Test Number 014 Test Series 288 · NAME ____________________ __

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

REGISTRATION EXAMINATION FOR PATENT ATTORNEYS AND AGENTS

October 12, 1988

Morning Section (100 Points) Time: 3 Hours

DIRECTIONS

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

All questions must be answered on the Answer Sheet which is provided to you. You may use blank pages 22 and 23 of this test booklet. However, do not remove these pages from the test booklet. Use a No. 2 (or softer) lead pencil to record your answers on the Answer Sheet. Darken completely the circle corresponding to your answer. You must keep your mark within the circle. Stray marks may be counted as answers. Erase completely all marks except your answer.

This section of the examination consists of two subsections: Section 1 which consists of forty ( 40) true/false questions and Section 2 which consist of sixty (60) multiple choice questions. Do not assume any additional facts not presented in the questions. You may write anywhere in on this examination booklet. However, only answers recorded on the Answer Sheet will be graded. You must obtain a score of at least 70 points to pass this section of the examination.

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

OR TO BEGIN THE EXAMINATION

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SECTION 1: TRUE/FALSE

DIRECTIONS: Each correct answer is worth one ( 1) point. No points are awarded for incorrect answers or unanswered questions. The Questions must be answered in Section 1 of the Answer Sheet. If the answer to th~ question is true, darken completely the circle on your Answer Sheet hav­ing "A" inside the circle. If the question is false, darken "B". Do not darken circles having "C", "D", or "E" in them. Questions answered both true and false will be considered as being incor­rectly answered.

1. Upon receiving a restriction requirement, a petition to invoke the supervisory authority of the Commissioner to review of the examiner's re­quirement must be filed within the period set for response to the restriction in order to have the requirement reconsidered by the examiner.

2. Any paper filed in the PTO under the "Express Mail Post Office to Addressee" service will be accorded the date shown to be deposited as "Express Mail" with the U.S. Postal Service as the date of filing in the PTO unless the date of deposit is a Sunday or federal holiday within the District of Columbia.

3. The claims in an application were finally rejected on the basis of two primary references, "A" and "B", when considered with two secon­dary references, "C" and "D". The Board of Patent Appeals and Inteferences considered "A", "B" and "D" superfluous and affinned the examiner on just the "C" reference with a different view on what this reference teaches although the basic thrust of the Board's position and the examiner's rejection were the same. This is a new rejection under 37 CFR 1.196(b).

4. A Japanese patent application was filed on July

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4, 1987. In order to obtain the benefit of the prior filing date, the U.S. utility patent application must be filed no later than July 5, 1988 along with a claim for foreign priority and a certified copy of the Japanese filed application.

5. The oath or declaration in a reissue application can state that the applicant is aware of prior art not previously considered by the Office which "might" cause the examiner to deem the origi~al claims invalid, in lieu of stating that the original patent is wholly or partly inoperative or invalid.

6. Any member of the public can obtain the status (abandoned, pending, issued) of any U.S. patent application, if such member requests the status in writing and furnishes the filing date and serial number of such application.

7. Amended or new claims proposed during a reexamination proceeding may enlarge the scope of the claims of the original patent if the proceed­ing is initiated within two years from the grant of the original patent.

8. A Belgium patent, claiming priority of a U.S. patent application, is patented on July 1, 1986. A continuation-in-part of the U.S. patent application is filed in the U.S. Patent and Trademark Office on August 15, 1987 naming the same inventors as the Belgium patent. The Belgium patent cannot be prior art as to subject matter disclosed and claimed for the first time in the continuation-in-part appli­cation.

9. A patent application can be filed on an invention which has the military classification of "secret".

10. The residence and post office address of the patent applicant must appear in the oath or decla­ration if not stated elsewhere in the application.

11. Whoever invents any new, original and useful design for an article of manufacture may obtain a patent therefor. .

12. The PTO will, at the request of the applicant, send copies of the Office actions to both the applicant and his or her appointed attorney or agent.

13. A specification which contains a disclosure of utility which is commensurate in scope to the subject matter sought to be patented must be taken as sufficient to satisfy the utility requirement of 35 U.S.C. 101 for the entire claimed subject matter unless there is reason for one skilled in the art to question the objective truth of the statement of utility or its scope.

14. On April 21, 1987, the Lourie patent issued containing a single claim to a gizmo. The Suter application was still pending on that date, but on February 17, 1987, claims directed to substan­tially the same gizmo were cancelled by Suter in response to a restriction requirement. On May 16, 1988, Suter filed a paper in which he copied the single claim in the Lourie patent. The PTO prop­erly refused to institute an interference on the ground that the claim was copied from an issued patent more than one year after the patent issued, which was not permitted by 35 U.S.C. 135(b).

15. Any proposal by the applicant for amendment of the drawings to cure defects embodied in an amendment to the claims in response to an Office action is sufficient to correct the drawings when the application is ready for issue.

16. Failure to file an Appeal Brief within the permissible time does !J.Q1 result in abandonment of the application if any claims stand allowed.

17. If a petition to vacate a final rejection as premature is filed within two months from the date of the final rejection, the period for response to the final rejection is extended preventing abandon­ment of the application.

18. The parts of the application should appear in the following order: abstract, signed oath or dec-

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laration, drawings, title of the invention, cross­reference to related applications, brief summary of the invention, brief description of the drawings, detailed description of the invention, and claims.

19. On June 1, 1987, patent agent Sullivan filed a patent application under 35 U.S. C. 111 which was complete except that the declaration had not been signed. Sullivan received a paper from the PTO dated July 15, 1987 requiring that a signed decla­ration be filed within one month of that date. The inventor had departed on May 25, 1987 on an extended excursion in Tibet. He was not yet back and was unreachable. Consequently, Sullivan was unable to file the signed declaration. Sullivan received a paper from the PTO dated January 13, 1988 holding the application abandoned. The inventor returned on February 1, 1988. On Feb­ruary 2, 1988, Sullivan filed a petition to revive the application on the ground that the application was unintentionally abandoned. With the petition, Sullivan submitted a statement that the abandon­ment was unintentional, the signed declaration, and a certified check for the prescribed fee for revival of an unintentionally abandoned applica­tion. The application will be revived and granted a filing date of June 1, 1987.

20. Patent agent Wilson received a final rejection dated February 1, 1988 with a three month short­ened statutory period for response. The inventor is located in Italy. Wilson sent a copy of the final rejection to the inventor with a letter outlining alternative courses of action and costs and request­ing instructions for further handling of the applica­tion. Because of other commitments, the inventor was not able to send instructions promptly, and on June 15, 1988, Wilson received instructions to file a continuation application with extensively amended claims. On June 16, 1988, Wilson filed in the PTO all the papers set forth in 37 CFR 1.52 for filing of a "file wrapper continuation" applica­tion, including a check for the filing fee. Wilson filed no other papers in the PTO that day. This was sufficient to file a proper continuation of the fi­nally rejected application.

21. If the first maintenance fee for a patent is not paid by the fourth anniversary of the patent issue date, the fee will be accepted up to six months late upon submission of the required amount of the n1aintenance fee, a surcharge, and a paper signed by a person registered to practice before the PTO and showing that the failure to pay the mainte­nance fee on time was unintentional.

22. Once the examiner has determined that a petitioner has made a prima facie showing that the claimed subject matter of a pending patent appli­cation is barred by a prior public use, the PTO must institute a public use proceeding.

Answer questions 23 and 24 based on the fact pattern set forth in the following paragraph. Consider each question independently of the other.

Company A and Company B, which are located and operate entirely within the United States, conducted a joint research project for sevi~ral years. Each agreed to pay 50% of the ex pens· ·s and to keep all technical information generateu ~y the project in confidence and not to disclose any information without the consent of the other. After the project ended, both companies began using the information generated from the project as t ·ade secrets. Company B, without consulting Com­pany A, filed a patent application in the PTO in the name of B 's employee, X. The application dis­closes and claims a new product P.

23. While X's application is still pending, Com­pany A receives information that Company B has filed the X application on P. Company A files a protest to issuance of a patent on X's application and submits a document in a sealed envelope with a notation that it contains confidential trade secret information. The examiner may properly refuse to consider the document until the protestor agrees to allow the document to become a part of the perma­nent file that will be open to the public upon issuance of the patent.

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24. More than one year prior to the filing date of X's application, Company B signed a contract to supply P for Company A's commercial use. On the date of the contract, development work on P was complete. No deliveries of P were made until less than one year prior to the filing date of X's application. Under the terms of the joint research project, B could sell P only to Company A. Company B 's sales to Company A constitute an "on sale" bar to X's attempt to claim P.

25. An affidavit or declaration may be filed to traverse a rejection that the claimed invention is frivolous or injurious to the public hea l.th or mor­als.

26. An amendment in response to an Office ac'.1on should not introduce new matter into the d1 ..;clo­sure of the invention.

27. An interview with an examiner to discuss the patentability of a pending original application normally may be had before the first Office action.

28. A written notice of any award by an arbitrator pursuant to 35 U.S.C. 294 must be filed in the PTO by the patentee, assignee or licensee of the pat­entee.

29. The statutory period for payment of the issue fee may be extended for up to six months from the date of the Notice of Allowance upon payment of an extension of time fee.

30. The specification can be objected to as failing to provide proper antecedent basis for claimed subject matter.

31. The PTO rules of practice require that all known inventors be named to obtain a filing date when filing an application without an oath.

32. The claims in a proper continuation or divi­sional application filed under37 CFR 1.60must be

drawn to only subject matter disclosed and claimed in the parent application.

33. Able filed a British application on February 1, 1984 describing a new semiconductor memory device. On June 6, 1984, he filed a second British application describing the novel method of mak­ing the semiconductor memory device. On Janu­ary 31, 1985, Able filed a corresponding U.S. application describing and claiming the device and method. During prosecution of the U.S. application, the examiner rejected all claims on a U.S. patent to Baker. The Baker patent has an effective filing date of April 10, 1984, and de­scribes the same device and n1ethod as is claimed in Able's application. Able can overcome the rejection of all the claims by perfecting his claim for priority under 35 U.S. C. 119 and filing certi­fied copies of both of his British applications.

34. Your client, Super Computer, created a very attractive typeface design, and a computer pro­gram has been developed to produce it. The program can be loaded into any computer system to print and display text in this typeface design. The typeface design can be protected by a design patent.

35. A decision by the Board of Patent Appeals and Interferences sustaining a final rejection may be appealed to the Court of Appeals for the Federal Circuit or to any U.S. District Court.

36. There is no need to get a license for foreign filing of a patent application in Japan where the invention disclosed and claimed is the result of a joint research effort between a U.S. and Japanese team of scientists in Portland, Oregon.

37. Research activities were performed by Navy scientists at Subic Bay, a U.S. Naval Base located in the Philippines. All scientists are U.S. citizens and employed by the U.S. Dept. of the Navy. In an interference, the proof that the scientists were U.S. citizens must be made in a preliminary state­ment.

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38. Practitioner George Rushing files a patent application and forgets to state in the oath that the inventor is a sole inventor of the invention claimed. Rushing can submit an amendment to the oath directing the insertion of a sentence stating that the inventor is a sole inventor.

39. Thenonobviousnessrequirementof35 U.S.C. 103 does not have to be met by design patent applicants.

40. Jim, a patent agent who works for Company A, is responsible for prosecuting an application claim­ing a superconductor. At lunch one day, he was talking to Sarah, another patent agent who works for Company B, about the superconductor appli­cation. During the conversation, Sarah told Jim about a reference. Jim returned to his office after lunch, obtained a copy of the reference, read the reference, and realized that the reference was very relevant to the invention claimed in the supercon­ductor patent application. Jim was not aware of the reference until his conversation with Sarah. The reference was clearly more relevant than the prior art cited by the PTO during prosecution of the superconductor application. Sarah has a duty under 37 CFR 1.56 to disclose the reference to the PTO examiner handling Jim's application.

GO TO SECTION 2 ONPAGE6

SECTION 2: MULTIPLE CHOICE

DIRECTIONS: Each correct answer is worth one (1) point. There is only one correct answer to each question. Select the answer which is the MOST CORRECT. When several answers are correct and "Each of the above", "(a) or (b)", "(a) and (b)", or the like is the most correct answer because it groups several correct answers, no other answer except the most correct answer will be considered correct for receiving credit for the question. No points are awarded for incorrect answers or unanswered questions. The questions must be answered on Section 2 of the Answer Sheet. Questions are answered by darkening the circle on the Answer Sheet containing the letter corresponding to the letter preceding the answer chosen. Questions answered by darkening more than one circle will be considered as being incor­rectly answered.

1. Which of the following staten1ents is ~? a) Non-obviousness cannot be established by

attacking references individually where the rejec­tion is based upon the teachings of a combination of references.

b) Focusing on the obviousness of substitu­tions and differences instead of on the invention as a whole is a legally improper way to simplify the difficult deterrnination of obviousness.

c) Obviousness cannot be established by com­bining the teachings of the prior art to produce the claimed invention, absent some teaching, sugges­tion or incentive supporting the combination.

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

2. Your client has a fire retardant product sold under the registered trademark "Fireout ®." A patent to Jones, assigned to the Barnburner Com­pany, has issued which improperly refers to your client's registered trademark product as a "fireout

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type extinguisher." You check the file history of the patent and find that Jones originally used the tenn in the application as pri'nted in the patent. Which of the following would be most successful approach to correct the tenn?

a) File a petition with the Commissioner to reprint the patent identifying "Fireout ®" as a trademark.

b) File a certificate of correction to change "fireout type extinguisher" to "Fireout ®" and notify the patentee.

c) File a certificate of correction and show that the mistake is of a clerical nature and occurred in good faith and that changing "fireout type extin­guisher" to "Fireout ®" would not be new matter.

d) File a reissue application with an amend­ment.

e) Send a letter to the PTO and Jones complain­ing about the trademark misuse.

3. Which of the following must be included in an oath or declaration accompanying a patent appli­cation?

a) The name of the party to whom the applica­tion is assigned.

b) Whether or not a prior art search has been conducted.

c) The identification of the foreign application for patent or inventor's certificate on which prior­ity is claimed when foreign priority is being claimed.

d) The expected class and subclass where the application would be examined.

e) None of the above.

4. The examiner in an Office action dated August 3, 1988, made a requirement for restriction and set a shortened statutory period of one month for a response. What would be the very last date on which a complete proper response to the action could be filed with any appropriate extension of time fees to avoid abandonment of the applica­tion?

a) October 3, 1988 b) November 3, 1988 c) December 3, 1988 d) January 3, 1989 e) February 3, 1989

5. A Japanese patent application was filed on July 1, 1987 covering an invention described in a paper published on July 15, 1987. In order to obtain the benefit of the prior Japanese filing date, the last date on which a U.S. patent application for the same invention must be filed is:

a) June 30, 1988 b) July 1, 1988 c) July 14, 1988 d) July 15, 1988 e) None of the above

6. A patent application was filed on July 1, 1988. Which of the following is or are required to be filed in order to obtain a filing date of July 1, 1988?

a) Oath or declaration. b) Filing fee. c) Specification, claims, and drawings (if nec­

essary). d) Power of attorney. e) All of the above.

7. Which of the following statements concern­ing plant applications is false?

a) A plant application does not have to set forth the best mode contemplated by the inventor of car­rying out the invention.

b) The specification must contain as full and complete a disclosure as possible of the plant.

c) The application is not permitted to have more than one claim.

d) Plant drawings may be in permanent water color or oils.

e) Two copies of the specification must be filed.

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8. When new or amended claims are offered in a reexamination proceeding, which of the following will not be considered?

a) Printed publications. b) Public use. c) New matter. d) Prior art patents. e) Breadth of the claim.

9. Under which of the following fact patterns would Johnson not be precluded from obtaining a U.S. patent?

a) The invention was publicly used in France one month before Johnson filed the p2 tent applica­tion in the U.S.

b) The invention was described in a prin·.ed publication in France eleven months be ~ore Johnson, a U.S. inventor, conceived his invf ntion in the U.S.

c) Johnson, a U.S. citizen, accidentally saw a demonstration of an important secret inve,ntion in the Soviet Union. He was the first person to bring the invention to the U.S. He filed a U.S. patent application on it at the request of his employer, a U.S. government contractor.

d) An Australian published an article on her invention in the Australian Chemical News one day before Johnson, conceived and reduced to practice the same invention at Stanford Univer­sity. Johnson filed his U.S. patent application on the invention six months later. Johnson argued that the Australian publication was not available in the U.S. until after he made his invention.

e) Johnson's widow, after going through Johnson's papers, filed a U.S. patent applica­tion in Johnson's name on an invention Johnson had conceived and reduced to practice ten years before he died. Johnson took no further action for ten years to patent the invention. Smith filed a U.S. patent application on the same invention. An interference was declared be­tween the Johnson and Smith applications.

10. You are a registered patent agent prosecuting a number of patent applications in the PTO. You have just moved your office and need to change your address. Which of the following would be the most proper procedure to notify the PTO of your change of address?

a) File a notice of change of address in each application or patented file.

b) File a notice of change of address in each application or patented file and also notify the Office of Enrollment and Discipline by letter of your change of address.

c) Prepare an original notice of change of address. Send the original notice to the Office of Enrollment and Discipline and file copies of the original notice in each application or patented file. The notice must include an authorization for the public to inspect and copy the original notice and include a statement that the original notice is on file in the Office of Enrollment and Discipline.

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

11. If a U.S. patent application is classified by a U.S. Government defense agency as "secret" for national security reasons, which of the following statements is~?

a) The PTO will not examine the patent appli­cation.

b) An applicant is not entitled to any compen­sation for damage caused by the order of secrecy.

c) The application shall continue to be kept secret indefinitely until the Commissioner rescinds the order after being requested to do so by the applicant.

d) A secret application cannot be granted a license to be filed in a foreign country.

e) The PTO will examine the patent applica­tion. When the application is found to be in condition for allowance except for the secrecy order, the applicant will be so notified.

12. Smith has been requested by a client to draft and file a patent application on an invention that consists of a combination of mechanical elements.

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Before doing so, Smith directs his Washington associate to conduct a prior art search. The search is completed and yields 36 references, two of which are highly pertinent to the entire combina­tion, eight are pertinent in that they show details of some individual elements of the combination, and the remaining twenty-six are much less relevant in all respects. Smith decides to discuss the two highly pertinent references in the body of his patent specification. Which of the following best describes the best approach for Smith to take with regard to disclosing to the PTO information con­cerning the references located during the search?

a) Smith should file with his application copies of all thirty-six references, together with an Infor­mation Disclosure Statement discussing in detail each reference located during the search.

b) Smith should file copies of the eight perti­nent references not discussed· in his application along with brief comments about each of the eight in an Information Disclosure Statement filed with his application.

c) Smith should prepare an Information Dis­closure Statement on the eight pertinent refer­ences, but delay its filing until after a first Office action has been received, as some of the references may not be as pertinent as prior art located by the PTO examiner.

d) Smith should with his application submit copies of all ten pertinent references including the two discussed in the body of this application, together with an Information Disclosure State­ment in which a brief statement of relevancy is provided for the eight references not discussed in the specification.

e) Smith should file copies of the references and an Information Disclosure Statement as in d) above, but wait at least six months after filing his application before doing so.

13. Which of the following statements about design applications and patents is~?

a) Photographs are always acceptable in place of conventional drawings in design cases.

b) The term of a design patent is 14 years.

c) Foreign priority rights under 35 U.S.C. 119 expire after six months in design cases.

d) Since design patents deal with appearance only, the test applied by the PTO examiner in determining the question of novelty is identity or similarity of appearance.

e) A design patent is limited to one claim.

14. The Anderson patent contains a single claim to a method of forming a coating which, among other things, involves heating the coating in an inert atmosphere for 40 minutes at a temperature below 325°-380° F. The Foley application dis­closes the same process but the heating tempera­ture range disclosed is 330°-390° F. Foley does not disclose any temperatures outside this range. In an interference, which of the following statements, if any, would be proper to set up an interference?

a) The count should cover 325°-380° F. and Foley should add a claim to his application cover­ing 325°-380° F.

b) The count should cover 325°-390° F. and Foley should add a claim to his application cover­ing 330°-390° F.

c) The count should cover 330°-390° F. and Foley should add a claim to his application cover­ing 330°-390° F.

d) The count should cover 325°-390° F. and Foley should add a claim to his application cover­ing 325°-390° F.

e) None of the above.

15. The signature of a practitioner on a paper filed in the PTO on behalf of an applicant constitutes a certificate for all of the following except :

a) The paper has been read by the practitioner. b) There is no further information available on

the subject addressed in the paper. c) The paper is not filed for purposes of delay. d) There is good ground to support the contents

of the paper. e) The paper's filing is authorized.

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16. In an Office action dated May 12, 19 8 8, claims 1-4 of the Jenkins application were rejected as failing to comply with 35 U.S.C. 112, first para­graph, and as being obvious under 35 U.S.C. 103 over a combination of the Adler and Jakes refer­ences. The examiner set a three (3) month short­ened statutory period for response to the Office action. On July 25, 1988, a second Office action was issued in the Jenkins application, suggesting that Jenkins copy a claim for purposes of interfer­ence and giving Jenkins until August 25, 1988 to do so. Which of the following best describes what step or steps must be taken by Jenkins to avoid loss of any of his rights, either in the potential interfer­ence or in the application itself?

a) He must copy the claim and also respond to both the May 12th Office action by August 25, 1988.

b) He need only copy the claim by August 25, 1988.

c) He must copy the claim by August 25, 1988 and respond to the May 12th Office action by August 12, 1988.

d) He need only respond to the May 12th Office action by August 12, 1988.

e) None of the above.

17. Which of the following is false? a) Absolute safety of a claim to a drug is not

necessary to satisfy 35 U.S.C. 101. b) Utility of a claimed invention must be

definite and in currently available form. c) A claim is unpatentable under 35 U.S.C. 101

if it includes a step or element directed to a law of nature, mathematical algorithm, formula or com­puter program.

d) The PTO, in deciding utility issues under 35 U.S.C. 101, may avail itself of assistance and information from the Secretary of Health and Human Services.

e) Proof of the disclosed utility necessary to satisfy 35 U.S.C. 101 may be submitted to the PTO after the application has been filed without violat­ing the rule against introducing new matter into an application.

18. As a patent agent, you may petition to with­draw from representing a client in matters pending before the PTO. Which one of the following circumstances is !lQ1 an appropriate good cause for petitioning to withdraw?

a) In an interference proceeding when your client insists upon you filing a paper alleging in­equitable conduct on the part of the opposing party when there is insufficient evidence of such con­duct.

b) Your client for whom you have filed a f~rst patent application, insists that, against your pro­fessional judgment and advise, a second applica­tion be filed on subject matter you believe to be. unpatentable.

c) Your client has not paid his bill for your services for an unreasonable period of time.

d) Your client has refused to provide you with infom1ation you n1ust have to respond to an Office action, making it impossible for you to file a proper response.

e) Your client advises you that, in several ap­plications, he has filed through your office, he has inadvertently nan1ed as joint inventors certain individuals who were not in fact inventors.

19. Which of the following statements is or are true?

a) In order to appeal to the Board of Appeals and Patent Interferences from an examiner's re­jection, one or more claims must be twice rejected.

b) Information would be "material" within the definition of 35 CFR 1.56 if a reasonable examiner properly rejected one or more claims based on such information.

c) Reissue is not available to permit correction of an issued patent which fails to disclose informa­tion which had been deemed by the inventor to be the best mode for carrying out his invention prior to his filing date, provided the failure to disclose such information took place without deceptive intent.

d) An application may be entitled to the benefit of the filing date of an earlier filed and co pending

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U.S. application naming the same inventors if it contains or is amended to contain a specific refer­ence to the earlier filed application, provided the earlier filed application contains support for the claims of the later filed application under 35 U.S.C. 112, first and second paragraphs.

e) All of the above.

20. On February 3, 1987, patent agent Anderson filed in the PTO a specification describing and claiming an invention, and a declaration comply­ing with 37 CFR 1.63, but unsigned. The applica­tion was filed with seven (7) claims. On February 26, 1987, Anderson received a paper from the PTO requiring submission of a signed declaration, payment of a filing fee, and payment of a sur­charge. Anderson submitted these on March 30, 1987. On June 24, 1988, Anderson received an Office action from the examiner requiring submis­sion of a drawing since the nature of the invention requires a drawing, although a drawing was not necessary for understanding the invention. The action also required election between claims 1-4 and claims 5-7. The examiner set a two month period for response. On September 14, 1984, Anderson submitted to the PTO a drawing, and an amendment, amending the specification as neces­sary to describe the drawing and electing claims 1-4. The filing date of the application is:

a) February 3, 1987 b) February 26, 1987 c) March 30, 1987 d) June 24, 1988 e) September 14, 1988

21. Once the issue fee has been paid and the patent to be issued has received an issue date and patent number, which of the following will D..Q1 result in the application being withdrawn from issue?

a) Mistake on the part of the PTO. b) A violation of 37 CFR 1.56. c) The filing of a continuation application. d) Discovery of a reference which anticipates

a claim in the specification to be issued. e) Declaration of an interference.

22. Wilson is the attorney of record in a patent application filed on behalf of inventor Jones. The Jones application is pending before the PTO. Jones has assigned a SOo/o interest in the application to Smith. An applicant for patent may request at any time during the pendency of the patent application that the specification and drawings be published as a statutory invention registration. If Jones desires a statutory invention registration, who must sign the request?

a) Jones b) Wilson c) Smith d) (a) or (b)

e) (b) or (c)

23. A United States patent issued from an applica­tion filed December 2, 1980. In order to maintain the patent for the full seventeen year term, when must maintenance fees be paid, without payment of a surcharge or filing of any petition?

a) During the period extending from 3 years through 3 years and 6 months after the grant of the patent.

b) During the period extending from 3 years through 3 years and 6 months after the grant of the patent and the period extending from 7 years through 7 years and 6 months after the grant of the patent.

c) During the period extending from 3 years through 3 years and 6 months after the grant of the patent, the period extending from 7 years through 7 years and 6 months after the grant of the patent, and the period extending from 11 years 6 months after the grant of the patent.

d) (a), (b) or (c). e) None of the above.

24. On December 1, 1987, patent agent Bowman, who worked in the Patent Department of XYZ Corporation, completed a new patent application

under 35 U.S.C. 111, including a paper having on it the number of an "Express Mail" mailing label,

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and a certificate of mailing by "Express Mail" mailing label, and a certificate of mailing by "Express Mail" signed by Bowman and stating that the application was being mailed December 1, 1987 by "Express Mail". Patent agent Bowman's secretary promptly placed all these papers in an envelope with the "Express Mail" mailing label on it, addressed the envelope to The Commissioner of Patents and Trademarks, Washington, DC 20231, and took the envelope to the XYZ Corporation Mailroom. The mailroom clerk unintentionally placed the envelope in a remote comer of the mailroom and did not find it again until February 25, 1988. Without telling anyone about it, the clerk took the envelope to the Post Office and mailed it by "Express Mail" on that day. Under normal "Express Mail" procedures, the envelope mailed by "Express Mail" would have reached the PTO on the day after mailing. However, due to an unusual blizzard, the application was not received by the PTO until March 1, 1988. What filing date will be accorded to the application?

a) December 1, 1987 b) December 2, 1987 c) February 25, 1988 d) February 16, 1988 e) March 1, 1988

25. A party seeking to raise a public use with respect to a pending application file of another party is entitled to inspect the application file if:

a) He is a party to an interference involving the pending application.

b) He is seeking to determine whether such proceeding was instituted.

c) The application is for a reissue of a patent. d) He is seeking to determine if a supplement

to the petition is appropriate. e) (a) and (c).

26. Mary has a business which employs 450 people. She is the president of the company while her husband is the vice-president. An employee of Mary's company has invented a fuel injection system which Mary wants to patent. She obtains your name from the list of attorneys and agents roster published by the Government Printing Of­fice. In her initial consultation with you in your office, she tells you that her company has negoti­ated within the last 6 m~nths and signed license agreements with Ford Motor Company and Gen­eral Motors to use the novel fuel injection system in their automobiles. Her company stands to make a substantial profit from the invention. Which of the following would be proper advice to ~ary concerning her qualification to file a patent appli­cation as a small entity for purposes of paying lower fees?

a) She does not qualify as a small business concern.

b) She is entitled to small entity fees because her company only employs 450 people.

c) She is entitled to small entity fees because her company is a nonprofit organization.

d) She is entitled to small entity status because she is an independent inventor.

e) She is a small business concern but does not qualify for small entity fees.

27. Which of the following is an example of a basis for deferring the grant of a patent up to one month after the issue fee has been timely paid?

a) Negotiating a license. b) Filing a foreign counterpart application. c) Collecting data for filing a continuation-in­

part application. d) Desire for simultaneous issue of a related

application. e) None of the above.

28. Which of the following petitions may not be made to the Commissioner?

a) Petition to review, an action appealable to the Board of Appeals.

b) Petition to suspend the rules.

12

c) Petition to expunge papers from a patent ap­plication.

d) Petition to withdraw a patent application from issue.

e) Petition to make an application special because of applicant's age.

29. Which of the following would nQ1 be a proper ground for the examiner to suspend prosecution of a patent application?

a) Where one of several applications of the same inventor which contain overlapping claims is involved in an interference, and the claims of the applications not involved in the interference are rejected over the counts of the interference, action may be suspended on the applications not in­volved in the interference pending the final deter­mination of the interference.

b) Where publication of the invention by granting a patent application owned by the United States Government might be detrimental to the public safety or defense, the Commissioner may order suspension of prosecution of the patent ap­plication.

c) For good and sufficient reasons given in a request by a patent applicant even though there is an outstanding Office action.

d) Where the PTO has accepted a request to publish a statutory invention registration except for purposes relating to patent interference pro­ceedings.

e) None of the above.

30. In rejecting claims for want of novelty or for obviousness, which of the following may the examiner cite in support of his rejection?

a) A competitor's earlier filed pending U.S. ap­plication.

b) An earlier filed abandoned U.S. application, (but only to establish the level of ordinary skill in the art).

c) Applicant's public use anywhere in the world.

d) Applicant's offer for sale anywhere in the world.

e) Facts within the personal knowledge of the examiner.

31. You are prosecuting a patent application which has 10 claims. After a first action on the merits, you file an amendment canceling claims 2 and 5 and adding four new claims. The amend­ment must:

a) Number the new claims as claims 11, 12, 13 and 14, respectively.

b) Renumber all of the claims in the order in which they appear.

c) Include instructions to substitute one new claim as claim 2 and another as claim 5 and assign claim numbers 11 and 12 to the remaining two new claims.

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

32. In order to establish that co-pending applica­tions are commonly owned by the same person or organization, or subject to an qbligation o;~ assign­ment to the same person or organization, a1 · ..ippli­cant may:

a) Refer to assignments recorded in the PTO in both applications which convey the entire rigl'tS to the same person or organization.

b) Submitcopiesofunrecorded assignn1entsin both applications which convey the entire rights to the same person or organization.

c) Submit a declaration by the common owner stating facts to explain why the declarant believes there is common ownership.

d) Submit any evidence which establishes common ownership of both applications.

e) All of the above.

33. Which of the following documents can be recorded in the Assignment Branch of the PTO?

a) Power of attorney. b) License agreement written in Japanese. c) Conditional assignment.

13

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

34. Who institutes a disciplinary proceeding to suspend or exclude a practitioner from practice before the PTO?

a) The Commissioner of Patents & Trade-marks.

b) The Director of Enrollment and Discipline. c) The Solicitor. d) The Committee on Enrollment. e) The Committee on Discipline.

35. Which of the following statement~ regarding amendments and responses is false?

a) Upon failure of an applicant to prosecute r.n application within six months after notice of m J.il­ing of an Office action, the application is reg? ;ded as abandoned unless it can be shown that the delay was unavoidable.

b) The Commissioner can set a time to n~spond to an Office action of less than twenty-five (25) days.

c) Amendments to patent applications are kept in confidence by the PTO and no information con­cerning the amendment is given without authority of the applicant.

d) The applicant may amend an application before the first examination.

e) All of the above.

36. After a final rejection, which of the following an1endments filed by applicant would be proper?

a) An amendment cancelling rejected claims, but not all claims in the application.

b) An amendment presenting rejected claims in better form for consideration on appeal.

c) An amendment complying with any require­ment as to form.

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

37. In a patent application you are handling, the primary examiner has made a final rejection which is clearly premature. Which of the following would be a proper course of action to take to withdraw the final rejection?

a) File a Notice of Appeal and seek review before the Board of Patent Appeals and Interfer­ences of the prematureness of his final rejection.

b) File a request to the primary examiner to recommend the finality of the rejection be with­drawn.

c) File a petition to invoke the supervisory au­thority of the Commissioner.

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

38. Which of the following statements concerning reexamination is false?

a) Upon the conclusion of reexamination pro­ceedings, the Commissioner will issue a certifi­cate setting forth the results of the reexamination proceeding.

b) Interviews for the discussion of the patenta­bility of claims in patents involved in reexamina­tion proceedings will not be had prior to the first Office action.

c) If a patent in the process of reexamination is involved in litigation, the Commissioner lacks the authority to stay the reexamination proceeding.

d) In every interview with an examiner in a reexamination proceeding, a complete written statement of the reasons presented at the interview as warranting favorable action must be filed by the patent owner.

e) None of the above.

39. A patent application may be advanced out-of­turn for examination, if which of the following conditions exist?

a) The inventor is over 65, or in poor health. b) The invention will materially contribute to

the national defense. c) The invention will materially enhance the

quality of the environment. d) (a) or (c). e) (a), (b) or (c).

14

40. When one joint inventor refuses to sign a patent application or cannot be found or reached, the remaining inventors can file the application on behalf of all of the inventors. Which of the following procedures would be proper?

a) Filing an oath or declaration attached to the application signed by the remaining inventors, wherein only the remaining inventors are named as inventors, and paying a required petition fee.

b) Filing a petition with proof of the pertinent facts and stating the last known address of the omitted inventor and paying the required petition fee.

c) One of the remaining inventors sign the name of the omitted inventor on the oath or decla­ration which has been signed by the remaining inventors and is attached to the patent application followed by a "slash" and the initials of the inven­tor who has signed the omitted inventor's name, file a petition with proof of the pertinent facts, state the last known address of the omitted inventor, and pay the required petition fee.

d) Filing an oath or declaration attached to the application wherein a registered practitioner has signed the name of each inventor on the declara­tion followed by a "slash", the initials of the practitioner, and paying the required petition fee.

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

41. You are a registered patent agent and receive a specification and claims to be filed in the PTO from a foreign agent. You imn1ediately notice that the foreign agent used the wrong declaration/ power of attorney form. The form designates another registered patent agent to represent the applicant. The priority deadline is today, October 12, 1988, and there is no time to contact the foreign agent to get a new declaration/power of attorney executed. Which of the following would be the proper course of action to file the application and obtain a filing date of October 12, 1988?

a) File the specification and claims without the declaration/power of attorney form in the PTO in the name of the actual inventors.

b) File the specification, claims and the decla­ration/power of attorney form in the PTO in the

name of the actual inventors. Subsequently file a paper from the inventors revoking the power of attorney to the other registered patent agent and requesting power of attorney to you to prosecute the application.

c) Amend the declaration/power of attorney form to substitute your name for the other named patent agent and file the amended declaration/ power of attorney form and the specification and claims in the PTO in the name of the actual inventors.

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

42. On November 6, 1987, I.M. Lax prepared and filed an amendment to a first Office action, but failed to include an Information Disclosure State­ment that included the results of a search by the European Patent Office. On December 2, 1987, a Notice of Allowance was received, and no art was cited. Which of the following should Lax do to protect the client's interest as well as his own?

a) File an Information Disclosure Statement prior to the due date for payment of issue fee, listing and discussing only those references con­sidered material, together with a statement as to why the references were not submitted earlier.

b) File the results of the entire European Search Report together with copies of the references at any time prior to issuance of the patent, and request that they be placed in the file wrapper.

c) Immediately request an interview with the examiner in order to discuss the pertinency of the references.

d) File a timely 37 CFR 1.62 continuation ap­plication together with an Information Disclosure Statement and copies of the references.

e) (a) or (c).

43. You are prosecuting an application in which a response was due on September9, 1988. You plan to file a continuation-in-part (CIP) application under 35 U.S.C. 120. What would be the best course of action to take today, October 12, 1988, to file the CIP application?

15

a) Immediately file a complete response in the parent.

b) Obtain an extension of time in the parent. c) Immediately file the CIP application. d) File a two month extension of time in the

parent and file the CIP application. e) Obtain an extension of time and then file a

complete response in the parent prior to filing the CIP application.

44. A utility patent application on a chair was filed by the XYZ law firm. The applicant moved to another town and decided to change patent attor­neys. The new attorney looked through the other attorney's file on the invention and decided to submit evidence related to a possible on sale of the chair more than one year prior to the filing of the application. The new attorney's actions should include:

a) Conduct a novelty search in the PTO. b) Inspect all the inventor's records relevant to

this situation and file documents with the PTO. c) Inform the PTO of this evidence only if there

is a clear and convincing showing of an on sale. d) (a) and (b). e) (b) and (c).

45. Which of the following statements is true? a) A protestor may submit to the PTO any in­

formation demonstrating that a pending applica­tion does not comply with the statutory require­ments of patentability.

b) A protestor is normally limited to one sub­mission and may not submit arguments relating to an Office action, but the protestor may make a second submission raising a new issue that could not have been earlier presented.

c) A protestor should include copies of each prior art document relied upon; however, a protest without such documents will not necessarily be ig­nored.

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

46. All papers which are to become part of the permanent records of the PTO must be:

a) Legibly written in permanent ink. b) Typed in permanent ink. c) Printed in permanent ink. d) (a), or (b). e) (a), (b) or (c).

47. A final rejection of all of the claims in your client's patent application was mailed on Septem­ber 6, 1988. The examiner set a three (3) month shortened statutory period for response. In an effort to advance the prosecution and place the claims in condition for allowance, you prepare and file an amendment in the PTO on September 21, 1988. The examiner mails an Advisory Action on October 7, 1988 advising that your amendment was not entered and that all of the claims stand finally rejected. What is the last date in which the Notice of Appeal can be filed to avoid abandon­ment of his application without payment of any extension of time fee?

a) December 6, 1988 b) December 21, 1988 c) January 7, 19 8 9 d) April 6, 1989 e) April 7, 1989

48. Which of the following practices, if any, is proper for a practitioner who wants to expedite preparation of an oath or declaration?

a) Obtain the inventor's signature on the oath before the specification is written, and summarize the contents of the specification in a telephone conversation with the inventor before the applica­tion is filed.

b) Obtain the inventor's signature on the oath after the specification has been written but before the claims have been drafted.

c) If the application papers are changed after the inventor signs the oath or declaration but before the filing of the application, add a note to the oath or declaration stating "application papers amended after signing".

16

d) If the inventor does not understand English, and only an English language oath is available, read the text of the oath aloud to the inventor in the language the inventor understands, and then have the inventor sign the English language oath or dec­laration.

e) None of the above.

49. Which of the following is a proper reason to file a reissue application?

a) To bring the examiner's attention to prior art

that was withheld from the examiner in violation of 37 CFR 1.56 during the prosecution of the application on which the original patent was is­sued.

b) To correct misjoinder of inventors where 35 U.S.C. 256 is inadequate.

c) To add new matter to the specification that was inadvertently omitted from the original pat­ent.

d) To extend the expiration date of the 17 -year term of the original patent.

e) To correct a misspelling of an inventor's name in the patent resulting from a PTO printing error.

50. Able and Baker are co-workers. Able is a biochemist working on new non-naturally occur­ring, non-human multicellular living organisms. Baker is a computer programmer who has de­signed a program for simulating proposed organ­isms. Working with Baker's program, Able dis­covers a new organism which he then creates in the lab. As the attorney for the company employing Able and Baker, which of the following options would be proper to obtain a valid patent?

a) Prepare a single application describing and claiming the program and the new organism naming Able and Baker as co-inventors.

b) Prepare two separate applications, each de­scribing both the program and the new organism. Application No. 1 will claim only the new organ­ism and name only Able as the inventor while Application No.2 will claim only the program and name only Baker as the inventor.

c) Prepare a single application describing both the program and the new organism, but only name Able and claim only the new organism because the program is not patentable subject matter under 35 U.S.C. 101.

d) (a) or (b). e) None of the above.

51. You are a practitioner located in San Diego, California. At 4:30p.m. on Friday, July 1, 1988, you meet with your client to finalize and have him sign a patent application for his new invention. At 5:00p.m., the signed application is dropped in the mail to the PTO. Only then does your client tell you that on July 3, 1987, he offered to sell a prototype of his invention to ABC Corporation for $10,000. ABC did not accept the offer. You realize then that you did not include a certificate of mailing on the original application papers which you had just dropped in the mail. You are also aware that the courier services around town close at 8:00 p.m. The last regular mail pick up in the box on the corner near your building was at 4:00 p.m. The main post office downtown closes at 12 midnight. To make matters worse, you have dinner plans at 7:30 that night. Under the circum­stances, which of the following options do you have?

a) Do nothing and assume the application will be received at the PTO on Tuesday, July 5, 1988.

b) Prepare and deliver a copy of the application to an overnight courier service for delivery to the PTO on Saturday, July 2, 1988.

c) Prepare a copy of the application with a proper certificate of mailing and deposit it in the mail box downstairs before 6:00 p.n1. in an enve­lope properly addressed to the Commissioner of Patents and Trademarks.

d) Prepare a copy of the application and a proper certificate of Express Mail and deliver it in an Express Mail envelope to the main post office downtown properly addressed to the Commis­sioner of Patents and Trademarks on July 1, 1988.

e) All of the above.

17

Answer questions 52 to 56 based on the fact pattern set forth in the following paragraph. Consider each question independently of the oth­ers.

Mike and Brit are U.S. citizens who jointly in­vented invention X while employed by Small Co. located in Canada in Toronto, Ontario. The inven­tion was conceived and reduced to practice on March 5, 1986. Mike and Brit assigned all right, title and interest in the invention to Small Co. Small's Canadian patent agents filed a patent application in the Canadian Patent Office claim­ing invention X on May 4, 1986. A patent appli­cation identical to the Canadian patent application was filed in the U.S. Patent and Trademark Office (USPTO) on May 8, 1987. The assignment of the invention to Small, Co. was also recorded in the USPTO. The Canadian patent application issued as a patent on May 7, 1987. Brit left Small Co. on June 6, 1988 and joined Big Corp. located in Buffalo, NY. Brit continued his research on in­vention X and on July 25, 1988 conceived and reduced to practice invention Y, an improvement on X. On August 1, 1988, Brit filed a patent application in the USPTO claiming invention Y. Mike conceived and reduced to practice the same invention, Y, on June 30, 1988. Mike had no knowledge of Brit's activities. Mike filed patent applications claiming Y in both the USPTO and the Canadian Patent Office on September 30, 1988.

52. Invention Y is !lQ1 an obvious modification of invention X. Which of the following sections of the statute, if any, would bar Brit from getting a patent on invention Y?

a) 35 U.S.C. 102(f) b) 35 U.S.C. 102(f) plus 103 c) 35 U.S.C. 102(g) d) 35 U.S.C. 102(g) plus103 e) None of the above.

53. Invention Y is an obvious modification of invention X. Which of the following sections of the statute, if any, would bar Mike from getting a patent on invention Y?

a) 35 U.S.C. 102(a) b) 35 U.S.C. 102(b) c) 35 U.S.C. 103 d) 35 U.S.C. 102(g) plus 103 e) None of the above.

54. Claims to invention X in the U.S. application jointly filed by Mike and Brit would be barred by which, if any, of the following statutes?

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

55. Invention Y was conceived and reduced to practice by Chris in West Germany on February 28, 1987. Invention Y prototypes were sold in West Germany in May of 1987. The marketing was so successful that by August of 1988, inven­tion Y was sold throughout Europe. Neither Mike nor Bob had any knowledge of Chris' activities regarding the sales in West Germany or Europe prior to making their inventions. Claims to invention Yin the applications filed by Mike and Brit would be barred by which, if any, of the following statutes?

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

18

56. Invention Y is an obvious modification of X. Claims to invention Yin Brit's U.S. application would be barred by which, if any, of the following statutes?

a) 35 U.S.C. 103 b) 35 U.S.C. 102(f) plus 103 c) 35 U.S.C. 102(g) plus 103 d) (a) and (c) e) None of the above.

57. A patent application naming Bob and Don as joint inventors was filed in the PTO. The applica­tion is assigned to Ajax Inc. and the assignment was recorded in the PTO. An affidavit or declara­tion under 37 CFR 1.132 must be prepared com­paring the results disclosed in the application with those of a prior art reference relied upon by the examiner to reject the claims in the application. Bob and Don disagree with the comparative re­sults on the ground that the results shown in the affidavit are scientifically unsound and would refuse to execute any affidavit which contains the results. You, as a patent agent, disagree noting that the experiments properly compare the results with the prior art. Your position is supported unequivo­cally by the inventors' research supervisor. Which of the following can make the affidavit under 37 CFR 1.132 since Bob and Don will refuse to sign it?

a) Ajax Inc. b) Patent agent c) Research supervisor d) (a) or (c) e) None of the above.

58. Which of the following items need not be included in a reissue application?

a) A certified copy of an abstract title or an order for a title report.

b) An offer to surrender the original patent. c) A statement that the applicant believes the

original patent to be wholly or partly inoperative or invalid.

d) A statement that the applicant has made a prior art search.

e) A statement specifying how the errors in the original patent arose or occurred.

59. On February 1, 1988, you filed a continuation­in-part application of a prior application, with a proper continuation-in-part oath. On March 1, 1988, the prior application became abandoned. Subsequently, you discovered that the continu­ation-in-part application did not contain a specific reference to the prior application in the specifica­tion. Realizing that the prior application was no longer pending, what is the best course of action you should take to properly reference the parent application in the CIP?

a) File a petition to revive the abandoned prior application along with the appropriate fee.

b) File a petition to revive the abandoned prior application, accompanied by a response, and the appropriate fee.

c) File an amendment amending the first sen­tence of the specification of the continuation-in­part application to make specific reference to the prior application. You should also indicate that the prior application is now abandoned.

d) File an amendment amending the first sen­tence of the specification of the continuation-in­part application to make specific reference to the prior application. You should make no reference to the fact that the prior application is now "aban­doned".

e) File a petition to revive the abandoned appli­cation, with the appropriate fee, and file a new continuation-in-part application which makes specific reference to the prior application in the specification.

19

60. An application is prosecuted through final rejection. All of the claims of the application are rejected. The applicant lets the application go abandoned. Two years after the case is aban­doned, the applicant files a substitute application claiming the same invention as claimed in the original patent application. Which of the follow­ing statements is true respecting what the exam­iner may do on the first action on the merits in the substitute application?

a) The examiner may reject the claims, but not make the rejection final because the application is a substitute application, and not a continuing application.

b) The examiner may reject the claims and make the rejection final if the claims would have been properly finally rejected in the next Office action on the grounds or art of record in the original patent application.

c) Th~ exan1iner may reject the claims, and not make the rejection final because claims contained in the substitute application are new and require further consideration and search.

d) The examiner may reject the claims and make the rejection final even though new matter was raised in the substitute application.

e) None of the above.

END OF THE MORNING SECTION OF THE EXAMINATION

Test Number 014A

Test Series 288 NAME------------

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

REGISTRATION EXAMINATION FOR PATENT ATTORNEYS AND AGENTS

October 12, 1988

Afternoon Section (100 Points) Time: 3 Hours

DIRECTIONS

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

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

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

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

OR TO BEGIN THE EXAJ\1INATION

QUESTION 1 (25 Points)

INSTR UCTIOJ\'S: This question is directed to claim drafting and consists of three options. You must SELECT QJ'\E of the options and draft the claim or claims as directed. If you select more than one option, only the first option appearing in your Answer Book will be graded. Points will be deducted for claiming subject matter not within the scope of the invention described or as shown in the figures, for including language which is indefinite or does not have antecedent basis, or for failing to interrelate the elements or con1ponents of your claim (Options 1 and 2) or to present claims to the preferred embodiments (Option 3).

0 ption 1: The invention in the figure below is directed to a novel walker for use in assisting a person, such as an invalid, or more particularly, to a walker of the type having relatively movable front and rear legs.

22

2

l

In the operation of the walker 10, the operator or invalid (not shown) stands behind the walker 10. The operator or invalid grips the hand holds or grips 22 with each hand and with a slight upward motion gradually elevates the main frame 11 to disengage the rear feet 21 from the ground or floor, while the front feet 39 of front legs 37 and 38 remain upon the ground or floor. The main frame 11 is urged forward by the operator's hands, so that the rear legs 19 and 20 pivot about the hinge or journal rod 35 which is incased by the bearing sleeve 40. Bearing sleeve 40 is attached to the upper portions of front legs 37 and 38 while journal rod 35 is attached to the upper front portions of side frame members 14 and 15. When the stop anns 24 have reached the extent of their forward travel within the guide members 44, the main frame 11 is lowered until the rear feet 21 engage the ground surface.

Then, with a very slight rearward tilting moven.1ent of the main frame 11, the front legs 37 and 38 become disengaged from the ground surface and are immediately and automatically thrust forward by the leaf spring member 52 without any additional effort by the operator or invalid. The front frame member 12 is then lowered until the front feet 39 engage the ground or floor surface. The operation is then repeated. For each operative cycle of the walker 10, the operator will take one small step per cycle.

Draft a claim to the walker. Your claim must define a walker that is operative in the manner described above. It must include and interrelate at 1ea5t all of the following elements: elongated guide members 44, front frame 12, front legs 37 and 38, hand holds 22, leaf spring 52, main frame 11, rear legs 19 and 20, side frame members 14 and 15, stop anns 24, transverse frame member 25, and transverse brace bar 41. Points will be deducted for reciting any of the above named elements (i.e. reference numerals 11, 12, 14, 15, 19, 20, 22, 24, 25, 3 7, 38, 41, 44, and 52) in terms of means plus function. The object of this question is to demonstrate your ability to draft a claim which clearly defines how the claimed elements interrelate to each other as opposed to being able to write a broad claim.

GO TO PAGE 4 FOR OPTION 2

3

0 ption 2: This invention as illustrated in the figures below relates to a dimming circuit for adjusting the light

output of a lamp by controlling the current flow.

FIG. 1 PRIOR ART

FIG. 2 3

FIG.3 (a)

FIG. 3 (b)

FIG.3 (c)

'""' (Voo)

OUTPUT 0:: PUlCX.. GEN:.RATING CIRCUIT

COLLECTOR POTENTIAL a= TRANSISTOR Ql

R,

lei R1

VeE

LL I I I I I I I I I

I I 1 I I

-Rz

-:r-5

1 I 1 I I

hir-h~_j v [-~~~---=t--------VL00

t1 tz , b tt. : __ o_ "--RMAL : EXCESS : t OPERATION CURR£NT PERIOD

POTENTIAL ON PERIOD : POSI Tl VE SH~ Vr - -- --- ---- -~------ -- - -- --- - -----=~,.... 1 Of CAPACITOR C ~ :

k-------------~------------------------L--------~ ~

FIG.4 VeE

4

The dimming circuit known in the prior art is shown in Figure 1. Pulse generating circuit 4 outputs a pulse to the base of dimming transistor Q

1 for driving lamp 3. Transistor Q

1 and consequently lamp 3 are turned

on and off by a pulse from pulse generating circuit 4. The output of lamp 3 is adjusted by controlling current flow through variation of the pulse in the pulse generating circuit. If for some reason, lamp 3 is short

circuited, transistor Q1

receives and increased amount of current which could damage the transistor.

The object of the invention is to provide the dimming circuit with a protection circuit which can break the

flow of increased current beyond a predetermined value when the lamp is short circuited, and thus control

the light output of lamp 3.

Figure 2 shows the dimming circuit with the novel protective circuit 5. Figures 3(a), 3(b) and 3(c) show the wavefom1s of voltage at points "a", "b" and "c", respectively, in Figure 2. Figure 4 is a graph showing the

Ic-V ce characteristics of the collector cirucuit Ic verses the collector voltage V ce of dimming transistor Q1

•

As can be seen from the graph, when the collector voltage, Vee, exceeds a predetermined value or limiting

voltage, V L' the excess collector current, Ic, is generated. The limiting voltage is determined b) the voltage ratio of resistors R

2 and R

3 and, the voltage applied to the base of transistor Q

2.

When switch 2 is closed, a positive voltage is applied to lamp 3 by battery 1. A pulse input signal from p·1lse generating circuit 4 on the base of dimming transistor Q

1 places the transistor in an "on" state which c ..~.uses

lamp 3 to light. Note t=t1

in Figure 3.

When the output of the pulse generating circuit is at a low voltage, as it is at t=t2

in Figure 3, transistor Q1

is in an "off' state which causes lamp 3 to turn off. The collection voltage of Q1

, V 00

, is above the limiting

voltage, V L' which causes transistor Q2

t'f the protection circuit to be in the "on" state. However, since the output voltage of the pulse generating ci1·::uit is low, a low voltage is applied to the emitter of transistor Q

3

to place Q3

in an "off' state.

So long as the collector current, Ic, and the collector voltage, V ce, of transistor Q1

are in the normal current

region as shown in Figure 4, transistor Q3

w11l remain in the "off' state for both the on and off conditions

of lamp 3. Consequently, no current will be supplied through diode D and resistor R6

to the capacitor C.

Hence, the potential on the positive side of capacitor C will not increase and transistor~ will remain in the

"off' state.

If lamp 3 is short circuited (see t=T0

in Figure 3), the collector voltage of transistor Q1

, V00

, will show a

voltage waveform for excess current period in the voltage wavefom1 of Figure 3(b ). When the output of pulse

generator circuit 4 is on high voltage, transistor Q1

is turned on by the pulse and lamp 3 lights (see t=t3

in

Figure 3 ). The collector current of transistor Q1

is in the excess current region of Figure 4 and the collector

voltage of transistor Q1

will become more than the-limiting voltage, Y L' as shown in Figure 3(b). Then, due

to the voltage division by the resistors R2

and R3

, the base voltage of transistor Q2

will also become more than

the limiting voltage, and transistor Q2

will be switched to the "on" state. Since the voltage at the output

tem1inal of the pulse generating circuit is a high voltage, a high voltage is applied to the emitter of transistor

Q3

. Transistor Q3

will then be placed in the "on" state: Current is supplied to capacitor C through diode D

and resistor R6

raising the potential on the positive side of capacitor C.

5

\\1hen the output tem1inal of the pulse generating circuit is at a low voltage (see t=t4

in Figure 3(b)) and lamp 3 is turned off, the en1itter potential of transistor Q

3 is at a low voltage so that transistor Q

3 is in the "off' state.

Then, no current will be supplied to capacitor C and a discharge current flows from capacitor C through resistors R

7 and R

8 so that the potential on the positive side will be decreased.

If the resistance of the resistor ~ is set sufficiently large compared to the resistance of resistor R6

, the

decrease in the potential on the positive side of the capacitor C in the turned-off condition of lamp 3 may be ignored. When lamp 3 is short circuited and the condition of excess current is brought about and an excess

current flows in transistor Q1

, the potential on the positive side of capacitor Cis increased stepwise as shown for the time t>T

0 in Figure 3(c). At a time t=T

1, the potential reaches a threshold voltage, Yr, which is

detem1ined by the voltage division ratio due to resistors~ and R8

, and the "on" state voltage of transistor ~· Transistor~ is then placed in an "on" state and transistor Q

1 is turned off. The potential on the positive

side of capacitor C continues to rise even thereafter due to the high level of pulse from the pulse generating

circuit. The potential is stabilized at a value which depends upon the pulse, resistances of resistors~ and

Rs, the "on" state value at the base of transistor~' the forward voltage of diode D, and the collector en1itter saturation voltage of transistor Q

3.

In order to thereafter put transistor Q1

into a condition to drive lamp 3 again, it is merely necessary to open

switch 2 for a predetem1ined length of time, or output a signal from pulse generating circuit 4 by keeping the voltage at a lov.; level for a predeteMned length of time to turn off transistor Q

3 and let the charges in

capacitor C discharge.

Draft a claim to adin1ming circuit as shown and described above for adjusting the light output of a lamp. Your

claim must include and interrelate at least all of the following components: dimming transistor Q1

, pulse generating circuit 4, and the protection circuit 5 (detecting excess current, switching to output a pulsed excess

current detecting signal, and the "off' state command signal). You must use means plus function language to describe the invention defining the protection circuit portion. Your claim cannot include any graphical

representation of the circuit diagrams as shown in the Figures 1 and 2. The object of this question is to

demonstrate your ability to draft a claim which clearly defines how the claimed components of the invention

in terre late to each other as opposed to being able to write a broad claim.

GO TO PAGE 7 FOR OPTION 3

6

Option 3: This invention relates to novel dyestuffs for dyeing synthetic fibers. In particular, the dyestuffs are diazan1ethine dyestuffs derived from a 3H-indole heterocyclic ring having the following position

nun1bers:

The dyestuffs are represented by the following formulas:

CHaS0,8

7

e

8 Cl

6

6 Cl

8

CHI CHI ~ / 8 c

Clu ~ CH1 CH1 I c-~=~-~ ~ ocrr znc•e ,I!"' ~- I u

!'<

CH~'"··"8 ,~;:,01

8

I CH 1

l

cg,so,e

9

The· following compounds constitute the prior art:

8

Your client has discovered that those dyestuffs having a methyl, ethyl, methoxy or chloro substituent in the 5-position of the heterocyclic ring have unexpectedly superior light and heat fastness when applied to polyacryloni trile fibers. The anion is found to have little effect on the light and heat fastness of the dyestuffs. However, your client has found that with the preferred dyestuffs, those having a ZnC1

38 anion component

are particularly preferred for economic reasons.

Draft two claims, a generic claim limited only to the superior dyestuffs discussed above and a subgeneric claim limited to the particularly preferred dyestuffs discussed above. Both claims must avoid the aforementioned prior art. The generic and subgeneric cla1ms must include only one generic formula, the substituents being defined in terms of different R groups. Do not present claims which are, in effect, a Markush group of a series of species of compounds and/or of chemica/formulas. This is not an exercise to demonstrate how broadly you can draft claims, but to presenting claims directed to preferred embodiments. If more than two claims are presented, only the fust two claims will be considered.

10

QUESTION 2 (30 Points)

You are representing a company known as Novelty Inc. which makes products to be sold in novelty and gift shops. The following patent issued and was assigned to Novelty Inc.

-United States Patent 5,555,555 Jan.2, 1980

® Fl G. 2

16 18 20 26 Fl G. 3

21

28

22 20

FIG. I ~ -T 2

24

26 FIG. 4 !I ;j 11

I .j

!I 'I

10 il ;i ,, 14 ,, :! d ·: \ '!

14

11

PERSONAL ORAL HYGIENE TOOL

This invention relates generally to oral hygiene appliances and n1ore particularly to devices for removing particles of food from interproximal spaces between teeth as well as other oral areas wherein food or debris may col1ect.

SUI\1l\1AR Y OF THE INVENTION

The invention comprises a portable personal den­tal cleansing tool which includes a curved resilient metal pick adapted for convenient manipulation in the n1esial and distal areas of the user's mouth for the ren1oval of food particles or debris. The pick is formed with an arcuate zone having a tapered tip. Opposite the tip, the pick includes an axial stem which is mounted in a holder. The pick stem may be seated within a cylindrical carrier with the carrier removably secured to the holder. The pick and its carrier n1ay thus comprise a replaceable unit.

The pick holder is shaped to simulate a pen barrel with a removable cap which selectively protects and conceals the tip. Thus, a user may inconspicu­ously carry the tool in a pocket or purse, and when the need for its use arises, it will be readily avail­able.

BRIEF DESCRIPTION OF THE DRAWINGS

FIG. 1 is an elevational view of a personal oral hygiene tool constructed in accordance with and embodying the invention depicted with a cap removed from a pen barrel to reveal a cu.rved metal pick.

FIG. 2 is a greatly enlarged sectional view through an arcuate zone of the pick, the same being taken substantially along the line 2-2 of FIG. 1.

FIG. 3 is a fragmentary sectional view through the holder, the same being taken along a plane extend- ..... -

ing through the longitudinal axis of the holder parallel to the plane of FIG. 1 and illustrating the·· manner in which a stem of the pick is secured in a

12

thermoplastic carrier which is in turn seated in the holder.

FIG. 4 is an enlarged front elevational view of a typical user's mouth and illustrating the manner in which the convex portion of the curved pick is used as a burnishing tool for the purpose of remov­ing soft supergingival plaque.

DESCRIPTION OF THE PREFERRED EMBODIMENT

Referring now in detail to the drawings, the refer­enced numeral 10 denotes generally a dental tool constructed in accordance with and embodying the invention. The tool 10 comprises a curved metal pick 12 which is secured to a hollow cylin­drical holder 14 and projects from one end thereof. The end of the holder 14 from which the pick 12 projects is selectively covered by a cap 16 which may include a conventional pocket clip 18.

Referring now to FIGS. 1 and 3 wherein the pick is illustrated, it will be seen that the pick 12 includes an arcuate zone 20. The arcuate zone 20 terminates at a forward probe 21 having a tapered tip 22. At the opposite end, the curvature is somewhat reduced and the arcuate zone 20 ap­proaches a stem 24 at an angle of approximately 45 degrees.

Pursuant to the present invention, the pick 12 is formed of a resilient metal, such as stainless steel or a similar alloy. In the arcuate zone 20 including the probe 21, the pick is of circular transverse cross-sectional configuration as shown in FIG. 2 and is relatively thin, having a diameter up to 1

mm, preferably 0.7 to 1.0 mm. The preferred diameter has been found suitable for insertion within interproximal spaces without generating excessive lateral forces.

As such, it should be appreciated that the tapered tip and the forward portion of the arcuate zone 20 will pass within the interproximal spaces between teeth adjacent the gingiva for the purpose of dis­lodging impacted food or debris. The resistance

I

nom1ally encountered when attempting to force a thicker toothpick or the like into the same area will not be encountered and the insertion force applied will only be that required to expel the impacted material rather than a force required to spread adjacent teeth apart.

From an observation of FIG. 3, it will be seen that the pick 12 is secured in a cylindrical carrier 26. The carrier may be formed of any suitable material such as metal or thermoplastic. Any conventional securement between the stem 24 and the carrier 26 may be provided. For example, a mating threaded connection or adhesive material may be employed.

The outer surface of the carrier adjacent the end distant from the pick 12 includes an externally threaded zone 28. The threads of the zone 28 are adapted to mate with a corresponding internal threaded zone fonned at an end of the holder. It should be appreciated that the pick 12 mounted to its carrier 26 comprises a single user replaceable unit. As such, in the event the user desires to replace the pick, such replacement can be easily accomplished.

Pursuant to the present invention, the shape of the pick 12 has been dictated by anatomical factors to permit a user to employ the tool for effective personal oral cleansing at both the mesial and

distal areas of the oral cavity. Accordingly, the arcuate zone 20 is specifically configured to pro­vide a contour readily adaptable to be positioned around the sides and/or cusps of the user's teeth in the distal areas of the oral cavity. The dimentional criteria of the arcuate contour fall within an aver­age range of values.

Having thus described the invention, there is claimed as new and desired to be secured by Letters Patent:

1. A dental tool for personal oral hygiene compris­ing a pick, the pick having a stem and a zone projecting from the stem terminating at a tip, the pick being formed of stainless steel, the tool fur­ther including a cylinder holder and a cap, means

13

securing the pick to one end of the holder, and the cap selectively covering the pick when not in use.

2. A dental tool for personal oral hygiene in accordance with claim 1 wherein the zone project­ing from the stem of the pick is an arcuate zone and the pick having a diameter of up to 1 mm in the arcuate zone and tapering to a smaller diameter at the tip, the stem diameter being larger than the pick diameter at the arcuate zone, the arcuate zone being anatomically configured to be accommo­datingly received around curved tooth surfaces.

3. A dental tool for personal oral hygiene in accordance with claim 2 wherein the diameter of the arcuate zone is between 0.7 to 1.0 mm.

· A reexamination request was filed by an anonymous requestor who has cited, inter alia, the highly relevant patent of Lenhardtson, U.S. Patent No. 719,017. The drawings of the patent are reproduced below:

-pfG-._1. -.:E' I G. 2.

14

In a."n Office action dated August 31, 1988, the examiner issued an Order Granting the Request for Reexamination and set a two (2) month period for response. The Order included the following statement:

"Reexamination is ordered o(all of the claims on the basis of Lenhardtson, U.S. Patent No. 719,017. Lenhardtson raises a substantial new question of patentability. The reference shows a personal oral hygiene tool comprising a pick "a" made of stainless steel having a stem and a zone projecting from the sten1 tern1inating at a tip. The tool further includes a cylindrical holder "c", means for securing the pick at one end of the said holder "b", and a cap "i". Fluid "d" in cylinder "c" is an anticeptic solution which n1ay be injected by pressing plunger "f' and forcing the solution through small duct "e". Accordingly, claim 1 is anticipated under 35 U.S.C. 102 by the disclosure of Lenhardtson."

Knockoffs Co. is the only competitor of your client, Novelty Inc. Knockoffs has already con1mercially exploited the patented invention. The diameter of the arcuate zone of the commercial embodiments manufactured by your client and Knockoffs is from 0.7 to 1.0 mm. On September 15, 1988, you received a registered letter from Knockoffs' attorney which included an article from a trade magazine, Dental Tools which was published on February 1, 1978. The article discloses a dental tool having a curved stainless steel pick secured to a cylindrical holder. The pick includes a stem and an arcuate zone. The dian1eter of the pick in the arcuate zone is disclosed as being 1.5 mm. Neither you nor anyone you have dealt with at Novelty Inc. were aware of the published article in the trade magazine prior to this disclosure by Knockoffs. After reviewing the article, you realize that the publication is very material to the reexamination proceeding when considered in view of the Lenhardtson patent.

~ovelty believes that it will be difficult, but not impossible, to obtain a broad claim based upon an experimental showing that the configuration of the arcuate zone of the invention is readily adaptable to be positioned around the sides and/or cusps of the user's teeth when compared to the dental tool disclosed in the in the Dental Tools article. However, this will take several months to confirm.

The main business objective of Novelty Inc. is to obtain the broadest patent coverage as soon as possible. Consider each of the three following strategies for response to the outstanding Order for Reexamination. Identify which one of the strategies would be proper and explain why it is proper and would meet the business objectives of your client ( 14 points). Explain why each of the two remaining strategies would not be proper (8 points each). Do not assume any facts outside the fact pattern. If in your explanation, you rely on a procedure set forth in the Manual of Patent Examining Procedure (MPEP) or upon statute or rule, mere citation of the rule, .statute or :t'-v1PEP section will not suffice to demonstrate your knowledge as to how and why the particular statute, rule or MPEP section does or does not apply in the factual pattern as presented. You must explain how and why the facts do or do not meet the requirements of the rule, statute, or Office policy or procedure relied upon. No credit will be given for any suggestion of a new strategy, new claims or how the claims can be other\.vise amended.

STRATEGY A: Do not respond to the Order for Reexamination until you receive an Office action from the examiner. During this period, a diligent effort will be made to draft new claims or amend the original patent claims to distinguish over the combined teaching of the Dental Tools article and the Lenhardtson patent. The article could be cited in response to the examiner's frrst action during the reexamination proceeding.

STRATEGY B: Respond to the Order for Reexamination on or before October 31, 1988 and include both a full citation and copy of the Dental Tools article and a concise explanation pointing out the reference of the article. The response would also include canceling claims 2 and 3 and amending claim 1 as follows:

15

"1. A dental tool for personal oral hygiene comprising a pick, the pick having a stem and [a] an arcuate zone projecting from the stem terminating in a tip, the arcuate zone being- anatomically configured to be accommodatingly received around curved tooth surfaces. the pick being formed of [stainless steel] resilient n1etaL the diameter of the pick in the arcuate zone less than 1 .5 mm. the tool further including a holder and a means securing the pick to one end of the holder."

STRATEGY C: Do not respond to the Order for Reexamination but file a proper Information Disclosure Staternent on or before October 31, 1988 disclosing the published Dental Tools article, a full citation and copy of the Dental Tools article and a concise explanation of the relevance of thee article. Wait for the first Office action on the merits from the examiner and then amend the original claims to distinguish the invention over the con1bined teachings of Lenhardtson and the Dental Tools article.

16

QUESTION 3 (45 Points)

Mac Converse is a professional fishing guide residing at Gull Lake, Minnesota, where he charters his three­seated small fishing boat to conventioneers and other vacationers seeking to catch bass, walleye pike, and occasionally large northern pike. Mac Converse is a rugged individualist. After a successful day of fishing, he and his guests will set up camp near the lake and cook some of the fish they caught.

From June 14-16, 1986, during an LES Regional Meeting, Mac guided you and two other patent practitioners in their quest for big northern pike. After a successful catch, you, Mac and his other guests set up camp along Gull Lake and began to fillet some of the fish caught during the day. You noticed the filleting knife which Mac was using had dual blades. You noticed that the knife reduced wastage and produced high quality, well cut fillets. When you asked Mac about the knife, Mac proudly told you that the knife was his own creation. Mac demonstrated how the knife could be taken apart and the blades easily cleaned and sharpened. After the fishing trip and after several conversations with Mac, you wrote up and, on July 15, 1986, filed a complete patent application for a "Filleting Knife". The application was assigned Serial No. 555,555. The applic(1tion included a properly executed Small Entity Statement. The application included the following crawings:

' 25

17

Mac conceived and reduced to practice his invention on New Year's Day, January 1, 1986. He kept his invention secret until he used the knife on the fishing trip with you. The "Summary of the Invention" in Mac's application set forth the following statement:

"The subject invention is a knife having single blade and double blade capabilities. The knife is safer and reduces wastage and produces high quality, well cut fillets. Moreover, the knife can be taken apart and the blades easily cleaned and sharpened. The knife has two blades. The blades are identical except that one blade is truncated at a point located between 1(2 and 2/3 of the length of the other blade. The blades are substantially parallel to each other, broad side to broad side, spaced a distance apart at their juncture with the knife handle and joined at the tip of the truncated blade. The distance between the blades is such that the cross-sectional din1ension of the fillets of fish in the size range accommodated by a given knife will fit between the blades at points near the joining point for smaller fish and about midway between the joining point and the handle for larger fish. The combination double edge/single edge apparatus can be referred to as the cutting element of the knife. An essential feature of the knife is that the portion of the full length (not truncated) blade extending beyond the joining point is used as a single bladed knife".

Mac's application discloses joining the two blades 20 and 21 as shown in Fig. 3 where a truncated blade 21 is fastened to a full length blade 20. The truncated blade has two projections 28 and 29 at its end. These projections fit into openings 30 and 31, respectively, in the full length blade, opening 30 being a groove and 31 a hole. To assemble the knife the projections are slid into the groove and hole as shown in Fig. 3 and the handle halves 26 and 27 are fastened together by a machine screw 33 to form handle 11 '.

The single claim in the application reads as follows:

"1. A knife comprising a handle, a first blade and a second blade, each blade having a first and second end, said first end of each blade joined to said handle, said first and second blades extending from said handle side by side, the second end of said first blade being attached to the second end of said second blade."

In an Office action dated 1 une 22, 1987, the examiner rejected claim 1 of the application as being anticipated under 35 U.S. C. 102 by a patent to Blodgett, U.S. Patent No. 4,333,222 which issued on Septetnber25, 1984. Figure 1 of the patent is reproduced below.

18

Blodgett discloses and claimed a double bladed filleting knife wherein two blades of equal length 12 and 13 are pennanently attached at their ends 14 by welding or brazing and to the handle. The patent also discloses that the blades can be detachably attached at their ends 14 by tapping a hole and using a sheet metal screw to fasten the blades together. The patent further discloses that the double bladed knife was safer than single bladed knives and reduced wastage and produced high quality, well cut fillets.

In addition to the above rejection, the examiner objected to the application on the ground that the oath was defective because it did not identify the citizenship of the inventor. The examiner required a new oath or declaration in compliance with 37 CFR 1.67(a).

You received the Office action on June 24, 1987 and immediately wrote to Converse asking for his comments with regard to the rejection. You included in your letter a copy of the Office action and a copy of the reference to Blodgett. You received your instructions from Mac on August 17, 1987. In his letter he told you that he was leaving Gull Lake and going to the Alaskan frontier for about one year to live with his son and that he would be unreachable while he was away. He indicated that he would contact you upon his return. On August 30, 1987, a flash fire in your office totally destroyed all of your files and records. You received second and third degree burns from the fire. You were hospitalized for four months. You are a sole practitioner. Your efforts to reconstruct all of your files were unsuccessful. You essentially lost track of the Converse file.

On January 30, 1988, the Office mailed a Notice of Abandonment of the Converse application for failure to respond to the Office action dated June 22, 1987. For whatever reason, you did not receive this letter until October 3, 1988. Your office records can clearly establish that the Notice of Abandonment from the Office was not received prior to October 3, 1988. By coincidence, on October 3, 1988, after you received the Notice of Abandonment, Converse called you following his return from Alaska and inquired about the status of his patent application. You infonned him that because of the fire and your hospitalization, the application had become abandoned. You further informed him that you had just received notice of the abandonment from the Office. He is still very desirous of getting a patent. He has told you that he does not want to file a substitute or continuing application, but wants to prosecute the present application, if possible, because he has limited financial resources. At your request, he sends you copies of the June 22, 1987 Office action and the Blodgett patent as well as a copy of the application papers as originally filed in the PTO which you had previously sent to him for his records. You now have all the necessary papers to reconstruct his original file.

What action, if any, can be undertaken to prosecute the application? If you are of the opinion that the application can be prosecuted, prepare the document or documents necessary to be filed in the PTO. (No credit will be given to any answer merely explaining what course of action should be taken to prosecute the application). In preparing the document or documents, you may omit the formal headings. However, if you prepare more than one document, each document must have a separate title heading. If, however, you are of the opinion that nothing can be done under the facts as presented, explain fully and completely why the Converse application cannot be prosecuted. If you rei yon a procedure in the MPEP or on a statute or rule, you must explain how and why the rule, statute or procedure does or does not apply to the facts as given. In any event, you are to follow your client's instructions explicitly.

END OF THE AFTERNOON SECTION OF THE EXAMINATION

19