Patent Bar Practice Exam Questions || A+ Verified Solutions.
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Patent Bar Practice
Which of the following practices or procedures may be properly employed to overcome a rejection properly based only on AIA 35 USC 102(a)(2)?
A. Persuasively arguing that the claims are patentably distinguishable from the prior art.
B. Filing an affidavit or declaration under 37 CFR 1.130 showin...
which of the following practices or procedures may
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Patent Bar Practice Exam Questions || A+ Verified Solutions.
Which of the following practices or procedures may be properly employed to overcome a
rejection properly based only on AIA 35 USC 102(a)(2)?
A. Persuasively arguing that the claims are patentably distinguishable from the prior art.
B. Filing an affidavit or declaration under 37 CFR 1.130 showing that the reference invention is
not by "another."
C. Filing an affidavit or declaration under 37 CFR 1.130 showing common ownership if the
reference is not a U.S. patent that either claims the same invention or claims an obvious variation
of the subject matter in the rejected claim(s).
D. (A) and (C).
E. (A) (B) and (C). correct answers E.
(MPEP § 717.02(a) under the heading "B. Requirements to Establish Common Ownership.)
The specification in your client's patent application has been objected to for lack of enablement.
To overcome this objection your client may do any of the following except:
A. traverse the objection and specifically argue how the specification is enabling.
B. traverse the objection and submit an additional drawing to make the specification enabling.
C. file a continuation-in-part application that has an enabling specification.
D. traverse the objection and file an amendment without adding new matter in an attempt to
show enablement.
E. traverse the objection and refer to prior art cited in the specification that would demonstrate
that the specification is enabling to one of ordinary skill. correct answers (B) is the most correct
answer.
35 U.S.C. § 113 reads "Drawings submitted after the filing date of the application may not be
used (i) to overcome any insufficiency of the specification due to lack of an enabling disclosure."
Which of the following is in accordance with the provisions in the MPEP?
A. In order to correct inventorship in a nonprovisional application where the statement of the
lack of deceptive intent is not available from an inventor to be added a petition under 37 CFR
1.181 may be properly filed.
B. If a person A learns that a patent application has been filed by person B without naming A as
coinventor A may file in the USPTO a petition that protests inventorship and directs B to add A's
name as a coinventor to the patent application.
C. If the application is involved in an interference and a petition under 37 CFR 1.48 is filed to
correct inventorship the PTAB will remand the case to the primary examiner for consideration of
the petition to ensure that a search of the relevant prior art is performed.
D. When a submission under 37 CFR 1.130 is attempted by the practitioner the acceptance
decision will be made by the Techno correct answers E.
,Adams filed Application X on March 1, 2021. Beth filed application Y on May 1, 2021. Neither
application has been published. Applications X and Y are copending and commonly assigned.
Earlier filed application X claims the same invention as claimed in application Y using identical
language. In accordance with the MPEP which of the following actions should the examiner or
assignee follow?
A. The claims to the same invention in application Y should be rejected under 35 USC 102(a)(1)
as being anticipated by application X.
B. The claims to the same invention in application Y should be rejected under 35 USC 102(a)(2)
as being anticipated by application X.
C. The claims to the same invention in application Y should be rejected under 35 USC 102(a)(2)
as being provisionally anticipated by application X.
D. The common assignee should file a terminal disclaimer in application Y to avoid any question
of double patenting.
E. The correct answers (C) is correct. 35 U.S.C. § 102(a)(2); MPEP § 804.
(C) is correct because section I. of MPEP § 706.02(f) states "If (1)...the applications are
commonly assigned and (2) the effective filing dates are different then a provisional rejection of
the later filed application should be made."
Which of the following practices or procedures may be properly employed to overcome a
potential rejection properly based on 35 USC 102(a)?
A. Perfecting a claim to priority under 35 USC 119(a)-(d) based on a foreign application having
a foreign priority filing date that antedates the reference.
B. Filing a declaration under 37 CFR 1.131 showing that the cited prior art antedates the
invention.
C. Filing a declaration under 37 CFR 1.132 showing that the reference invention is by "others."
D. Perfecting priority under 35 USC 119(e) or 120 by in part amending the declaration of the
application to contain a specific reference to a prior application having a filing date prior to the
reference.
E. (A) (B) (C) and (D). correct answers
Which of the following is not in accordance with the provisions of the MPEP?
A. If there is a discrepancy between the information submitted in an application data sheet and
the information submitted elsewhere in the application the application data sheet will control.
B. A patent examiner should object to text of a patent application if it contains an embedded
hyperlink and /or other form of browser-executable code.
C. All patent applicants should use the English units of measurement followed by the equivalent
metric units when describing their inventions in the specifications of patent applications.
D. The paper used for patent applications must have a surface such that amendments may be
written thereon in ink; so-called "Easily Erasable" paper having a special coating so that erasures
can be made more easily may not provide a permanent copy as is required.
E. The following documents may be submitted to the Office correct answers C.
, according to MPEP § 608.01
The procedures in the MPEP do not require an applicant claiming foreign priority in a
nonprovisional utility application to:
A. submit the certified copy of the priority document within the later of four months from the
U.S. filing date or within 16 months from the priority date.
B. identify the foreign application for which priority is being claimed as well as any foreign
application for the same subject matter having a filing date before that of the application for
which priority is being claimed.
C. file the claim in the application.
D. have the same inventive entity listed in the foreign application as in the U.S. application in
which the priority claim has been filed.
E. identify the intellectual property authority or country in or for which the foreign application
was filed. correct answers (D).
There is no requirement as to the inventive entity being the same.
Which of the following statements does not accord with proper USPTO practice and procedure?
A. A protest may be filed by an attorney or other representative on behalf of an unnamed
principal.
B. Information which may be relied on in a protest includes information indicating violation of
the duty of disclosure under 37 CFR 1.56.
C. While a protest must be complete and contain a copy of every document relied on by the
protestor a protest without copies of prior art documents will not necessarily be ignored.
D. A protest must be submitted prior to the date the application was published or the mailing of a
notice of allowance whichever occurs later provided the application is pending.
E. Since a protestor is not authorized to participate in the prosecution of a pending application
the examiner must not communicate in any manner with the protestor. correct answers (D) is the
best answer.
MPEP § 1901.04.
In which of the following situations considered independently of each other is the original new
or amended claim supported in the application as filed?
A. An amendment to the specification changing the definition of "holder" from "is a hook" to "is
a hook clasp crimp or tong" and no amendment is made of the claim which uses the term
"holder." The amendment is filed one month after the application was filed. There was no
previous supporting disclosure in the specification of the holder being a clasp crimp or tong.
B. An amendment to the specification and claims changing the definition of "holder" from "is a
hook" to "is a hook clasp crimp or tong." The amendment is filed one month after the application
was filed. There was no previous supporting disclosure in the specification of the holder being a
clasp crimp or tong.
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