Test Number 014 Test Series 192 NAME ___________ _

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

REGISTRATION EXAMINATION FOR PATENT ATTORNEYS AND AGENTS

April 8, 1992

Morning Section (100 Points) Time: 3 Hours

DIRECTIONS

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

All questions must be answered in SECTION 1 of the Answer Sheet which is provided to you by the proctor. You must use a No.2 (or softer) lead pencil to record your answers on the Answer Sheet. Darken completely the circle corresponding to your answer. You must keep your mark within the circle. Erase completely all marksexceptyouranswer. Stray marks may be counted as answers. No points will be awarded for incorrect answers or unanswered questions. Questions answered by darkening more than one circle will be considered as being incorrectly answered.

This section of the examination consists of fifty (50) multiple choice questions, each worth two (2) points. Do not assume any additional facts not presented in the questions. The most correct answer is the policy, practice and procedure which must, shall or should be followed in accordance with the patent statutes, PTO rules, and the Manual of Patent Examining Procedure (MPEP), unless modified by a subsequent court decision or a notice in the Official Gazette. There is only one most correct answer to each question. Where choices a) through d) are correct and the last choice is "All of the above", the grouped answer will be the most correct answer. Where a question includes a statement with a blank, select the answer which would make the statement true. Unless otherwise explicitly stated, all references to patents or applications are to be understood as being patents or applicati-ons for utility inventions only, as opposed to plant or design inventions. Where the term "PTO" or "Office" is used in this examination, it means the U.S. Patent and Trademark Office.

You may write anywhere on this examination booklet. However, do not remove any pages from the booklet. Only answers recorded in Section 1 of your Answer Sheet will be graded. YOU MUST SCORE AT LEAST 70 POINTS TO PASS THIS SECTION OF THE REGISTRATION EXAMINATION.

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

OR TO BEGIN THE EXAMINATION

1. Which of the following individuals may not properly make an antedating affidavit? a) The inventor. b) An officer of the company owning the invention where the inventor is unavailable to provide

the affidavit or declaration . c) The attorney or agent of record of a sole inventor, where the inventor is available and owns

the entire interest in the invention. d) One of two joint inventors where the affiant is the sole inventor of the claim or claims under

rejection . e) The joint inventors where the claim or claims under rejection were jointly invented by the

joint inventors .

2. Your client has informed you that there is a printing error in his issued patent. The patent omits a critical figure in the drawings. The figure was part of the application as filed in the ITO, and it was part of the application when the application was allowed. The application was never amended to delete the figure. The most appropriate procedure for the patentee to correct the error would be for the patentee to _____ _

a) file a copy of the missing drawing in the patented file. b) petition the Commissioner to issue a corrected patent grant. c) file a reissue application alleging that the patent is wholly or partly inoperative or invalid. d) request the Commissioner to issue a certificate of correction. e) request reexamination since the missing drawing raises a substantial new question of

patentability.

3. Andy, Bob and Carl are joint inventors in a patent granted by the PTO. Each owns a 1/3 interest in the patent. They are presently negotiating the sale or use of their patent. Each of the joint inventors may make, use or sell the patented invention _____ _

a) provided all the inventors give consent and share equally in the proceeds. b) without the consent of the other inventors so long as an accounting of the proceeds is provided

to the owners of the patent. c) provided the inventors have signed an agreement to this effect and the agreement is recorded

in the PTO. d) without the consent of and without accounting to the other inventors. e) only if the PTO approves of the sale or use of the patent.

4. The maximum number of multiple dependent claims which may properly depend from a single multiple dependent claim is _____ _

a) none b) one c) two d) three e) an unlimited number

5. Constructive reduction to practice occurs when _____ _ a) a working model of the invention is prepared. b) the invention is described in a printed publication. c) an application for patent is filed in the PTO. d) the inventor discloses the invention to his or her patent agent or patent attorney. e) an application for patent is filed in a foreign country whose benefit is not claimed.

2

6. Smith, a U.S. citizen, works in France for a French company, the Widget Corporation. At the time he began work for Widget, Smith signed a standard employment agreement by which he agreed to assign to the company all inventions he would make as an employee. Widget filed a U.S. patent application on June I, 1990, disclosing an improved widget. Smith was named as the sole inventor. The U.S . application did not claim priority under 35 U.S.C. 119 to any earlier filed foreign application . Which of the following is available as a prior an reference against the claims of Smith's patent application?

a) A U.S . patent, assigned to Megadevices, Ltd., that issued January 8, 1991, from an application that was filed by Jones on May 1, 1990, disclosing the same widget claimed by Smith .

b) A British application of Watson, assigned to Widget Corporation that was published May I , 1990, disclo ~ing the same widget claimed by Smith.

c) A German patent granted on April 3, 1990 to Smith. The German patent was filed by Widget on May 1, 1989 and claims the same widget as is claimed in Smith's U.S. application.

d) A paper presented by Smith and Watson at an international Widget Symposium, held in Paris on May 31, 1989, describing the same widget claimed in the Smith application.

e) All of the above.

7. Consider the following three situations: I. A patent agent hand delivered the following documents to the PTO Mail Room

window on January 23, 1992: a specification containing a complete description of the invention, an apparatus claim which complies with 37 CFR 1.75(a), a drawing showing the complete invention, and the names of each of the inventors.

II. The inventor executed a declaration/power of attorney in a patent application which included a specification which is a complete description of a method of making composition X, claims directed to the disclosed method and which comply with 37 CFR 1.75(a), and drawings showing the invention as described in the specification. After the application was executed by the inventor, but before it was filed in the PTO, the inventor discovered a method for making composition Y. The executed application (the executed declaration/power of attorney, specification, claims and drawings) was received in the PTO on January 10, 1992. A preliminary amendment was prepared to amend the specification and claims of the executed application to add subject matter not disclosed in the executed application. The preliminary amendment was received in the PTO on January 15, 1992.

III. A patent agent mailed an application to the PTO by Federal Express® on June 5, 1991. The application included a specification which complies with 35 U .S.C. 112, drawings showing the invention, claims which comply with 37 CFR 1.75(a), an executed declaration/power of attorney, and the proper filing fee to the PTO. The application papers included a certificate of mailing pursuant to 37 CFR 1.10 which was dated June 5, 1991. The application papers were received in the PTO on June 6, 1991.

In which of the above factual situations will the application be entitled to a filing date no earlier than the date the application was received in the PTO?

a) I b) II and III c) I and II d) I and III e) I, II and III

3

8. The national filing fee for a patent application varies, depending on _____ _ a) the number of applications the applicant has pending in the PTO. b) whether the applicant can qualify as a small entity. c) the age of applicant. d) whether applicant is a U.S. citizen. e) whether the application is assigned to a corporation or to an individual.

9. A design application may be filed _____ _ a) without an oath or declaration because a design application does not require an oath or

declaration. b) with a second, narrower dependent claim. c) with a claim in formal terms to the ornamental design for the article shown or as shown and

described in the application. d) without a drawing because a drawing is not an essential element of a design application. e) with a claim directed to a design for a method of doing business.

10. A company has hired you, a registered practitioner, to write a patent application. John, June and Jim are all employees of the company. At one time or another, they worked on the development and testing of an invention which will be claimed in the application. In which of the following situations, if any, would Jim not be named as an inventor in the application?

a) Jim only carried out the experiments as John instructed him to do. b) Jim is the sole inventor of the porous substrate embodiment in claim 8. c) Jim contributed to conceiving the continuous operating embodiments in only claims 10 and

11. d) Jim did early conceptual work late last year and John made further· improvements on Jim's

work early this year. e) None of the above.

11. Trumbull filed a patent application on an invention he had made. He assigned the application to the ABC Co. The ABC Co. recorded the assignment in the PTO and filed a power of attorney authorizing Richards, a registered practitioner in Chicago, Illinois near where ABC Co. is located, to prosecute the application. Richards then gave an associate power of attorney to Samuels to prosecute the Trumbull application. Samuels is a registered practitioner who has an office located in Arlington, Virginia, Samuels filed the associate power of attorney in the PTO. The application contains no specific directions as to whom correspondence is to be sent. The PTO will send correspondence to

a) both Richards and Samuels b) Samuels c) d) e)

Richards ABC Co. Trumbull

12. On January 5, 1990~ patent agent Jones filed a patent application disclosing and claiming a new chemical compound "polywhatzitcalled." The application did not disclose the method of making "polywhatzitcalled." In an Office action dated August 10, 1990, the claims of the application were rejected under 35 U.S.C. 112 on the ground that the disclosure was non-enabling. On October 8, 1990, Jones responded to the rejection by submitting a copy of an article written by the inventor. The article was submitted on January 3, 1990 to a professional journal for publication. The article was published

4

in the journal on April 10, 1990. The article described "polywhatzitcalled" and how to make it. Prior to January 5, 1990, the method of making "polywhatzitcalled" would not have been obvious to a person skilled in the relevant art. In an Office action dated November 19, 1990, the claims were finally rejected under 35 U.S.C. 112 on the same ground that the disclosure was non-enabling. On December 14, 1990, Jones filed an Amendment After Final Rejection adding to the specification the description of how to make "polywhatzitcalled." In an Advisory Action dated December 21, 1990, the examiner refused to enter the Amendment After Final Rejection. On January 2, 1991, Jones filed a continuation-in-part application under 37 CFR 1.62, which included a declaration pursuant to 37 CFR 1.63 and which requested that the Amendment After Final Rejection be entered. Claims to the compound "polywhatzitcalled" in the continuation-in-part application would be entitled to a filing date of

a) January 3, 1990 b) January 5, 1990 c) April 10, 1990 d) October 8, 1990 e) January 2, 1991

13. On January 4, 1990, Arthur, a U.S. citizen working in a chemical laboratory in the United States, conceived a new process for making ethylene from methane. After a continuous and diligent effort by Arthur over the next four months, he was unable to reduce his invention to practice. However, on July 30, 1990, Arthur's process was reduced to practice by Ted, a chemist in Arthur's laboratory. A patent application was filed in the PTO on September 15, 1990. Assuming that Arthur was not aware of any of the following facts at the time of his conception, which of the following facts will not bar Arthur and Ted from obtaining a U.S. patent claiming the process?

a) A written disclosure of the process in a printed publication which was published in France on December 20, 1989, but which did not reach the United States until January 10, 1990.

b) A written disclosure of the process by another in a printed publication which was published in the United States on October 10, 1989.

c) Use of the process by three U.S. oil companies in their manufacturing operations in the United States before January 1, 1990; none of the companies regard the process as being a proprietary secret.

d) An oral disclosure of the process on December 21, 1989 by a German scientist in a presentation in Germany to the research managers of two German chemical companies.

e) An oral disclosure of the process by a French scientist to all attendees at a seminar in Atlanta, Georgia on December 14, 1989.

14. A U.S. applicant who has filed a U.S. patent application must obtain a license from the Commissioner of Patents and Trademarks to file a foreign application if the foreign application is to be filed in a foreign country after the U.S. application filing date?

a) 1 year b) 9 months c) 4 months d) 7 months e) 18 months

5

15. A patent application was filed in the PTO on January 3, 1989. The application was expressly abandoned on July 3, 1990. A continuation-in-part (CIP) of the abandoned application was filed on June 1, 1990. The CIP issued as a patent on February 5, 1991. The patent would have an effective filing date of January 3, 1989 with respect to common subject matter in the applications only if at least one of the inventors in the June 1, 1990 application is named in the January 3, 1989 application and

a) the January 3, 1989 application is revived. b) the continuing application contains a specific reference to the January 3, 1989 application. c) the disclosure in both applications is identical. d) a special fee for claiming priority is paid. e) the owner of the January 3, 1989 application consents to the filing of the CIP.

16. The statutory basis for rejecting a claimed invention as lacking utility is _____ _ a) 35 U.S.C. 101. b) 35 U.S.C. 102. c) 35 U.S.C. 103. d) 35 U.S.C. 132. e) None of the above.

17. In an reexamination proceeding, which of the following is a correct statement regarding an extension of time?

a) A petition for an extension of time will be granted under 37 CFR 1.136 provided the appropriate fee accompanies the petition.

b) An extension of time is never permitted in a reexamination proceeding. c) A request for an extension of time must be filed on or before the date on which action by the

patent owner is due. d) A first extension of time will be granted without any showing of sufficient cause. e) A request for extension of time may be granted before the decision denying or granting

reexamination is mailed.

18. Your client's application has been allowed. In an attachment to the Notice of Allowance, you have been notified that formal drawings are now required. The Notice set a three month period for response to pay the issue fee and submit the drawings. To avoid abandonment of the application, you ___ _

a) must pay the issue fee within the three month period set in the Notice of Allowance and you may submit the drawings after three month period set in the Notice provided a proper petition and fee for an extension of time are submitted with the drawings.

b) must pay the issue fee within the three month period set in the Notice of Allowance, however, you may properly request that the requirement for formal drawings be held in abeyance until a patent number is assigned to the application.

c) may pay the issue fee and submit the required drawings after the three month period set in the Notice of Allowance provided you submit the issue fee and drawings with a proper petition and fee for an extension of time.

d) may pay the issue fee and submit the required drawings after the three month period set in the Notice of Allowance provided you submit the issue fee and drawings with a proper petition and fee for an extension of time within six months of the date the Notice was mailed.

e) may pay the issue fee and submit the required drawings along with a proper petition and fee for an extension of time, if necessary, at any time within six months after the date of the Notice of Allowance.

6

19. You are a registered practitioner. You have prepared a patent application which you must file today, April 8, 1992, to aviod a statutory bar. Failure to file the appication today will cause irreparable harm to your client, Acme Co. The inventor is obligated by his employment agreement with Acme to assign all inventions made during his employment to Acme. However, he is not available to execute the application because he cannot be found or reached. In order to be able to file the application on behalf of the inventor, your client must file an oath or declaration, a petition, and the required fee with the application. Which of the following if contained in the petition or submitted along with the petition would not be necessary to meet the requirements for the PTO to accept the application?

a) A copy of the inventor's employment agreement. b) An affidavit of a person having first-hand knowledge of the facts that the invention was made

by the inventor. c) A statement of the last known address of the inventor. d) Proof, supported by an affidavit or declaration of facts, that the inventor could not be found

or reached after diligent effort. e) Proof that a statutory bar is imminent and that irreparable harm will result to your client if the

application is not accepted by the PTO.

20. You are a registered practitioner and you have filed a patent application in the PTO on behalf of your client, Smith. In the first Office action, the examiner made a restriction requirement. Although your client disagrees with the restriction, you have made a provisional election with traverse and vehemently argue the restri~tion requirement. In the next Office action, the restriction is made final and an action on the merits follows. The application is eventually allowed. The client now wants to pursue the non-elected invention. You file a divisional application directed to the non-elected invention before the parent application issues as a patent. In the first Office action in the divisional application, the examiner rejects the claims on the grounds of obviousness-type double patenting over the copending parent application. What should be the most appropriate response to the rejection?

a) File a terminal disclaimer to obviate the double patenting rejection. b) Amend the claims in the pending application to overcome the rejection. c) File a 37 CFR 1.132 antedating affidavit. d) Request reconsideration and point out that it is improper to use the parent patent in a rejection

when a restriction requirement has been made by the examiner in the parent application. e) File a petition under 37 CFR 1.183 to the Commissioner.

21. On April 2, 1992, you paid the issue fee in a patent application you were prosecuting for Sam. Sam now informs you that he would like to delete proprietary background material from the specification of his application. Deletion of the material would not affect the scope of the allowed claims or affect compliance of the application with the requirements of 35 U.S.C. 112. Which of the following would be the proper procedure for filing an amendment at this time?

a) Request an interview with the supervisory primary examiner to request entry of the amendment.

b) File the amendment and point out to the examiner that the amendment does not affect the scope of the allowed claims.

c) File a petition to the Commissioner and set forth the reasons why the an1endment is necessary at this point in time.

d) File a petition to the Commissioner with the appropriate fee and with a showing of good and sufficient reasons why the amendment is necessary and why it was not earlier presented.

e) File the amendment with the appropriate fee for an extension of time to allow entry of the amendment and, if necessary, request an interview with the primary examiner.

7

22. Takahashi conceived and reduced his invention to practice in Japan on November 12, 1990. He filed a patent application in Japan on January 2, 1991. He filed a U.S. patent application in the PTO on January 2, 1992. His U.S. application contained a claim for priority for his Japanese application. The examiner rejected the claims in the U.S. application as being obvious over a patent having an issue date of February 25, 1992 and a filing date of June 6, 1991. The patent is a continuation of an abandoned parent U.S. parent application. The abandoned parent application is referred to and identified in the patent. The disclosure of the patent is identical to that of the abandoned parent application. The abandoned parent application has a filing date of December 3, 1990. In the rejection, the examiner is relying upon the disclosure of the abandoned parent application. What should Takahashi include in his request for reconsideration of the rejection?

a) A petition to the Commissioner to have the patent removed because the filing date of the patent is not before the priority date of Takahashi's application.

b) An argument that the disclosure of an abandoned application is not available as a reference because it was not in the public domain before January 2, 1991.

c) An amendment to the claims to overcome the rejection. d) An antedating affidavit to swear behind the December 3, 1990 filing date. e) An affidavit by Takahashi showing public use of his invention in the United States on

February 10, 1992.

23. You are a registered practitioner. You prosecuted a patent application with five claims which is now before the Board of Patent Appeals and Interferences (the Board). Two claims were allowed by the examiner while the three remaining claims were finally rejected. The rejection was appealed to the Board. You have just received a decision from the Board which includes a new ground of rejection of the three claims on appeal. Which of the following would not be an appropriate response?

a) Submit a showing of facts and have the matter reconsidered by the examiner. b) Request reconsideration by the Board. c) Accept the decision of the Board and file an amendment cancelling the rejected claims. d) Petition the Commissioner to have the rejection withdrawn as being improper because

prosecution of the application is closed. e) Amend only the claims rejected on the new grounds.

24. On January 6, 1992, Doe asked patent agent Bronson to prepare and file a patent application on an automobile jack which Doe had invented. Doe gave Bronson several sketches and a written description of the jack which described and showed the jack as having a scissors-type lifting mechanism. Bronson prepared a patent application based on the information provided by Doe. The claims of the patent application recited the lifting mechanism generically as "lifting means" since the specific type of lifting mechanism was not critical to the inventive feature of Doe's jack. After Doe reviewed and signed the application, Bronson filed it in the PTO on February 3, 1992. Doe died unexpectedly on February 29, 1992. On March 20, 1992, Doe's widow was sorting Doe's personal papers and found a notebook in which Doe had kept a record of his work while he was developing his jack. An entry dated January 8, 1992 stated that "Although the scissors-type lifting mechanism worked well, a screw-type lifting mechanism works much better." The widow gave this notebook to Bronson. Which of the following would be the most appropriate course of action by Bronson to preserve the patent rights Doe's estate may have in Doe's invention?

a) File a new application describing the screw-type lifter mechanism and thereafter abandon the patent application filed on February 3, 1992.

b) Bronson need not do anything since the patent application describes a lifting mechanism that works well and claims the lifting mechanism generically.

8

c) Before the first Office action is issued, Bronson should file a letter infonning the examiner that the jack works much better with a screw-type lifting mechanism than with the described scissors-type lifting mechanism.

d) When Bronson responds to the first Office action in the patent application, he should mention that the jack works much better with a screw-type lifting mechanism than with the described scissors-type lifting mechanism.

e) File an amendment after the first Office action to amend the specification of the application to include a description of the screw-type lifting mechanism.

25. In which of the following situations would a petition to make special not be granted? a) The patent applicant's invention is actually being infringed; the petition includes the required

fee and sets forth all pertinent facts under oath. b) Special status is based upon the ground of prospective manufacture; the petition includes the

required fee and a declaration from the patent applicant. c) The patent applicant's invention materially enhances the quality of. the environment. d) The patent applicant has discovered a new energy resource and wishes to expedite prosecution

by obtaining special status. e) The patent applicant is facing a financial hardship and issuance of a patent on his invention

will save his company through expected licensing; the petition includes the required fee and pertinent facts are documented.

26. If an examiner files an Examiner's Answer in response to applicant's Appeal Brief, applicant

a) has an absolute right to file a Reply Brief. b) may file a Reply Brief only ~ith the examiner's permission. c) may file a Reply Brief if the Examiner's Answer states a new ground of rejection or raises

a new argument. d) must file a Reply Brief. e) may file a Reply Brief with permission from the Board of Patent Appeals and

Interferences.

27. You are prosecuting a patent application for Jones. You received an Office action dated November 21, 1991 in which the examiner rejected all of the claims in the application and set a three month shortened statutory period for response. You are filing a response to the action today, April 8, 1992, and have included the following paragraph at the end of your remarks petitioning for an extension of time:

"The applicant herewith petitions the Commissioner of Patents and Trademarks to extend the time for response to the Office action dated November 21, 1991 for two months from February 21, 1992 to April 21, 1992. Submitted herewith is a check for $350.00."

The petition would be ____ _ a) proper because no particular format is required. b) proper because it is filed within 3 months of the Office action. b) insufficient because it does not include a reason for requesting additional time. d) improper because the petition must be in a separate paper. e) improper because an extension of time cannot be granted up to April 21, 1992, if the response

is being filed today, April 8, 1992.

9

28. The claims in your client's pending patent application have been rejected as being anticipated by a reference which has been cited by the patent examiner and which has an effective date 6 months before the filing date of your client's application. Your client is a self-employed entrepreneur who is a United States citizen residing in Peoria, Illinois. He reduced his claimed invention to practice in Peoria. In which of the following situations might it be possible for the rejection to be overcome by means of an antedating declaration or affidavit?

a) The reference is a published article in a technical journal not authored by your client which substantially shows or describes the same invention as claimed in the rejected claims in your client's application. The article was published after your client reduced his invention to practice.

b) The reference is a United States patent to another entity which claims the same invention as claimed in the rejected claims.

c) Your client reduced his invention to practice a year before the filing date of his patent application and then put it aside while he worked on other projects. A month before his patent application was filed, he realized the invention had commercial potential. He consulted you and requested that you prepare a patent application for him. In view of the commercial potential of the invention, you put your other work aside and worked exclusively on the patent application until it was filed. The reference is a United States patent to another which claims the same invention as claimed by your client in his application.

d) Your client conceived his invention while on vacation in Paris, France seven months before the filing date of his patent application. He immediately made a written record of the invention. Inasmuch as he liked the climate, he decided to stay in Paris while he worked to reduce the invention to practice. He worked diligently on the invention for the next three months, but he did not reduce the invention to practice. When he returned to Peoria, he resumed work on the invention and soon reduced it to practice. He gave you all the necessary information and requested that you prepare a patent application for him. Due to the commercial potential of the invention, you put your other work aside and worked exclusively on the patent application until it was filed. The reference is a U.S. patent to another which discloses, but does not claim the invention.

e) The reference is a U.S. patent to your client and the patent discloses and claims the same invention as is claimed in the pending application.

29. In responding to a final rejection of claims 1 to 5 as being obvious, applicant's patent agent argued that the references applied in the rejection neither taught nor suggested the claimed invention. The examiner issued a Notice of Allowance which included a statement of reasons for allowance. In the statement, the examiner explained his reasons for allowance of the claims. Upon receipt of the statement from the examiner, which of the following, if any, describes the most appropriate course of action the agent may take in response to the examiner's reasons for allowance?

a) The agent must file a timely response to the examiner's staten1ent to prevent the application from going abandoned.

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

c) The agent may file a response comn1enting on the examiner's statement, even though the failure to do so will not give rise to any implication that applicant agrees with or acquiesces in the examiner's reasoning.

d) Under current Office policy and procedures, the agent cannot respond to the examiner's staten1ent.

e) None of the above.

10

30. You are a registered practitioner representing Jacques, a French citizen. Jacques filed a patent application in the French Patent Office on January 3, 1990. The French application issued as a patent on February 4, 1991. Jacques also filed an identical application in the British Patent Office on January 2, 1991. The British application issued as a patent on August 12, 1991. Jacques filed a U.S. patent application in the PTO on January 2, 1992. The earliest date Jacques' U.S. application is entitled to is

a) January 3, 1990 b) January 2, 1991 c) February 4, 1991 d) August 12, 1991 e) January 2, 1992

31. Adam has come to you, a registered practitioner, for advice. He is a named inventor in an application to be filed in the PTO on his behalf by his employer, the XYZ Co. Although at the time he made his invention, Adam was under an obligation to assign to the XYZ Co. any inventions he made while employed by the XYZ Co., he has refused to sign the oath and an assignment of the application to the XYZ Co. If the XYZ Co. files the patent application in the PTO, which of the following, if any, would be a right Adam would have if he remains a non-signing inventor?

a) To have a hearing before the Commissioner. b) To prosecute the application. c) To protest his designation as inventor. d) To file a response to an Office action. e) None of the above.

32. You have just received an Office action on an application you filed at the PTO on September 3, 1991 on behalf of your client Vincenzo. The examiner rejected all of the claims in the application based upon an Italian patent which was granted on July 16, 1991. The Italian patent is based on an application filed on January 9, 1990. The Italian patent is directed to the same invention as that disclosed and claimed in the U.S. application. Vincenzo is the named inventor of the Italian patent. Based only on these facts, the Italian patent is available as a reference against the claims in Vincenzo' s U.S. application under ------

a) b) c) d) e)

35 U.S.C. 102(a) 35 U.S.C. 102(b) 35 U.S.C. 102(d) 35 U.S.C. 102(f) 35 U.S.C. 102(g)

33. A certificate of mailing may be used to timely file certain papers in the PTO. Which of the following may be mailed by frrst class mail to the PTO with a certificate of mailing and be entitled to the date of deposit set forth on the certificate?

a) A national patent application for the purpose of obtaining an application filing date. b) An amendment filed in response to an Office action. c) Agreements between parties to an interference. d) Papers filed in connection with a disciplinary .proceeding under 37 CFR Part 10. e) All of the above.

11

34. A first patent application was filed in the PTO on January 2, 1991. The application contains claims 1 through 5 drawn to a gadget. The first application does not disclose how to make the claimed gadget. As of January 2, 1991, it would not have been obvious to those skilled in the art how to make the gadget. On March 1, 1991, a second application was filed in the PTO. The second application is a continuation-in-part of the first application. In addition to containing all of the disclosure in the first application and claims 1 through 5 drawn to a gadget, the second application discloses how to make the claimed gadget. The specification of the second application contains a cross reference to the first application. On April 1, 1991, a third application was filed in the PTO. The third application is a continuation-in-part of the second application. In addition to containing all of the disclosure of the second application and claims 1 through 5 drawn to a gadget, the third application discloses and claims a new method of making the gadget invention. The new method was discovered by the inventor on March 10, 1991. The specification of the third application contains a cross reference to the first and second applications. Which of the following would constitute proper advice to the inventor about the applications?

a) The second application is entitled to the benefit of the filing date of the first application, and the third application is entitled to the benefit of the filing date of the second application.

b) The second and third applications cannot obtain benefit of the filing date of the first application unless their specifications contain, or are amended to contain, a specific claim for the benefit of priority of the filing date of the first application.

c) The second and third applications remedy a defect of the first application, and the second and third applications are entitled to the benefit of filing date of the first application.

d) The second and third applications are "tainted" by a defect of the first application and must be abandoned. Only by filing a fourth; substitute application can the inventor's rights be protected.

e) The third application is entitled to the benefit of the filing date of the second application, but neither the third nor the second applications are entitled to the benefit of the filing date of the first application.

35. An interview between a registered practitioner and a patent examiner must be made of record in writing in the patent application file _____ _

a) by the practitioner only if agreement is reached to allow at least one claim in the application. b) by the practitioner unless the examiner indicates on the Examiner Interview Summary form

that he will record the summary of the interview. c) by the practitioner only if agreement is reached and reconsideration is requested. d) by the examiner for discussions regarding only procedural matters. e) by the examiner only if the interview is held after the first action on the merits 1n the

application.

36. A notice appealing the claims rejected in a patent application _____ _ a) may be filed after the end of the six month statutory period for response to a final rejection

and must be signed by the attorney of record. b) must be signed by either the attorney of record in the application or the applicant and may

identify all rejected claims appealed. c) must be signed by the assignee of record and must identify the rejected claims appealed. d) may be filed after the first Office action on the merits provided the application is not a

continuation or substitute application of a prior application. e) may be filed after a claim has been twice rejected even though the claim has not been given

a final rejection.

12

37. On July 15, 1991, you received a written restriction requirement in a patent application you are prosecuting. The examiner set a one month shortened statutory period for response. The very last day on which you can file in the PTO a response to the restriction requirement with an appropriate petition for extension of time and fee is ------

a) Monday, September 16, 1991 b) Tuesday, October 15, 1991 c) Friday, November 15, 1991 d) Monday, December 16, 1991 e) Wednesday, January 15, 1992

38. Applicant filed a petition to suspend action in an application. The petition included the appropriate petition fee. The petition sets forth good and sufficient cause for suspending action for a reasonable time. The cause cited in the petition was not the fault of the Office. If, at the time a petition was filed, there is an outstanding Office action which requires a response by the applicant, the petition to suspend action will be ------

a) granted and the OffiG.e action will be suspended. b) granted and the Office action will be vacated. c) granted and the Office action will be remailed. d) denied because there is an outstanding Office action. e) denied because the Office was not at fault.

39. Experimental activity is often conducted by an inventor to determine completeness, operability and usefulness of the invention, as well as to ascertain if further modifications or refinements to an invention may be necessary. Which of the following factors would not be indicative of an experimental purpose for testing an invention?

a) The nature of the invention is such that any testing had to be, to some extent, public. b) Testing is conducted over substantial period of time to determine the operativeness of the

invention. c) Testing is conducted under the supervision and control of the inventor. d) The inventor regularly inspects the invention during the period of experimentation. e) Experimentation is necessary to determine product acceptance or market testing.

40. Which of the following situations, if any, would be an improper reason for holding a patent application abandoned?

a) Failure to respond to a requirement of the examiner to correct a response to an Office action in the application which the examiner has determined not to be fully responsive.

b) The agent of record files a letter of express abandonment of the application. c) Withdrawal of an appeal in the application which contains only two claims - an independent

claim which was rejected over prior art and a dependent claim which was objected to as being allowable except for its dependency on the independent claim.

d) Copying claims from a U.S. patent which the examiner used to reject all of the claims in the application under 35 U.S.C. 102.

e) None of the above.

13

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

a) Division b) Continuation-in-part c) Substitute d) Continuation e) None of the above.

42. The last day of a three month shortened statutory period to respond to a non-final rejection occurs today, April 8, 1992. Your client is overseas and sends you a telex asking you to cancel all of the current claims in the application. He further advises you that a new set of claims to replace the current claims will be sent to you on or after April 15, 1992. Which of the following would be the n1ost appropriate course of action to take with regard to the outstanding Office action?

a) File a request for a one month extension of time today and pay the fee when you file the amendment.

b) File an amendment today canceling all claims in accordance with your client's instructions. c) Await receipt of the new claims and then file the amendment and request for reconsideration

with the appropriate fee for an extension of time, no more than 6 months from the date of the non-final rejection.

d) File a request for reconsideration today and state that a supplemental amendment will be forthcoming.

e) File a request for reconsideration today and the argue the rejection.

43. Practitioner Carter mailed a U.S. patent application to the PTO by first class mail with a proper certificate of mailing dated May 1, 1991. The application was received in the PTO mailroom on May 6, 1991. In a first Office action dated October 15, 1991, the examiner rejected all the claims in the application. The examiner set a three month shortened statutory period for response. On January 15, 1992, Carter mailed a continuation application of the prior application by first class mail with a proper certificate of mailing dated January 15, 1992. The continuing application was received in the PTO on January 17, 1992. The original application was allowed to go abandoned for failure to respond to the first Office action. What is the effective filing date of the continuation application?

a) May 1, 1991 b) May 6, 1991 c) October 15, 1991 d) January 15, 1992 e) January 17, 1992

44. What is the benefit to the patent applicant for establishing small entity status? a) Reducing the applicant's burden of proving that his or her invention is patentably distinct from

the prior art. b) Reducing the fee for petitioning the Commissioner to invoke his supervisory authority in an

appropriate circumstance. c) Reducing the fee for petitioning the Commissioner to suspend the rules. d) Reducing the fee for mailing communications to the PTO with a certificate of mailing. e) Reducing the fee for maintaining an original or reissue patent based upon an application filed

on or after August 27, 1982.

14

45. Upon surrendering of a patent and payment of the required fee, the Con1n1issioner may reissue a patent for an invention disclosed in the original patent. Which of the following would not be a valid reason for filing a reissue application in the PTO?

a) Applicant's failure to timely file a divisional application. b) Applicant's failure to adequately claim priority in an earlier filed copending U.S. patent

application. c) The attorney who prosecuted the patent failed to appreciate the full scope of the invention. d) The disclosure of the patent contains inaccuracies which affect the scope of the claims. e) Applicant failed to or incorrectly claimed foreign priority.

46. In a first action on the merits dated February 12, 1992, the examiner (i) rejected all of the claims under 35 U.S.C. 112, second paragraph, (ii) objected to new matter added to the specification by a preliminary amendment, and (iii) required a substitute specification that includes a revised summary of invention, abstract, and an additional drawing showing the prior art. You, as a patent practitioner prosecuting the application, disagree with the propriety of the rejection, objection and requiren1ent. Which of the following would be the most appropriate course of action to take to respond to the examiner's action?

a) File a petition requesting withdrawal of the examiner's objection to the specification, and suspension of further action on the claims until three months after the petition has been decided.

b) File a request for reconsideration and present arguments distinctly and specifically pointing out any errors in the examiner's requirement and respond to the rejection and objection.

c) Appeal the objection and requirement of the examiner to the Board of Appeals and Interferences, and request that the final rejection of the claims be suspended until the appeal is decided.

d) Amend the claims to overcome the examiner's rejection under 35 U.S.C. 112, and file a motion appealing the examiner's objection to the specification.

e) Change the summary of invention to conform to the broadest claim, request reconsideration of the requirement for a substitute specification, and request that the requirement for submission of the additional drawings be held in abeyance until after allowance of the application.

47. You are a registered practitioner and receive a final rejection in a patent application your are prosecuting from the examiner dated Tuesday, September 17, 1991. The examiner set a three month shortened statutory period for response. If you file a Notice of Appeal on the last day of the three month shortened statutory period, what would be the very last date on which the Appeal Brief could be filed, along with the petition and appropriate fee requesting the maximum allowable extension of time permitted under PTO rules?

a) Tuesday, December 17, 1991 b) Monday February 17, 1992 (Federal Holiday) c) Tuesday, February 18, 1992 d) Tuesday, March 17, 1992 e) Wednesday, June 17, 1992

15

48. Stone is a registered patent practitioner. Zach seeks Stone's services to prepare and file a patent applica~ion on a highly complex biotechnology invention. Zach indicates that he cannot pay Stone's normal fees because he has limited funds and because he has been unsuccessful in attracting investors. Which of the following arrangements, if any, may Stone ethically make with Zach?

a) Zach will do the bulk of the search and drafting work. Stone will provide limited advice and assistance to Zach. As consideration, Zach agrees to pay $1000 to Stone and not to assert any charge of p~ofessional misconduct or negligence against Stone.

b) Stone will, with Zach 's permission, have all of Zach 's work done "as a training exercise without supervision" by a newly-registered practitioner in Stone's office who Stone knows is not competent to handle a complex biotech case.

c) Stone will do all necessary work for Zach. As consideration, Zach agrees to pay Stone one­third of all sums derived from the licensing, sale or use of any patent obtained for his invention up to a reasonable amount Stone would have charged for the legal services he performed.

d) Stone and Zach will be identified as joint inventors on the application and will share equally in all sums derived from the licensing, sale or use of any patent obtained for Zach's invention.

e) None of the above.

49. Which of the following amendments would be denied entry into a patent application following a non-final Office action?

a) An amendment signed by an registered attorney not of record in the application. b) An amendment canceling all the claims in the application and presenting substitute claims. c) An amendment adding new matter to the specification. d) An amendment cancelling all of the claims which read on the elected invention and presenting

no new claims directed to1 the elected invention. e) All of the above.

50. An original application was prosecuted through final rejection. All of the claims in the original application were properly rejected by the examiner as being obvious over two patent references. The applicant allows the application go abandoned for failure to respond to the final rejection. Two years after the abandonment, the applicant files a substitute application in which all of the claims are identical to those in the original application. The substitute application does not make reference to the original application. The examiner __ make a final rejection in the substitute application in the first Office action on the merits ------

a) can .. provided any assignment in the original application has been applied to the subsitute application.

b) can .. because the claims would have been properly finally rejected in the next Office action on the art of record in the original patent application.

c) can .. because the subsitute application is entitled to the filing date of the original application. d) cannot .. because applicant is entitled to a new search and further consideration of the claims

presented in the substitute application. e) cannot .. because the subsitute application does not identify and make reference to the original

application.

END OF THE MORNING SECTION EXAMINATION

16

Test Number 014A

Test Series 192 NAME ____________________ __

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

REGISTRATION EXAMINATION FOR PATENT ATTORNEYS AND AGENTS

April 8, 1992

Afternoon Section (100 Points) Time: 3 Hours

DIRECTIONS

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

This Section of the examination consists of TWO (2) PARTS. Part I is directed to drafting at least one clain1 and a response to an Office action. You must write your answer to Part I in the Answer Book provided by the proctor. Part II presents a fact pattern which is followed by a set of fourteen (14) multiple choice questions. The point value of each multiple choice question is three (3) points. All questions in Part II must be answered on the Answer Sheet which is provided to you by the proctor. Your answer must conform to the policy, practice and procedure which must, shall or should be followed in accorqance with the patent statutes, PTO rules, and the Manual of Patent Examining Procedure (MPEP). Where the term "PTO" or "Office" is used in this examination, it means the U.S. Patent and Trademark Office.

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

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

OR TO BEGIN THE EXAMINATION

PART I (58 Points)

INSTRUCTIONS: This question is directed to drafting a response to an Office action. Read the fact pattern below and prepare a response (26 points) which includes a single new claim (32 points) in accordance with the directions which follow the fact pattern.

For purposes of this part of the examination, you are a registered patent agent having registration number 66,666. Sam Spark, Judy Joule and Ted Testube came to your office in February, 1992, and asked you to help them prosecute their patent application. The application discloses and claims two methods of making an electrochemical cell. The patent application was filed in the PTO on January 2, 1991, and named Judy Joule, Sam Spark and Ted Testube as inventors. The inventors titled their invention "A Method Of Making An Electrochemical Cell." The application was assigned Serial No. 08/999,999 and was assigned to Patent Examiner Al Bright in Group Art Unit 1104. The application complied fully with all requirements of 35 U.S.C. 112 and 37 CFR 1.53, and included a proper oath signed by each of the inventors. The inventors provided you with a copy of the application as filed.

The inventors told you that Battery Corporation manufactures an electrochemical cell by a process which involves using a flat "U" shaped spring with two legs. The electrochemical cell manufactured by Battery Corporation is illustrated in FIGS. 1 and 2 below and is described in Battery Corporation's sales brochure. FIG. 2 is a cross-sectional view of FIG. 1 along section line 2-2. The brochure has been distributed to Battery Corporation's customers since 1988. A copy of the sales brochure was submitted with the patent application in an information disclosure statement.

FIG. 2

FIG. 1

2

The following is the pertinent portion of the sales brochure which describes the electrochen1ical cell illustrated in FIGS. 1 and 2:

The electrochemical cell includes a cylindrical container 2 which is electrically conductive. The container must be made of metal and is preferably stainless steel or any corrosion resistant nickel alloy. A porous cathodic collector 4 is formed before tubular separator 6 is inserted into the cell. A fine powder of acetylene black (carbon) and Teflon® (trademark for polytetrafluoro­ethylene) is molded into two half cylindrical annular members. The annular members are inserted into the container and heated for 30 minutes at 370° F. to expand the members so that they become locked firmly in the container. Separator 6 is made of non-woven glass fibers, which is inserted into container 2 and is in surface contact with the cathode collector material. The bottom end 8 of the separator 6 is radially folded inwardly, supporting a bottom separator 10. The cell further includes two half cylindrical anode members and 20 made of lithium having flat end surfaces 16, 18, 22, and 24. Both half cylindrical anode members collectively form the anode of the cell. A flat "U" shaped spring member 28 with legs 32 and 34 was compressed and inserted into the axial opening 26 defined by the anode members. When the compressive force on the spring member is released, the anode is mechanically biased radially outward thereby imparting a good physical contact between the anode, separator and cathode collector of the cell. Electrically conductive backing screens 15 and 17 are necessary to provide a substantially uniform and continuous pressure contact over the inner wall of the anode members. An extended leg 30 of the spring member 28 is projected through a central opening 38 in insulating disc 36 and then welded to a two part stainless steel cover consisting of elements 40 and 42 which are welded to each other. Before sealing the cover to the container, the voids in the container must be filled with an conventional electrolyte solution consisting of LiA1Cl4 (lithium aluminum tetrachloride) and S02Cl2 (thionyl chloride). The electrolyte solution must permeate through the anode, separator and cathode collector of the cell. The separator material must have a porosity of at least 25%, preferably about 45%, so as to permit the electrolyte to permeate through and contact the anode, thus establishing an ion-transfer path between the anode member and the cathode collector material. The insulating disc 36 has a peripheral depending skirt 44 disposed between cover 40 and the upper inner wall of the container 2 for sealing the cell through a conventional crimping technique.

The inventors explain to you that the reason for mechanically biasing the anode is to prevent an increase in the internal resistance in the cell. If the cell is assembled without biasing the anode, initially there is good contact between the anode, separator and cathode collector. However, as the cell discharges, the contact between these components decreases as the anode material is dissolved and electrochemically reacts with the cathode collector material. The reaction results in a decrease in the volume of the anode and in an increase the length of the electrolyte path between the anode and cathode collector which results in an increase of the internal resistance in the cell. By biasing the anode, as the anode members are being consumed during discharge, the resilient biasing means will exert a force against the anode thereby maintaining good physical and ionic contact between the anode members, separator, and the cathode collector of the cell.

As you talk to the inventors, you discover that each inventor made a separate contribution to the invention. Sam Spark and Judy Joule were aware of difficulties which Battery Corporation was encountering in inserting the spring member into the axial cavity of the cell. The "U" shaped spring member was difficult to compress and insert in the cell without damaging the anode members. Spark and Joule separately conceived alternative methods to solve the problem.

3

Spark conceived the idea of using a compressed cylindrical spring. His cell is illustrated below in FIG. 3:

The cell made by Spark is substantially the same as the Battery Corporation cell except for the configuration of the anode members and the spring means. It includes a container 2, cathode collector 4, and separator 6. However, Spark used a three-member lithium anode comprising a first arcuate member 52, a second arcuate member 54, and a third arcuate member 56. Spark took a rectangular sheet of screen material having spring-like properties and coiled it into a compressed cylindrical shape with the ends of the sheet overlapping. He inserted the screen 57 into the axial opening 58. When the spring member was released, it provided uniform pressure on the anode members against the separator and the cathode collector.

FIG. 3

Judy Joule discovered a method of making a cell substantially identical to that made by the Battery Corporation except that she used a cylindrical spring on which a sheet of anode material (lithium) was wrapped before the spring was inserted into the axial cavity in the cell. She also discovered that the useful life and the total energy output from the cell was increased because the anode surface area in contact with the separator was increased. Figures 4-7 illustrate Joule's inventive concept:

t7

19

FIG. 4 FIG. 5

4

35 37

2 33 4

9

FIG. 7

FIG. 6

Joule described her contribution to the invention as follows. The cell includes metal container 2, porous cathode collector 4, and tubular separator 6. See FIG. 6 which is an end view of FIG. 7 without the cover 37 and conductive lead 29. The container and the cathode collector form a first terminal for· the cell. The porous cathode collector is made in accordance with the teachings of the Battery Corporation brochure. It is essential that the separator have a porosity of at least 25o/o. This structure is substantially identical to the Battery Corporation cell. A rectangular sheet of stainless steel is used for spring 9. The thickness of the sheet is not critical. The sheet is formed, for example by cutting or stamping, to fit whatever size cell is being assembled. The two opposing ends of the sheet are bent to form flanges 11 and 13 as shown in FIG. 4. A split mandrel 5, illustrated in FIGS. 4 and 5, is used to insert the spring into the axial cavity 33 of the cell. The length of the flanges from the bend to the end is the same as the depth of slot 17 of the mandrel. One of the flanges is inserted into slot 17 of the mandrel and the mandrel is rolled along the sheet until the second flange is reached and also inserted into slot 17. The compressed sheet of spring material forms a compressed longitudinally split cylindrical shaped spring. The mutual pressure exerted by the opposing flanges facing each other keeps the spring from uncoiling. After the spring material is wrapped about the mandrel, a sheet of lithium metal19 is wrapped about the compressed spring, in a way which is mechanically similar to wrapping aluminum foil wrap around an object. See in FIGS. 4 and 5. Lithium metal forms the anode element of the cell. Opposing edges 21 and 23 of the lithium sheet are aligned with the bend edges of flanges 11 and 13 so that the lithium sheet will not be stretched when the spring is released. The mandrel is inserted into the axial cavity- 33 of the container 2. A plastic push rod, not illustrated in the drawings, is used in slot 17 to push flanges 11 and 13 while the mandrel is extracted from the axial cavity of the cell to release the spring and anode assembly. The released spring presses the anode 19 radially outwards against the separator 31. Because there is only one slot in the anode in this assembly, more anode material can be inserted into the cell and the surface area in contact with the separator is significantly larger than with the Battery Corporation process, thus providing a cell with longer useful life. As shown in FIG. 7, a conductive lead 29 of nickel can be fastened to either one of flanges 11 and 13. Lead 29 is then welded at 35 to a suitable metal cover 37. The metal cover is used to close the container 2 using an insulating disc in the same manner as disc 36 disclosed in the Battery Corporation brochure. The anode 19, spring 9, conductive lead 29, and cover 37 form the second terminal of the cell. Prior to closing, an electrolyte solution, such as that disclosed in the Battery Corporation brochure, is added to the container. Joule tells you that although any means equivalent to the mandrel can be used to compress the spring, the essential steps

5

of her invention include forming the compressed spring, wrapping the anode material over the spring, and inserting and releasing the spring in the axial cavity of the container.

Ted Testube 's contribution to the invention was a novel method of making the cathode collector. The cathode collector must be porous to pern1it permeation of the electrolyte solution. The Battery Corporation cell had 40% interconnected voids in the cathode collector. Ted's invention increased the percentage of interconnected voids in the cathode collector to more than 65o/o, which resulted in longer battery life. Ted used a fine powder consisting of carbon (acetylene black) and Teflon® and molded two half.ccylindrical annular members. The annular members were inserted into the metal container for the electrochemical cell and heated for exactly 2 minutes at 360° F. and then at 390° F. for exactly 12 minutes. The heating operation is very critical to forming the porous cathode collector having at least 65o/o interconnected voids. Heating also expands the members so that a single porous cathode collector is formed which is firmly locked in contact with the container.

All of the facts given above by the inventors are disclosed and supported in their patent application. The application as filed contains two claims. Claim 1 is directed to a method of making an electrochemical cell encompassing the contributions of Sam Spark and Ted Testube. Claim 2 is directed to a method of making a closed electrochemical cell encompassing Testube's method for forming the cathode collector and Joule's method for forming the spring biased anode. Spark, Joule and Testube signed a power of attorney granting you authority to represent them before the PTO. You filed the power of attorney in the PTO on March 1, 1991. On Friday, April 3, 1992, you received a written restriction requirement dated April 1, 1992 from Examiner Bright. The examiner made a proper two way restriction grouping each claim as a separate and distinct invention and setting a one month shortened statutory period for response. The Office action requires the applicants to elect one of the inventions. You have consulted with the inventors and they decided to elect without traverse the invention of claim 2, and to cancel claims 1 and 2 and present a single new claim to the elected invention.

Prepare a complete response to the restriction requirement. Your new claim must be the broadest method claim which includes all necessary steps to form a closed electrochemical cell containing an electrolyte solution and comprising metal container 2, separator 6, porous cathode collector formed from two half cylindrical annular members, anode 19, spring means 9 formed from a rectangular sheet of spring material, flanges 11 and 13, metal cover 37, and conductive lead 29. The claim must set forth the novel contributions of Judy Joule and Ted Testube. Do not include the names of chemical elements, compounds or compositions in your claim. You may not be your own lexicographer to name the elements of the disclosed invention. You must use the terminology set forth in the fact pattern above. You work for a Washington, DC law firm. The response to the Office action will be hand delivered, and not mailed, to the PTO Mail Room before April 20, 1992 by a messenger employed by your firm. To be considered complete, your response must comply completely with your clients' wishes and include all documents which should be diligently made because of the restriction requirement and your amendments to claims. The response must also comply with PTO rules and with practice and procedure as set forth in the Manual of Patent Examining Procedure. No credit will be given for a Jepson type claim or for a drafting a claim to a non-elected invention. If more than one claim is presented, only the first claim will be graded. If your response requires a fee to be paid, your response must specify the correct fee amount. Points will be deducted, inter alia, for poor grammar, for claiming subject matter not within the scope of the facts set forth above, for using language which is indefinite or which does not have antecedent basis, for missing method steps, and for claiming unnecessary limitations.

6

PART II ( 42 Points)

INSTRUCTIONS: Read the fact pattern given below. Answer the fourteen (14) multiple choice questions which follow the fact pattern. Each question is worth three (3) points.

The most important component of a knife is the alloy composition of the blade. The composition determines the quality of the knife. Blades are normally made of carbon steel or stainless steel. Steel for blades must possess three properties: toughness, hardness and corrosion resistance. Toughness is the ability of the blade to recover from bending and stress without breaking. If the carbon content of the steel is to low, the steel is soft and spring-like. If the carbon content of the steel is too high, the steel becomes too hard and brittle. Hardness is the ability of the steel blade to hold an edge. If the steel is too soft, the blade will not hold an edge very well against materials it is designed to cut. If the steel is too hard, the blade is difficult to sharpen. Corrosion resistance is the ability of the steel to resist rusting, pitting and staining.

Typical carbon steel for knife blades consists of 92-95% iron and 5-8% carbon. When chromium is added to carbon steel, stainless steel is formed which resists rusting and pitting. A well known and conventional stainless steel alloy used for knife blades comprises 73-78% iron, 5-8% carbon and 17-19o/o chromium. However, conventional stainless steel is difficult to sharpen because of its hardness. It also has the disadvantage of being easily stained and of being brittle, i.e. more likely to break under stress.

Able is an employee of Acme Cutlery Company (Acme) and is under an obligation to assign to Acn1e all inventions he makes while employed by Acme. Baker is an employee of Beta Knives (Beta) and is under an obligation to assign to Beta all inventions he makes while employed by Beta. On January 15, 1987, Baker discovered that if nickel, preferably 5% nickel, is added to a conventional stainless steel alloy, the new alloy (hereinafter the B alloy) showed resistance to staining, a property which made it superior to conventional stainless steel. However, the new alloy was still difficult to sharpen and lacked the desired toughness. In April of 1987, despite these known disadvantages, Acme began using the new alloy in the manufacture of its knife blades. Baker published an article describing his new alloy and its properties and use as steel for knife blades in the Journal of Metallurgy, which was received by subscribers in the United States on March 6, 1987.

On July 1, 1987, Acme and Beta entered into a joint venture to make a stainless steel alloy which could be tough enough to bend without breaking, and hard enough to hold an edge against materials it is designed to cut, but soft enough to be easily sharpened. Acme and Beta agreed to share all research and legal costs equally and to share equally in the ownership of any patents and patent applications which_. may result from the research, i.e. each company would have a 50% interest in any such patent application or patent.

Acme and Beta assigned Able and Baker, respectively, to work jointly in the research effort. On August 3, 1987, Able and Baker began their research efforts with the full knowledge and agreement that they were under an obligation to assign to Acme and Beta any inventions made as a result from their research while working on the joint venture in accordance with the joint venture agreement. On January 19, 1988, Able and Baker jointly discovered a new alloy (the AB alloy) made by adding 0.2% vanadium to the B alloy. When the new alloy was forged into a knife blade and attached to a handle and tested, the blade had the toughness and hardness properties desired by Acme and Beta. Able and Baker disclosed their new alloy composition, and its properties and usefulness for knife blades, in an article in the February 1988 issue of Alloy Art, a monthly newsletter for reporting new developments in the

7

alloy art. The newsletter was received by subscribers in the United States on February 16, 1988. On February 12, 1988, Able and Baker executed an assignment of the invention to both Acme and Beta in accordance with the joint venture agreement. On the same date, they also executed the patent application papers (the Able-Baker application). The Able-Baker application was filed in the PTO on February 16, 1988. The specification included the following statement regarding the AB alloy and the B alloy:

A stainless steel alloy comprising iron, carbon, chromium, and nickel is useful as a blade for knives, especially when the alloy contains 5% nickel. When 0.2% vanadium is added to this stainless steel alloy, the new alloy has improved toughness and hardness properties ideal for knife blades.

The application complied with all of the requirements of 35 U.S.C. 112 and 37 CFR 1.53. The assignment was not recorded in the PTO. The application contained the following claims:

1. An alloy composition comprising iron, carbon, chromium, nickel, and 0.2% vanadium.

2. A cutting means comprlSlng a handle portion and a blade portion, said blade portion comprising an alloy of iron, carbon, chromium, nickel, and 0.2% vanadium.

On January 25, 1988, Baker returned to his laboratory at Beta, but Able continued to do more research on the joint venture project. On February 23, 1988, Able made a new alloy (the A alloy) by adding 1.0% molybdenum to the AB alloy. When the new alloy was forged into a knife blade and attached to a handle and ·tested, the blade had toughness and hardness properties which were superior to the AB alloy. On March 1, 1988, Able executed an assignment of his invention to Acme and Beta in accordance with his obligation to the joint venture agreement, and he also executed a patent application (the Able application). The Able application was filed in the PTO on March 3, 1988. The assignment for the Able application was not recorded in the PTO. The Able application complied with all of the requirements of 35 U.S.C. 112 and 37 CFR 1.53. The application contained the following claims:

1. An alloy composition comprising iron, carbon, chromium, nickel, 0.2% vanadium, and 1.0% molybdenum.

2. A cutting means comprising a handle portion and a blade portion, said blade portion comprising an alloy of iron, carbon, chromium, nickel, 0.2% vanadium, and 1.0% molybdenum.

On February 29, 1988, Baker executed a patent application (the Baker application) and an assignment of the application to Beta. The application was filed in the PTO on March 4, 1988. The Baker application complied with all of the requirements of 35 U.S.C. 112 and 37 CFR 1.53. The application contained the following claims:

1. An alloy composition comprising iron, carbon, chromium, and nickel.

2. A cutting means having a handle portion and a blade portion comprising iron, carbon, chromium, and 5% nickel.

8

Answer Questions 1-14 below and record your answers in SECTION 1 on your Answer Sheet. You must use a No. 2 (or softer) lead pencil to record your answers on the Answer Sheet. Where the question includes a statement with blanks, select the choice which will make the statement true. Each question is worth three (3) points. Unless otherwise specified, do not assume any facts not presented in the fact pattern above or in the questions belo·w·. Consider each question independently of the others. Questions are answered by darkening the circle on the Answer Sheet containing the letter corresponding to the letter preceding the answer chosen. Questions answered by darkening more than one circle will be considered as being incorrectly answered. You must keep your mark within the circle. Erase completely all marks except your answers. Any stray marks may be result in erroneous scoring of your Answer Sheet. No points are awarded for incorrect answers or unanswered questions.

1. The Baker article published in the Journal of Metallurgy is available as a prior art reference against the claims of the Able-Baker application under ____ _

a) 35 U.S.C. 102(a) b) 35 U.S.C. 102(b) c) 35 U.S.C. 102(e) d) 35 U.S.C. 102(a) and 102(e) e) 35 U.S.C. 102(a) and 102(b)

2. The Able and Baker article published in the Alloy Art newsletter __ available as a prior art reference against the claims of the Able application because ____ _

a) is not .. the Able-Baker invention was known by others before Able's invention. b) is not .. the article is disqualified as prior art under the second paragraph of 35 U.S.C. 103. c) is not .. Able is a coauthor of the article. d) is .. the Able-Baker invention is claimed in the Able-Baker application. e) is .. the article was published before the date of Able's invention.

3. Claim 1 of the Able application is provisionally rejected under 35 U.S.C. 102(g)/103 as being obvious over the Able-Baker application in view a 1984 publication which shows that the addition of 1.0% molybdenum to the AB alloy would have been obvious. The examiner has made a prima facie case of obviousness. The rejection __ be overcome ____ _

a) cannot .. because the applications have a common inventor. b) cannot .. because the Able-Baker application would be qualified prior art. c) can .. by filing a proper request for reconsideration arguing that a provisional rejection is not -

proper under PTO practice and procedure. d) can .. by combining the subject matter of the applications into a single application claiming

the benefit of the filing date of the Able and Baker application and abandoning the copending applications.

e) can .. by presenting evidence that the AB alloy invention and the A alloy invention were are commonly owned when the A alloy was made.

9

4. Claim 1 of the Baker application is provisionally rejected under 35 U.S.C. 102(e) as being anticipated by the Able-Baker application. The rejection __ be overcome ____ _

a) cannot .. because the Able-Baker application was filed before the Baker application. b) cannot .. because the inventions are not commonly owned. c) can .. by filing a proper request for reconsideration arguing that a provisional rejection is not

proper under PTO rules of practice and procedure. d) can .. by filing an affidavit by Baker with a copy of the article in the Journal of Metallurgy

to establ1sh a prior date of invention. e) can .. by arguing in a request for reconsideration that Baker has a prior date of invention-for

the unclaimed subject matter disclosed in the Able-Baker application.

5. The Able-Baker application issued as a patent while the Able application was pending. Claim 1 of the Able application is rejected under 35 U.S. C. 102(e)/103 as being obvious over the patent in view a 1984 publication which shows that the addition of l.Oo/o molybdenum to the AB alloy would have been obvious. The examiner has made a prima facie case of obviousness. The rejection __ be overcome

a) cannot .. because the patent and the application have a common inventor. b) cannot .. because Able did not make his invention before the filing date of the Able-Baker

application. c) can .. by presenting evidence that the AB alloy invention and the A alloy invention were are

commonly owned when the A alloy was made. d) can .. by arguing in a request for reconsideration that the patent is disqualified prior art. e) can .. by filing an affidavit showing that Able derived his invention from Baker.

6. The Able-Baker application issued as a patent while the Able application was pending. Claim 1 of the Able application is rejected on the ground of obviousness type double patenting over the patent in view a 1984 publication which shows that the addition of 1.0% molybdenum to the AB alloy would have been obvious. The examiner has made a prima facie case of obviousness. The rejection __ be overcome ____ _

a) cannot .. because, at the time the inventions were made, the invention were not commonly owned.

b) cannot .. because the Able application was filed after the Able-Baker application. c) can .. by filing a terminal disclaimer in the Able application. d) can .. by showing that Baker made his invention before Able and Baker made their invention. e) can .. by filing a request for reconsideration and arguing that Able and Baker were the first

to file their application for patent.

7. The invention claimed in the Able application is patentably distinct from the invention claimed in the Baker application. If the Able application issued as a patent while the Baker application was pending and the article in the Journal of Metallurgy is disclosed in Able patent, the claims of the Baker application __ anticipated by the patent _____ _

a) are not .. because the article is disqualified as prior art under the second paragraph of 35 U.S.C. 103.

b) are not .. under 35 U.S.C. 102(a). c) are .. because the claims are patentably distinct. d) are .. under 35 U.S.C. 102(e). e) are .. under 35 U.S.C. 102(g).

10

For Questions 8-14 only, add the following facts in the fact pattern.

The Baker application issued on January 21, 1990 as Patent No. 7,777,777. On March 2, 1992, a reissue application was filed on the Baker patent. No new matter was added to the application. In a reissue oath signed by Baker, he avers that he had claimed less than he had a right to claim in his original patent because he did not appreciate the full scope of his invention, that the errors arose without deceptive intent, and that he acknowledges his duty to disclose information which he may be aware of which is material to the examination of the reissue application. The claims Baker presented in the reissue application when filed in the PTO are as follows:

1. An alloy composition comprising iron, carbon, chromium, and 5% nickel.

2. A [cutting means] knife having a bone handle portion and a blade portion comprising iron, carbon, chromium, and [5%] nickel.

[3. A cutting means having a handle portion and a blade portion comprising iron, carbon, chromium, and 5% nickel.]

~ An alloy composition comprising iron, carbon, chromium, and nickel.

~ A cutting means having a handle portion and a serrated blade. portion comprising iron, carbon, chromium, and nickel.

Baker's original patent included claims 1-3. All subject matter being claimed in the reissue application is fully supported in the original patent disclosure under 35 U.S.C. 112. The application includes the written consent of the assignee.

8. If claim 2 is amended a second time to delete the word "bone" and substitute "cutting means" for "knife", a proper second amendment to the claim would be:

a) A cutting means [knife] having a [bone] handle portion and a blade portion comprising iron, carbon, chromium, and [5%] nickel.

b) A cutting means having a handle portion and a blade portion comprising iron, carbon, chromium, and [5%] nickel.

c) A cutting means having a [bone] handle portion and a blade portion comprising iron, carbon, chromi urn, and [ 5%] nickel.

d) A [knife] cutting means having a handle portion and a blade portion comprising iron, carbon, chromium, and nickel.

e) A [knife] cutting means having a [bone] handle portion and a blade portion comprising iron,_. carbon, chromium, and nickel.

9. The cancellation of claim 3 is ____ _ a) improper because an original patent claim cannot be canceled. b) improper because an original patent claim can only be canceled by specific directions to cancel

the entire claim. c) improper because by canceling the claim, the scope of the remaining claims is enlarged. d) proper because the claim is unpatentable over the prior use by Acme. e) proper because the entire claim is enclosed in brackets.

11

10. The numbering of claims 4 and 5 is ____ _ a) improper because claims 4 and 5 are narrower in scope than the original patent claims. b) improper because by canceling claim 3, the new claims should have been numbered as claims

3 and 4. c) improper because the reissue claims were not amended in accordance with 37 CFR 1.121. d) proper because entire claim 3 is enclosed in brackets. e) proper because original claims should not be renumbered.

11. Charlie, the president of Knives, Inc which is a competitor of Beta, came to the PTO requesting access to the Baker reissue application. He did not give any reasons for access to PTO personnel. Charlie will be -----

a) denied access because all pending reissue and non-reissue applications are confidential under 35 U.S.C. 122.

b) denied access because Charlie did not present any reasons for access. c) granted access if Charlie pays the required petition fee for access. d) granted access because a member of the public is entitled to access to reissue applications. e) granted access because Charlie is granted limited recognition under 37 CFR 10.9.

12. Claim 5 of the reissue application __ be rejected under 35 U.S.C. 251 because ____ _ a) will not .. no new matter has been introduced into the specification and claims. b) will not .. the oath was not accompanied by the written assent of Beta. c) will .. Baker seeks to enlarge the scope of the claims. d) will .. the assignee does not own an undivided interest in the Baker patent. e) will .. the claim was improperly presented in that the claim number should have not been

underlined.

13. A U.S. patent issued in 1985 to Smith disclosing, but not claiming, an alloy composition comprising iron, carbon, chromium, and 5% nickel. Baker did not derive his invention from Smith. Claim 1 in the reissue application __ be rejected under 35 U.S.C. 102 over Smith because

a) cannot .. claim 1 has not been amended. b) cannot .. Smith did not claim the alloy. c) cannot .. the ground for seeking reissue was not to raise a new question of patentability with

regard to claim 1. d) can .. any original claim if represented in a reissue application is subject to reexamination. e) can .. the alloy of claim 1 would be unobvious over Smith.

14. During the prosecution of the original patent application, Baker deliberately cancelled claim 1 as it was originally presented in his patent application filed on March. 4, 1988 to overcome a proper rejection by the examiner over anticipatory prior art. Claim 4 in the reissue application __ be rejected under 35 U.S.C. 251 because ____ _

a) cannot .. the clajm is fully supported by the original patent disclosure. b) cannot .. Baker avers in his reissue oath that he had claimed less than he had a right to claim

in his original patent. c) can .. Baker seeks to recapture subject matter cancelled in the original patent application. d) can .. Beta does not own an undivided interest in the Baker patent. e) can .. the claim contains new matter.

12