disclosed combination. The patentee, six months after the grant of the patent as a result of the public disclosure and commercialization which commenced after the patent was granted, realizes that the true va~ue of his invention is in the combination and that it was a mistake not to claim it. Under these circumstances, his protection may be obtained by:

a). Filing an application for a reissue of the patent.

b) Filing for a certificate of correction.

c) Filing a new application disclosing and claiming the combination.

d) Filing a request for reexamination.

e) (a) and (c).

25. A patent application is not entitled to examination unless, as a minimum, the following have been received by the PTO. Assume the respective items were filed as specified for each situation below:

a) A specification, at least one claim, and a drawing were filed concurrently.

b) A specification, at least one claim, a drawing, and filing fee were filed concurrently.

c) A specification, at least one claim, a drawing, and an oath or declaration were filed concurrently.

d) A specification, at least one claim, a drawing, the filing fee, an oath or declaration~ and a surcharge. The oath or declaration and surcharge were-filed between 1 and 2 months following the filing of the specification, claim(s), and drawing.

e) A specification, at least one claim, a drawing, the oath or declaration, the filing fee, the processing and retention fee. The oath or declaration and the p-rocessing and retention fee were filed between 1 and 2 months following the filing of the specification, claim(s), and drawing.


26. There are certain circumstances in which a practitioner may reveal client confidences or secrets in connection with practice before the PTO. Which of the following is not one of these circumstances?

a) When required by law or court order.

b) When working to advance the client's interests, without his knowledge or consent.

c) At any time with the consent of the client after full disclosure to the client.

d) When necessary to collect the practitioner's fee.

e) When necessary to protect the practitioner's employees against an accusation of wrongful conduct.

27. A license pursuant to 35 U.S.C. 184 is needed, if:

a) Seven months have passed since the filing of the substantially identical patent application in the PTO.

b) A PTO filing receipt is obtained with the automatic license thereon.

c) The invention was made outside of the territory of the u.s.; the application was filed in the U.S.; and three months have passed since the filing of the application.

d) A special license was obtained on the text of the patent application before the filing of same in the PTO.


28. A terminal disclaimer filed to overcome a double patenting rejection based on a commonly assigned patent must:

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


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

c) Require that the term of any patent issuing from the rejected application 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).

29. A patent application may be advanced out-of-turn for examination if:

a) The inventor is over 65, or in poor health.

b) The head of a u:s. Government department certifies that the invention is of particular public importance.

c) The invention will materially enhance the quality of the environment.

d) The Commissioner orders the application advanced out-of-turn to expedite official business.


30. If a final Office action is received rejecting certain claims of an application, while other claims are objected to as to form coupled with a requirement for correction, applicant is fully responsive to the Office action if he files the following in a timely manner:

a) A Notice of Appeal with respect to the rejected claims, accompanied by the appropriate fee, plus a request to hold the objections against the other claims in abeyance pending the outcome of the appeal.

b) An amendment cancelling the rejected claims, as well as amending the claims that were objected to which fully comply with the requirement for correction. The amendment is accompanied by explanatory remarks.


c) An amendment cancelling the rejected claims and a Notice of Appeal coupled with the appropriate fee to appeal the objections taken against the other claims.

d) A Notice of Appeal with respect to the rejected claims plus a petition to the Commissioner with respect to the claims objected to.

e) (a) or (b).

31. A secrecy order has been issued by the Commissioner in a national application. Until there is a recission of the secrecy order, which of the following is true?

a) All further prosecution will be halted.

b) Prosecution will proceed, but only to final rejection.

c) Prosecution will proceed through appeal or Notice of Allowance.

d) If claims are finally rejected, the application must be prosecuted to avoid abandonment.

e) No interference will be declared except between national applications in which all applicants are u.s. citizens.

32. Which of the following is(are) true regarding the examination of plant applications?

a) Plant patent applications may be submitted by the PTO to the Department of Agriculture for study and report.

b) When required by the examiner, affidavits from qualified agricultural experts regarding the novelty and distinctiveness of the variety of plant claimed may be submitted.

c) If the examiner requir~s applicant to furnish specimens of the plant, and it is not possible to forward such specimens, plants must be made-ivailable for official inspection where grown.

d) (b) and (c) •



33. Which of the following cannot be a basis for requesting reexamination of a U.S. patent to Adams that issued on September 1, 1987.

a) A u.s. patent to Baker which issued on March 25, 1986 based on an application filed on August 6, 1982 that describes but does not claim the invention.

b) Evidence that Adams sold the claimed invention in Bismarck, N.D. to another on January 5, 1986.

c) A Canadian patent issued to Patrick which describes and claims the invention. The Canadian patent issued on November 6, 1981, based upon an application filed in Canada on January 28, 1980.

d) The invention of Adams was described in a book authored by Jones. The book was published in France on January 2, 1982.


34. Martin Yew is a professor at State University. While working at the university on government-sponsored biomedical research, he discovers a cure for a dreaded disease of the auditory nervous system known as hearing aids. Knowing the value of this invention, Yew leaves the University soon after the invention was completed and joins forces with his close friend and fellow scientist, Adam Mee. Yew hires patent practitioner Sean Washington to draft an application on his invention. Yew instructs Washington that the invention was made jointly by Yew and Mee. Although this is not true, Yew realizes that naming Mee as a joint inventor will probably discourage State University and the Government from claiming any rights in the invention, because it will appear that the invention was made after Yew left the University and formed the Yew and Mee firm. Washington does not become aware of this background until after the application is on file at the PTO. Which of the following statements best describes Washington's ob_ligations in the PTO?

a) Washington should promptly advise Yew to take action t~ rectify the situation, and if Yew refuses to take action, Washington must notify the PTO.

b) Washington is bound by the attorney-client relationship to retain in confidence the background information revealed to him by Yew; therefore, Washington can take no action.


c) Washington should consult with Yew, then file appropriate papers in the PTO requesting that Yew be named as sole inventor. Washington cannot reveal anything to the PTO or the State University because he is bound to retain in confidence material revealed to him by Yew.

d) Washington has an obligation to advise Yew that his action in naming Mee as a joint inventor could be considered inequitable conduct, but Washington is prohibited by the PTO Code of Professional Responsibility from taking any further action.

e) Washington is required to immediately withdraw from all representation of the Yew and Mee firm under the PTO Code of Professional Responsibility. Once he withdraws, he has no obligation to take any further action.

35. You are a registered practitioner prosecuting an application in which a final rejection was mailed on January 6, 1987. Your secretary inadvertently loses the Office action. On August 3, 1987 you receive a notice of abandonment for failure to respond to your Office action. Your remedy for reviving the abandoned application is to:

a) File a petition to revive with a satisfactory showing that the delay was unavoidable, payment of the requisite fee, and an amendment limiting the rejected claims.

b) File a Notice of Appeal.

c) File a petition to revive with a satisfactory showing that the delay was unavoidable with payment of the requisite fee and an argument that the rejection is improper.

d) File a petition to revive with a satisfactory statement that the delay was unintentional and the requisite fee.



36. To obtain the benefit of an earlier filing date of a utility patent application filed in a foreign country:

a) The corresponding U.S. application must be filed within 12 months from the earliest date on which such foreign application was filed.

b) The u.s. application must specifically request the priority date of the foreign·application.

c) A certified copy of the original foreign application must be filed.

d) (a) and (b) •

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

37. Which of the following is not available as prior art against your client's application filed April 8, 1987?

a) An expired u.s. patent issued on April 5, 1960.

b) A U.S. patent issued on April 1, 1986 declared invalid based on fraud.

c) A publication printed in Canada on April 7, 1986, but available in the United States.

d) Evidence of a sale of the invention in Canada on April 5, 1983.


38. 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.


39. Which of the following fact situation(s) occurring in the United States is (are) sufficient to establish prior inventorship under 37 CFR 1.13l(b)?

a) Reduction to practice subsequent to the effective date of the reference.

b) Conception of the invention prior to the effective date of the reference.

c) Conception of the invention prior to and reduction to practice subsequent to the effective date of the reference.

d) Conception of invention prior to and reduction to practice subsequent to the effective date of the reference coupled with due diligence from reduction to practice to the filing date of the application.

e) Conception of the invention prior to the effective date of the reference coupled with due diligence from just prior to the effective date of the reference to the filing of an application.

40. Which of the following is true regarding formal drawings for patent applications?

a) Drawings must be original and must be on two-ply or three-ply bristol board.

b) Color drawings may be acceptable upon grant of a petition requesting waiver of rule requirements for drawings.

c) Formal drawings are not required for filing a divisional applicatfon if the parent application is not being abandoned.

d) Reproduced copies of original drawings are not acceptable.



41. The PTO will refuse to accept and record payment of a maintenance fee if:

a) An authorization by the patentee is not filed in the PTO for the party submitting the fee to pay it on the patentee's behalf.

b) The certificate of mailing procedure to submit the fee to the Office is utilized on the last day for filing the fee.

c) Maintenance fee payments for two or more patents are submitted together.

d) (a) and (b) •


42. Which of the following sections of the statute must be complied with before a statutory invention registration (SIR) will be published:

a) 35 u.s.c. 102.

b) 35 u.s.c. 103.

c) 35 u.s.c. 112.

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


43. Your boss, Ima Hotshot, is the attorney of record in a patent application for which you have never been made of record. While on vacation he calls you at the office and tells you to file a Notice of Appeal today because this is the end of the 6-month statutory period. As a registered practitioner, which of the following should you do to avoid abandonment of the application:

a) Sign your boss' name on the Notice of Appeal and file it with the appropriate fee •.

b) Sign your name on the Notice of Appeal and file it with the appropriate fee.

c) Sign your name along with your registration number on the Notice of Appeal and file it with the appropriate fee.


d) (a) or (b).

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

44. A Japanese language international (PCT) application first filed in the Japanese Patent Office having undergone a Chapter I search there, arrives in a U.S. patent practitioner's office, just before the expiration of 20 months, and is immediately filed in the USP~O accompanied by the appropriate filing fee as a designated office without an English translation or a declaration. What must you do to complete entry into the national stage in the USPTO?

a) Nothing, as the PTO will note the deficiency and set a term for completing these omitted items.

b) File the translation and declaration by the end of the 22nd month together with appropriate fees.

c) If translation and declaration are not received by end of the 22nd month, further extensions with fees may be obtained.

d) File the translation and declaration by the end of the 22nd month together with the appropriate surcharge for filing the declaration.

e) (b) and (c).

45. Which of the following deficiencies in an oath or declaration always requires that a new oath or declaration be submitted?

a) A delay of more than five weeks plus mailing time between the date of execution of the oath or declaration and the filing of the patent application.

b) Failure to set forth evidence that the notary was acting ~ithin his or her jurisdiction.

c) Failure to include a statement that the applicant has reviewed and understands the contents of the specification.

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



46. Which of the following requests does not require payment of a fee?

a) Request for extension of time by applicant to respond to an Office action.

b) Request for extension of time by patent owner to respond to Office action in reexamination proceedings.

c) Request for extension of time by applicant in reissue application to respond to Office action.

d) (a) and (b).

e) (a) , (b) and (c) •

47. The PTO will send all notices, official letters and other communications in a patent application to:

a) A correspondence address given by either the applicant or an attorney or agent of record.

b) To the attorney or agent of record if no correspondence address is given.

c) To both the applicant and his attorney if they both request it.

d ) ( a ) and ( b ) .

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

48. Which of the following types of applications are never afforded the benefit of the filing date of the earlier application?

a) Division.

b) Continuation-in-part.


'. c) Substitute.

d) Continuation.


49. To be patentable, an invention must not have been obvious to:

a) A renowned expert in the pertinent technological field.

b) A person having ordinary skill in the pertinent art.

c) A patent examiner for the pertinent art.

d) (b) and (c) •


50. An application is being filed in the name of two inventors, Doe and Roe. Mr. Roe sign's the necessary oath or declaration. What further must be done to complete the application?

a) Mr. Doe must also sign the necessary oath or declaration.

b) If Mr. Doe dies, his legal representative may make the necessary oath or declaration and apply for the patent.

c) If Mr. Doe becomes insane or otherwise legally incapacitated, his legal representative may make the necessary oath or declaration and apply for the patent.

d) If Mr. Doe refuses to join in the joint application, Mr. Roe may file the application on behalf of himself and Mr. Doe.


END OF THE MORNING SECTION


Test Number Test Series

014A 287

NAME

DEPARTMENT OF COMMERCE UNITED STATES PATENT AND TRADEMARK OFFICE

REGISTRATION EXAMINATION FOR PATENT ATTORNEYS AND AGENTS

October 6, 1987

Afternoon Section (100 Points) Time: 3 Hours

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

INSTRUCTIONS

When instructed, review this test booklet. You should have 13 pages including this page. You 1ust nulher and initial the upper right corner of all pages of your answer blue book on which you will write your answers.

There are SIX (6) essay questions. In answering each question, assume that you are a registered patent agent. Unless otherwise directed, answer each question independently of the others, and assu~e no facts carry fro1 one question to the other. The point value for each question is indicated at the beginning of each question. In Question 1, there are two options. You 1ust present an answer to either Option 1 or Option 2. Questions 2 and 3 are based on one fact pattern while Questions 4-6 are based on another fact pattern.

Where claims are drafted or aaended, they aust confor1 to Patent and Tradeaark Office fora. Points will be deducted for any claims written which are indefinite, add new aatter, contain poor English graaaar or would be open to any other objection/rejection that would noraally result in the course of patent exaaination. Points will also be deducted for failure to properly follow and eaploy all controlling statutory provisions and regulations as well as Patent and Tradeaark Office procedure. Citations of actual cases are not required. However, wrong citations will be basis for deduction of points. DO NOT ASSUKE ADDITIONAL FACTS NOT FOUND IN THE QUESTIONS. Points will be deducted in essay answers for eaploying irrelevant or incorrect reasoning, failing to follow instructions, using poor English graamar, and failing to answer the questions posed.

This examination is open book in that you aay use books, notes, or other written aaterial that you believe will be of help to you, except for prior registration exaainations and/or answers thereto. Books, notes and other written materials containing prior exaiinations and/or answers cannot be brought into or used in the room where this exa1ination is being administered.

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

OR TO BEGIN THE EXAMINATION

Afternoon Section - Page 1

QUESTION 1 (20 Points)

INSTRUCTIONS: This question consists of two optional problems. You must select one of the options. Option 1 is directed to a to/dint tooth brush. Opt ion 2 is concerned with forming an electrical device usint a uapor deposition technique. Do not present an answer to both options inasmuch as only the first option answered will be traded.

OPTION 1: Write a single claim to a folding tooth brush as shown in Figure 1 and described below. The claim must interrelate at least all of the following elements: tooth brush ( 1), handle (2), bristles <4), shank (5), slot (6), pivot pin (9), hinged cover (12), locking projections (15), locking depressions {16), locking flange <26) and notch <27>. Points will be deducted for describing or relating any of the above elements as a "means for . . . " or the like. Points will also be deducted claiming a catalog of elements.

9 FIG. 1

/J

FfG. 2

FIG. 3


' J

Figures 1-3 diagraa a folding tooth brush wherein handle 2 is adapted to house tooth brush 1 when not in use and fros which the tooth brush aay be unfolded for use. The tooth brush has bristles 4 and a shank 5. The shank includes longitudinal slot 6 through which pivot pin 9 passes to perait the tooth brush to pivot.

Handle 2 is in the fora of hollow body 10, i.e. 1 an open end and an open side. The handle is of a size and shape to house the tooth brush. Neck 11 is of reduced size having a cross section corresponding substantially to the cross section of the shank of the tooth brush. The open side of the handle is adapted to be closed by a hinged cover 12 which pivots via hinge pin 13.

To hold cover 12 in a closed position, locking projections 15 are provided to seat in correspondingly shaped locking depressions 16 in the opposite side walls of handle 2. The natural resiliency of these walls serves to peraii engageaent and disengageaeni of the locking projections with the depressions. Finger pieces 17 are provided to be grasped when it is desired to open the cover. The cover is thickened in region 18 to provide an extended upper inside surface to support the brush in its folded position within the handle, as shown in Figure 2.

To unfold the brush to the operative position of Figure 1, cover 12 is opened (as shown in Figure 3) and brush 1 is pivoted about pin 9 to its opened position. The brush shank is then aoved into an aligned position externally with said handle by sliding the shank longitudinally toward the handle until pivot pin 9 engages the left end of longitudinal slot 6 as shown in Figure 1. Cover 12 is then closed so that locking flange 26 engages transverse notch 27, and projections 15 seat in depressions 16. This secures the brush against pivotal aovesent.

To fold the tooth brush into the stored position as shown in Figure 2, the cover is opened thereby disengaging locking flange 26 froa notch 27. The tooth brush is then moved longitudinally away from handle 2 until the right end of slot 6 is engaged with pivot pin 9. The brush is then pivotally aoved into the stored position and cover 12 is closed to fully enclose the tooth brush within handle 2.

GO TO PAGE 4 FOR OPTION 2


OPTION 2: Write a single claim to a method of making the electrical device as shown in Figure 2 and as described below. Layer 15 is a carbon substrate. Layer 2 is adjacent to the carbon substrate and consists of silicon, phosphorus, and carbon. Layer 3 is adjacent to layer 2 and consists of silicon, aluminum, and carbon. The claim must include ~ the critical or essential steps to make the product shown in Figure 2. Your claim must specify the chemical composition of each of the aforementioned layers. Points will be deducted for any claim directed to an apparatus, composition, article of manufacture, or product-by-process. Do not include apparatus limitations in your claim, e.g., valves, pipes, etc.

19 RE.SULATEO POWI!!s:t SUPPLY

co I~ --

TO DRAIN ---c=== 10

FILTER


I

Figure 1 on page 4 is a diagram of a vapor deposition apparatus used to 1ake the el8ctrical d~vic~ shown in Figure 2. The apparatus co1prises a quartz flask 10 surrounded by cooling coils 14 and having outlet 13; a carbon substrate 15 held in place in flask 10 by copper tubes 16 and 17 which are connected by tube 18 of electrically non-conductive aaterial; and a series of pipes, filters, shut off valves, flowmeters and chemical supply containers. Electrical leads 19 and 19a connected to power supply 20 are attached to tubes 16 and 17 to provide electrical current to heat carbon substrate 15 to at least 1500° C. Tubes 16 and 17 are connected to a water supply to provide for cooling of the tubes. The temperature of the carbon substrate and the aaount of current froa power supply 20 are regulated by thermocouple 21.

Chemical supply containers 26, 32, 33 1 39 and 43 are connected to each other through a series of pipes. Containers 26, 32, and 33 are coamercially available tanks of argon, 1ethane, and hydrogen, respectively. Flowaeters 24, 30, and 35 1eter the flow of gas from the tanks. Filters 25, 31 and 36 are employed to remove moisture froa the gases from containers 26, 32, and 33. Container 39 contains a solution of silicon tetrachloride (SiCl4l and aluminum trichloride (AlClJl while container 43 contains a solution of phosphorus (PJ and silicon tetrachloride (SiCl4l. Means for heating containers 39 and 43 are shown as electrical coils 45 and 46, respectively. Shut off valves 23, 29, 34, 37, 38, 41 and 42 regulate the flow of gases in the system. The direction of flow is shown in Figure 1 by arrows.

The process for foraing layers on carbon substrate 15 using the apparatus described above is as follows. Valve 23 is opened to pass argon gas through filter 25 and into input pipe 22 to purge or flush flask 10 of oxygen, nitrogen, and water vapor. The rate of flow or pressure of gas into flask 10 aust be such as to keep the pressure in the flask sufficiently higher than the pressure in outlet 13 so as to keep impurities from entering the flask through outlet 13 during the deposition process.

To deposit a homogeneous layer of extra fine carbon on carbon substrate 15, the substrate is heated to 1800° C. Valves 29 and 34 are opened and valves 37, 38, 41 and 42 are kept closed to permit only aethane and hydrogen gases into the sysie1 and into flask 10 through inlet pipe 22. The carbon layer is formed by the decomposition of aethane gas as it passes over the heated carbon substrate.

To deposit a layer containing silicon and aluminum, the system is purged or flushed-using argon. Valves 37 and 38 are opened while valves 29, 34, 41 and 42 are closed. Hydrogen is bubbled through the SiCl4 and AlCl3 solution in container 39 which is aaintained a 65° C. A layer of a aixture of silicon and aluminua is formed by the decomposition of gas 1ade up of hydrogen, SiCl4, and AlCl3 as the gaseous mixture passes over the heated carbon substrate. In a siailar aanner, a layer of a mixture of silicon, aluminum and carbon can be d~posited by adding CH~ to the afore.entioned gaseous mixture and heating the substrate to 1620° C. To deposit a layer containing silicon and phosphorus, hydrogen is passed through the SiCl4 and P solution heated to 65° C and the layer is deposited froa the resultant gaseous aixture as it passes over the heated substrate. To add carbon to the layer, CH4 is added to the gas~ous mixture and the substrate aust be heated to 1875° C.

The flow of· argon aay be continued throughout the process or hydrogen aay he substituted after the initial purge of the system. If argon is replaced, hydrogen is aixed with argon in the syste1 and once the hydrogen has reached a sufficient rate of flow to keep the pressure inside flask 10 higher than the pressure in outlet 13, the argon flow is shut off by valve 23.

It is critical that the substrate temperature be sufficient to cause the gas aixture passing thereover to decompose. It is also essential that hydrogen be present in the gas aixture and that the gas aixture contain all of the chemical coaponents froa which the layer is foraed.


QUESTIONS 2 AND 3

INSTRUCTIONS: Questions 2 and 3 are based on the fact pattern set forth below. Note that Question 3 includes additional facts not presented in the fact pattern. Consider each question independently of the other. The fact pattern is purely hypothetical and is purely for purposes of this examination. Do not include irrelevant information. Points will be deducted for failure to properly follow and employ all control/in~ statutory provisions and re~ulations as well as Patent and Trademark Office procedure. Do not assume any scientific information outside the fact pattern.

FACT PATTERN FOR QUESTIONS 2 AND 3

British Columbia friends, Robert Wisdo1 and Heraan Smith, are active in developing fishing lures, an avocation having nothing to do with their respective lines of work as a luahering industry trade representative and a fish processing executive, respectively. After a luncheon at the local Rotary Club on June 14, 1987, they discuss the thought, without specific ideas, of developing new fishing lures during their respective vacations, each intent on pursuing their joint hobby of fishing and their desire to create new and better fishing lures.

Fro1 June 15, 1987 t.hrough July 15, 1987, Wisdoa took his annual fishing vacation in British Coluabia, Canada. On July 10, 1987, Wisdom invented a novel variation on the highly successful trolling lure, the "Northern Rap. • The "Northern Rap" contains two gang tackles, one on each set of the two segaents of the conventional •Northern Rap. • What distinguishes the Wisdo1 lure is that he has affixed a luainescent green plastic "wora" to the lower aidpoint of the rear segment of the otherwise conventional "Northern Rap" lure.

A •Northern Rap" lure design is disclosed in Sokitote et al. 1 U.S. Patent No. 3,938,382 issued Noveaber 2, 1972, at Exatple 86 (coluan ~4, lines 15-22), with every detail of the •Northern Rap• used by Wisdoa, except that there is no hint or suggestion of any •vorm" aodification. Only colutn 44, lines 15-22 are pertinent, and the reaainder of the Sokitoae el al. patent, coa~rising soae 152 coluans, is totally irrelevant, the retainder ~ing directed to fishing tackle boxes and their construction. The disclosure at coluan 44, lines lS-22 refers to the "Northern Rap" as being one kind of preferred lure that can be put into the fishing tackle boxes disclosed by Sokitoae el al.

The Wisdom's "wora• aodification consistently gave fantastic results over the last period of his vacation. He obtained triple the noraal fish yields each day vis a vis the prior art •Northern Rap.• Wisdoa was deter1ined and extre~ly excited about the possibility of bringing his invention to the Vancouver Lure Company in British Coluabia. On July 20, 1987, after having aet with the President of Vancouver Lure Coapany, Wisdoa signed a contract with the coapany assigning all right, title and interest in his new lure to the company, including all rights retroactive to the date of his discovery. Throughout this entire period, Robert Wisdoa retained in Canada.

Heraan Saith took his vacation during the saae period as Wisdoa. However, Saith flew into Whitewater Lake ·in Ontario, Canada, a priaitive fishing caap totally without communications of any kind to the outside world. During that period, Sait~ developed the identical iaproved •Northern Rap• lure as that invented by Wisdoa·, including a luainescent •vora", and its positioning on the rear segaent. The sole distinction between the two lures is the coloration of the wora. Smith used a bluish "grape• coloration on the vorl. Smith invented his lure on June 16, 1987. Smith was so excited that as soon as his vacation.was over, on July 15, 1987 1 he iaaediately called the Vancouver Lure Company, and


within 48 hours had signed a sinilar contract assigning all right, title and interest to his invention to the coapany. The Saith invention was .neither abandoned, suppressed nor concealed in any aanner.

The green "worm" was exhaustively tested and it was found that it produced consistently better results in attracting fish than the blue vora, despite a general recognition in the prior art that blue is better fish-attractant color than green. Sokitoae et al ,is the closest prior art prior to the activities of Smith and Wisdoa.

A patent application was filed on Septeaber 17, 1987, in the naaes of both Smith and Wisdoa. At the saae tiae the application was filed, identically dated assignaents were filed in the Patent and Trademark Office giving all right, title and interest to the Vancouver Lure Coapany to the respective inventions of Smith and Wisdom. The application was filed with only the following two claias:

1. A fishing lure containing a forward and a rear seg;ent, said forward segment including a sel of triple gang hooks, 1eans to attach said fishing lure to a fishing line and aeans to attach said forward segaent to said rear segaent, and said rear segaent including a set of triple gang hooks, and a woralike plastic eleaent attached al one end thereof to the lower midpoint of said rear segment.

2. A fishing lure of claia 1, wherein said woralike eleaent is green.

Although the green color provides superior results, until such tiae as such results would be demonstrated, an examiner would consider the green variation to lack patentable distinctness fro1 the lure, per se. Even with submission of comparative test results, the issue would be very close.

QUESTION 2 (15 Points): You are representing Vancouver Lure Co. and prosecuting the application filed on behalf of Wisdom and Smith. You are aware of all of the facts presented by the fact pattern. Prepare an information disclosure statement to. fully comply with 37 CFR 1.56(a) as to all information that could be considered material to the the examination of the application.

QUESTION 3 (20 Points): Assume in addition to (or in variation of) the facts given in the fact pattern that Smith did not spend his entire vacation in Canada. Instead, on June 18, 1987, he made a one day trip to Lake Washington near Seattle, Washington, for a fishing trip with three fellow executives and there he successfully tried out his worm-modified ,Northern Rap,. during a salmon run. Would any modification be necessary for the ~nformation disclosure statement prepared in Question 2? If YES, explain what additional information required or what information could be deleted. If NO, explain why you would not need to change the information disclosure statement.


.. ..

QUESTIONS 4-6

INSTRUCTIONS: Questions 4-6 are based on the fact pattern set forth below. Note that Questions 5 and 6 include addit iona/ facts not presented in the fact pattern. Each quest ion must be answered independently of the others. Do not include irrelevant z'nformatz'on. Points wz'll be deducted for failure to properly follow and employ all control/in~ statutory provisions and re~ulations as well as Patent and T r ad e m a r k 0 f f i c e p .r o c e d u r e . T h.e f a c t p a t t e .r n i s pur e I y hypothetical and is purely for purposes of this examination. You are to vi~orous ly .represent !1i lwidco to the limits of advocacy 1 but you are to explicitly follow 11ilwidco's instruct ions. The chemical components used in the fact pattern are hypothetical (non-existent). Do not assume any scientific information outside the fact pattern.

FACT PATTERH FOR QUESTIONS 4-6

You are the new palenl agent retained by Milwaukee Widget Coapany (Milwidco) to take over a patent application prepared by •in house• by former patent counsel, the late Iaa Klutz. Hilwidco, America's leading widget aaker, has provided you with the following inforaation about its new "second generation" widget technology and its patent and business situation.

Mil~idco aarkeled and sold for several yea~s a •firsl generation• product which was a widget coated with a resin comprising a mixture of one part by veight polyhexathisnthat and about one pari by veighl of platonic acid. Polyhexathisnlhat is sold by Hilwidco's coatings division as WID-COAT brand of widget coating. The •first generation• ~idget is disclosed in Roberts et al., U.S. Patent No. 3,459,313. No patent copy is supplied for this examination. Such "first generation" widgets have enJoyed a practical; usefu! life of ten year£.

;c~P:tly, 2 nse:ond gereralion" widget was lt~cnted by Kilvidco~s R&D Director Rolert Fa:~~c. !his wir;let is an i&proveaent over the ~first ~e~;·:rc-t~: ... ; ... '!l'~dget in that. t:. t., h up tc i rr..J i.::~. ~ r:·:? ·

co:.::i.:ling of polyhexathisnthal aDd aL le:c:s~ ~01: i··;· we1ghl ~epsor.oyl chloride is lat~.~:,.::t£:: or:Lr lhe ~0~teJ ~firs~ geueratio~· vidi2l.

·~;,c rSE~·:ii~ g'2r.er.;;lior.' •idget 'iO.S r.:fft:':'::c: fc:- .sale by InVelitor F"arnua. o.l_the Iot':;·;-:c::f.:c,::·~ L~ze;~

L:r.·_:a:turer.s Expusition, a tr·adt- .shofl i~ S£r.'...: .. iE 1 1-;.::.shlrtglor., cr, H:::-·;eu~!!r ji, !.;'~.r. :. !.::.:ci~lt.

ir:•·o:·nlory of the ne\1' "second gener.:..tlot;' r.:c.£-:·.:: ·~c.s r..ade Ficr to H.t- Lrade .shoif tr· pr.:--::..i~ ::-t:~f and lhi:diate delive-ry if ar:y r.sacon~ gcntor.:d.ic·r;~ ·.:~~d. had beer, c·rdered d. the trad.:; sh~r. In fa:t! tw C':;-;:;.s liere ti!l'.e:i. Prier L:· the trad~· she:·r:", t:--:·:-E: had never been a di.s::.:los:;re by tne ~;.\:e~.:::-: :.,:, .:.::.-:-: ::::ui.sid.: ~;li!'id::c· .. :.~] de~.cils ab::Jui. th~ ·~eco:-~d genera:1on .. pi·.J.it'C' 1

, hod b:·:~ra 1::,. ·~: .. :.~ . .=.~ f~~:~:~ until the trade show.

The industry ;.agazine, Aaerican Widgets, published a detailed article authored by Farnur. disclosing full details of the "second generation" ~idget. The aagazine article was received by the publisher on Deceaber 1, 1986 1 and was aailed to subscribers in the United States on Deceaber 15, 1986, and received by subscribers on December 17, 1986.

Klutz filed a patent application on the •second generationw vidget on April 15, 1987. The article in American Widgets included a detailed explanation of all details of the patent application as it was filed in the PTO. The pertinent disclosure of the patent application, excluding the oalh or declaration or other foraal papers, is as follows:

Afteruoon Section - Page 8

PATENT APPLICATION OF ROBERT FARNUM

COATED WIDGET

Background of the Invention

Widgets are known in the prior art which are coated with a 0.4 aa resin coating coaprising a aixture of one part by weight of polyhexathisnthat and one part by. weight of platonic acid. Polyhexathisnthat is sold by Milwaukee Widget Co1pany under the brand WID-COAT. Such widgets have had a successful coamercial life of acre than ten years and are disclosed in Roberts et al., U.S. Patent No. 3,459,313. The disclosure of Roberts et al. shows the preparation of the widget and coating the widget with WID-COAT to a thickness of 0.4 aa. Hethods of preparing platonic acid are disclosed in U.S. Patent No. 3,002,292 to Tanabe et al.

Hayashi et al. 1 U.S. Patent No. 4,304,343, teaches the aanufacture of laMinate co1positions containing at least 50Z jepsonoyl chloride. The reference also discloses coating thicknesses of froa 0.1 to 1 aa. However, Hayashi does not disclose aaking laminates or films of polyhexathisnthat and jepsonoyl chloride or laminating widgets.

Suaaary of the Invention

A widget is provided with an inner resin coating coaprising a aixture of polyhexathisnthat and platonic acid and an outer resin fila having a thickness up to 1 a; thick coaprising a mixture of polyhexathisnthat and at least 50~ by weight jepsonoyl chloride, said outer resin fila being laminated to said inner coating. In a preferred embodiment, the inner resin aixture coaprises about one part by weight polyhexathisnthat and about one part by weight platonic acid.

Detailed Description of the Invention

The widget of the invention has a first resin coating preferably of about 0.1 Rl

thickness. The first resin coating comprises a aixture of polyhexathisnthat and platonic acid. Preferably, the first resin aixture has about one part by weight polyhexathisnthat and about one part by weight platonic acid.

Laainated onto the first resin coating is an outer resin coating fil1 of up to 1 aa thickness, vhich resin coating constitutes a discrete outer layer of a aixture of polyhexathisnthat and at least SOi. by weight jepsonoyl chloride. This layer is laainated onto the first resin coating.

-1-


The following exaaples serve to illustrate the invention:

EXAMPLE I

An unfinished widget identical to the one disclosed in Exaaple 1 of Roberts el al., U.S. Patent No. 3,459,313 is used as the starling aaterial. A resin mixture is prepared containing 504 by weight of each of polyhexathisnlhat and platonic acid. Otherwise following the identical technique of Exaaple XXXIV of Roberts et al., this resin aixture is applied to the widget to a thickness of 0.07 aa.

EXAHPLE II

Onto the coated widget of Exaaple I (the prior art), there is laainated a 1 aa thick fila coaprising polyhexathisnthat and 60% jepsonoyl chloride.

EXAMPLE III

By follovin' the identical procedure as in Exaaple II, except that in a fila 0.5 ma thick is laainated onto the coated widget prepared in accordance with Exaaple I.

WHAT IS CLAIKED IS:

1. An article coaprising a widget having

(a) an inner resin coating co&prising a &ixture of polyhexathisntbat and platonic acid, and

(b) an outer resin fil1 of up to 1 11 thick co1prising a aixture of polyhexathisnthat and jepsonoyl chloride,

said outer film being la&inated to said inner resin coaling.

2. An article according lo claia 1, wherein said aixlure of said inner resin coating co&prises about Qne part by weight polyhexathisnthat and about one part by weight platonic acid.

ABSTRACT OF THE DISCLOSURE

-2- -


A Klutz .e.arandua in the coapany file given to you by Milwidco refers to tests conducted by Farnua subsequent to the filing of the patent application, which de10nstrate that significantly better results in teras of abrasion resistance are obtained if a 2 aa thick fila of the outer resin is applied. The following "Exa1ple IV• was proposed for a continuation-in-part application:

"Following exactly the procedure of Exaaple II, a 2 aa thick fila coaprising a 1ixture of polyhexathisnthat and 60% jepsonoyl chloride is laainated to a widget aade in accordance with Exaaple I. Superior results are achieved as coapared with Exaaple II in teras of resistance to abrasion. •

A strategy is outlined in the Klutz file to deal with the need for protection for the 2 II thick outer resin fil1. Klutz proposed to file a continuation-in-part which would add new proposed •Exaaple IV" and substitute a new set of claias for those in the original application which would read as follows:

1. An article coaprising a widget having

(a) an inner resin coating coaprising a aixture of polyhexathisnthat and platonic acid and

(b) an outer resin fila of up to 2 aa thick co1prising a aixlure of polyhexathisnthat and jepsonoyl chloride,

said outer resin fila being laainated to said inner resin coating.

2. An article according to claia 1,· wherein said aixture of said inner resin coaling coaprises about one part by weight polyhexathisnthat and about one part by weight platonic acid.

3. An article according to claia 1, wherein said outer resin fila thickness is up to 1 11.

·Hilwidco considers it an iaperative business objective to have a valid patent position to block competitors froa aaking a "second generation• widget with a 2 aa thick outer resin fila. The only •second generation• widget ever aade by Milwidco, before the original application was filed, had an outer resin fila which was 1 aa thick. This vas due to the fact that this fila was the only fila available in the factory although thicknesses greater than 1 aa could have been readily aade by workers skilled in the art.

On August 3, 1987,· the exaainer assigned to the original Farnua application filed April 15, 1987 issued an Office action rejecting the claias under 35 O.S.C. 103 over prior art and set a three aonth period for response. The rejection can be easily overcoae since the cited prior art does not suggest the invention as claiaed.

Klutz, suffering fro1 several ailaents of advancing years, suddenly retired to his fara, and then passed away due to an unfortunate faraing accident. You, as Hilwidco's new patent agent, have been asked to take over full responsibility for the patent application and meeting ftilwidco's business objectives.

Afternoqn Section - Page 11

QUESTION 4 (15 Points): Milwidco asks whether the Klutz advice to file a continuation-in-part <CIP) is still possible, within the originally set three month shortened statutory period for response to the outstanding Office action. The new disclosure proposed for the CIP would add a new "Example IV" and would substitute a new set of claims exactly as proposed by Klutz. The Milwidco business objective for this strategy is to block competitors from making a "second generation" widget with a 2 mm thick outer film. Is this proposal suitable to protect Milwidco's "second generation" widget with a 2 mm thick outer resin film from its competitors as opposed to merely prosecuting the original application filed on April 15, 1987? If your answer is YES, please explain why the CIP would better serve Milwidco than prosecution of the claims in the rejected application. If your answer is NO, please explain the problems, if any, with the strategy of filing a CIP with the,, proposed claims, and also explain your prosecution strategy for prosecuting the rejected application to protect Milwidco against its competitors.

QUESTION 5 (15 Points): Assume the following facts in addition to those set forth in Question 4:

The Breaerton Widget Coapany ("Breaerton•J has produced an inexpensive copy of the Milwidco •second generalionrt widget. The copy is identical in every respect to the Hilwidco widget except for the thickness of the outer resin film. Breaerton's technicians have found a vay to fora a film which is 0.5 ma thick. The Breaerton advances were announced in the Karch 1987 issue of American Widgets which vas distributed to the public on Karch 91 1987. Hilvidco is concerned that there aay yet be a discovery of prior art with relatively thick coatings in the neighborhood of 1 aa thickness.

Draft a species claim for submission by a preliminary amendment in the original Farnum application that would provide protection against li._te.ral infringement by Bremerton. Also explain in a single sentence why submission of the specie claim by preliminary amendment is permissible.

QUESTION 6 <15 Points): Assume the following facts in addition to those set forth in Question 5:

Today, October 6, 1987, Very Arrogant, President of Hilvidco, cane to you in your office in Milwaukee, Wisconsin and ordered you to file the Farnua continuation-in-part (CIP) patent application. Arrogant told you that the CIP 1ust be filed today for business reasons. He is going to visit the Breaerlon president to.arrow and he wants to be able to tell Breaerton's executive about his broad, doainant coverage that he already has on file.

The CIP application vas prepared in good order. The application papers included a specification containing a description pursuant to 37 CFR 1.71 and the three claims as proposed by Klutz. No drawing vas required to understand the invention. However, the declaration fora was very hastily prepared. It was first attached to the application papers, the application and declaration were both

Afternoon Section ~ Page 12

' i

thoroughly read and understood by Farnua. In haste, Farnua signed the declaration but overlooked the fact that the declaration fora was incoaplete, i.e, the blank space for CIP parent case inforaation had not been filled in. It was the honest intention of everyone that this space would have been filled in prior to execution. Farnu1 has left for the day, and absolutely cannot be reached.

Furtheraore, everyone with signatory authority for the checking account has left for the day, and the deposit account is overdrawn, but can be aade up the following day by putting a check in the aail, long before the a1ount would need to be cleared for the application filing fees. Your own personal bani account shows a checking balance of only $65.00, and no other source of funds is iaaediately available.

It is now 3:30 p.a. with only you and your secretary left in the office. Assuae that you can have all clerical or other business services at you call 'during the reaainder of the business day that are necessary to assist you with your proposed actions (if any) that you would wish to take, except as otherwise stated above.

What is one way you, as patent agent for Milwidco, can meet the business objectives of your client to file a complete application in accordance with PTO practice and procedures?

END OF THE AFTERNOON EXAMINATION


Documents

Test Number 014 Test Series 287 NAME - Houston, … of the Patent... · Test Number 014 Test Series 287 NAME ... Commissioner to review the requirement for restriction. ... u.s.c