Patent Test Made from Old Questions (Mambo) || Already
Passed.
1. 4.00.a.6. Which of the following statements is true regarding a product-by-process claim? (A)
Product-by-process claims cannot vary in scope from each other.
(B) Product-by-process claims may only be used in chemical cases.
(C) A lesser burden of proof may be required to make out a case of prima facie obviousness for
product-by-process claims than is required to make out a prima facie case of obviousness when
the product is claimed in the conventional fashion.
(D) It is proper to use product-by-process claims only when the process is patentable.
(E) It is proper to use product-by-process claims only when the product is incapable of
description in the conventional fashion. correct answers C
2. 4.00.a.6. Which of the following statements is true regarding a product-by-process claim? (A)
Product-by-process claims cannot vary in scope from each other.
(B) Product-by-process claims may only be used in chemical cases.
(C) A lesser burden of proof may be required to make out a case of prima facie obviousness for
product-by-process claims than is required to make out a prima facie case of obviousness when
the product is claimed in the conventional fashion.
(D) It is proper to use product-by-process claims only when the process is patentable.
(E) It is proper to use product-by-process claims only when the product is incapable of
description in the conventional fashion. correct answers B
3. 10.00.a.2. On December 31, 1998, Sam Practitioner files a notice of appeal in a patent
application assigned to ABC Corp. after the examiner has rejected all of the claims on prior art.
Within two months he sends in his appeal brief and three months after the examiner's answer is
filed the case is sent to the Board of Patent Appeals and Interferences (Board). Subsequently,
while reading the Official Gazette Sam notices that a patent issued to XYZ Corp. on October 26,
1999, contains claims which read on an unclaimed embodiment in the ABC application, which is
an invention that is not within the scope of the invention claimed in the ABC application. The
ABC application was filed one month after the issuance of the XYZ patent. Upon learning of the
XYZ patent, ABC Corp. wants to provoke an interference by adding additional claims to its
application relating to the previously unclaimed embodiment. It is October 18, 2000 correct
answers C
4. 10.00.a.50. Which of the following is not a USPTO recommendation or requirement? (A)
Claims should be arranged in order of scope so that the first claim presented is the least
restrictive.
(B) Product and process claims should be separately grouped.
(C) Every application should contain no more than three dependent claims.
(D) A claim which depends from a dependent claim should not be separated from that dependent
claim by any claim which does not also depend from the dependent claim.
(E) Each claim should start with a capital letter and end with a period. correct answers C
, 5. 10.00.a.23. Mitch and Mac are named inventors on an international application that is filed in
the USPTO Receiving Office, and designates the United States of America. Mac now indicates
that he will not sign the Request for the international application. Mitch wishes to proceed with
the Request and seeks the advice of their patent agent. Which of the following answers accords
with the provisions of the Patent Cooperation Treaty?
(A) Mitch's agent should sign the Request and accompany it with a statement indicating why it is
believed that Mac refuses to proceed with the Request.
(B) Mitch should sign the request for himself and also sign on behalf of Mac.
(C) Mitch should sign the request and seek a court order to obtain Mac's signature.
(D) Mitch should sign the Request and accompany it with a statement providing a satisfactory
explanation for the lack of Mac's signature.
(E) Mitch should sign the Request and Mit correct answers D
6 . 4.01.p.10. Sally, an employee of Ted, conceived of and reduced to practice a spot remover for
Ted on May 1, 1998. Sally's spot remover was made from water, chlorine, and lemon juice. On
June 2, 1998, Sally filed a nonprovisional U.S. patent application for the spot remover, and
assigned the entire rights in the application to Ted. Sally's assignment was not recorded in the
USPTO, but was referenced in her application. On June 12, 1999, Jane, also an employee of Ted,
having no knowledge of Sally's spot remover, conceived of and reduced to practice a spot
remover for Ted. Jane's spot remover was made from carbonated water, chlorine, and lemon
juice. On May 25, 1999, the USPTO granted Sally a patent. On November 5, 1998, Jane filed a
nonprovisional U.S. patent application for the spot remover. As noted in Jane's application, Jane
assigned the entire rights in her application to Ted. Jane's assignment was duly record correct
answers All are Accepted.
7 . 10.01.a.5. You have agreed to represent an independent inventor in connection with a patent
application that was filed in the USPTO by the inventor on a pro se basis. As filed, the
application included a detailed written description that, when viewed together with four
accompanying color photographs, enabled one of ordinary skill in the pertinent art to make and
use the invention. The application was filed with an inventor's declaration in compliance with 37
CFR 1.63, a small entity statement (independent inventor) under 37 CFR 1.27, and all necessary
small entity filing fees. MEGACORP, a very large multi- national corporation, licensed rights in
the invention after the application was filed.
You have been asked to suggest steps to remove any formal objections that can be expected from
the patent examiner, without incurring unnecessary government fees. You determine that the first
color photograph is the only pra correct answers B
8 . 10.01.p.1. A U.S. patent application discloses a first embodiment of an invention, a
composition made of known materials in equal amounts by weight of A, B, and C. The
application discloses a second embodiment of the invention comprising equal amounts by weight
of A, B, and C, and an effective amount of D, a known material, to reduce excess moisture from
the composition. The application also discloses a third embodiment of the invention comprising
equal amounts by weight of A, B, and C, and an effective amount of D to reduce the acidity of
the composition.
The application fully discloses guidelines for determining an effective amount of D to reduce
excess moisture from the composition, and determining an effective amount of D to reduce the
Passed.
1. 4.00.a.6. Which of the following statements is true regarding a product-by-process claim? (A)
Product-by-process claims cannot vary in scope from each other.
(B) Product-by-process claims may only be used in chemical cases.
(C) A lesser burden of proof may be required to make out a case of prima facie obviousness for
product-by-process claims than is required to make out a prima facie case of obviousness when
the product is claimed in the conventional fashion.
(D) It is proper to use product-by-process claims only when the process is patentable.
(E) It is proper to use product-by-process claims only when the product is incapable of
description in the conventional fashion. correct answers C
2. 4.00.a.6. Which of the following statements is true regarding a product-by-process claim? (A)
Product-by-process claims cannot vary in scope from each other.
(B) Product-by-process claims may only be used in chemical cases.
(C) A lesser burden of proof may be required to make out a case of prima facie obviousness for
product-by-process claims than is required to make out a prima facie case of obviousness when
the product is claimed in the conventional fashion.
(D) It is proper to use product-by-process claims only when the process is patentable.
(E) It is proper to use product-by-process claims only when the product is incapable of
description in the conventional fashion. correct answers B
3. 10.00.a.2. On December 31, 1998, Sam Practitioner files a notice of appeal in a patent
application assigned to ABC Corp. after the examiner has rejected all of the claims on prior art.
Within two months he sends in his appeal brief and three months after the examiner's answer is
filed the case is sent to the Board of Patent Appeals and Interferences (Board). Subsequently,
while reading the Official Gazette Sam notices that a patent issued to XYZ Corp. on October 26,
1999, contains claims which read on an unclaimed embodiment in the ABC application, which is
an invention that is not within the scope of the invention claimed in the ABC application. The
ABC application was filed one month after the issuance of the XYZ patent. Upon learning of the
XYZ patent, ABC Corp. wants to provoke an interference by adding additional claims to its
application relating to the previously unclaimed embodiment. It is October 18, 2000 correct
answers C
4. 10.00.a.50. Which of the following is not a USPTO recommendation or requirement? (A)
Claims should be arranged in order of scope so that the first claim presented is the least
restrictive.
(B) Product and process claims should be separately grouped.
(C) Every application should contain no more than three dependent claims.
(D) A claim which depends from a dependent claim should not be separated from that dependent
claim by any claim which does not also depend from the dependent claim.
(E) Each claim should start with a capital letter and end with a period. correct answers C
, 5. 10.00.a.23. Mitch and Mac are named inventors on an international application that is filed in
the USPTO Receiving Office, and designates the United States of America. Mac now indicates
that he will not sign the Request for the international application. Mitch wishes to proceed with
the Request and seeks the advice of their patent agent. Which of the following answers accords
with the provisions of the Patent Cooperation Treaty?
(A) Mitch's agent should sign the Request and accompany it with a statement indicating why it is
believed that Mac refuses to proceed with the Request.
(B) Mitch should sign the request for himself and also sign on behalf of Mac.
(C) Mitch should sign the request and seek a court order to obtain Mac's signature.
(D) Mitch should sign the Request and accompany it with a statement providing a satisfactory
explanation for the lack of Mac's signature.
(E) Mitch should sign the Request and Mit correct answers D
6 . 4.01.p.10. Sally, an employee of Ted, conceived of and reduced to practice a spot remover for
Ted on May 1, 1998. Sally's spot remover was made from water, chlorine, and lemon juice. On
June 2, 1998, Sally filed a nonprovisional U.S. patent application for the spot remover, and
assigned the entire rights in the application to Ted. Sally's assignment was not recorded in the
USPTO, but was referenced in her application. On June 12, 1999, Jane, also an employee of Ted,
having no knowledge of Sally's spot remover, conceived of and reduced to practice a spot
remover for Ted. Jane's spot remover was made from carbonated water, chlorine, and lemon
juice. On May 25, 1999, the USPTO granted Sally a patent. On November 5, 1998, Jane filed a
nonprovisional U.S. patent application for the spot remover. As noted in Jane's application, Jane
assigned the entire rights in her application to Ted. Jane's assignment was duly record correct
answers All are Accepted.
7 . 10.01.a.5. You have agreed to represent an independent inventor in connection with a patent
application that was filed in the USPTO by the inventor on a pro se basis. As filed, the
application included a detailed written description that, when viewed together with four
accompanying color photographs, enabled one of ordinary skill in the pertinent art to make and
use the invention. The application was filed with an inventor's declaration in compliance with 37
CFR 1.63, a small entity statement (independent inventor) under 37 CFR 1.27, and all necessary
small entity filing fees. MEGACORP, a very large multi- national corporation, licensed rights in
the invention after the application was filed.
You have been asked to suggest steps to remove any formal objections that can be expected from
the patent examiner, without incurring unnecessary government fees. You determine that the first
color photograph is the only pra correct answers B
8 . 10.01.p.1. A U.S. patent application discloses a first embodiment of an invention, a
composition made of known materials in equal amounts by weight of A, B, and C. The
application discloses a second embodiment of the invention comprising equal amounts by weight
of A, B, and C, and an effective amount of D, a known material, to reduce excess moisture from
the composition. The application also discloses a third embodiment of the invention comprising
equal amounts by weight of A, B, and C, and an effective amount of D to reduce the acidity of
the composition.
The application fully discloses guidelines for determining an effective amount of D to reduce
excess moisture from the composition, and determining an effective amount of D to reduce the
