Test Nwnber 014 Test Series 191 NAME -----------------------

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

REGISTRATION EXAMINATION FOR PATENT ATTORNEYS AND AGENTS

August 21, 1991

Morning Section (100 Points) Time: 3 Hours

DIRECTIONS

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

All questions must be answered in Section 1 of the Answer Sheet which is provided to you by the proctor. You must 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. No points will be awarded for incorrect answers or unanswered questions. Questions answered by darkening more than one circle will be considered as being incorrectly answered.

This section of the examination consists of fifty (50) multiple choice questions, each worth two (2) points. Do not asswne any additional facts not presented in the questions. The most correct answer is the policy, practice and procedure which must, shall or should be followed in accordance with the patent statutes, PTO rules, and the Manual of Patent Examining Procedure (:MPEP), unless modified by a subsequent court decision or a notice in the Official Gazette. There is only one most correct answer to each question. Where several choices are correct and a grouped answer such as "All of the above", "(a) and (b) only", "(a) or (b)", or the like is a given choice, the grouped answer which sets forth all of the correct choices as a group will be the most correct answer. Where a question includes a statement with a blank, select the answer which would make the statement true in accordance with the current patent statutes, and PTO rules, policy, practice and procedure. Unless otherwise explicitly stated, all references to patents or applications are to be understood as being patents or applications for utility inventions only, as opposed to plant or design inventions.

You may write anywhere on this examination booklet. However, do not remove any pages from the booklet. Only answers recorded in Section 1 of your Answer Sheet will be graded. YOU MUST SCORE AT LEAST 70 POINTS TO PASS THIS SECfiON OF THE REGIS1RATION 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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1. A deposit account may be opened by a practitioner as a convenience to charge fees. However, a general authorization to charge all fees to the deposit account will not apply to ______ _

a) recording an assignment b) filing fee for a reissue application c) petition fees d) issue fees e) fees for multiple dependent claims

2. Which of the following is acceptable to the Patent Examining Corps if submitted by facsimile transmission (FAX) procedure in lieu of filing the original document?

a) Assignments b) Declarations or oaths under 37 CFR 1.63 or 1.67 c) Terminal disclaimer d) Formal drawings e) Issue fee payments

3. 'X ou are a registered patent practitioner representing applicant Smith. You filed application papers without an oath or declaration under 37 CFR 1.63. The application papers included a specification which contains ten claims and also drawings required by 37 CFR 1.81(a). You must file an oath or declaration. Which of the following combinations of information supplied in a later filed oath or declaration would not be acceptable as identifying Smith's specification as originally filed?

a) N arne of the inventor and application serial number; b) N arne of the inventor, attorney docket number which was on the application as filed, and

application filing date. c) Name of the inventor, title of the invention and application filing date. d) N arne of the assignee and application filing date. e) Name of the inventor, title of the invention and a statement by a registered patent agent or

attorney that the application filed in the PTO is the application which the inventor executed by signing the oath or declaration.

4. Essential subject matter n1ay be properly incorporated into a U.S. patent application filed on behalf of inventor Jones by reference to:

a) A non-patent publication written by someone other than Jones. b) An allowed U.S. patent application which itself does not incorporate "essential material" by

reference. c) A foreign patent application filed by inventor Jones. d) A foreign patent granted to inventor Jones. e) A journal article written by inventor Jones.

5. A patent will not issue for a claim in an application which is directed solely to a ______ _ a) microorganism produced by genetic engineering b) nonnaturally occurring composition of matter c) process for refining a naturally occurring mineral d) new and useful manufacture e) computer program

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6. When is it proper to file an antedating affidavit or declaration to overcome a reference in a patent application?

a) Where the reference publication date is more than one year before the filing date of the application.

b) Where the reference is a U.S. patent which claims the invention. c) Where the reference is a U.S. patent with a patent date less than one year prior to applicant's

filing date of the application, and the patent discloses, but does not claim, the invention. d) Where the reference is a U.S. patent to the same inventive entity as the application, and the

patent claims are directed to the same invention. e) Where the reference is a foreign patent which was published more than one year prior to the

filing date of the patent application.

7. You are a registered practitioner prosecuting an application for Jones. You must respond today, August 21, 1991, to an Office action which was mailed February 21, 1991. The examiner rejected the claims and set a three month shortened statutory period for response. You have prepared a response which includes an amendment, a proper certificate of mailing dated August 21, 1991, and a petition for extension of time and the appropriate fee. The response is sealed in an envelope and properly addressed to the "Commissioner of Patents and Trademarks, Washington, DC 20231." The response will be considered timely if:

a) The amendment is signed by you and the certificate of mailing is signed by your secretary, and the envelope containing the response is deposited with the U.S. Postal Service by your secretary on August 23, 1991.

b) Both the amendment and the certificate of mailing are signed by you and you deposit the envelope containing the response with Federal Express® on August 21, 1991.

c) In your absence, your secretary signs your name to the amendment, the petition for extension of time, and the certificate of mailing, and your secretary deposits the envelope containing the response with the U.S. Postal Service on August 21, 1991.

d) You sign the amendment and the petition for extension of time, and your secretary signs her name to the certificate of mailing and deposits the envelope containing the response with the U.S. Postal Service on August 21, 1991.

e) You sign both the amendment. and the certificate of mailing and you deposit the envelope containing the response with the U.S. Postal Service.on August 21, 1991, even though the certificate of mailing is on a separate sheet of paper which is not secured to the amendment and does not identify Lhe Jones application, and the envelope containing the response includes amendments and responses for five other applications.

8. A final rejection was mailed on July 26, 1990. The examiner did not set a shortened statutory period for response. If a Notice of Appeal was timely filed on December 26, 1990, what would be the very last date on which the Appeal Brief could be filed, along with a petition and the appropriate fee requesting the maximum allowable extension of time permitted under PTO rules?

a) January 26, 1991 b) February 26, 1991 c) April 26, 1991 d) June 26, 1991 e) July 26, 1991

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9. A patent application was filed in the PTO on January 4, 1991. The entire interest in the application was assigned to an assignee who properly recorded the assignment in the PTO. However, one of the actual inventors was inadvertently and unintentionally omitted from the application. Which of the following is not required to correct the inventorship?

a) A declaration by the assignee stating there is no deceptive intent on the part of the assignee. b) A fee. c) A petition by the original named inventors which includes a statement of facts verified by the

original inventors establishing when the error was discovered and how it occurred and that the error was without any deceptive intent on the part of the actual inventors.

d) An oath or declaration by each actual inventor. e) The written consent of the assignee.

10. Claim 1 is independent. Claim 2 depends from claim 1. Claim 3 depends from claim 2. Claim 4 depends from claims 2 or 3. Claim 5 depends from claim 3. Claim 6 depends from claims 2, 3 or 5. Applicant must pay for one independent claim and how many dependent claims?

a) 5 b) 7 c) 8 d) 9 e) 11

11. A personal interview with an examiner to discuss the merits of the claims may not be properly conducted by;

a) The inventor, even though the attorney of record is present at the interview. b) An unregistered attorney who is the applicant in the application. c) A registered practitioner who is not an attorney or agent of record in the application, but who

brings a copy of the application file to the interview. d) A registered practitioner who does not have a power of attorney in the application, but who is

known to the examiner to be the local representative of the attorney of record in the case. e) An unregistered attorney who has been given the associate power of attorney in the particular

application.

12. A petition would not be appropriate to ______ _ a) request withdrawal of a premature final rejection. b) request an extension of time to respond to an Office action beyond the six month statutory

period. c) revive an abandoned application. d) make an application special. e) withdraw a patent application from issue.

13. In preparing an application to be filed in the PTO, you inadvertently forgot to include a figure in the drawings. However, you did include a brief description of the figure in the written description of the invention in the specification. You realized that the figure was omitted after the application had been filed in the PTO. The application as filed included a proper declaration under 37 CFR 1.63 by the inventor. Moreover, claim 10 in the application depends upon the omitted figure for disclosure and support. What document(s) must be filed in the PTO to obtain the original filing date?

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a) An amendment to add the figure to the application as soon as possible. b) A supplemental oath or declaration stating that the omitted figure accurately illustrates and is

part of applicant's invention. c) An amendment deleting the description of the figure and claim 10, and a filing date petition

with the proper fee to have the application accepted without the omitted figure. d) An amendment deleting all references to the omitted figure and claim 10; a filing date petition

with the proper fee to have the application accepted without the omitted figure; and a sup­plemental declaration by the inventor stating that the invention is adequately disclosed in, and a desire to rely on, the application as amended for purposes of an original disclosure and filing date.

e) A filing date petition and an amendment to add the figure to the application as soon as possible, and a supplemental declaration stating the omitted figure accurately illustrates and is part of the applicant's invention.

14. You have filed a file-wrapper-continuation application (FWC) for your client. In the parent application, the examiner made an obviousness type double patenting rejection. In response to the rejection, you filed an acceptable terminal disclaimer which overcame the rejection. In the FWC, the examiner made the same obviousness type double patenting rejection. The most appropriate response to overcome this rejection would be to:

a) File a response which refers the examiner to the previously flied terminal disclaimer. b) File a photocopy of the previously filed terminal disclaimer. c) File a new terminal disclaimer and the appropriate fee. d) File a photocopy of the previously filed terminal disclaimer along with the appropriate fee. e) File a new terminal disclaimer and petition to waive the fee requirement.

15. may not properly apply for a patent. a) Convicted criminals b) Any current employee of the PTO c) A child d) A British subject e) A scientist who has assigned all rights to a patent to his employer

16. You are a registered practitioner representing Guido, an Italian citizen. You are prosecuting Guido's U.S. patent application on a method of making pasta. Less than a year before the filing of the U.S. application, Guido filed a patent application in Italy. Before a patent is granted on the U.S. application, which of the following most correctly sets forth what is required in Guido's U.S. application for Guido to be entitled to the right of priority of his Italian application?

a) A claim for priority only must be filed. b) A claim for priority as well as a certified copy of the original Italian application, specification

and drawings must be filed. c) A certified copy of the original Italian application, specification and drawings only must be

filed. d) File a claim for priority and a copy of the original Italian application, specification and

drawings. e) The U.S. application must be for the same invention as in the Italian application and a claim

for priority as well as a certified copy of the original Italian application, specification and drawings must be filed.

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17. Inventor Jason filed a patent application in the PTO on November 19, 1990. The claims in the application were rejected as being anticipated by Freddy. An antedating affidavit under Rule 131 has been prepared showing that on April 1, 1988, Jason conceived in the U.S. the subject matter disclosed by Freddy. Coupled with due diligence, Jason reduced his invention to practice in the United States on June 10, 1988. In which of the following instances will the antedating affidavit be effective to remove Freddy as prior art?

a) Freddy is a U.S. patent granted on December 5, 1989 on an application filed in the PTO on April 1, 1989, which was a continuation of an application filed in the PTO on April 15, 1988. The patent discloses, but does not claim the invention.

b) Freddy is a U.S. patent granted on July 4, 1989 on an application filed in the PTO on September 11, 1988, which properly claims benefit of priority based on an application filed in France on August 2, 1988. The patent discloses, but does not claim the invention.

c) Freddy is a U.S. patent granted on October 2, 1990 on an application filed in the PTO on July 1, 1989. The patent discloses and claims the invention.

d) Freddy is a an article from a science digest with a publication date of March 1, 1988. e) Freddy is a U.S. patent granted on November 20, 1990 on an application filed in the PTO on

April 4, 1988. The patent discloses and claims the same invention.

18. You are a patent agent representing an inventor before the PTO. The inventor made an improved paper clip. On February 21, 1989, you filed a patent application on the paper clip on behalf of the inventor. You received an Office action in which all of the original claims were rejected under 35 U.S.C. 102(a) as anticipated by an article printed in Paper Pushers magazine. The article was written by the inventor and described the claimed paper clip, and how to make it and use it. The article was published on August 22, 1988. In response to the Office action, you should:

a) File an affidavit, signed by you, the agent, under 35 U.S.C. 131 swearing behind the publication.

b) File a response explaining that the publication is not available as prior art under 35 U.S.C. 102(a).

c) Abandon the application since the article is a statutory bar against the claims. d) File an amendment canceling all the claims. e) Submit an affidavit under 35 U.S.C. 132, signed by the inventor and notarized, demonstrating

a problem solved and long felt need for the improved paper clip.

19. In order to obtain a filing date for a patent application filed in the PTO, the application papers must as a minimum include:

a) A written description of the invention and any drawing required by 37 CFR 1.81 (a), both of which are filed in the name of the inventor.

b) A specification containing a description pursuant to 37 CFR 1.71 and at least one claim pursuant to 37 CFR 1.75, and any drawing required by 37 CFR 1.81(a), all of which are filed in the name of the inventor.

c) A specification containing a description pursuant to 37 CFR 1.71, any drawing required by 37 CFR 1.8l(a), and the filing fee, all of which are filed in the name of the inventor.

d) A specification containing a description pursuant to 37 CFR 1. 71 and at least one claim pursuant to 37 CFR 1.75, any drawing required by 37 CFR 1.81(a), and the filing fee, all of which are filed in the name of the inventor.

e) A written description of the invention, any drawing required by 37 CFR 1.8l(a), applicant's oath or declaration, and the filing fee, all of which are filed in the name of the inventor.

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20. Which of the following petitions does not require a fee? a) Petition to make special due to applicant's advanced age (over 65 years). b) Petition for access to a patent application. c) Petition to suspend action on an application. d) Petition to withdraw an application from issue. e) Petition for expedited handling of a foreign filing license.

21. In preparing a response to a rejection five months after the mailing date of the Office action wherein the examiner set a three month shortened statutory period for response, you discover that a copy of the U.S. patent relied upon in the rejection of the claims was not included with the Office action. To properly correct the omission and avoid abandonment, you should:

a) File a response to the Office action, but not address the rejection because it was the examiner's error and you are not responsible for getting a copy of the reference.

b) Assume the rejection was based upon only the references supplied, and file a response arguing the rejection over only those references.

c) Telephone the examiner requesting a copy of the patent which will automatically restart the time period for response to the Office action.

d) Obtain a copy of the patent, and prepare and file a complete response which includes a petition for an extension of time along with the appropriate fee.

e) File a written request to the examiner requesting a copy of the patent which will automatically restart the time period for response to the Office action.

22. A patent application was filed in the PTO on January 15, 1991. In the first Office action, the examiner objected to the drawings because several elements set forth in the ciaims were not shown in the drawings. Which of the following would be a correct procedure for making the drawing corrections required by the examiner?

a) Contact a local commercial bonded draftsman to obtain the original drawings in the application from the PTO and make the drawing changes.

b) Send an associate from your firm with a power of attorney to obtain the drawings from the PTO and then give them to the draftsman for correction.

c) File new corrected drawings with the issue fee within the three month shortened statutory period after receiving a Notice of Allowance from the examiner.

d) After receiving a Notice of Allowance, file a request with the appropriate fee to have a PTO draftsman make the necessary changes.

e) Authorize the examiner to make the required corrections to the drawings by an Examiner's Amendment.

23. A patent specification can be altered by interlineation before it is filed in the PTO. Such alterations are permitted if each interlineation is initialed and dated by the:

a) Applicant at any time after the oath or declaration is signed. b) Registered practitioner who prepared the specification before the oath or declaration is signed

by the applicant. c) Applicant before the oath or declaration is signed by the registered practitioner. d) Registered practitioner who prepared the specification even if the applicant is available to sign

the oath or declaration. e) Applicant before the oath or declaration is signed by the applicant.

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24. A patent application is filed with 10 claims. Claims 1, 2 and 3 are independent claims directed to a product. Claim 4 is an independent claim directed to a process of making the product. Which of the following would be acceptable form for a dependent claim 5?

a) A product as claimed in claims 1-3, wherein ... b) A product as claimed in claims 1, 2, and 3, wherein ... c) A product as claimed in claim 1, made by the process of claim 4. d) A product as claimed in any one of claims 1, 2, or 3 wherein ... e) A product as claimed in claim 6 or claim 7, wherein ...

25. Jones' claims have been rejected under 35 U.S.C. 102(e) as being anticipated by Peterson. The rejection is based upon the disclosed, but unclaimed, subject matter in the Peterson patent. The patent issued six months after the filing date of Jones' application. The unclaimed subject matter in the Peterson patent was not invented by Peterson, but rather was disclosed to Peterson by Jones. Peterson's claimed invention is patentably distinct from Jones' claimed invention. The proper response to obviate this rejection would be to: ·

a) File a terminal disclaimer signed by Jones. b) File an affidavit by Peterson establishing that Peterson derived his knowledge of the relevant

subject matter from Jones. c) Argue that the Peterson patent is not prior art because the patent did not issue before Jones

filed his application. d) File a terminal disclaimer signed by Peterson. e) Copy the claims in the Peterson patent to provoke an interference.

26. An Office action dated January 3, 1990, setting a three month shortened statutory period for response, was mailed to inventor Jones. The examiner rejected all of the claims in the Jones application as being obvious over a patent to Smith. On Friday, May 31, 1991, Jones filed in the PTO a complete response to the Office action along with a request and appropriate fee for a three month extension of time, and a petition and appropriate fee to revive the application for unintentional abandonment. The petition to revive will be:

a) Denied because the application was abandoned as of Tuesday April 3, 1990. b) Denied because the application was abandoned as of Wednesday, April 4, 1990. c) Denied because the application was abandoned as of Tuesday, July 3, 1990. d) Granted because the application was abandoned as of Tuesday, July 3, 1990. e) Granted because the application was abandoned as of Wednesday, July 4, 1990.

27. An application was filed on behalf of Lester in the USPTO and assigned a filing date of July 7, 1989. The application included a perfected claim for priority based upon an application Lester filed in France on July 7, 1988. The exan1iner rejected all of the claims in the U.S. application as being an­ticipated by a U.S. patent to Smith issued on March 7, 1989. The Smith patent is based upon a U.S. application filed on May 10, 1988. The Smith patent disclosed, but did not claim, the subject matter defined by the claims rejected in Lester's application. The Stnith patent would be prior art under

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

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28. A design patent application was filed on July 1, 1978 which issued as a design patent on December 1, 1980. On December 15, 1980, a proper reissue application was filed. The reissue patent was granted on September 1, 1982. When was the first maintenance fee due to be paid?

a) January 1, 1981 b) June 1, 1984 c) June 15, 1984 d) March 1, 1986 e) No maintenance fee was due.

29. On February 6, 1990, a patent was issued to Jones on a novel switching circuit. Shortly after receiving_ the patent grant, Jones assigned 50% of the right, title and interest in his patent to Ace and 25% of the right, title and interest in the patent to Duce. After the assignments were recorded in the PTO, Jones discovered that his claim coverage is too narrow because his patent attorney did not appreciate the full scope of his invention. Today, August 21, 1991, Jones consults you about filing a reissue application. The reissue oath must be signed and sworn to by _____ _

a) Jones only b) Jones and either Ace or Duce c) Ace and Duce only d) Jones, Ace and Duce e) the attorney or agent of record

The answer to each of Questions 31 and 32 is based upon the facts in the paragraph below. You are to consider and answer each of Questions 31 and 32 separately.

On April 2, 1990, Inventor Barnes filed an application for patent in the PTO. The original claims in the application were rejected as being anticipated under 35 U.S.C. 102 over a French patent to Galois which was published on March 6, 1990. The French patent matured from an application filed in the French Patent Office on November 2, 1987. The original claims in Barnes' application were also rejected as being unpatentable .under 35 U.S.C. 103 over a U.S. patent granted to Smith on March 6, 1990. The Smith patent is based on an application filed in the PTO on September 4, 1988. The rejections are factually sound.

30. Can the rejection over the Smith patent be avoided? a) No, because Smith's patent is a statutory bar in that the Smith patent application was filed more

than one year prior to the filing date of the Barnes application. b) No, because the Smith patent cannot be overcome with an antedating affidavit or declaration

containing a showing of priority of invention by Barnes. c) Yes, even though Srnith is available as a reference under 35 U.S.C. 102(a) for purposes of

rejecting the claims under 35 U.S.C. 103, the patent could be removed if Barnes can show completion of his invention in the U.S. before September 4, 1988.

d) Yes, because the patent can be removed by filing a terminal disclaimer. e) Yes, if evidence is submitted showing that Smith placed his invention on sale in the U.S. before

September 4, 1988.

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31. Can the rejection over the French patent to Galois be avoided? a) No, because the Galois application was ftled more than one year prior to the filing date of the

Barnes application. b) No, because the French patent cannot be overcome with an antedating affidavit or declaration

containing a showing of priority of invention. c) Yes, even though the French patent is available as a reference under 35 U.S.C. 102(a), the

French patent could be removed if Barnes can show completion of his invention in the U.S. before March 6, 1990.

d) Yes, because the Galois patent can be overcome by filing a terminal disclaimer. e) Yes, because the French patent can only be overcome by an antedating affidavit or declaration

if Barnes can show he conceived his invention in the U.S. before November 2, 1987.

32. On Monday, February 25, 1991, an Office action was mailed to practitioner Laramie. The Office action contained a rejection of all claims in the application and set a three month shortened statutory period for response. The very last day for filing a response without requesting an extension of time would be ______ _

a) Friday, May 24, 1991 b) Saturday, May 25, 1991 c) Monday, May 27, 1991 (Memorial Day) d) Tuesday, May 28, 1991 e) Tuesday, June 25, 1991

33. A continuation-in-part application (CIP) filed under the file-wrapper-continuation procedure requires:

a) That the same inventors named in the parent application must be named in the CIP. b) A new oath or declaration for any subject matter added and claimed by amendment. c) The same prior art to be used as was cited in the parent application. d) The applicant be represented by the same registered practitioner who represented the applicant

in the parent application. e) Any newly presented claims be supported under 35 U.S.C. 112, first paragraph, by the

disclosure in the first application.

34. A multiple-dependent claim may not properly depend upon _____ _ a) an independent claim. b) another dependent claim. c) any other multiple dependent claim. d) a claim containing Markush language. e) a claim which is in Jepson-type format.

35. The specification shall conclude with one or more claims and must set forth: a) The manner of making the invention, the theory of why the invention works, and at least one

working example showing how the invention works. b) The manner of making and using the invention, a written description of the invention, and the

best mode of carrying out the invention.

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c) A description of the invention, how the invention is distinguishable over the most relevant prior art, and the best mode of carrying out the invention.

d) Only a full, clear, and concise description of the invention. e) A complete description of the invention, and how to use the invention so that an ordinary

citizen with no background in science or mechanics would be able to practice the invention.

36. The examiner properly rejected a new claim as containing new matter. The claim was added by an amendment which was filed after the filing date of the application. Which of the following best describes the action which should be properly taken by the applicant to overcome the rejection?

a) Amend the specification to include the new matter therein to provide antecedent support for the ·claim.

b) File a new oath or declaration in accordance with 37 CPR 1.63. c) File a supplemental oath or declaration meeting the requirements of 37 CFR 1.67. d) File a reissue application arguing that the new matter was inserted without deceptive intent. e) Cancel the claim containing the new matter.

37. You are a registered practitioner representing an inventor from France who conceived and reduced his invention to practice in France. You filed a patent application in the USPTO on behalf of the inventor. The invention was fully described in the U.S. application. Your client did not file a patent application on his invention in any foreign country prior to filing his U.S. patent application. An interference was declared between your client's U.S. application and an u~s. application to Jones having a filing date earlier than your client's U.S. filing date. Your client provides you with clear evidence of a reduction to practice in France over one year before the filing date of the Jones application. However, your client's evidence of conception can best be categorized as marginal. Which of the following best describes what you should do to establish priority of invention for your client?

a) Present your client's reduction to practice inasmuch as it will be sufficient to overcome the filing date of the· Jones application.

b) You must develop further evidence showing your client's conception in France because both conception and reduction to practice must be shown in order to overcome an earlier filing date.

c) You must establish proof of reduction to practice of the invention in the United States in order to establish a date of invention before the filing date of the Jones application.

d) You must develop further evidence showing conception in France, and evidence showing diligence up to the point of your client's reduction to practice in France.

e) Present evidence of conception in France by your client.

38. Which of the following statements is true respecting product-by-process claims? a) A lesser burden of proof is required to make out a case of prima facie obviousness for product­

by-process claims than is required to make out a prima facie case of obviousness when a product is claimed in the conventional fashion.

b) It is proper to use product-by-process only when the process is patentable. c) It is proper to use product-by-process claims only when the product is incapable of description

in the conventional fashion. d) Product-by-process claims cannot vary in scope from each other. e) Product-by-process claims may only be used in chemical cases.

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39. Patent agent Bronson worked in the Patent Department of XYZ Corporation. On Thursday, December 6, 1990, Bronson completed a new patent application under 35 U.S.C. 111, which included a paper having a certificate of "Express Mail" which he signed stating that the application was being mailed Friday, December 7, 1990 by "Express Mail." He then placed only the application papers and the paper having the certificate of "Express Mail" in an envelope which was addressed to the Commissioner of Patents and Trademarks, Washington, D.C. 20231. He also affixed the "Express Mail" label to the envelope. The number of the "Express Mail" label was not placed on the application papers or the paper having the certificate before Bronson sealed in the envelope. Bronson placed the envelope on his secretary's desk to be sent to the company's mailroom. On the following Tuesday, December 11, 1990, Bronson's secretary discovered the envelope on her desk, and without informing Bronson, she deposited the envelope with the U.S. Postal Service on that day. The application was received by the PTO on December 13, 1990 bearing a U.S. Postal Service "Express Mail" label with a "date in" of December 12, 1990. The application will be accorded a filing date of _____ _

a) Thursday, December 6, 1990 b) Friday, December 7, 1990 c) Tuesday, December 11, 1990 d) Wednesday, December 12, 1990 e) Thursday, December 13, 1990

40. Which of the following is not required by PTO regulation~_ to be in the oath or declaration which forms a part of a patent application?

a) A statement that the person making the oath or declaration has reviewed and understands the contents of the specification, including the claims.

b) An acknowledgement of the duty required of the person making the oath or declaration to disclose information which is material to the examination of the application.

c) The identity of each inventor. d) A statement that a patentability search has been made on the claimed invention and the person

making the oath or declaration believes the claimed invention to be patentable. e) A statement of whether the inventor is a sole or joint inventor of the invention claimed.

41. The claims in an application filed on behalf of Jones were rejected as being unpatentable under 35 U.S.C. 103 over Wilson in view of Frank. Jones gave you, a registered practitioner, power of attorney to prosecute his application. Which one of the following items of information available to you would be relevant to overcoming the rejection of the claims without modifying or amending the claims?

a) Wilson and Frank do not teach or suggest feature A of Jones' invention which is set fort..h in each of the drawings and in the working examples in Jones' application, but which is not recited in any of the rejected claims.

b) Wilson and Frank do not disclose or suggest feature B of Jones' invention which is set forth in the drawings and each working example in Jones' applicatinn and which is within the broad scope of each of the rejected claims, but not specifically set forth as a limitation in any of the claims.

c) Jones' invention can be shown to possess unexpected superior properties over the relevant subject matter disclosed by Frank.

d) Wilson, which was published before Frank, contains no specific reference to Frank suggesting that his invention can be modifitJ.

e) Wilson and Frank are both foreign patents which were published more than one year prior to the filing date of Jones' application.

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42. A proper appeal is taken from claims rejected under 35 U.S.C. 103. An appeal brief is filed which presents only the following statement with respect to the rejection:

"Claims 1 to 6 stand rejected under 35 U.S.C. 103 as being obvious over Blue in view of Green. All of the limitations of the claimed invention are not disclosed in either Blue or Green."

The statement presented can be best characterized as being: a) Improper because the statement lacks any argument. b) An improper argument because it is does not explain why the combined teachings of the

applied references would not have suggested the claimed subject matter. c) A proper argument because neither reference discloses all of the limitations of the claimed

invention as evidenced by the fact that the examiner had to combine the references in the rejection.

d) A proper argument because it points out limitations which are not disclosed in the references. e) A proper argument because it explains why the claimed subject matter is unobvious over the

references.

43. On November 27, 1990, inventors Baker and Charlie filed in the PTO a patent application claiming a widget. The examiner properly rejected the claims in the application as being obvious under 35 U.S.C. 102(e)/103 over a patent granted on May 14, 1991 to coinventors Able and Baker who disclosed, but did not claim the widget. Able and Baker filed their patent application on January 25, 1989. At the time their respective inventions were made, Able, Baker and Charlie were each obligated to assign their inventions to Acme Corporation (Acme), their employer. By way of separate assignments, Acme is the common owner of the Able and Baker invention as well as the Baker and Charlie invention. Can the rejection be avoided?

a) No, because an obviousness analysis is performed in both cases based on what is claimed in the issued patent.

b) No, because the Able and Baker patent is available as prior art under 35 U.S.C. 102(e). c) No, because the rejection is equivalent of an obviousness-type double patenting rejection. d) Yes, by filing a terminal disclaimer which would disclaim the term of any patent issuing on the

Baker and Charlie application extending bey~nd the expiration of the Able and Baker patent. e) Yes, because the rejection is improper in view of the fact that the second paragraph of 35

U.S.C. 103 excludes previously developed, commonly owned subject matter from the prior art.

44. You are a registered patent agent and just received an Office action in which the examiner objected to the oath as filed on the ground that it "does not state that the person making the oath or declaration has reviewed and understands the contents of the specification, including claims, as amended by any amendment specifically referred to in the oath or declaration." Your response to the examiner's objection should be to:

a) Amend the oath to add the missing wording. b) File a newly executed oath which includes the missing wording. c) Argue in the next response to the Office action that the objection is without merit because there

is no requirement that the oath must include a "reviewed and understands" statement. d) File an executed supplemental oath which consists of only the missing wording. e) Ignore the objection because the basis upon which the examiner made his objection is without

merit.

13

45. A patent applicant claims a chemical compos1t1on and discloses in the application that the composition has a cleansing property in addition to being able to remove ink stains. The examiner rejected the claims in the application under 35 U.S.C. 103 as being obvious over Wilson in view of Jones. Each reference discloses chemical compositions which can be used to remove ink stains. The combination of references clearly suggests the composition claimed in the application. However, neither reference shows nor suggests the cleansing property newly discovered by applicant. Does the combination of Wilson and Jones support a prima facie case for obviousness?

a) Yes, even. though neither reference shows or suggests the newly discovered property of the claimed composition.

b) Yes, because both references disclose compositions which can be used to remove ink stains. c) No, unless in addition to structural similarity between the claimed and prior art compositions,

the references contain a suggestion that the compositions will have the newly discovered cleansing property.

d) No, because the discovery of a new property of a previously known composition imparts patentability to the known composition.

e) No, because the burden of proof cannot be shifted to the applicant to show that the prior art compositions lacked the newly discovered property asserted for claimed composition unless one of the references discloses the property.

46. You are a registered patent agent prosecuting a patent application filed on behalf of George. You received an Office action dated June 12, .1991 in which the examiner set a three month shortened statutory period for response and rejected all of the claims in the application under 35 U.S.C. 112 for failing to particularly point out and distinctly claim the invention. After receiving the Office action, you discovered a recently issued U.S. patent which you believe discloses and claims your client's invention. On July 25, 1991, you filed an amendment copying some of the claims from the patent for the purpose of provoking an interference. In a second Office action dated August 8, 1991, the examiner rejected the copied claims under 35 U.S.C. 112 as being based on an non-enabling disclosure and set a three month shortened statutory period for response. If no petitions for extensions of time are filed, responses to the first and second Office actions are due on _____ _

a) September 12, 1991 b) September 12, 1991 and November 8, 1991, respectively c) September 25, 1991 d) October 25, 1991 e) November 8, 1991

47. When an application is under a secrecy order, which of the following statements is true? a) An interference will be declared with another interfering application provided the other

application is also under a secrecy order. b) When the application is found to be in condition for allowance, a Notice of Allowance will be

mailed to the applicant and the applicant must pay the issue fee. c) If all the claims in the application are fmally rejected, the rejection must be appealed or other­

wise prosecuted to avoid abandonment. d) To file abroad an application under secrecy order, the secrecy order must be removed. e) International applications under secrecy order will be delivered to the international authorities.

14

48. An inventor consults you this morning about filing a patent application on an invention he conceived and reduced to practice in the garage of his home in ·Chicago, Illinois. He is president of his own company, Smith Manufacturing Co., which employs 470 full-time employees, 20 part-time employees and over 50 temporary employees. The company does not have any affiliates. The inventor is not under any obligation to assign to his company any inventions which he conceives and reduces to practice. Over the last fiscal year, the nurnber and types of employees employed by Smith Manufactur­ing has not changed. The inventor tells you that he has not assigned, granted, conveyed or licensed his invention and that he is under no obligation under contract or law to assign, grant, convey or license any rights in his invention to any person or to any business concern, or non-profit organization. Is the inventor entitled to small entity status?

a) No, because the inventor made the invention in his garage. b) No, because the total number of employees of all types at Smith Manufacturing Co. exceeds

500. c) Yes, because Smith Manufacturing Co. is a small business concern and the inventor, as

president, has a fiduciary duty to assign his invention to the company. d) Yes, because the inventor is an independent inventor. e) Yes, because the number of full-time and part-time employees at Smith Manufacturing Co. does

not exceed 500.

49. A U.S. patent application by Gray, a French national, was filed in the USPTO on August 10, 1988. The application disclosed and claimed an apparatus having a combination of elements A, B and C. Gray filed a claim for priority in his U.S. application based upon an application which he filed in the French Patent Office on September 16, 1987. Gray's U.S. patent application as filed is an exact English translation of his French application. Gray's French application was published as French Patent No. 2,222,222 on December 20, 1989. On July 10, 1991, Gray filed a continuation-in-part application (CIP) containing disclosure of new element D in the apparatus. The CIP application included new claims to an apparatus comprising a new combination of elements A, B, C and D. The examiner properly rejected the new claims in the CIP application as being obvious over Gray's French Patent No. 2,222,222 in view of a U.S. patent to Jones who clearly suggests modifying Gray's apparatus by adding element D to the combination of elements A, B and C. The rejection is a prima facie case of obviousness. Can Gray's French patent be removed as a reference?

a) No, because the new claims are not supported in the CIP application. b) No, because the new claims in the CIP are not entitled to the benefit of the filing date of the

parent application since the combination of elements A, B, C and D is not supported in the parent application.

c) Yes, because the claims in the parent application are supported in the CIP application. d) Yes, because Gray's French patent cannot be used a prior art in view of the claim for priority

in the parent application. e) Yes, because the new claims in the CIP would have the benefit the filing date of the parent

application in view of the fact that elements A, B, and C are supported in the parent application.

15

50. Registered practitioner Smith was employed by an inventor Jones to file and prosecute a patent application. Smith quoted Jones a price of $2800 for fees and expenses for preparing and filing the application. Smith prepared and filed the application in the PTO on August 9, 1990. The application included a combined Declaration and Power of Attorney signed by Jones authorizing Smith to prosecute the application and to conduct all business with the PTO. As of December 31, 1990, Jones had paid Smith $2200 in fees and expenses. On January 3, 1991, Smith delivered to Jones a bill for an outstand­ing balance of $600 in fees and expenses. On February 25, 1991, Smith received an Office action dated February 22, 1991 in which the examiner rejected all of the claims in the Jones application. In the Office action, the examiner set a three month shortened statutory period for response. As of today, August 21, 1991, no response to the Office action has been filed and Jones has not paid the $600 outstanding balance due. In which of the following situations will Smith have met his professional responsibility with regard to representing Jones?

a) On June 17, 1991, Smith informs Jones in writing that all claims in the application have been rejected by the Office and that a response to the Office action will not be prepared because there is an outstanding balance due on his account.

b) On March 1, 1991, Smith informs Jones in writing that he will not further prosecute the application until the balance due on the account is paid in full.

c) Smith informs Jones today in writing that he will not prepare a response unless the $600 outstanding balance is paid in full.

d) Smith informs Jones today in writing that he has received an Office action and that he wrill no longer represent Jones because Jones has not paid the outstanding balance on his account.

e) On March 1, 1991, Smith provides Jones with a copy of the Office action and a copy of a petition to withdraw which Smith filed in the PTO on February 28, 1991, and informs Jones in writing that a response to the Office action must be filed on or before May 22, 1991 in order to avoid abandonment of the application.

END OF THE MORNING SECTION EXAMINATION

16

l

Test Number 014A

Test Series 191 NAME __________________ __

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

REGISTRATION EXAMINATION FOR PATENT ATTORNEYS AND AGENTS

August 21, 1991

Afternoon Section (100 Points) Time: 3 Hours

DIRECTIONS

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

This examination consists of 1HREE (3) PARTS. Part I is directed to drafting at least one claim and a response to an Office action. You must write your answer to Part I in the Answer Book provided by the proctor. Parts IT and ill present fact patterns which are followed by a set of multiple choice questions. The point value of each multiple choice question within each part is three (3) points. All questions in Parts IT and ill must be answered on the Answer Sheet which is provided to you by the proctor. You must 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. Any stray marks may be counted as answers. Erase completely all marks except your answer. No points are awarded for incorrect answers or unanswered questions. The most correct answer is the policy, practice and procedure which must, shall or should be followed in accordance with the patent statutes, PTO rules, and the Manual of Patent Examining Procedure (MPEP).

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

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

OR TO BEGIN THE EXAMINATION

1

PART I (52 Points)

INSTRUCTIONS: This question is directed to drafting a response to an Office action and consists of three options. You must select one of the options. If you select more than one option, only the first answer in your Answer Book will be graded.

OPTION A: You are a registered practitioner and your registration number is 55,555. Today, August 21, 1991, Cool Dude consults you, and asks you to represent him in prosecuting a patent application he had prepared and filed in the PTO on September 3, 1990. Dude has properly filed all necessary papers for claiming small entity status. Dude provides you with the following copy of the application he filed.

ILLUMINATED BRUSH DEVICE

The present invention relates to a brush which is capable of becoming illuminated in the bristle portion thereof by transmission of light through fiber optic materials.

Heretofore, conventional brushes have suffered from the disadvan­tage that they provide insufficient lighting in the area to be brushed thereby making it difficult for the user to see clearly the area to be brushed. For example, in conventional implements used for oral hygiene, such as a toothbrush, difficulties have been encountered in cleansing all of the teeth in the user's mouth due in part to the inability of the user to have sufficient lighting so as to see all the areas in the mouth. Attempts have been made to incorporate light in the handle or head holding portion of a brush. A dental cleaning device which attempts to light up the area to be brushed is disclosed in U.S. Patent No. 4,779,173, which issued October 18, 1988. The patent discloses a toothbrush in which the head portion or bristle holding portion is illuminated.

It is known in the prior art to use plastic fiber optics to transmit light. The light is produced from any conventional light

2

source, e.g. a light bulb, connected to any conventional power source, e.g. a battery. The light so produced is transmitted through the plastic fiber optics to produce an aesthetically pleasing effect at the light-emitting tips of the fibers and to illuminate areas proximate to the tips of the fibers. It is also well known that the color being transmitted by the optic fibers can be changed by placing a color filter betwe~n the light source and the optic fibers.

Against the foregoing background, it is the object of the present invention to provide a brush device having plastic fiber optic filaments which act as bristles and which transmit light having greater intensity than the original light source to the tips of the bristles to illuminate the area in close proximity to the bristles. To accomplish the foregoing object, the present invention necessarily includes a brush device having a housing and light producing means disposed in the housing. There is also provided a plurality of plastic optic fiber filaments disposed in the housing and coupled to a magnification means. When the light producing means is energized, light is transmitted through the magnification means and a plurality of plastic filaments so that light emanates from the filaments forming the bristles. The magnification means is essential to the operation of the brush device because of the necessity to concentrate and intensify the light into the optic fiber filaments to intensify the light emitted from the tips of the bristles. The object of the invention will become apparent from the following detailed description.

The invention illustrated in the Figure is directed to an illumi­nated toothbrush. The Figure is a sectional view of the toothbrush.

The Figure illustrates a toothbrush 10 comprising a housing having an elongated stepped handle 12 and a head 14. In the interior of handle 12, there is a metal strip 22 which is used to connect or transfer power from a power source 18, a battery, to a light source 16. One end of metal strip 22 is connected to a reflector 30 which is electrically conductive and which has a center opening (not shown) through which the light source 16 is positioned. The light source is a light bulb with a conventional base having a collar and an insulated center post. The center post is in contact with the positive pole 20 of the battery while the collar is in contact with the reflector 30 through the center opening. The reflector 30 has a concave reflective surface and is attached to the interior walls of handle 12. Although not shown in the figure, the other end of metal strip 22 is electrically connected to a contact plate 26 which is fixed to a manually rotatable switch (not shown) . By manual rotation of a switch (mechanism not shown), the contact plate 26 is moved into contact with the negative end 28 of the battery to energize the light source 16.

The light emitted from the light source 16 is reflected off the reflector 30 in the direction of head 14. It passes through magnifica­tion lens 38 which intensifies the radiance of the light. The magnifi­cation lens 38 concentrates and directs substantially all of the beams of light into the fiber optic strands 36 which transmit the light to the tips of bristles 40 piercing surface 15 of head 14. Surface 15 has a plurality of tiny apertures (not shown), the number of which corresponds to the number of fiber optic strands 36. The plurality of fiber optic strands 36 may include one or more bands 42 to fix the individual fiber optic strands relative to each other. A color filter 32 may be added which causes the light to assume the color of the color filter.

3

Wherefore, I claim:

1. A brush device comprising a handle, a power source, a light producing means, and a brush portion.

2. The device of claim 1, wherein said light producing means includes a light bulb.

3. The device of claim 1, wherein said power source is a battery.

Dude's application was assigned Serial No. 08f)99,999 and is being examined by Examiner Smart in Group Art Unit 372. On March 21, 1991, Examiner Smart mailed a first Office action to Dude rejecting claims 1-3 under 35 U.S.C. 102(b) as anticipated by Dude's own patent, U.S. Patent No. 4,779,173. In the action, the examiner set a three month shortened statutory period for response.

U.S. Patent No. 4,779,173 issued to Cool Dude on October 18, 1988 and is directed to an illuminating toothbrush as shown in the following illustration:

Toothbrush 10 has a handle 12, head 14 and bristles 40. The head 14 and the upper portion of the handle 12 nearest the head 14 are made of a transparent material, such as an acrylic plastic. When light source 16 (a light bulb identical to that disclosed in Dude's pending application) is activated by power source 18 (a battery), the light so produced is reflected off a concave reflector 30 and is directed toward the head 14 to illuminate the entire area of the head and the upper portion of the handle to provide sufficient illumination in the area to be brushed. The reflector 30 is identical in all respects to the reflector 30 disclosed in Dude's pending application. It is electrically conductive and has a center opening for the light source 16. It also forms one end of a metal strip (not illustrated in the patent) which is identical in all respects to the metal strip 22 described in Dude's pending application to connect the power source 18 to the light source 16 through a manually rotatable switch 20. Although not shown in the figure above from the patent, a contact plate is attached to the rotatable switch and is electrically

4

connected to the metal strip. The metal strip, reflector and contact plate cooperate to operate in a manner identical to that disclosed in Dude's pending application, i.e. when the switch is manually rotated, the contact plate moves into contact with the negative end of the battery to complete the electrical circuit to energize the light source. The patent also teaches placing a color filter between the light source and the head to change the color of the light.

Dude provides you with a copy of the Office action as well as his patent. After reviewing the application, the patent, and the Office action, you agree to represent Dude in prosecuting his application. Dude instructs you to prepare and ftle a response to the Office action. He tells you that he is of modest means and cannot afford to pay more than a minimal amount for services and costs to respond to the Office action. Dude clearly instructs you that you must not incur any costs which can be avoided pursuant to PTO rules. It is your fmn's strict policy never to advance any government fees for any client for any reason. He gives you a check to cover your legal fees and for a two month extension of time. Your firm is located in Denver, Colorado. You do not have a local representative in Washington, DC and you do not have access to a FAX machine. Dude leaves your office to drive to his home in Oklahoma before you can get him to execute a power of attorney.

Prepare a timely and complete response to the Office action under 37 CFR 1.111 which does not cause the firm or your client to incur further costs or fees. For the purpose of this examination, your response must cancel claims 1-3 and present a new single independent claim which defines the novelty of the invention as set forth in the object of the invention and which distinguishes your client's invention over the teachings of the Dude patent and the admitted prior art.

Your claims must be drawn to an illuminated brush device that is operative in the manner described in Dude's application. Your claims must include and interrelate at least the following elements: the head, the handle, the light source, the power source, the metal strip, the reflector, and the switch.

You may not be your own lexicographer to name the elements of the disclosed invention. You must use the terminology set forth in Dude's disclosure. Any claim not drawn to a brush device will receive no credit. Any amended claim will receive no credit. Points will be deducted for claiming subject matter which is not within the scope of the invention shown in the Figure of or described in Dude's application, for using language which is indefinite or which does not have antecedent basis, for failing to interrelate the elements or components in your claim, and for poor grammar. You may not describe any of the above mentioned required elements in terms of means plus function.

GO TO PAGE 6 FOR OPTION B

5

OPTION B: You are a registered practitioner and your registration number is 55,555. Today, August 21, 1991, Howie Squeal consults you, and asks you to represent him in prosecuting a patent application he prepared and flied in the PTO on September 3, 1990. Squeal has properly flied all necessary papers for claiming small entity status. Squeal provides you with the following copy of the application he flied.

Z+

FLAW DETECTING CIRCUIT USING HALL EFFECT DEVICES IN A PIPELINE PIG

The present invention pertains to a sensitive magnetic field detector including a wire coil which provides a bias current to two Hall effect devices which sense the same incident magnetic field as the coil. The final output signal from the Hall effect devices provides improved sensitivity of the circuit for applications including detection of magnetic anomalies, such as caused by cracks in fluid transmission pipelines.

A survey pig is the term used by the fluid transmission industry for a probe which moves inside a pipeline. One application of a survey pig is to detect defects, such as stress or corrosion cracks, in iron and steel (ferrous) pipeline walls. A conventional pipeline survey pig consists of a plurality of resilient somewhat cup-shaped members attached to and surrounding a central core supporting member. At least one of the cup­shaped members is provided, around its periphery, with a plurality of magnetic field detectors to detect defects. The survey pig is normally disposed in a cylindrical steel fluid transmission pipeline and is propelled through the pipeline by fluid pumped through the pipeline.

The use of a magnetic field detector to detect defects in ferrous pipe­lines is based upon the pioneering work of Bacon Neggs in 1953. Neggs discovered that when a magnetic field from the magnet is passed adjacent to iron or steel pipeline wall, a defect in the wall will cause the magnetic field to change and to generate a current flow from the coil. Neggs found that the current flow is proportional to the number of turns on the coil, the strength of the magnetic field, and the rate of change in the intensity of the magnetic field.

The sensitivity of a simple coil type detector such as used by Neggs is

6

not sufficient to detect minute cracks in the range of 10 to 100 microinches, particularly considering circuit noise, less than ideal field flux contrast as the detector passes by the crack, flux leakage and the like. The present invention provides a unique circuit which adapted to sense minute changes in a magnetic field caused by minute defects in the pipeline wall by coupling the output of a changing magnetic field sensing coil to two Hall effect devices so that the output signal from the second Hall effect device will be proportional to the third power of the changing intensity of the magnetic field.

The Figure illustrates my unique circuit. An electromagnet (not illustrated) is used to magnetize the wall to produce magnetic field B. An electromagnet is used instead of a permanent magnet to reduce the weight of the detector circuit. The circuit 10 includes a Neggs type wire coil 12 located in magnetic field B of the wall. The conductors 14 and 16 provide bias current to Hall effect device 20.

Hall effect devices are well known for use in detecting the presence and magnitude of magnetic fields. The Hall effect is created by passing a bias current through a conductor or semiconductor and orienting the conductor or semiconductor in a magnetic field whereby an output voltage signal, EH (Hall voltage), is generated by the conductor or semiconduc­tor in a direction perpendicular to the plane formed by the direction of the magnetic field and the direction of the bias current. The magnitude of EH is proportional to the product of the bias current times the intensity of the magnetic field.

My circuit includes two Hall effect devices 20 and 21, and a coil 12 which are all orientated in the magnetic field B to produce the maximum Hall effect output. The conductors 14 and 16 provide a bias current to the Hall effect device 20. An amplifier 18 is interposed in conductor 14 for amplifying the voltage signal generated as a result of a change in the intensity of the magnetic field B as viewed by coil 12. The amplifier 18 includes a noise filter circuit 19 whereby only signals of a selected bandwidth are imposed on Hall effect device 20. An output voltage signal, EHl (not shown in the circuit diagram), is generated from Hall effect device 20 across conductors 22 and 24. The voltage signal is proportional to the second power of the changing intensity of the magnetic field B. The bias current to the Hall effect device 21 is provided by the voltage signal, EHl· An amplifier 18 is interposed in conductor 22 for amplifying the voltage signal generated as a result of a change in the intensity of the magnetic field B as viewed by the Hall effect device 20. The amplifier 18 includes a noise filter circuit 29 which functions in a manner similar to that described for noise filter circuit 19. The Hall effect device 21 produces an output voltage signal, EH2 , across output leads 26 and 28 which is proportional to the third power of the changing intensity of the magnetic field B. The circuit also includes an integrating circuit 30 which particularly useful as a switching device.

I have found that the use of two coupled Hall effect devices, will increase the overall signal to noise crack detection sensitivity in the wall of a steel or iron pipeline. With such sensitivity, stress or corrosion cracks of at least 10 microinches can be detected.

7

Wherefore, I claim:

1. A circuit for use on a survey pig compr~s~ng a coil disposed in a magnetic field, and at least one Hall effect device disposed in said magnetic field.

2. A circuit according to claim 1, wherein said coil includes a conductor means.

3. A circuit according to claim 2, further including a band pass amplifier circuit.

The Squeal application was assigned Serial No. 08/999,999 and is being examined by Examiner Smart in Group Art Unit 272. On March 21, 1991, Examiner Smart mailed an Office action to Squeal rejecting claims 1-3 under 35 U.S.C. 102(b) as being anticipated by Hamm, U.S. Patent No. 3,945,306. In the action, the examiner set a three month shortened statutory period for response.

U.S. Patent No. 3,945,306 was issued to Virginia Hamm on July 16, 1966. She developed the first commercially useful, ferrous pipeline, flaw detection circuit using a Hall Effect device. The circuit is disclosed in the patent as follows:

12

The Hamm patent shows a circuit 10 for use in a survey pig. The circuit will detect stress or corrosion cracks greater than 1000 microinches in iron or steel pipe. The circuit includes a Neggs type wire coil 12 located in a magnetic field B of the wall. An electromagnet (not illustrated) is positioned near the pipe wall and locally magnetizes the wall to produce magnetic field B. When there is a change in the magnetic field intensity caused by a defect in the pipeline wall, the current generating wire coil 12 generates a bias current to Hall effect device 20 through output leads 14 and 16. The Hall effect device produces a voltage signal, EH, across output leads 22 and 24 which is proportional to the square of the magnetic field intensity B. An amplifier 18 is interposed in conductor 14 for amplifying the voltage signal generated from coil 12. The amplifier includes a noise filer circuit 19 whereby only signals of a selected bandwidth are imposed on Hall effect device 20. Hamm further discloses using an integrating circuit 28 which would function as a switching device. The sensitivity of the circuit is disclosed as being greater than the sensitivity of either the Neggs coil alone or the~ effect device alone.

8

Squeal provides you with a copy of the Office action as well the Hamm patent. After reviewing the application, the Hamm patent, and the Office action, you agree to represent Squeal in prosecuting his application. Squeal instructs you to prepare and flle a response to the Office action. He tells you that he is of modest means and cannot afford to pay more than a minimal amount for services and costs to respond to the Office action. Squeal clearly instructs you that you must not incur any costs which can be avoided pursuant to PTO rules. It is your firm's strict policy never to advance any government fees for any client for any reason. He gives you a check to cover your legal fees and for a two month extension of time. Your frrm is located in Denver, Colorado. You do not have a local representative in Washington, D.C. and you do not have access to a FAX machine. Squeal leaves your office to drive to his home in Oklahoma before you can get him to execute a power of attorney.

Prepare a timely and complete response to the Office action under 37 CFR 1.111 which does not cause the firm or your client to incur further costs or fees. For the purpose of this examination, you must cancel claims 1-3 and present a new single independent claim which defines the novelty of the invention and which is not anticipated by Hamm.

Your claim must be drawn to a circuit for detecting relatively minute changes in the intensity of a magnetic field. Your claim must include and interrelate at least the following components: the coil (12), amplifiers (18), noise filter circuits (19 and 29), and Hall effect devices (20 and 21). Your claim must relate the operation of these components to the magnetic field wherever that is essential to the operation of the circuit.

You may not be your own lexicographer to name the components of the disclosed invention. You must use the terminology set forth in Squeal's disclosure. Any amended claim will receive no credit. Points will be deducted for claiming subject matter which is not within the scope of the invention shown in Squeal's figure and described in Squeal's specification, for using language which is indefinite or which does not have antecedent basis, for failing to interrelate the components in your claim, and for poor grammar.

GO TO PAGE 10 FOR OPTION C

9

OPTION C: You are a registered practitioner and your registration number is 55,555. Today, August 21, 1991, Kool Kopy consults you and asks you to represent him in prosecuting a patent application he flied in the PTO on September 3, 1990. Kool has properly filed all necessary papers for claiming small entity status. Kool provides you with the pertinent portions of the application which are set forth below.

FLUORAN COMPOUNDS

This invention relates to novel electron donating fluoran chromogenic compounds for use in pressure-sensitive recording systems. The fluoran chromogenic compounds develop color images when brought into contact with an acidic electron acceptor.

It is well known in the art that pressure-sensitive recording systems are superior to oil carbon paper for making copies of documents. Oil carbon paper suffers from the disadvantage that it stains hands and clothes and is troublesome to insert between documents. A pressure­sensitive copy paper system on the other hand is cleaner and more efficient. Pressure-sensitive copy paper is typically a transfer sheet laid over a receiving sheet. It is usually prepared by (1) encapsulat­ing a solution of a non-volatile oil containing a chromogenic material in rupturable microscopic capsules and dispersing the capsules in a coating composition, (2) ~oating a back side surface of a transfer sheet with the coating composition, and (3) coating the top surface adjacent to the receiving sheet with an acidic clay, i.e. an electron acceptor, such as attapulgite, zeolite, bentonite, kaolin and silica. When the transfer sheet is impressed with a pencil or the like, the capsules rupture to release the oil-containing chromogenic compound. On contact with the electron acceptor material, the chromogenic compound produces a color image which duplicates the impression.

The use of fluoran compounds as chromogenic compounds in pressure-sensitive copy systems is well known to those skilled in the art. For example, the compound to the right, 6-methyl-2-diethylaminofluoran, is a colorless material which when brought in contact with an acidic electron acceptor material will form a green color. This fluoran compound, however, suffers from the disadvantage of having a relatively high vapor pressure which causes the compound to vaporize from the capsules to form ghost images which contaminate printed pages on the pressure­sensitive copy paper and to cause the printed images to disappear on the paper during storage for a long period of time.

The object of this invention is to provide a novel fluoran chromogenic compound without the aforesaid disadvantage. This object can be accomplished by providing a novel fluoran represented by the following formulas:

10

11

~ 0 I <fH, ~ N

I

I ~

,~ ~

~

0 .Jo----~

crC=O v

~~ NHCH

I ~

0

12

N8

The novel fluoran compounds of my invention will produce green, red, and blue color images. However, only those fluoran chromogenic compounds having a thiophene or furan group as a substituent to the 2-position on the fluoran ring produce a red color image on contact with an acidic electron acceptor material.

* * * I claim:

1. A chromogenic compound.

2. A fluoran chromogenic compound.

3. A fluoran chromogenic compound which produces a color on contact with an acidic electron acceptor material.

Kool's application was assigned Serial No. 08/999,999 and is being examined by Examiner Smart in Group Art Unit 172. On March 21, 1991, Examiner Smart mailed an Office action to Kool Copy rejecting all three claims in Kool's application as being anticipated under 35 U.S.C. 102(b) by an article by Jones published in The Colorist's Journal on September 1, 1989. In the action, the examiner set a shortened statutory period for response of three months.

Jones is a leading expert in chromogenic materials. The Jones article discloses 6-methyl-2-diethylaminofluoran and 2-pyrrolidino-6-diethylaminofluoran, having the following formulas:

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The article further describes these compounds as being well known chromogenic compounds which are colorless compounds under ordinary conditions, but change to a green color by opening their lactone ring when they contact an acidic electron acceptor. Jones discloses that these compounds are commonly used as chromogenic compounds in preparing pressure-sensitive copy paper systems.

Kool provides you with a copy of the Office action as well as the Jones article. After reviewing the application, the Jones article, and the Office action, you agree to represent Kool in prosecuting his application. Kool instructs you to prepare and file a response to the Office action. Kool tells you that he is of modest means and cannot afford to pay more than a minimal amount for services and costs to respond to the Office action. Kool clearly instructs you that you must not incur any costs which can be avoided pursuant to PTO rules. It is your frrm' s strict policy never to advance any government fees for any client for any reason. Kool gives you a check to cover your legal fees and for a two month extension of time. Your fmn is located in Denver, Colorado. You do not have access to a FAX machine. Kool leaves your office to drive to his home in Oklahoma before you can get him to execute a power of attorney.

Prepare a timely and complete response to the Office action under 37 CFR 1.111 which does not cause the firm or your client to incur further costs or fees. For the purpose of this examination, you must cancel claims 1-3 and present one new independent generic claim which describes only the novel fluoran chromographic compounds of the invention by their chemical structure. You must also present a second claim, dependent on the generic claim, which defines the fluoran chromogenic compound or compounds by its or their structure which produce a red color image on contact with the acidic electron acceptor material. Your claims must not read on the prior art. Your claims must include only one generic formula (in the generic claim), and the substituents must be defined in terms of different R groups. You may use a Markush grouping to define substituents only. The claims presented in your response must be directed to only the compounds specifically set forth in the written description of Kool 's application. You may not be your own lexicographer to name the substituents. To assist you in naming the compounds or substituents, the numbering of the fluoran ring as well as the names and numbering of other heterocyctic rings relevant to this question are set forth below: 5 4

~ 3

H 2

403 403 4Q3 503 503 cr=O 5 1 2 5 1 2 5 1 2 6 1 2 6 1 2 s

H H H

Furan Thiophene Pyrrolidine Morpholine Piperazine Lactone

4'

Fluoran Ring

If more than two claims are presented, only the first two claims will be graded. Any claim to a process for making or using a fluoran chromogenic compound, or to a solution or similar composition which includes a fluoran chromogenic compound, wiD receive no credit.

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PART ll (24 Points)

INSTRUCTIONS: Read the fact pattern given below. Answer the eight (8) multiple choice questions which follow the fact pattern. Each question is worth three (3) points. In answering the questions, do not assume any facts not presented in or specifically added to the fact pattern.

Homer Smith is a novelty dealer who owns a novelty gift shop in Boston, Massachusetts. While working in the back room of his shop, Smith came up with an idea for molding an edible drinking cup made of polychoc. Polychoc is a well known, commercially available, moldable chocolate. In his shop, Smith molded several cups and discovered that his drinking cups would maintain the temperature of hot coffee within ±3°C. for 15 minutes. He also discovered that polychoc is not soluble in hot coffee. Smith made his cups by pouring polychoc into a cup mold which also included a polypop handle positioned so that it would bond with the molded cup, and then cooling the mold to room temperature (24°C.). Polypop is a known edible material which is also known for its material strength. All of the above events occurred on August 1, 1989.

Smith was very excited about his new discovery. He considered his invention operative and complete in all respects for its intended purpose. He decided to promote his new drinking cup at an Octoberfest in Concord, New Hampshire on October 14, 1989. He sold, at a profit, several cups filled with hot coffee. Some of the cups sold were cylindrical in shape, i.e. mug type, others were shaped like a tea cup, i.e. conical. However, some customers soon returned to Smith's booth complaining that within an hour after purchasing the cups, the polychoc portion of the cup cracked spilling the contents. Smith decided to improve on his invention and make a crack-resistant polychoc drinking cup, something he believed would make him famous among his peers in the U.S. Novelty Guild.

On his return to Boston, he went to the Boston Public Library and found an article by Jones published in the Polychoc Journal on April 1, 1980. Jones disclosed that polychoc has excellent insulation properties. He further disclosed making his cups by pouring polychoc into a cup mold which also included a polypop handle positioned so that it would bond with the molded cup, and then cooling the mold to room temperature (24°C.). Jones used a spherical shaped cup mold and disclosed that polychoc could be used instead of polypop for the handle. However, Jones noted that the hot liquids could cause the polychoc portion of the container to crack within 30 minutes after the container is filled. Despite this article, Smith was determined to make a crack-resistant polychoc drinking cup.

He went back to his shop and began experimenting with polychoc. On April 17, 1990, after many experiments, he discovered a molding process which solved the cracking problem. He experimented with 100 cups made by his new molding process. When ftlled with hot liquids for ten hours, none of the new polychoc cups cracked or crumbled. He ftlled the cups with hot coffee, hot tea, hot water, hot chocolate, and hot wine. His new molding process consisted of heating polychoc to 11 0°C., pouring the polychoc into a cup mold which also included a polypop handle positioned so that it would bond to the molded cup, cooling the polychoc at a rate of 2°C. per minute for the frrst 10 minutes, and then rapidly cooling the mold to room temperature (24°C.) in one minute. After Smith concluded his experiments, he introduced his new cups to the public at a novelty convention in New York City on August 31, 1990. He sold over 1000 new cups and took orders from many dealers from Europe and the United States. The new cups he sold were conical and cylindrical in shape. His new cups were an instant commercial success.

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Smith prepared his own patent application. He executed the oath in his application on October 10, 1990. In his patent specification, Smith's only disclosure to the method of making his cups was as follows:

The cups are made by pouring polychoc into a cup mold which also includes a polypop handle positioned so that it will bond with the molded cup, and then cooling the mold to room temperature (24°C.). The composition of the handle is not critical to the invention. The molded cup can be either conical or cylindrical in shape.

Smith's patent specification concluded with the following four claims:

1. A drinking vessel comprising a cup having a handle.

2. A drinking vessel according to claim 1 wherein the cup comprises polychoc.

3. A drinking vessel according to claim 2 wherein the shape of the cup is conical.

4. A drinking vessel according to claim 1 wherein the shape of the cup is cylindrical.

Smith flled his patent application in the PTO on October 30, 1990 along with all necessary papers for claiming small entity status. On November 20, 1990, Smith received a notice from the PTO that the flling fee was insufficient. When Smith filed his application in the PTO, he had relied on an old fee schedule published in 1988. On November 26, 1990, Smith flled a timely response in the PTO to the notice which included a check for the surcharge and the balance due on the filing fee. The response also included an amendment adding the following new claim 5:

5. A method of making a drinking vessel made of polychoc comprising forming a cup by heating polychoc to a temperature of 110° C., pouring the polychoc into a cup mold, which also includes a polypop handle, cooling the mold at a rate of at least 2° C. per minute for 10 minutes and then rapidly cooling the mold to room temperature in one minute whereby the polypop handle is bonded to the cup.

You are a registered practitioner. On August 1, 1991, Smith came to you seeking legal advice. On July 29, 1991, he discovered a British patent to Nelson which was published on May 2, 1991. The patent is based on an application flled in Great Britain on July 3, 1986. The Nelson patent discloses and claims a process of making a cylindrical or conical cup made of polychoc using the identical process Smith discovered in his shop on April 17. 1990, except that Nelson used a polychoc handle instead of a polypop handle. The patent further discloses and claims a polychoc cup with a polychoc handle. The Nelson patent did not disclose or suggest making a cup having a polypop handle. Smith is very desirous of seeking patent protection for his invention because it is such a commercial success. He wants claim protection for his cup and his novel process. Smith knows of no other method of making a crack­resistant cup made of polychoc.

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Answer Questions 1-8 below and record your answers in SECTION 1 on your Answer Sheet. All of the questions are based on the fact pattern above. Each question is worth three (3) points. Unless otherwise directed, consider each question independently of the others. Questions are answered by darkening the circle on the Answer Sheet containing the letter corresponding to the letter preceding the answer chosen. Questions answered by darkening more than one circle will be considered as being incorrectly answered.

1. What claims in Smith's patent application would read on a china cup having a handle, a flat bottom and a conical or cylindrical shaped sidewall?

a) None of the claims. b) Claims 1 and 4 c) Claims 1, 3 and 4 d) Claims 1 - 4 e) All of the claims.

2. What claims in Smith's patent application would be barred from patent protection by 35 U.S.C. 102 in view of Smith's sales activities in New York on August 31, 1990?

a) None of the claims. b) Claims 1, 3, 4 and 5 c) Claims 1, 2, 3 and 5 d) Claims 1, 2 and 4 e) All of the claims.

3. Considering only the events set forth in the fact pattern, what claims in Smith's patent application would be unpatentable under both 35 U.S.C. 102 (a) and 102(b).

a) None of the claims. b) Claims 1 and 2 c) Claims 1, 2, 3 and 5 d) Claims 1 - 4 e) All of the claims

4. Has Smith satisfied the best mode requirement in his application? a) Yes, because Smith has disclosed and claimed the best cups embodied by his invention. b) Yes, because Smith has disclosed the best method known to him to support his claims. c) Yes, because the amendment Smith filed provides adequate disclosure of the best mode. d) No, because the patent specification as originally filed by Smith did not disclose the best

mode known to him. e) No, because Smith's patent specification does not have an enabling disclosure of how

to make a polychoc cup with a polypop handle.

5. In the absence of filing an antedating affidavit under 37 CFR 1.131, what claims in Smith's application would be barred from patent protection by 35 U .S.C. 102 in view of the Nelson patent?

a) None of the claims. b) Claims 1, 2 and 5 c) Claims 1 - 4 d) Claims 1, 2, 3 and 5 e) All of the claims.

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For Questions 6, 7 and 8 only, assume the following additional facts in the fact pattern.

You are considering filing a continuation-in-part application (CIP) on or before August 30, 1991. In the CIP application, the written disclosure of the invention will contain the following description of Smith's method for making his cups:

The polychoc cups of my invention are made by heating polychoc to a temperature of 11 ooc ., pouring polychoc into a cup mold which also includes a polypop handle positioned so that it will mold with the molded cup, cooling the mold at a rate of at least 2°C. per minute for 10 minutes, and then rapidly cooling the mold to room temperature (24°C.) in one minute. The composition of the handle is not critical to the invention. The molded cup can be either conical or cylindrical in shape.

The specification of the CIP application will conclude with the following claims:

1. A method of making a drinking vessel made of polychoc comprising the steps of heating polychoc to a temperature of 11 0°C., pouring the polychoc into a cup mold to form a cup, positioning a polypop handle in the cup mold to contact the polychoc, cooling the mold at a rate of at least 2°C. per minute for 10 minutes and then rapidly cooling the mold to room temperature in one minute whereby the polypop handle is bonded to the polychoc cup.

2. A drinking vessel made in accordance with the method of claim 1.

3. A drinking vessel according to claim 2 wherein the shape of the cup is conical.

4. A drinking vessel according to claim 2 wherein the shape of the cup is cylindrical.

An affidavit by Smith under 37 CFR 1.132 will also be filed clearly showing that the cups made by Smith's novel process are crack-resistant when compared to the cups made in accordance with the teachings of the Jones article. You will also file with the CIP specification an Information Disclosure Statement disclosing the Jones article, the Nelson patent and Smith's sales activities in New York and New Hampshire.

6. If the CIP application is flied on August 27, 1991, and in the absence of filing an antedating affidavit under 37 CFR 1.131, what claim or claims in the CIP would be barred from patent protection by 35 U.S.C. 102 in view of the Nelson patent?

a) None of the claims. b) Claims 1 and 2 c) Claims 2- 4 d) Claim 2 e) All of the claims.

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7. What date is claim 1 of the CIP entitled to in view of 35 U.S.C. 111 and 120? a) The date Smith executed the original application. b) The filing date of Smith's original application. c) The date Smith received notice from the PTO of insufficient fees. d) The date Smith filed his amendment in the PTO adding claim 5. e) The filing date of the CIP application.

8. If the CIP is filed on August 30, 1991, and the examiner rejects claims 2, 3 and 4 in the CIP under 35 U.S.C. 103 over Nelson in view of Jones because it would be within the skill of the art to modify Nelson to substitute a polypop handle for the polychoc handle in view of the teachings in Jones, can the rejection of claims 2, 3 and 4 be avoided?

a) No, because the Jones article is a statutory bar to claim 2. b) No, because claims 2, 3 and 4 are product-by-process claims. c) No, because claim 2 is an improper dependent claim. d) Yes, because an affidavit under 37 CFR 1.131 by Smith can be filed antedating the

Nelson patent. e) Yes, because the claims of the CIP are entitled to the benefit of the filing date of

Smith's original application filed on October 30, 1990.

GO TO PAGE 20 FOR PART ill

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PART ill (24 Points)

INSTRUCTIONS: Read the written description and claims below describing a method for increasing the height of solder bumps illustrated in Figures 1 and 2. For the purpose of this examination, unless otherwise directed, claims 1-8 are not to be considered part of the origi1Ull disclosure. Answer the eight (8) multiple choice questions which follow tbe claims. Each question is worth three (3) points.

10 36

34 32

28 ==~~~~ 24---. "--22 26 _____,_/ 18 ~"""""'""'~~~ ........ "' 12--P

Figure I (PRIOR ART)

20

Deposit a contact metal layer on a bonding pad of an elect rica I device

~r

Deposit a barrier metal layer on the contact layer

,, Deposit a solderable metal layer

on the barrier layer

, Immerse the device into molten

solder to deposit a solder bump on the solderable layer

,, Successively immerse the device

in the mo It en solder alloys having progressively lower melting points to increase the height of the solder

bump

Figure 2

METHOD FOR INCREASING THE HEIGHT OF SOLDER BUMPS

The instant invention is directed to fonning solder bumps on electrical contact pads on semiconductor chips. In particular, the invention is directed to techniques for increasing the height of such solder bumps.

BACKGROUND OF THE INVENTION

In fabricating semiconductor chips, it is known to fonn "solder bumps" on the metallized contact pads of the semiconductor chips. The solder bump is then exposed to an elevated temperature to reflow the solder to form the bond. Reflowed solder joints have been found to have high mechanical strength and are also quite ductile and are capable of absorbing stresses induced by thennal cycling. Because of the high strength and integrity of the resulting solder interconnections, device reliability has been report­ed to be higher than for wire-bonded interconnections.

It is desirable to deposit as much solder as possible on each bonding pad to provide good mechanical strength for the solder joint It is also important to have solder bumps with a maximum height in order to provide as much distance as possible between the semiconductor chip and the substrate to which the chip is bonded. This space precludes shorts between the chip and the substrate.

It is known to immerse the semiconductor chip in molten solder to fonn the solder bump. However, with immersion, the amount of solder deposited and hence the solder bump height appears to be limited by the bonding pad area wherein the larger bonding pad areas give rise to solder bumps of greater height While solder immersion has been found to yield less than desirable bump heights, it is the least expensive method of deposition.

Accordingly, there is a need for a method of increas­ing the height of solder bumps formed when using solder immersion techniques.

SUMMARY OF THE INVENTION

The instant invention overcomes the foregoing problems with a method of increasing the height of a solder bump comprising the steps of: sequentially applying a different molten solder alloy to the solder bump wherein each alloy has a lower melting temperature than the alloy previously applied.

Advantageously, this technique has resulted in substantial increase in the solder bump height associated with solder immersion of devices.

BRIEF DESCRIPTION OF THE DRAWINGS

FIG. 1 is a partial cross-sectional view of a semicon­ductor device with a homogenized solder bump thereon fonned in accordance with this invention.

21

FIG. 2 is a block diagram depicting the steps of the instant method.

DETAILED DESCRIPTION

FIG. 1 is a partial cross-sectional view of a solder bump 10 fonned on a semiconductor chip 12. The semiconductor chip 12 is comprised of a silicon base 14. A silicon dioxide layer 18 is deposited on the surface of the silicon base 14. An opening 22 is fonned in the oxide layer 18 to expose a portion of the base 14. Aluminum is then deposited through opening 22 and covering a pcrtion of silicon dioxide layer 18 to fonn aluminum bonding pad 24. During the aluminum deposition step, the aluminum interacts with the silicon base 14 to form the diffused region 16. A one micron thick passivation layer 26 is applied over the bonding pad 24. Compounds which have a common property that function in a manner to be used as the passivation layer are gallium nitride, silicon nitride, and silicon oxynitride. An opening 28 is fonned in the passivation layer to expose a portion of the bonding pad 24. The passivation layer provides mechanical protection and also protects chip 12 from flux and solder during the solder immersion step. It also acts as a barrier to prevent moisture penetration and the resulting corrosion of the underlying metallization.

An adhesion layer of nickel 32 is applied to the bonding pad 24, a diffusion barrier metal layer 34 is deposited over the adhesion layer 32. Finally, 8 solderable metal layer 36 is applied to the barrier layer 34. The layer 36 is critical for good adhesion of the solder bump 10 and, if thick enough, pennits the chip to withstand repeated soldering and resoldering reflow cycles. It is known to utilize 8 15 millimicron thick layer of copper. Following deposition of the solderable metal layer. a thin layer of gold (not shown in Figure 1) is frequently deposited to preserve its solderability.

After deposition of the layers 32, 34, and 36, the solder bump 10 is formed on layer 36 by solder immer­sion. A solder alloy of 95% lead and 5% tin is used almost universally for such solder bump interconnections. As outlined in the block diagram of FIG. 2, in order to increase the amount of solder deposited by immersion, successive layers of different molten solder alloys having . progressively lower melting points are deposited to fonn solder bump 10 to increase the height thereof to 8 prede­termined value. The solder is deposited in successive layers without melting the previously deposited layers. Once all the layers have been deposited, the chip is heated to 8 temperature sufficient to homogenize all the deposited alloys into 8 single solder alloy. Such a techniques has resulted in an increase of 27% to 76% in the height of the solder bump 10.

To achieve an overall solder alloy of 95% lead and 5% tin, the chip with the contact/diffusion/solderable metal layers is immersed in a solder alloy consisting of 99%

lead and 1% tin which has a melting point temperature of 327° C. This step is followed by an immersion in a 95% lead and 5% tin solder alloy which has a melting point temperature of 317° C., and then followed by a fmal immersion in a solder alloy consisting of 91% lead and 9% tin having a melting point temperature of 302° C. The solder bump thus formed is then heated to a temperature of 327° C. to form a homogeneous alloy as shown in FIG. 1 of 95% lead and 5% tin and a bump larger than that attainable with a single immersion.

What is claimed is:

1. A method of increasing the height of a bump of solder alloy deposited on a substrate, the steps comprising sequentially applying a plurality of different molten solder alloys to the solder alloy bump wherein each alloy has a higher melting temperature than the alloy previously applied.

2. The method as set forth in claim 1 which com­prises the further step of heating the sequentially applied alloys thereon to an elevated temperature to form a homogenous solder alloy.

3. A method of forming a solder bump on a bonding pad of a semiconductor chip by sequentially applying different solder alloys thereon, comprising the steps of:

(a) applying a passivation layer selected from the group consisting of gallium nitride, silicon nitride, silicon oxynitride and silicon dioxide on the semiconductor chip;

(b) forming an aperture in the passivation layer to expose the aluminum bonding pad therethrough;

(c) depositing a diffusion barrier layer to the ex­posed bonding pad;

(d) applying an adhesion layer over the diffusion layer;

(e) applying a solderable metal layer to the banier layer;

(f) forming a bump of solder alloy on the soldera­ble metal layer by solder immersion; and

(g) sequentially applying a plurality of different solder alloys to said bump, each alloy having a lower melting temperature than the alloy previously applied.

4. The method according to claims 3 or 5, further comprising the step of depositing a gold layer on the solderable metal layer prior to forming a solder bump thereon.

22

5. A method of increasing the height of a bump of solder alloy deposited on a substrate, the steps comprising sequentially applying a plurality of different molten solder alloys to the solder alloy bump, and then heating the se­quentially applied alloys thereon to an elevated tempera­ture to form a homogenous solder alloy.

6. The method as set forth in claim 5. The solder alloy bump is formed by solder immersion.

7. The method as set forth in claim 3 which com­prises the further step of heating the solder bump with the sequentially applied alloys thereon to a temperature to homogenize the deposited layers.

8. Any and all novel features described, referred to, exemplified, or shown.

Answer Questions 1-8 below by selecting the choice which makes the statement presented in each question a true statement. Record your answers in SECTION 2 on your Answer Sheet. Each question is worth three (3) points. Unless otherwise directed, consider each question independently of the others. Questions are answered by darkening the circle on the Answer Sheet containing the letter corresponding to the letter preceding the answer chosen. Questions answered by darkening more than one circle will be considered as being incorrectly answered.

1. In claim 1, the clause beginning with "wherein" is __ _ a) an improper "means" clause. b) improper because the clause defmes an old combination. c) improper because "wherein" must be --whereby--. d) a proper "means" clause. e) misdescriptive of the invention.

2. Claim 8 is ---a) not permitted because it is a non-statutory claim. b) not permitted because it uses the conjunctive "and". c) permitted even though the claim includes an alternative expression. d) permitted in the absence of prior art. e) permitted because it is fully supported by the patent specification.

3. Claim 2 _ a proper dependent claim because __ _ a) is not .. the process defmed by claim 1 precludes further steps. b) is not .. there is no antecedent basis for "the solder alloy bump". c) is not .. there is no antecedent support in claim 1 for "sequentially applied alloys." d) is .. it further limits claim 1. e) is . . there is antecedent basis in claim 1 for "solder immersion".

4. The Markush group in step (a) of claim 3 is __ _ a) improper because the term "consisting of' should be --comprising--. b) improper because it has not been established that gallium nitride, silicon nitride, silicon

oxynitride and silicon dioxide have a property in common. c) improper because under PTO policy, Markush claims of diminishing scope are not permitted. d) proper because gallium nitride, silicon nitride, silicon oxynitride and silicon dioxide are disclosed

in the patent specification. e) proper because the Markush groups are only permitted in chemical cases.

5. Claim 6 __ proper because __ _ a) is .. it is misdescriptive of the invention. b) is . . the scope of claim 5 is similar to the scope of claim 2. c) is not . . the claim does not conform to accepted PTO practice as set forth in the :MPEP. d) is not .. there is no antecedent basis for "solder alloy bump" in claim 5. e) is not .. the invention is narrower in scope than claim 5.

23

6. The order of steps (a) through (g) in claim 3 __ _ a) is proper because the order of the steps is a matter of logical convenience. b) is proper in the absence of prior art. c) is improper because the preamble of the claim does not specify that the steps be performed in

a specific order. d) is improper because the sequence is logical. e) lacks antecedent support in the written description of the invention and in the drawings.

7. Step (b) of claim 3 __ _ a) is unclear because the "aluminum bonding pad" lacks antecedent basis. b) is misdescriptive of the invention. c) precludes the formation of an aperture. d) should be step (a) of the claim. e) is indefinite because there is no support for the step in the written description .of the invention.

8. If claims 1-8 were presented as original claims in the specification, claim 4 would __ multiple dependent claim because __ _

a) be a proper .. the claim includes acceptable multiple dependent claim language. b) be a proper . . the claim further limits claim 2. c) not be a proper . . the claim depends upon a dependent claim. d) not be a proper .. the claim depends upon a succeeding claim. e) not be a proper .. the phrase "solderable metal layer" lacks antecedent basis in claim 3.

END OF THE AFTERNOON SECTION EXAMINATION

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