Post Course Questions

6. When considering whether a method claim embodies an unpatentable abstract idea, which of the following would tend to weigh in favor of patent elibigility?"1.A particular machine or apparatus is incorporated into the claimed method."2.A machine or apparatus is an object on which the method operates."3.The recited machine or apparatus contributes nominally to the execution of the claimed method. A Statement 1 B Statement 2 C Statement 3 D Statement 1 and 2 E Statement 1 and 3.

A

Alexandria Lacey is the inventor of a widgerator. Lacey filed a non-provisional patent application in the United States on March 4, 2013. The originially filed non-provisional application contained claims to a method of using the widgerator and to various embodiments of the widgerator device. The patent examiner issued a restriction between the method and the device. On May 6, 2013, Lacey elected to proceed with the method claims, canceling the device claims. Subsequently, upon receiving international interest from potential licensing partners, Lacey filed an international patent application in the United States on March 3, 2014, which claimed priority to the earlier-filed U.S. patent application and which was identical in scope to the U.S. non-provisional patent application. Because development of the widgerator prototype was moving slower than anticipated, Lacey abandoned the U.S. non-provisional patent application on March 5, 2014, prior to receiving a First Office Action. Having identified the countries with greatest market potential, Lacey entered the national stage in Spain, France, Belgium and Australia, as well as in the United States. After withstanding a variety of rejections in Spain, France and Belgium, the first piece of good news Lacey received was from the Australian patent office, which granted claims drawn to a solar embodiment of the widgerator, which was disclosed in the originally filed U.S. non-provisional patent application. Will Lacey be able to enter the PPH in the United States based on patent claims being granted in the Australian national stage? A Yes, provided that the claims sought in the United States sufficiently correspond to claims granted in Australia. B No. Because there were previous rejections in Spain, France and Belgium, the Office of First Examination has rejected the claims and, therefore, entry into the PPH is prohibited. C No. Because the Office of First Filing was the United States and the patent application originally filed was abandoned, it is no longer possible to enter the PPH in the United States. D No, because in the original non-provisional patent application, Lacey responded to a restriction requirement. E No, because in the original non-provisional patent application, Lacey elected to proceed with only the method claims, and the Australian patent office has granted claims to a particular embodiment of the device.

A

If a patent examiner determines that a claim is patent-ineligible, what happens? A The patent examiner is instructed to still, nevertheless, evaluate the claims under each of the other patentability requirements. B Under the principles of compact prosecution, having determined that the claim is not patent-eligible, the examiner will not further evaluate the claim unless and until the claim is deemed patent-eligible as the result of argument or amendment. C Given that there is significant overlap between 35 U.S.C. 101 and 35 U.S.C. 112, a patent examiner that determines that a claim is patent-ineligible will still move forward to evaluate whether the specification has sufficient support for the claim, but will not evaluate the claim for purposes of novelty or obviousness unless and until the claim is determined to be directed to patent-eligible subject matter. D Under the principles of compact prosecution, the patent examiner may evaluate the claim for format issues that would lead to an Objection, but further substantive evaluation of the claim will be tabled unless and until the claim is deemed to be patent-eligible. E The patent examiner will issue an Ex parte Quayle action.

A

Patrick Wilson is the inventor of a collapsible motorcycle hammock, which incorporates a hammock that is releasably attached to a motorcycle. An International Patent Application is filed in the United States Patent Office on February 28, 2013. Wilson intends to file a US nonprovisional patent application claiming the benefit of his earlier filed International Application, but is tragically involved in horrible accident on the night of January 3, 2014. While he was sleeping, the hammock containing his motorcycle fell, which caused the motorcycle to fall on him. The resulting wounds caused a punctured lung and a fractured spine. He was not released from the hospital until March 15, 2014. Motivated by this near-death accident, he incorporates certain safety features not previously disclosed in the International Application, as well as defining an embodiment of the invention that is a kit appropriate for the after-market. A nonprovisional patent application is filed April 3, 2014, which claims the benefit of the earlier filed International Application. The nonprovisional patent application contains 30 claims. Only claims 1 - 15 relate to the collapsible motorcycle hammock, Claims 16 - 24 incorporate the safety feature, and Claims 25 - 30 claim a kit. Realizing for the first time the expense associated with obtaining worldwide patent protection, Wilson decides to abandon the International Application, entering no countries in the national phase of the International process. In the First Office Action in the nonprovisional application, the patent examiner rejects claims 1 - 10 under 35 U.S.C. 103 based on a US patent to Roosevelt issued in 1921, in view of a published PCT, asserting priority to a French patent application filed by Dean on February 16, 2013, which published on August 15, 2014, and which formed the basis of a priority claim in the later-filed PCT application that designated the US and that published on September 28, 2014. Claims 11 - 15 are rejected under 35 U.S.C. 103 based on Roosevelt, in view of Dean and further in view of Gonzalez. Gonzalez is a Mexican patent issued on June 21, 2014, which was filed in Mexico on February 15, 2013, and which was used to support priority in a subsequent US filing that was published on August 28, 2014. Claims 16 - 24 are rejected under 35 U.S.C. 103 based on Roosevelt, in view of Dean and Gonzalez, and further in view of Costello, which is an Italian patent issued on November 22, 2015, on an application filed in Italy on November 1, 2013, which was used to support priority in a subsequent US filing that was published on April 15, 2015. Claims 25 - 30 are rejected under 35 U.S.C. 103 based on Roosevelt, in view of Cooke. Cooke is a UK published patent application, which published on May 1, 2014, which was filed on January 4, 2013, and which was used to support a subsequently published PCT application designating the US Which arguments can Wilson successfully make to overcome these obviousness rejections? A Wilson will not be able to remove any of these references. Therefore, he will need to either amend the claims or argue the obviousness rejections on their merits by pointing out that there is no teaching, suggestion or motivation to combine the references and the claims define an invention that provides unexpected results. B Wilson will be able to overcome the rejection of claims 1 - 24. Wilson unintentionally failed to file the nonprovisional patent application within 12 months of the filing of the International Application. Thus, he can restore his priority claim provided he filed within an additional 2-month grace period, which he did. Thus, he will be able to claim priority to the February 28, 2013 International filing, which will successfully remove Dean as a reference. C Wilson will be able to overcome the rejection of claims 11 - 15 because Gonzalez is a Mexican patent application filed on or after December 8, 1993. D Wilson will be able to overcome the rejection of claims 11 - 15 because Gonzalez was filed in Mexico prior to the effective date of first-to-file provisions in the United States. E Wilson will be able to overcome the rejection of claims 25 - 30 because the Cooke reference will only be prior art as of the date it is published on May 1, 2014.

A

o establish a prima facie case of obviousness in cases involving new chemical compounds, an examiner: A Must identify some reason that would have led a chemist to modify a known compound in a particular manner. B When issuing a rejection based on structural similarity, must articulate some motivation that would have led one of ordinary skill in the art to select and modify a known compound in a particular way to achieve the claimed compound. C Can demonstrate that the requisite motivation provoking one of skill in the art to select and modify a known compound was implicitly within the prior art. D Need not point to only a single lead compound. E All of the above.

E

Your client MegaGiant has learned that its competitor has filed a Request for Reexamination of a patent owned by General Motors. MegaGiant wants you to find out as much as you can about the reexamination. Which of the following are actions you may properly take: A Obtain a copy of the reexamination file. B Telephone the examiner and ask for the examiner's views on the reissue. C Write to the commissioner and ask that copies of all correspondence between the patent owner and the PTO be sent to you. D Participate in any interviews which take place between the examiner and any attorneys representing the patent owner. E Formally advise the Commissioner that your client will appeal any adverse decision of the examiner.

A

Daniel Dryden and James Hardy are inventors of novel cell compositions and methods for their preparation and use. Dryden and Hardy discovered that some fraction of hepatocytes (i.e., liver cells) are capable of surviving multiple freeze-thaw cycles. Armed with this discovery, the inventors developed an improved process of preserving hepatocytes. Dryden and Hardy filed a patent application on the invention, which included claims covering a new and useful method of preserving hepatocytes. The claims recite pooling hepatocytes from multiple donors, producing a preparation of hepatocytes capable of being frozen and thawed at least two times, performing density gradient fractionation to separate viable and non-viable hepatocytes, recovering the viable hepatocytes, and cryopreserving the recovered viablehepatocytes. The examiner rejected the claims as being patent invalid under 35 U.S.C. 101. Under step one of the Alice/Mayo framework, the patent examiner determined that the claims are directed to an ineligible law of nature: the discovery that hepatocytes are capable of surviving multiple freeze-thaw cycles. Under step two of the Alice/Mayo framework, the patent examiner explained that the claims lack the requisite inventive concept, observing that, upon discovering the cells' capability of surviving multiple freeze-thaw cycles, the inventors simply reapplied a well-understood freezing process. Thus, there was not "significantly more" present to transform the claims directed to a judicial exception into claims that were patent eligible. If properly argued, can this rejection be successfully overcome? A No. The claims would not qualify as being patent eligible because they do not fall within one of the four statutory categories of invention. B Yes. The claims are not directed to a law of nature and, therefore, would be patent eligible. C No. The claims cover a law of nature that has been found by the courts to be patent ineligible. D Yes. The claims are directed to one of the four statutory categories of invention. Although the claims would properly be considered to be directed to a law of nature, the claims as a whole amount to significantly more than the law of nature. E No. The claims are directed to one of the four statutory categories of invention. Although the claims would properly be considered to be directed to a law of nature, the claims as a whole do not amount to significantly more than the abstract idea.

B

Which of the follow is not incorrect? A An oath made in the United States must be made before either a judicial official or a registered patent practitioner. B The oath or declaration does not always need to identify each inventor by his or her legal name; nor does the oath or declaration always need to identify a mailing address where the inventor customarily receives mail, and residence. C An oath or affirmation made in a foreign country must be administered by diplomatic or consular officer of the United States authorized to administer oaths. D Deficiencies in an oath or declaration cannot be fixed without filing either an RCE under Rule 1.114 or a Continuation under 37 CFR 1.53. E None of the above.

B

Which of the following applicants may not file and prosecute the applicant's own case without retaining the services of a patent practitioner? A An inventor. B A corporate assignee. C All joint inventors. D One joint inventor where hte other joiont inventors are unavailable. E All of the above.

B

Which of the following statements is not true with respect to determining patent eligibility of a claim? A The subject matter courts have found to be outside of the statutory categories of invention are limited to abstract ideas, laws of nature and natural phenomena. B In order to transform a patent-ineligible law of nature into a patent-eligible invention, the claim must incorporate applications of those laws. C The Supreme Court's concern that drives its jurisprudence relating to judicial exceptions to patent eligibility is pre-emption. D Abstract ideas, laws of nature, and natural phenomenon are the basic tools of scientific and technological work. Thus, the courts have expressed concern that monopolizing these tools by granting patent rights may impede innovation rather than promote it. E The courts have held that an application of an abstract idea, law of nature or natural phenomenon to a new and useful end is eligible for patent protection.

B

Which of the following statements is true with respect to determining whether a process is patentable? A The machine-or-transformation test is the exclusive test for determining what constitutes a patent-eligible process. B The machine-or-transformation test is not the sole test for deciding whether an invention is a patent-eligible process, but may be an important clue. C Patents for inventions that do not satisfy the machine-or-transformation test should be rarely granted. D A claimed invention is outside the scope of patent protection when it is not tied to a machine and does not transform an article. E None of the above.

B

Which, if any, of the following are not considered patent-eligible? A Genes B Human organisms C Stem cells D Animals with human genes E Non-biologic products used by humans

B

You file a patent application on behalf of your new client claiming a new and improved drug useful to control blood sugar in patients who suffer from Type 2 diabetes. The patent examiner rejected the claimed compound as obvious based on compound b. In fact, compound b was the most effective anti-diabetic compound in the prior art, and thus the examiner explains that one of ordinary skill in the art would have been motivated to make the claimed compounds using compound b as the lead compound (i.e., a compound in the prior art that would be most promising to modify in order to improve upon its anti-diabetic activity and obtain a compound with better activity). The patent examiner asserts that after one of ordinary skill in the art selected compound b as the lead compound, two obvious chemical changes would be made to result in the claimed compound. Your client agrees that the changes to compound b would be obvious selected as a lead compound. You present the examiner with an article written by renowned expert Professor Oscar Piate, which specifically identifies three specific compounds that were deemed most favorable for further research in terms of toxicity and activity. Piate does not mention compound b as one of the three most favorable compounds, explaining that due to negative side effects associated with weight gain, compound b is not a good candidate for future research. When presented this reference, the examiner should: A Withdraw the obviousness rejection because it is inappropriate to focus on a lead compound when making an obviousness determination; rather, the totality of the prior art should be considered. B Withdraw the obviousness rejection because since diabetes is a chronic disease requiring long-term treatment researchers would have been dissuaded from selecting a lead compound that exhibited negative effects, such as considerable weight gain. C Continue to find the claimed compound obvious because compound b was known to be the most effective anti-diabetic compound in the prior art, thus making it the most likely choice for further research. D Continue to find that the claimed compound is obvious regardless of whether compound b was an appropriate lead compound because obvious changes to compound b would still, nevertheless, result in the claimed compound. E Continue to find that the claimed compound is unpatentable because it is an obvious variation of a known compound within the same field of endeavor and used for the same purpose.

B

You have filed a request for reissue of a patent owned by your client Megabucks. The only reason for the reissue is to correct an error in the example where a weight was described in tons rather than ounces. The examiner has issued an action rejecting all of the claims based upon a U.S. patent which was filed before the date of invention of the claims in your patent, but which issued after your patent. The reference discloses, but does not claim every detail set forth in your claims. The most appropriate response would: A Request the examiner to withdraw the rejection because its scope exceeds the scope of the reissue issues. B Abandon the reissue application. C Petition the Commissioner to require the Examiner to withdraw the rejection as improper. D File a response arguing that the rejection cannot be made in the reissue since it could not have been made in the original patent. E Appeal

B

n which of the following situations may an affidavit or declaration under 37 CFR 1.131 be properly used to remove a reference from a rejection? A Where the reference publication date is more than one year before the applicant's or the patent owner's effective filing date. B Where a US patent was filed less than one year prior to the applicant's effective filing date and shows but does not claim the same patentable invention. C Where the subject matter relied upon is evidence under 35 USC 102(f). D Where the reference is a prior US patent to the same inventive entity claiming the same invention. E None of the above.

B

A claim in your client's patent application has been rejected on obviousness grounds. To overcome this rejection, your client may do any of the following except: A Amend the claim to include limitations not taught in the prior art. B Argue that the combination of references would not create a reasonable expectation of success. C Argue that obvious to try is an inappropriate standard to apply for a rejection under 35 U.S.C. 103. D Argue that the claimed invention shows unexpectedly strong advantages over the prior art. E Argue that evidence of commercial success is pertinent where a nexus between the success of the product and the claimed invention has been demonstrated.

C

An international application designating the United States and other countries was filed in London at the U.K. Receiving Office on September 3, 1994, claiming priority from a French application filed June 23, 1994. A demand for international preliminary examination was properly made on October 14, 1995. The basic national fee to enter the U.S. was submitted to the USPTO on December 12, 1996, one year after the International Application was published in English. On March 12, 1997, in response to a Notice of Missing Parts a translation of the international application and a declaration of the inventors were submitted. The declaration was objected to by the Examiner because it did not indicate the residence address of one of the three inventors in an Ex parte Quayle action dated April 14, 1997, setting a two month period for response. A new declaration was submitted together with a request for reconsideration on May 5, 1997. The application issued as a U.S. patent on July 23, 1998. What is the effective date of the patent under 35 USC 102(e): A July 23, 1998. B December 12, 1995. C March 12, 1997. D September 3, 1994. E May 5, 1997.

C

If a general concept is involved in executing the steps of the method, this can be a clue that the claim is drawn to an abstract idea. Which of the following are not examples of a general concept? A Economic practices or theories. B Mental activities such as forming a judgment, observing or evaluating. C A concept illustrated by example in some tangible way. D Instructions on how business should be conducted. E Interpersonal interactions or relationships.

C

Once the an International Design application is examined and allowed by the USPTO, the applicant is required to A Do nothing. All fees have been collected. In due course, a US design patent will be sent to the applicant's representative. B Send a "publication" fee payment to Geneva for the additional publication in the United States. C Pay the United States issue fee within 3 months. D Pay the United States issue fee within 6 months. E None of the above.

C

Which of the following is not required for a complete International Application: A A designation of at least one country. B An abstract. C A certified copy of any priority document. D A specification. E At least one claim.

C

Which of the following may not file a patent application in the United States? A An administrator of the estate of a deceased inventor B A joint inventor C A non-exclusive licensee D The inventor's employer E A person who shows sufficient proprietary interest in the matter

C

Which of the following structural terms have been found to potentially invoke § 112(f)? A "circuit for" B "digital detector for" C "mechanism for" D "reciprocating member" E "sealingly connected joints"

C

n which of the following situations would it be appropriate to employ an "obvious to try" rationale in order to reject a claimed invention as being obvious? A The claimed stereoisomer exhibits unexpectedly strong therapeutic advantages over the prior art mixture without the correspondingly expected toxicity, and the resulting properties of the claimed stereoisomer were unpredictable. B The claimed drug was discovered somewhat serendipitously and there was no articualable reason for selecting a particular starting compound from among a number of unpredictable alternatives. C A skilled artisan would have had a reason to attempt isolation of a polynucleotide and reasonable expectation of success in deriving the claimed polynucleotide using standard biochemical techniques. D A broad range of compounds could be selected as the lead compound for further investigation and it could not be predicted that any particular lead compound could be transformed into the claimed compound. E The outcome of obtaining the claimed compound from a particular lead compound was not reasonably predictable.

C

An oath or declaration must: A Identify the inventor or joint inventor executing the oath or declaration by his or her legal name and Identify the application to which it is directed. B Include a statement that the person executing the oath or declaration believes they are the rightful owner of a 100% undivided interest in the rights to the technology subject to the patent application. C State that the application was made or was authorized to be made by the person executing the oath or declaration. D A and C. E A, B and C.

D

Albert Warner is the inventor of a combination powered parachute and motorcycle, which modifies a conventional motorcycle with the addition of various flight components to provide sustained flight for the machine. A provisional patent application was filed on behalf of Warner on August 2, 2012. A subsequent nonprovisional patent application was filed on April 1, 2013, which contains a disclosure that is identical to the provisional patent application. On March 1, 2014, Warner receives a First Office Action, which rejects all claims under 35 U.S.C. 103 based on Doe in view of Johnson and further in view of Robinson. Doe is an Irish patent application publication that published on October 2, 2012, and which was filed on April 2, 2011. Johnson is a US design patent that issued in November 1999. Robinson is an Australian patent publication that published on August 21, 2014, and which was filed in Australia on February 21, 2013. It was later relied upon to support a priority claim in a published PCT application. Which of the following actions would be best for Warner to take in keeping with relevant patent laws and USPTO rules and procedures? A Amend the claims because the Robinson reference is capable of being used to support an obviousness rejection. B Point out to the examiner that the Johnson reference is incapable of being used to support an obviousness rejection of a device claimed in a utility patent application because it is a design patent. C Point out to the examiner that the Robinson reference is incapable of being used to support an obviousness rejection because it was filed in Australia on February 21, 2013, which is before the date the United States converted to a first-inventor-to-file system. D Point out to the examiner that the Doe reference is incapable of being used to support an obviousness rejection of claims in the nonprovisional patent application filed on April 1, 2013. E Point out to the examiner that the Johnson reference is incapable of being used as prior art because the patent has expired and the invention described there in is now in the public domain.

D

Examiners will apply §112(f) to a claim limitation that meets which of the following conditions: 1.The claim limitation uses the phrase "means for" or "step for" or a non-structural term that further includes a structural modifier. 2.The phrase "means for" or "step for" or the non-structural term recited in the claim is modified by functional language. 3. The phrase "means for" or "step for" or the non-structural term recited in the claim is not modified by sufficient structure, material, or acts for achieving the specified function. A Statement 1 B Statement 2 C Statement 3 D Statements 2 and 3 E Statement 1, 2 and 3

D

If performance of the claimed method involves an application of a law of nature, which of the following are not among the factors for determining whether the method claim embodies merely an unpatentable abstract idea? A Whether the claim generically recites an effect of the law of nature or claims every mode of accomplishing that effect. B Whether the claimed method recites an application of a law of nature solely involving subjective determinations. C The extent to which the application imposes meaningful limits on the execution of the claimed method steps. D Whether one of ordinary skill in the art would understand the claimed method incorporating the law of nature to be obvious. E All of the above.

D

When reaching a determination on obviousness pursuant to 35 U.S.C. 103, it is necessary to consider: A The capabilities of a person of ordinary skill. B All evidence submitted by the applicant should be considered with equal weight, including evidence rebutting a prima facie case of obviousness. C The problem to be solved when determining whether a reference in a different field of endeavor may be used. D A and C. E A, B and C.

D

Which of the following examples of claims would not be considered to be directed to statutorily eligible categories of invention? I. Transitory forms of signal transmission II. A computer program per se III. A human per se IV. A mere arrangement of printed matter A I. B I., III. C I., III., and IV. D I., II., III., and IV. E III. and IV.

D

Which of the following is not a requirement for filing an international application in the U.S. Receiving Office: A At least one applicant must be a U.S. national or legal resident. B The application must be in English. C The application must designate at least one PCT contracting state. D The filing fee must be submitted. E A request for treatment as an international application must be included.

D

Which of the following statements about an Application Data Sheet are correct? A The Office will review the inventor's oath or declaration to determine if the bibliographic information contained therein is consistent with the bibliographic information provided in an application data sheet. B An unsigned application data sheet will be treated only as a transmittal letter unless it has been filed by an patent practitioner who is "of record" in the application. C Information in a previously submitted application data sheet, inventor's oath or declaration may be corrected or updated until the Notice of Allowance has been transmitted. D An application data sheet must be titled "Application Data Sheet." E All of the above.

D

Which of the following would tend to weigh against patent eligibility when considering an allegedly transformative method claim? A Transformation is applied to a particularly recited article. B Transformation is in terms of a different function or use. C A specifically defined transformation. D Transformation involves only a change in position or location of an article. E None of the above.

D

You filed an international application under the Patent Cooperation Treaty (PCT) for a client on July 5, 2006. The application claimed priority from a prior Brazilian application filed August 30, 2005. The international application designated the European Patent Office, South Africa and the United States. A demand for international preliminary examination, electing all eligible states, was filed on February 1, 2007. Which of the following would be the last day on which the basic national fee to entry into the United States can be paid? A January 5, 2009. B March 5, 2008. C March 5, 2007. D February 28, 2008. E None of the above.

D

Your client MegaGiant has filed an international application and asks you file the U.S. National Stage prior to the thirty-month deadline, which ends on August 26, 2008. Which of the following actions taken prior to midnight on that day will obtain benefit of the international filing date? A File a copy of the application in the PTO with a cover letter indicating that this is a new application. B File an application in the PTO under 37 CFR 1.53(d). C File an oath or declaration since that alone is sufficient for entry into the National Stage. D File a request to enter the National Stage identifying the international application together with a letter asking that the US National filing fee be deducted from your deposit account. E File a request that the International Bureau send the necessary papers to the PTO and send you a bill for any fees due.

D

You file a patent application on behalf of your new client claiming a new and improved compound useful to treat hypertension (i.e., high blood pressure). The patent examiner rejects the claimed compound as obvious based on chlorthalidone, which is marketed under the name HYGROTON. Chlorthalidone is quite similar structurally to the claimed compound, but those who use chlorthalidone routinely suffer from numerous side effects, including weakness, leg gramps and prolonged and painful bouts of gout. Additionally, diabetics taking chlorthalidone also can experience increased blood sugar levels. Your client explains to you that they never considered chlorthalidone in their research because of the recognized side effects, and in fact were attempting to obtain a compound that could be administered with minimal to no side effects, which in fact was realized through the claimed compound. Your client does, however, agree that chlorthalidone is structurally similar and had they endeavored to work with chlorthalidone, they would have eventually achieved the claimed drug compound. Armed with this information, what argument can you make that has a likelihood of succeeding, thereby allowing the claims to issue? A No arguments can be made to save the claimed invention. B No arguments can be made to save the claimed invention and attempts to make specious arguments would violate an attorney's ethical duty not to advance claims which they know are unpatentable. C Even if chlorthalidone were selected for further research, it would have taken at least some trial and error to obtain the claimed compound and, therefore, the claimed compound would not have been instantly obvious. D Chlorthalidone would not be selected for research by one of skill in the art owing to the numerous and severe negative side effects present and the desire to obtain a compound that did not suffer from many, or any, side effects. E Chlorthalidone is not an appropriate lead compound, but had it been selected for research as a lead compound, it would not have yielded the claimed compound.

D

In an "obvious to try" analysis, it is necessary to consider which of the following when making an appropriate obviousness determination pursuant to 35 U.S.C. 103? A The context of the subject matter in question. B Characteristics of the science or technology and its state of advance. C The nature of the known choices and the specificity or generality of the prior art. D The predictability of results. E All of the above.

E

In order to determine whether a word, term, or phrase coupled with a function denotes structure, it is necessary to check whether: 1.The specification provides a description sufficient to inform one of ordinary skill in the art that the term denotes structure. 2.General and subject matter specific dictionaries provide evidence that the term has achieved recognition as a noun denoting structure. 3.The prior art provides evidence that the term has an art-recognized structure to perform the claimed function. A Statement 1 B Statements 1 and 2 C Statements 1 and 3 D Statements 2 and 3 E Statements 1, 2 and 3

E

In which of the following circumstances would a patent application be eligible for entry into the Patent Prosecution Highway (PPH) under the rules and procedures in effect at the United States Patent and Trademark Office (USPTO)? I. You must have received a patent from a partnering PPH office. II. The application with allowable subject matter and the application you file at the USPTO share a common earliest priority date. III. A Notice of Missing Parts has been received, but not yet responded to, in the application filed at the USPTO prior to receiving an indication of allowable subject matter from a partnering PPH office. A I B II C III D I and III E II and III

E

In which of the following situations may an affidavit or declaration under 37 CFR 1.130 be properly used to remove a reference from a rejection? A Where the reference publication date is more than one year before applicant's or patent owner's effective filing date. B Where a US patent was filed less than one year prior to applicant's effective filing date and claims the same patentable invention. C Where the subject matter relied upon is evidence under 35 USC 102(f). D Where the reference is a US patent application to the same inventive entity that published more than 18 months prior to the applicant's own effective filing date. E None of the above.

E

Natasha Romanova, an employee of Avenger, Inc., has created an invention that enables the management of risk relating to specified, yet unknown, future events. The specification further explains that the "invention relates to methods and apparatus, including electrical computers and data processing systems applied to financial matters and risk management." The claims filed in the Romanova patent application are directed to a concept of intermediated settlement, more specifically, the claims mitigate the risk that only one party to an agreed-upon financial exchange will satisfy its obligation. In particular, the claims are designed to facilitate the exchange of financial obligations between two parties by using a computer system as a third-party intermediary. In sum, the patent claims the invention using three distinct claiming techniques: (1) claiming a method for exchanging obligations (the method claims), (2) claiming a computer system configured to carry out the method for exchanging obligations (the system claims), and (3) claiming a non-transitory computer-readable medium containing program code for performing the method of exchanging obligations (the media claims). All of the claims are implemented using a computer. Which of the following rationales would be appropriate for an examiner to cite in rejecting these claims? A The method claims are not directed to a patent-eligible category of innovation and, therefore, the method claims are patent-ineligible. B The method claims are not directed to a patent-eligible category of innovation and, therefore, the method claims are patent-ineligible. Given that the method claims are patent-ineligible, and further given the system claims and media claims are simply attempts to claim the same subject matter, those claims rise or fall with the method claims. Therefore, the system and media claims are likewise patent-ineligible. C The method claims are all drawn to the abstract idea of intermediated settlement and, therefore, the claims are all patent-ineligible. D The method, system and media claims are all drawn to the abstract idea of intermediated settlement and, therefore, the claims are all patent-ineligible. E None of the above.

E

The Supreme Court has identified a number of considerations for determining whether a claim with additional elements amounts to "significantly more" than the judicial exception itself. When determining whether a claim does amount to "significantly more," which of the following were found not to be enough to qualify as "significantly more" when recited in a claim with a judicial exception? A Adding the words ''apply it'' with the judicial exception, or merely adding instructions to implement an abstract idea on a computer. B Simply appending well-understood, routine and conventional activities previously known to the industry. C Adding insignificant extra-solution activity to the judicial exception, such as mere data gathering in conjunction with a law of nature or abstract idea. D Generally linking the use of the judicial exception to a particular technological environment or field of use. E All of the above.

E

The claims in an application are rejected under 35 USC 103 as obvious over prior art reference Able in view of prior art reference Baker. All of the following statements are in accord with the patent laws, rules and procedures except: A An obvious-to-try rationale may be proper when the possible options for solving a problem were known and finite. B Evidence of nonobviousness may be outweighed by contradictory evidence in the record or by what is stated in the specification. C Common sense may be used to support a legal conclusion of obviousness so long as it is explained with sufficient reasoning. D Although a reasonable expectation of success is needed to support a case of obviousness, absolute predictability is not required. E An inference that a claimed combination would have been obvious is especially strong where the prior art's teachings undermine why a person of ordinary skill would have combined the known elements.

E

The deadline for confirming any precautionary designation is ______ months for the filing date of an international (PCT) application. A Twelve B Fifteen C Nineteen D Twenty E None of the above, no confirming designations are necessary.

E

The necessary elements of an International Design application must include A Drawings or specimens of the design. B A request for treatment as an International Design application. C Contact information for the applicant or their representative D The identity of the applicant. E All of the above.

E

Two years after MegaGiant's patent application covering its new lamp was issued, a request for reexamination was filed and granted by the Patent Office. Four months ago you received a first Official dated April 3, 2008 and setting a two-month period for response. The examiner rejects all the claims. Your client has advised you that she will be unavailable to discuss this action with you until September 15, 2008. The most appropriate Action today, August 26, 2008 would be: A Write to the Patent Office and advise them you will be responding as soon as possible after September 15. B Include a request for any necessary extension of time under 37 CFR 1.136(b) when you do respond. C Immediately file a Notice of Appeal. D Advise your client that a response must be filed no later than September 3, 2008. E None of the above is the most appropriate.

E

Which of the following are not false with respect to the Patent Prosecution Highway (PPH) at the United States Patent and Trademark Office (USPTO)? A The applicant requesting entry into the PPH must supply the work product of the Office of Earlier Examination (OEE). B A machine translation of the work product of the OEE is prohibited. C If a U.S. application has received a first office action on the merits. it would not be possible to enter the PPH in a continuation filed that claims priority to the earlier U.S. application. D After entry into the PPH at the USPTO, the patent examiner must reach a final decision within 12 months. E None of the above is true.

E

Which of the following are true: A An oath filed with a reissue application must set forth at least one error. B A broadening reissue must be filed within two years from the issue date of the patent. C Maintenance fee due dates are calculated from the issue date of the patent, not the issue date of any reissue. D A continuation of a reissue can be filed. E All of the above are true.

E

A process claim containing the term "computer" should: A Not be construed as limited to a computer having a specific set of characteristics and capabilities, unless the term is modified by other claim terms or clearly defined in the specification to be different from its common meaning. B Be given the broadest reasonable interpretation possible and should include devices such as a calculator. C Ordinarily not be considered sufficient to satisfy the machine-or-transformation test. D Not be rejected to under §112(a) for lack of written description because the term has a well established meaning. E None of the above.

A

Adam Samuels is the inventor of a video camera for mounting on a weapon, which transmits a video signal to a video display in communicably connected goggles worn by a user. The invention is for the purpose of improving aim in a non-military, game-hunting context. The first patent application for this invention was a provisional patent application filed on Friday, January 18, 2013. The provisional patent application did not include any claims, but did fully and appropriately disclose an embodiment of the invention for use with long guns, such as a rifle. A nonprovisional patent application was subsequently filed on Monday, January 20, 2014. This nonprovisional filing contained a specification in compliance with 35 U.S.C. 112, the proper fee, an Application Data Sheet identifying the full legal name of the inventor and the inventor's mailing address, and three independent claims. Claim 1 related to a device for use with long guns, such as a rifle. Claim 2 related to a device for use with a pistol. Claim 3 related to a device for use with a machine gun mounted to a vehicle. A Notice of Missing Parts was issued by the Patent Office because the nonprovisional filing did not include an oath or declaration. In response to the Notice of Missing Parts, an oath signed by the inventor was submitted. The Oath did not, however, identify the inventor's mailing address. Which of the following is/are correct? I. Samuels has until May 20, 2014, to notify the Patent Office that the nonprovisional patent application contains matter not previously disclosed in the previously filed provisional patent application. II. Samuels does not have to notify the Patent Office that the nonprovisional patent application contains matter not found in the previously filed provisional patent application because the nonprovisional patent application is a substitute application not capable of claiming priority from the provisional filing. III. The oath filed is defective because it did not contain the inventor's mailing address. A I B II C III D I and III E II and III

A

Applicant submits a patent application claiming rabeprazole and its salts. Rabeprazole is part of a class of drugs known as proton pump inhibitors, which suppress gastric acid production by inhibiting action of a particular enzyme. The examiner asserts that a combination of two prior art references renders the raberprazole claims obvious. These are: (1) European Patent No. 174,726 (owned by Takeda), claiming lansoprazole; and ( 2) an article by Brändström. Lansoprazole, an anti-ulcer compound, differs structurally from rabeprazole at one position, but otherwise the two compounds are identical. Brändström describes a class of anti-ulcerative compounds in which rabeprazole, lansoprazole, and omeprazole are all core structure compounds. The examiner explains that based on structural similarity and advantageous properties, one of ordinary skill in the art would have selected lamsoprazole as a lead compound and then proceeded to modify this known compound in a particular and predictable way to achieve the claimed rabeprazole, useful for suppression of gastric acid. Applicant, in a factually correct statement, explains that there is no discernible reason for a skilled artisan to begin with lansoprazole in search of an anti-gastric acid compound only to drop the very feature that gives lansoprazole advantageous properties. Applicant concludes that, therefore, the claimed rabeprazole is patentable. This argument should ultimately be: A Successful because a claimed compound is not obvious where there was no reason to modify the closest prior art lead compound to obtain the claimed compound, and modifying the lead compound would destroy its advantageous property. B Successful because the chemical arts are highly unpredictable and, pursuant to KSR, claimed inventions in highly unpredictable arts are not obvious. C Successful because the chemical arts are highly unpredictable. D Unsuccessful because the prior art as it existed prior to the time of invention would give some reasons for one of skill in the art to make particular modifications to achieve the claimed compound. E Unsuccessful because the known and structurally similar lansoprazole for treatment of ulcers would be a logical starting point (i.e., lead compound) for those searching for a new anti-gastric acid compound, such as the claimed rabeprazole.

A

Gabriel Kaplan, a citizen of Canada and resident of Toronto, is the inventor of a new blackboard with a mirror system that incorporates an integrated laser stunning device. The device can be used by teachers to keep students awake, or otherwise maintain a disciplined learning environment. When facing the board, the teacher may glance at one or more of the mirrors and notice a student dosing, or perhaps engaging in mischief. With a triple-tap to the board with a single finger, a laser will fire, stunning the student. Kaplan first files a Canadian patent application on January 2, 2013. Subsequently, Kaplan files a US patent application on January 1, 2014, claiming priority to his Canadian filing date. At the time he files the US patent application, Kaplan also files papers to opt out of publication in the United States. The Canadian application publishes on June 2, 2014, and the Canadian patent issues on September 22, 2014. On March 14, 2015, the US patent examiner rejects all claims in the Kaplan application. Having determined the US is not a market worth exploiting, Kaplan does not file a response and the US application goes abandoned on September 15, 2015. Which of the following would be the earliest date the Kaplan disclosure could be used as prior art against others? A January 2, 2013. B January 1, 2014. C June 2, 2014. D September 22, 2014. E September 15, 2015.

A

If a claim limitation recites a term and associated functional language, the examiner should determine whether the claim limitation invokes §112(f). Under which of the following circumstances is it initially presumed that the limitation intends to invoke §112(f)? A When a claim explicitly uses the phrase "means for" or "step for" and includes functional language. B When the limitation explicitly uses the phrase "means for" or "step for" and includes the structure necessary to perform the recited function. C When the claim limitation does not use the phrase "means for" or "step for." D When the claim contains language encompassing more than one structure such as by the term "connector assembly." E When the claim limitation recites a structural modifier that further describes the non-structural term.

A

On April 3, 2004 you filed an international (PCT) application in the U.S. receiving Office for one of your clients. At the time your client was short of funds and decided to designate only the "Asian Tiger" countries of Malaysia, Indonesia, China and Korea. However, last week a company located in New Zealand approached your client indicating they would license any patent rights, which existed in New Zealand. On April 1, 2005, your client calls, seeking protection in New Zealand. What would be your advice? A Nothing. No additional countries need to be designated. B A Request for Additional Designations can now be filed together with the surcharge for late designation. C File another PCT application this time designating New Zealand. D File a continuation of the PCT application together with a new designation including New Zealand. E Abandon the PCT application and file a replacement with the expanded designation.

A

On February 24, 2011, a registered practitioner filed a patent application with the USPTO for inventor Jones. The application includes a specification and a single claim directed to a fertilizer encapsulated so that it can be placed in the ground and slowly leach out over time, thereby releasing said fertilizer to the plant or tree. The claim covers a compound comprising a core that is a mixture of fertilizer and hardening agent X. The core is surrounded by an inner layer made out of inert compound Y, which is water soluble. There is an outer layer made out of compound Z disposed around the inner layer to further encapsulate the core. Jones stumbled across this invention fortuitously having been the first to discover that the addition of Y forestalls the interaction of X and Z, thereby increasing the shelf life of the invention. The patent examiner rejects the claim on obviousness grounds citing Aikman in view of Smith and further in view of Irving. Aikman teaches the fertilizer compound, Smith teaches the addition of hardening agent X, and Irving teaches the encapsulation of the fertilizer with Z. The examiner explains that it would be obvious to one of skill in the art to add a known inactive ingredient, Y. According to the patent laws, rules and procedures, which of the following arguments would overcome the rejection? A A person of skill in the art would have chosen a compound other than Y had they appreciated the problem created by the interaction between X and Z. B Jones stumbled upon the invention fortuitously and, therefore, the invention cannot be rightfully characterized as obvious. C The combination of Aikman, Smith and Irving is inappropriate because the references alone do not provide each and every element found in the claimed invention. D A person of skill in the art would not be familiar with the teachings of Aikman, Smith and Irving and, therefore, they constitute nonanalogous art. E None of the above.

A

On May 23, 2006, applicant filed an international application in Tokyo at the Japanese Receiving Office. The U.S. was designated in the application. Priority was claimed from an earlier Japanese application filed May 30, 2005. A copy of the international application was sent to the USPTO in September of 2006. A demand for international preliminary examination electing the U.S. and several other countries was properly filed in July of 2006. In order to prevent abandonment of the international application in the United States what is the last day on which the applicant may pay the basic national fee: A 30-Nov-07 B 23-Nov-06 C 30-Jan-07 D 23-Jan-06 E None of the above.

A

On October 12, 2007 you filed a U.S. national patent application for your client Fred Mertz. The application issued as a patent on July 14, 2008. Today, August 26, 2008 your client Fred calls and indicates it is vital to him to obtain patent protection abroad particularly in all South American countries. Given the options below which one is the best way to proceed: A File a PCT application before October 12, 2008 and claim foreign priority based upon the U.S. application. B Advise your client that the issuance of the U.S. patent precludes obtaining protection in foreign countries. C Advise your client to disclaim the U.S. patent so a PCT application can be timely filed. D File directly in each desired foreign country and do not claim foreign priority. E Obtain an extension of time under 37 CFR 1.136(a) in order to file the PCT application.

A

On September 14, 2013, Larry conceived of an anti-climbing and restraining apparatus, which is essentially a pajama set for children where the legs are connected via straps. This, among other things, prevents the toddler from climbing. Larry filed a patent application in the USPTO on December 31, 2013. On June 4, 2013, inventor Moe independently and without knowledge of Larry's work, conceived of the same invention. On June 10, 2013, Moe discussed his invention with his patent attorney and requested the attorney prepare a patent application. Moe's patent application was filed at the USPTO on January 4, 2014. The claims filed in Moe's patent application are identical in scope to the claims filed in Larry's patent application. Given only these facts, which of the following statements, if any, most accurately describes who has the right to obtain a patent? A Larry will obtain the patent because he was the first to file. B Moe will obtain the patent because he was the first to conceive. C Moe will obtain the patent because he disclosed the invention on June 10, 2013, thereby giving him 12 months to file a patent application in the US. D Larry will obtain the patent because he was more diligent than was Moe. E None of the above.

A

Peter Newton filed a patent application disclosing a technique for reducing distortion induced by the introduction of "watermarks" into signals. In the context of signal processing, watermarking is a technique by which an original signal (such as a digital audio file) is manipulated so as to embed within it additional data. The additional data is preferably imperceptible to someone who views or listens to the signal—for instance, a listener who plays back a watermarked digital audio file would, if the watermark is sufficiently unobtrusive, not be able to distinguish between the watermarked and unwatermarked versions. However, an analysis of the file by software capable of detecting the watermark will reveal the mark. This ability to encode additional data into a signal is useful to publishers of sound and video recordings, who can use watermarks to embed in the media they distribute information intended to protect that media against unauthorized copying. Newton's application contained claims to a method of embedding supplemental data in a signal, a storage medium having a signal embedded with supplemental data, and a signal embedded with supplemental data. The patent examiner allowed the claims directed to the method and storage medium, but finally rejected the signal claims. Newton canceled the signal claims and a patent issued on the method and storage medium claims. Before that patent issued, Newton filed a continuation again seeking the signal claims. After unsuccessfully trying to convince the examiner to allow the signal claims, Newton appeals to the Board. The Board should: A Deny the signal claims because the claims cover a transitory signal transmission that does not fall within one of the statutory categories of patent-eligible invention. B Allow the claims because the claimed signal is directed to a new and useful manufacture and is, therefore, patent-eligible. C Deny the signal claims because the claims cover an abstract idea. D Deny the signal claims because the claims cover a natural phenomena. E Allow the claims because the claimed signal is directed to a new and useful manufacture and does not wholly embrace a judicially recognized exception.

A

Regarding obviousness, which of the following is true? 1.When determining whether a reference in a different field of endeavor may be used to support a case of obviousness, it is necessary to consider the problem to be solved. 2.The prior art discloses a system for communicating between and among groups of individuals using a computer network, but does not disclose using web browsing technologies to accomplish this communication. A claimed invention that includes limitations identical to the known computer network communication systems, which also incorporates web browsing technologies, is likely patentable. 3.A chemical compound is not obvious over a mixture containing that compound as well as other compounds where a skilled artisan would have merely a reason to believe that some desirable property of the mixture was derived in whole or in part from the claimed compound even though separating the claimed compound from the mixture was routine in the art. A Statement 1 B Statement 2 C Statement 3 D Statement 1 and 2 E Statement 2 and 3

A

Sheldon and Leonard are co-inventors of a new and improved method for matching roommates who will be long-term compatible. Reliance upon their method and associated system, which incorporates a flashy new website, allows individuals to thoroughly check out would-be roommates and engage in a mutually agreeable "roommate contract" setting forth obligations and responsibilities, as well as potentially random promises, such as requiring that any roommate who is invited to Stan Lee's house must invite the other. They believe this bizarre twist and inclusion of random clauses will enhance patentability. Unfortunately, the events of "the great Halloween debacle of 2013" has resulted in the tragic disappearance of Sheldon. Its seems that the duo were on their way to a Halloween party at the local comic book store dressed as Batman and Robin, when a local gang of junior high hoodlums kidnapped Sheldon, screaming "to the Bat cave" as they overpowered Leonard and stuffed him into the back of a Wilson's Dry Cleaning van they had just stolen for a joy ride. Authorities have not been able to locate Sheldon's body, and at least one prominent cable news channel suspects that Sheldon may have gone underground, embarrassed that even with his Batman utility belt full stocked, he was unable to fend off the attack. Leonard decides that the best thing he can do is move forward and file a nonprovisional patent application for their roommate-matching innovation, obtaining a patent as quickly as possible. You are retained to file a patent application. Leonard explains to you that Sheldon was an integral co-inventor and there is no feasible way to claim the invention without using conception he contributed since the core of the invention, the roommate agreement, was his brainchild. When filing the patent application, you should: A Prepare and file an oath or declaration for Leonard and also file a substitute statement on behalf of Sheldon in lieu of an oath or declaration. B Prepare and file an oath or declaration for Leonard and petition to proceed with the application without Sheldon's participation since he is unavailable. C Since joint inventors must apply for a patent jointly, and each must amke an inventor's oath declaration, an application cannot be filed until either Sheldon is located or he is declared legally deceased. D Prepare and file a substitute statement on behalf of both Sheldon and Leonard, explaining the circumstances of invention and identifying the full legal names of the inventors, their mailing address and residential address. E Prepare and file a provisional patent application that does not include any claims, identifying Leonard as the sole inventor.

A

Spackler filed a patent application relating to a method and apparatus for electrocuting pests. The disclosed invention operates by sensing the presence of the pests with a resistive switch. When the hapless vermin makes contact with a high-voltage electrode and a reference electrode, its body completes an electric circuit and triggers a generator that produces a voltage and current of sufficiently high magnitude to barbeque the creature. The patent examiner rejects the claims in the Spackler patent over Orkin in view of Terminix. Orkin discloses an electronic executing device used to demise gophers and other underground rodents when the presence of the rodent completes the circuit when it touches two separate contact points. Terminix, which does not relate to pest control, discloses an apparatus akin to a cattle prod that generates an electric charge when an external load, such as the body of a cow, completes a circuit by crossing two electrodes and creating a resistance current. The Spackler claims are alleged to be unique and patentable as the result of the substitution of a known yet different type of sensor to effect the electrocution. The rejection is likely: A Appropriate because the claims involve a combination of familiar elements according to known methods that does no more than yield predictable results. B Appropriate because Spackler did nothing more than combine various known elements from within the field of pest control to achieve his claimed invention. C Inappropriate because Terminix is outside the field of pest control and it cannot be appropriately asserted against the claimed invention to support an obviousness rejection. D Inappropriate because the substitution of a different type of sensor renders the claimed invention unique over the prior art asserted by the examiner. E None of the above.

A

The international filing date of an International Industrial design application is A The date of receipt of the application in offices of the Contracting Party of indirect filing. B The date that is one month after the date of receipt in the country of indirect filing. C The date that is six months after the date of receipt in the country of indirect filing. D The date of actual receipt by the International Bureau in Geneva. E The date the fee is paid.

A

Which of the following statements is not true? A Examiners can properly require applicants to model their claims or responses after particular examples provided by the Office in order to attain a decision from the examiner that the claim is patent eligible. B In the case where a patent examiner has issued a patent eligibility rejection pursuant to 35 U.S.C. 101 based on the claim being directed to a judicial exception, if an applicant's claim arguments persuasively establish that the claim is not directed to a judicial exception, the examiner should withdraw the rejection because the claim is patent eligible. C When an additional element is considered individually by the examiner, the additional element may be enough to qualify as "significantly more" if it meaningfully limits the judicial exception, improves another technology or technical field, improves the functioning of a computer itself, or adds a specific limitation other than what is well-understood, routine, conventional activity in the field or unconventional steps that confine the claim to a particular useful application. D If an element does not amount to significantly more on its own, it can still amount to significantly more when considered in combination with the other elements of the claim. E When the examiner has determined the claim recites a law of nature or a natural phenomenon, the rejection should identify the law of nature or natural phenomenon set forth in the claim, and explain why it is considered a law of nature or natural phenomenon

A

With respect to a US design patent that comes from an International Design application, the US filing date is A The date of indirect filing of a complete application in a Contracting Party country. B The filing date of any priority document being relied upon by the international design filing. C The date the international design application is published by Geneva. D The date of receipt of the international application in Geneva. E The date the application is forwarded to the United States by Geneva.

A

With respect to a patent application directed to a computer-implemented process , which of the following is false? A It is sufficient to claim a means for performing a particular computer-implemented function and then to disclose a general-purpose computer as the structure designed to perform that function. B If the specification explicitly discloses an algorithm, the sufficiency of the disclosure of the algorithm must be determined in light of the level of ordinary skill in the art. C For a computer-implemented means-plus-function claim limitation invoking §112(f), the corresponding structure is required to be more than simply a general-purpose computer or microprocessor. D Applicant may express an algorithm in any understandable terms including as a mathematical formula, in prose, in a flow chart, or in any other manner that provides sufficient structure. E A rejection under §112(b) is appropriate if the specification discloses no corresponding algorithm associated with a computer or microprocessor.

A

You have been asked by the senior partner of your firm various questions about reissue applications. You make several statements, these include the following. Which is true: A The automatic surrender of the original patent grant occurs upon issue of the re-issue. B The original patent grant must be turned in. C The consent of all licensees is necessary. D The necessary filing fee has to be paid at the time of filing. E A copy of the file history of the patent must be turned in.

A

Your client Willam Vanderbelt is enraged that his former wife is not only competing effectively but has obtained a patent, which Willam maintains loudly, cannot be valid. Willam has found two articles from a Swiss technical publication, which were published long before the alleged invention and at the least appear to raise a substantial new question of patentability. Willam has also told you that because of the cost of his recent divorce, filing a reexamination is just "out of the question". He would like to put these articles where others with more resources might do something about this "outrage". The most appropriate thing to do would be: A File a Citation of Prior Art in the file of the patent and serve a copy on the patent owner. B File a Citation of Prior Art in the file of the patent, serve a copy on the patent owner and pay the required fee. C File a Request for Reexamination and ask that the fee be waived because of Willam's financial statement and the interest of the public in eliminating invalid patents. D Mail the Swiss articles to the commissioner and ask him to publish a notice in the Official Gazette. E File Protest.

A

Alfred, the inventor of an emergency escape device, confidentially discloses his invention to Professor William Omaha McElroy on June 1, 2012, in hopes of obtaining independent verification of his test results. McElroy is intrigued by the invention and, without Alfred's knowledge, decides to write about Alfred's invention for publication in Science Daily. The article describing Alfred's invention is published March 15, 2013. Harvey Dent reads Professor McElroy's publication and files a patent application on April 30, 2013, claiming Alfred's invention. Alfred finally files a patent application on May 14, 2013, which discloses the same invention as does the Dent application, but which claims different subject matter. With respect to Dent's patent application, which of the following are true? A The disclosure to McElroy will create an insurmountable 102(a) rejection. B The McElroy publication will create an insurmountable 102(a) rejection. C Dent will be able to overcome a rejection based on the McElroy publication by filing a 130 affidavit. D Dent will be able to overcome a rejection based on the McElroy publication because he was first to file. E None of the above.

B

Claim 25 of a patent you are prosecuting is directed to a method of treating a meat product to reduce a microbial population in the meat product. The method comprises steps for treating meat, such as poultry, with a known PAA composition (i.e., antibacterial solution) under specified conditions. The claim requires specified temperature, spray pressure of 50 psi, and contact time limitations. The Colonel patent is prior art and discloses the temperature and contact time limitations for PAA, but does not specifically disclose treatment of poultry with PAA. The Sanders patent is prior art and discloses spraying an antibacterial solution other than PAA onto poultry at a pressure of 20 to 150 psi. The examiner rejects claim 25 because it would have been obvious to combine the high-pressure parameter disclosed in Sanders with the PAA methods disclosed by Colonel. The rejection made by the examiner is: A Inappropriate because the use of a specific antimicrobial, specifically PAA, is not taught by either Colonel or Sanders; thereby, the combination of Colonel and Sanders does not provide each and every element of claim 25. B Appropriate because the advantages of spraying antimicrobial solutions onto meat at high pressure were known; therefore claim 25 is obvious because the combination of Colonel and Sanders is merely the combination of familiar elements to yield predictable results. C Inappropriate because there is no mention in either Colonel or Sanders suggesting the desirability of using PAA at any pressure, which is a limitation of claim 25 that renders the claimed invention unique. D Appropriate because patent examiners are allowed to combine references that result in a close approximation to the claimed invention and satisfy their prima facie burden by assuming that one of skill in the art would make the combination. E Inappropriate if the applicant argues that an examiner is not allowed to combine references and merely assumes that one of skill in the art would understand the interchangeability of antibacterial solutions.

B

Courts have held that naturally occurring products and some man-made products that are essentially no different from a naturally occurring product are ''products of nature'' that fall under either the "laws of nature" or "natural phenomena exception." To determine whether a claim that includes a nature-based product limitation recites a ''product of nature'' exception, the markedly different characteristics analysis is used to evaluate the nature-based product limitation. A claim that recites a nature-based product limitation that does not exhibit markedly different characteristics from its naturally occurring counterpart in its natural state is directed to a ''product of nature'' exception. Conversely, if the claim includes a nature-based product that has markedly different characteristics, the claim does not recite a ''product of nature'' exception and is eligible. Which of the following characteristics would not be considered when determining if there is a marked difference? A Biological or pharmacological functions or activities B Isolation of gene sequences C Chemical and physical properties D Phenotype, including functional and structural characteristics E Structure and form, whether chemical, genetic or physical

B

Dr. Bruce Maryanoff invented a pharmaceutical during a search for new antidiabetic drugs. Topiramate is a reaction intermediate in the synthesis Dr. Maryanoff ran as part of his antidiabetic efforts. Unexpectedly, Dr. Maryanoff discovered that this particular intermediate had powerful anticonvulsant properties. After extensive testing, Maryanoff showed that the compound was safe and effective. Subsequently, Maryanoff filed a patent application claiming a compound useful for treating epilepsy. The patent examiner rejected the claims to this epilepsy compound, asserting that a person of ordinary skill in the art searching for antidiabetic drugs would have known to start with di-isopropylidene fructose (DPF), as Dr. Maryanoff did. Starting with DPF, one would naturally and routinely come across the reaction intermediate topiramate. Therefore, the resulting discovery of topiramate was not an inventive step, but rather nothing more than what would be expected from a routine exploration of a finite number of possible solutions. Maryanoff has been unsuccessful in convincing the examiner that he is entitled to patent his treatment for epilepsy. He retains you to file an appeal with the Board of Patent Appeals and Interferences. What is the most likely outcome of the appeal that makes appropriate legal arguments on behalf of the client? A The examiner's rejection will be overruled because one would not naturally and routinely come discover the reaction intermediate topiramate. B The examiner's rejection will be overruled because the ordinary artisan in this field would have had to stop at the topiramate intermediate and test it for properties far afield from the purpose for its development in the first place (epilepsy rather than diabetes). C The examiner's rejection will be affirmed because Maryanoff discovered the powerful anticonvulsant properties by chance. D The examiner's rejection will be affirmed because Maryanoff did not invent the pharmaceutical compound. E The examiner's rejection will be affirmed because a person of ordinary skill in the art searching for antidiabetic drugs would have known to start with the di-isopropylidene fructose.

B

In accordance with patent laws, rules and procedures, an invention is most likely non-obvious in which of the following circumstances? A The prior art contains no teaching, suggestion or motivation to combine the references cited by the patent examiner. B The prior art teaches away from the claimed combination and the combination yields more than predictable results. C One of ordinary skill in the art would have been motivated to combine known elements in a novel arrangement. D The prior art combined by the patent examiner is tangentially related to the problem that the inventor was trying to solve. E It was obvious to try a finite set of combinations, but at the outset it was not apparent which combination would be useful.

B

Inventor Blitzer filed a patent application with claim 1 covering a device for stabilizing spinal column segments, comprising a pedicle screw having a threaded shaft portion and a spherically-shaped head at the end of said threaded shaft portion and a receiver member flexibly connected to the head and an inner hollow conically-shaped portion for receiving the head of the screw. The device further incorporated a compression member for exerting force onto the head so that the head is pressed against the hollow conically-shaped portion. The patent examiner rejects claim 1 and all claims dependent on claim 1 as being obvious over Cooper in view of Anderson. The Office Action explains that the Cooper reference discloses a screw assembly that contains all elements of the claim other than a compression member for pressing the screw head against the receiver member. Because Cooper's design lacks a compression member, it achieves what Cooper calls a "shock absorber" effect, allowing for some motion. Cooper further explains the superiority of the "shock absorber" effect because rigidity increases the likelihood that the screw will fail within the human body, rendering the device inoperative. Anderson discloses an external fracture immobilization splint for immobilizing long bones, such as arm or leg bones, with a swivel clamp that is capable of movement until it is rigidly secured by a compression member. Thus, the examiner believes, and clearly articulates, that Cooper plus the compression member of Anderson teaches the claims filed by Blitzer. Which of the following arguments, if made, would overcome this rejection? A Although predictability is a touchstone of obviousness, the predictable result discussed in KSR refers not only to the expectation that prior art elements are capable of being physically combined, but also that the combination would have worked for its intended purpose. B Cooper does not merely express a general preference for a "shock absorber" effect, but rather Cooper expresses a safety and functionality concern associated with devices incorporating a compression technique, which thereby teaches away. C There is no motivation, suggestion or teaching to combine Cooper and Anderson; therefore, the obviousness rejection is inappropriate in light of what someone of ordinary skill in the art would appreciate. D A mere reason to combine in conjunction with the technical ability to combine does not generally lead to a conclusion that the claimed invention would have been obvious. E Viewed against the backdrop of the collective teachings of the prior art, a person of ordinary skill would not have combined Cooper and Anderson.

B

Inventor Merlin Kreskin seeks patent protection for a claimed invention that explains how buyers and sellers of commodities in the energy market can protect, or hedge, against the risk of price changes. The key claims are claims 1 and 4. Claim 1 describes a series of steps instructing how to hedge risk. Claim 4 puts the concept articulated in claim 1 into a simple mathematical formula.'Claim 1 consists of the following steps: (a) initiating a series of transactions between said commodity provider and consumers of said commodity, (b) identifying market participants for said commodity having a counter-risk position to said consumers; and (c) initiating a series of transactions between said commodity provider and said market participants at a second fixed rate thereby balancing the risk position of said series of consumer transactions.'The patent examiner rejected Kreskin's claims, explaining that the invention is not implemented on a specific apparatus and merely manipulates an abstract idea and solves a purely mathematical problem without any limitation to a practical application. This rejection is: A Inappropriate at least with respect to claim 1 because the recited steps are specifically defined and, therefore, not merely an abstract idea. B Appropriate because Kreskin's concept of hedging, described in claim 1 and reduced to a mathematical formula in claim 4, is an unpatentable abstract idea. C Inappropriate because it appears as if the examiner applied the machine-or-transformation test, which is not an appropriate test for use or consideration. D Appropriate because Kreskin's claims embody a business method application and, therefore, are outside the scope of patent-eligible subject matter under 35 U.S.C. § 101. E Inappropriate because claim 1 does not recite any mathematical formula and, therefore, does not solve a purely mathematical problem.

B

Jasmine Horatio is the inventor of the world's first idiot-proof TV remote control. Rather than buttons to push, the remote control is voice operated. Simply speak into the device and your TV and DVR will do whatever you instruct it. She conceived of this innovation while employed by Gold Berg, Inc. The invention was reduced to practice by Jasmine and others working for Gold Berg. Jasmine is extremely humble and doesn't view what she has invented as, in her words, "all that wonderful, and hardly interesting at all." She is a little embarrassed that her greatest innovative concept relates to television, which she abhors to the point where she doesn't even own a TV. As a result, Jasmine wants to remain anonymous. Senior citizens all over the world are, for the first time, now able to use a TV remote without requiring the assistance of their grandchildren. This freedom granted to seniors has not gone unnoticed. Jasmine had been receiving hundreds of letters a day from grateful seniors and was awarded the AARP "Inventor of the Century" award. Unable to take all this adulation for what she viewed as nothing more than an "innovative oddity," she disappears. Despite best efforts to locate her, the trail has gone cold, leading everyone to believe she has taken on a new identity, likely moving to a remote part of Alaska where she won't be recognized. It is now necessary to file a patent application at the United States Patent and Trademark Office claiming the TV remote invented by Jasmine. Which of the following would best be in accordance with USPTO practice and procedures for an application filed on or after September 16, 2013? A An inventor's oath or declaration must always be filed when a patent application is filed in the United States Patent and Trademark Office. B If Gold Berg can demonstrate that Jasmine was under both an obligation to assign the invention and that she cannot be found after reasonable efforts to locate her, a patent application may be filed without executing an oath or declaration. C Each individual who is an inventor or joint inventor of a claimed invention in an application for patent must execute an oath or declaration in connection with the application. D If Gold Berg can demonstrate that Jasmine was under an obligation to assign the invention or that she cannot be found after reasonable efforts to locate her, a patent application may be filed without executing an oath or declaration. E Each individual who is an inventor or joint inventor of a claimed invention in a non-provisional patent application must execute an oath or declaration in connection with the application.

B

Jenna Tyson filed a patent application in Canada on April 17, 2013, relating to an inflatable lounge chair with integrated radio. She subsequently filed a patent application in the United States on May 15, 2014, which claimed priority to the earlier-filed Canadian patent application. Papers were filed to restore priority, together with the applicable fee, based on the fact that Tyson mistakenly docketed May 17, 2014, as the date by which she needed to file a U.S. application. The Canadian patent application received a favorable office action on November 26, 2014, indicating that several claims were allowable. She requested participating in the PPH in the United States. The request for entry into the PPH was deemed non-compliant, and the USPTO notified Tyson that her request could not be granted because her request did not satisfy all of the requirements for entry in the PPH. Which of the following most accurately reflects the status of Tyson's attempt to enter the PPH in the United States? A Having failed to satisfy the requirements of the PPH, being un-prejudiced by any previous failed attempts, Tyson may subsequently request participation in the PPH program again. B Tyson will be given one opportunity to perfect the request in a renewed request for participation. C Tyson may ask the USPTO to suspend action on the U.S. application so that she can file a renewed request for participation in the PPH. D Because Tyson filed a timely request to enter the PPH in the United States, even if the U.S. application is subsequently examined prior to her filing a renewed request, participation in the PPH can still be achieved without the need to file a continuation. E Having failed to satisfy the requirements of the PPH, Tyson will be notified by the Patent Office that the application now must await action in its regular turn.

B

Jerry Rivers, a resident of Mexico, invented a new and improved microphone while vacationing in New Orleans during January 2013. After returning from vacation, he decided to file a Mexican patent application, which was accomplished on February 15, 2013. Rivers also ran an advertisement on July 28, 2013, in the El Heraldo de Mexico, offering to sell his improved microphone, but no one responded. His friend Jessica Waters did take a few prototype microphones with her to the National Radio Hall of Fame induction ceremonies in Chicago, Illinois in May 2013. Despite Waters' repeated offers for sale, which started May 27, 2013, no sales were made. Rivers, finally ready to file a U.S. application, instructs his U.S.-based patent attorney to file a non-provisional patent application on February 14, 2014. Rivers, who struggles with English, told his U.S. patent attorney of his previous Mexican application. His U.S. patent attorney thought Rivers had said that he filed his Mexican application on March 15, 2013. On February 17, 2014, Rivers sent an e-mail to confirm that his attorney had filed the U.S. application. At this time, the error was discovered. The U.S. patent attorney immediately filed a U.S. patent application claiming the benefit of the earlier Mexican filing, which was identical in scope to his previous Mexican application. This U.S. filing was accomplished on February 19, 2014. Based on these facts, which of the following statements is correct? I. The Rivers U.S. patent application will be examined under AIA 102. II. The Rivers U.S. patent application will be examined under pre-AIA 102. III. Rivers will be able to obtain a U.S. patent. IV. Rivers will not be able to obtain a U.S. patent because of the offer for sale in El Heraldo de Mexico. V. Rivers will not be able to obtain a U.S. patent because of the offers for sale by Waters in Chicago, Illinois. A I and III B II and III C I and IV D I, IV and V E II and V

B

John Smith, the inventor of a new therapeutic compound, has filed a patent application with the United States Patent and Trademark Office. The claimed compound was clopidogrel, which is the dextrorotatory isomer of methyl alpha-5(4,5,6,7-tetrahydro(3,2-c)thienopyridyl)(2-chlorophenyl)-acetate. Clopidogrel is an anti-thrombotic compound used to treat or prevent heart attack or stroke. The mixture of dextrorotatory and levorotatory (D- and L-) isomers of the compound was known in the prior art, which lead the patent examiner to reject the claim as obvious to try. Smith presents appropriate expert verification via affidavit that persons of ordinary skill in the art could not have predicted the degree to which the compound would have exhibited such therapeutic activity without the presence of undesirable toxicity. In the face of this submitted evidence, the examiner should: A Affirm the rejection because affidavits of experts are not appropriate forms of evidence to submit to an examiner. B Withdraw the rejection because, even if there are only a small number of possible choices, an obvious-to-try line of reasoning is not appropriate when, upon consideration of all of the evidence, the outcome would not have been reasonably predictable. C Affirm the rejection because the mixture of dextrorotatory and levorotatory isomers were known to exist in the prior art. D Withdraw the rejection because in order for the patent examiner to appropriately reject a claim as being obvious to try, the examiner must present the applicant with a sworn statement from an expert opining that one of skill in the art would have deemed the compound variation obvious to try. E Affirm the rejection because whether or not the compound would have exhibited superior therapeutic activity is of no importance where a limited number of options for combining known compounds exists.

B

Monte Lee is the inventor of a pulmonary mattress and associated method of use to treat severe upper respiratory infections. The invention is used as a patient support device and includes a cover defining an interior region, a layer of three-dimensional material, and an air circulation device disposed adjacent the layer of three-dimensional material. An International Patent Application is filed in the United States Patent Office on March 15, 2013. Believing that methods of use are not patentable outside the US, Lee does not disclose the method of use. A nonprovisional patent application is filed March 3, 2014, which claims the benefit of the earlier-filed International Application. The nonprovisional patent application discloses the same invention as included in the International Application, but also includes two new embodiments. The first further comprises a vibration device located within the inner region. The second incorporates a coin-activated mechanism for the vibration device. The nonprovisional patent application contains 25 claims. Only claims 1 - 14 relate to the pulmonary mattress, Claims 15 - 18 incorporate the vibration device, Claims 19 - 22 incorporate the coin-activation mechanism to the vibration device and Claims 23 - 25 claim the method. Due to lack of funds, Lee does not pursue the International Application. In the First Office Action in the nonprovisional application, the patent examiner rejects claims 1 - 14 under 35 U.S.C. 103 based on a US patent to Taft issued in 1925, in view of a Belgian patent application filed by Claire on April 1, 2013, which published on October 1, 2014, and subsequently was used to support priority in a published PCT application that designated the US. Claims 15 - 18 are rejected under 35 U.S.C. 103 based on Taft, in view of Claire and further in view of McHenry. McHenry is an Irish patent issued on June 15, 2014, which was filed in Ireland on February 15, 2013, and which was subsequently used to support a claim of priority for an issued US patent. Claims 19 - 22 are rejected under 35 U.S.C. 103 based on Taft, in view of Claire and McHenry, and further in view of Cosmappo, which is an Italian patent issued on November 22, 2015, on an application filed in Italy on March 2, 2014, and which was subsequently used to support a claim of priority for an issued US patent. Claims 23 - 25 are rejected under 35 U.S.C. 103 based on Taft, in view of Hampton. Hampton is a UK published patent application, which published on June 15, 2014, which was filed on January 14, 2013, and which was subsequently used to support a claim of priority for an issued US patent. Which arguments can Lee successfully make to overcome these obviousness rejections? A Lee will not be able to remove any of these references. Therefore, he will need to either amend the claims or argue the obviousness rejections on their merits by pointing out that there is no teaching, suggestion or motivation to combine the references, and the claims define an invention that provides unexpected results. B Lee will be able to overcome the rejection of claims 1 - 22 by pointing out that the Claire reference is not prior art. C Lee will be able to overcome the rejection of claims 15 - 18 by pointing out that the McHenry reference is not prior art. D Lee will be able to overcome the rejection of claims 19 - 22 by pointing out that the Cosmappo reference is not prior art. E Lee will be able to overcome the rejection of claims 23 - 25 by pointing out that the Hampton reference is not prior art.

B

No-Burn is a remarkable pharmaceutical preparation that is a potent inhibitor of gastric acid secretions and is used to treat ulcers and reflux. In order to be an effective treatment, No-Burn needs to adequately survive the harsh gastric acid secretions of the stomach and work its way into the small intestine. The base compound is well known, but without appropriate coatings there is no way for the compound to survive harsh conditions of the stomach to be effective. The Berra reference discloses use of coating E to protect No-Burn from the gastric acids of the stomach. Unfortunately, E also contains acidic compounds, which cause the compound to begin breaking down in storage and to be less effective upon administration. To solve this problem, the Jeter reference discloses a counter-acting compound, A, employed along with E. The E + A coatings were widely used within the industry. Inventor Frank Beans realized a problem associated with the E + A coatings; namely, that the presence of A counters E in storage to a large extent, thereby not providing optimal integrity of the underlying No-Burn compound upon administration. Beans proposed that by adding an inert subcoating that rapidly disintegrates in water, the problems with E + A interactions would be eliminated. Beans filed a patent application that claimed an oral pharmaceutical compound comprising a core of No-Burn in combination with A, an inert subcoating surrounding the core, and an outer layer of E disposed around the inert subcoating. The application explains that the subcoating increases storage stability of No-Burn and provides sufficient gastric acid resistance to prevent degradation in the stomach. Once the dosage reaches the small intestine, the solubility of the subcoating allows for rapid release. The patent examiner assigned to the case, N. Eva Gonnageddit, rejected all claims submitted because the claimed invention was obvious over Berra in light of Jeter, further relying upon the general knowledge within the industry teaching subcoatings of pharmaceutical preparations and there being no evidence of unpredictability. According to the patent laws, rules and procedures, which of the following is the most appropriate reaction to this rejection? A Advise Beans that he should give up because the addition of an inert ingredient into a known compound is within the common sense of those skilled in the art and the claim is not patentable. B File a reply arguing that the formulation was not obvious because it was the inventor who recognized the flaws in the prior art formulation; therefore, one of skill in the art would not have any reason to modify the initial formulation. C File a reply arguing that there was no teaching, suggestion or motivation to add an inert subcoating surrounding the core and, therefore, the claimed invention is patentable. D File a reply arguing that it is inappropriate for the examiner to have relied upon the general knowledge within the industry, further arguing that subcoatings cannot be said to be within the common sense understanding of one skilled in the art. E File a continuation-in-part with a simultaneously filed preliminary amendment adding an enabling disclosure explaining that the strange and unusual properties achieved through the presence of the subcoating renders the claimed invention nonobvious.

B

On November 1, 2012, Christine conceived of a new and improved triple-action widget. Christine filed a patent application in the USPTO on December 31, 2012. On June 4, 2012, inventor Richard, independently and without knowledge of Christine's work, conceived of the same invention. Richard immediately began working on this invention in a diligent manner four days a week through the second week in August. As per his usual family tradition, Richard spent the final weeks of August 2012 vacationing with his family in Southern California. Upon his return from vacation, Richard was busy catching up at work, concentrating on his fantasy football team and helping his kids get back into the swing of the new school year. He once again returned to his invention on October 15, 2012, at which time he again began working on the invention religiously four days a week. Richard finally achieved a working prototype just before Thanksgiving in 2012, on November 21, 2012, specifically. After the first of the year, on January 3, 2013, Richard discussed his invention with his patent attorney and requested the attorney prepare a patent application. Because Richard was on an extended business trip and unavailable to give final authorization to file the application, Richard's patent application was not filed at the USPTO until March 18, 2013. The claims filed in Richard's patent application are identical in scope to the claims filed in Christine's patent application. Given only these facts, which of the following statements, if any, most accurately describes who has the right to obtain a patent? A Christine will obtain the patent because she was the first to file. B Richard will obtain the patent because he was the first to conceive and had diligence beginning before Christine's filing date. C Christine will obtain the patent because, by going on vacation, Richard was not diligent. D Richard will obtain the patent because Christine did not actually reduce the invention to practice. E Christine will obtain the patent because Richard's patent attorney did not diligently prepare and file the patent application.

B

On September 23, 2006 a U.S. patent application was filed directed to a screwdriver. On January 8, 2007 a claim for priority was made and a certified copy filed of a Canadian application filed October 21, 2005. A continuation was filed in June of 2007 under 37 CFR 1.53(b) and the parent abandoned shortly thereafter. No claim for priority was made in the continuation, which issued as a U.S. patent on January 13, 2008. Which of the following statements is true: A The failure to claim priority in the continuation can only be corrected by filing a reissue application. B The failure to claim priority in the continuation application can be corrected by obtaining a Certificate of Correction and also filing a Petition and fee for Late Assertion of Priority. C The failure to claim priority cannot be corrected and the priority is lost. D There is no need to claim priority in the Continuation since priority was claimed in the parent. E None of the above is true.

B

Raven Hamilton is the inventor of a new gizmo that slices, dices, dashes and spins. An early prototype of the gizmo has shown to be extremely effective, and market testing suggests that there is real commercial potential. Prior to disclosing the invention, Hamilton filed a patent application in Canada, which was accomplished on February 5, 2013. Subsequently, upon receiving international interest from potential licensing partners, Hamilton filed an international patent application in Canada on January 22, 2014, which claimed priority to the earlier-filed Canadian patent application. Hamilton entered the U.S. national stage on August 5, 2015. After some early market successes, it was discovered that the spinning functionality was not appropriate to meet the long-term needs of users because the spinner was overly susceptible to wear and tear. It was further discovered that the U.S. was likely going to be the largest marketplace for the gizmo. This lead Hamilton to file a continuation-in-part application in the U.S. on October 12, 2015, which described a previously undisclosed embodiment of the gizmo having enhanced features addressing the durability issues. Certain claims filed in the October 2015 continuation-in-part specifically related to this previously undisclosed embodiment of the gizmo. On November 2, 2015, Hamilton received notice from the Canadian patent examiner indicating that certain claims to the gizmo in her originally filed Canadian application were allowable. She now would like to enter the PPH in the U.S. Because she believes that the most commercially valuable claims will come from the continuation-in-part directed to the gizmo with enhanced features, she would like to enter the PPH with the continuation-in-part application filed on October 12, 2015. Which of the following would you tell her? I. The continuation-in-part application is not eligible to enter the PPH because it does not share the priority date of the originally filed Canadian patent application. II. The PPH can be entered with respect to the continuation-in-part application, but claims to the enhanced gizmo features will not be able to be obtained. III. Because the continuation-in-part application will have AIA 102 applied, it is not eligible for entry into the PPH. IV. Because the continuation-in-part application will be examined under AIA 102, it will be possible to obtain claims to the gizmo with enhanced features via entry into the PPH. A I B II C III D IV E I and III

B

Which of the following statements regarding entry into the PPH pilot program to obtain special status is true? I. Any claims amended or added after the grant of the request for participation in the PPH pilot program do not need to sufficiently correspond to one or more allowable claims in the application filed in the Office of Earliest Examination (OEE). II. The applicant is required to submit, along with any amendment, a statement certifying that the amended or newly added claims sufficiently correspond to the allowable claims in the OEE. III. Entry into the PPH absolves applicants of their duties under 37 CFR 1.56 and 37 CFR 11.18. A I B II C III D I and III E II and III

B

Determining whether an applicant is seeking to patent a judicial exception -- namely an abstract idea, a law of nature or a natural phenomenon -- or a patent-eligible application of the judicial exception has proven to be a difficult task. Therefore, the Supreme Court has created a decisional framework for making the determination. Which of the following most accurately states the proper decisional framework analysis that a decision maker is supposed to undertake when determining patent eligibility of a claim directed to a judicial exception. I. Step one is to determine whether the claims are directed to an abstract idea, a law of nature or a natural phenomenon. II. If the claims are directed to a judicial exception, the second part of the test is to determine whether the claim recites additional elements that amount to significantly more than the judicial exception. III. If the claims do amount to significantly more than the judicial exception, the third step is to determine whether the claim elements as a whole contribute to achieving a particular technical effect. A I. B II. C I. and II. D II. and III. E I., II. and III.

C

If the United States issues a Notification of Refusal to register the subject of an international design application, A The design enters the "public domain" as to the United States. B The applicant may write to Geneva and explain the error as to the United States. C The applicant may "prosecute" the design application as they would any other US design application. D The United States cannot refuse to register an International Industrial Design once it has been registered in Geneva. E The applicant may file a "continuation" application in the United States in order to continue prosecution.

C

Nick, a US citizen, is a creative industrial designer and believes his new yoyo design(s) will have worldwide appeal. He'd like to begin the process of obtaining design patent protection in the United States and other countries in WIPO without delay. Your advice is to A File a US provisional application, followed in six months by a regular design application in the US. B File a non-provisional US application, followed in 12 months by the filing of a PCT directed to his new designs. C File an International Design Application in the USPTO as an office of "indirect" filing and designate member countries of WIPO, including the US, where Nick would like protection. Pay the necessary fee(s). D File a copyright with the US Copyright Office and, under the Berne Convention, his designs would be protected worldwide. E File a US design application and, within 12 months, file in the countries where Nick would also like to obtain protection.

C

On behalf of inventor Butch, you file a patent application directed to a retractable segmented covering system, which can be used to cover almost any structure or container, including truck trailers. Independent claim 1 explains the invention includes a plurality of flexible cover sections with a plurality of parallel supporting bows spaced therebetween and a drive assembly. Each cover section is detachably connected between the supporting bows and is removable independent of the other cover sections. You receive a first office action rejecting claim 1 as being obvious over Cassidy in view of Kidd. Cassidy discloses a truck cover including every limitation of claim 1 except for cover sections that can be removed from the cover system independent of the other cover sections. Kidd discloses a truck cover made up of a number of cover sections. In accordance with patent laws, rules and procedures, this obviousness rejection is: A Correct because if a claimed invention incorporates each and every limitation of the prior art, the invention as claimed fails to satisfy the novelty requirement of 35 U.S.C. 102. B Correct because if a claimed invention incorporates each and every limitation of two or more pieces of prior art, the invention as claimed fails to satisfy the nonobviousness requirement of 35 U.S.C. 103. C Correct because an invention is obvious if it is a combination of known prior art elements that would reasonably have been expected to maintain their respective properties or functions after they have been combined. D Incorrect because the Butch invention mechanizes what is taught by the combination of Cassidy and Kidd, thereby introducing a unique and nonobvious inventive concept. E Incorrect because the relevance of Kidd is only understood after first viewing the Cassidy disclosure, thereby making the combination of Cassidy and Kidd for obviousness purposes inappropriate.

C

Regarding obviousness, which of the following are not true? A The mere existence of a large number of options does not in and of itself lead to a conclusion of nonobviousness. B Even when only a small number of possible choices exist, the obvious-to-try line of reasoning is not always appropriate. C A mere reason to combine in conjunction with the technical ability to combine does not generally lead to a conclusion that the claimed invention would have been obvious. D When constituent elements are being employed in accordance with their recognized functions, and would have predictably retained their respective functions when combined, the claimed invention is obvious. E All of the above are true.

C

The date of "registration" of the international design following the indirect filing of a complete international industrial design application that is timely forwarded to Geneva is A The date of publication of the industrial design by Geneva. B The date of receipt of the international industrial design application in Geneva. C The date of receipt at the Contracting Party office. D The date of publication by a Contracting Party. E The date the fee is paid.

C

Under which circumstances would it be inappropriate for a substitute statement to be filed in lieu of an oath or declaration? A The inventor is in a coma. B The inventor has suffered a head trauma and now exhibits signs of dementia. C The inventor has assigned the rights to the invention. D The person filing the substitute statement has reviewed the contents of the application. E The person filing the substitute statement is the assignee and the inventor is unavailable.

C

Which of the following statements is false with respect to determining whether a claimed invention exhibits patent-eligible subject matter? A There are four patent-eligible subject matter categories that encompass: processes, machines, articles of manufacture, or compositions of matter. B If the claimed invention falls within one of the categories of allowable subject matter, inquiry must be made to determine whether the claim wholly embraces a judicially recognized exception. C If a claim is determined to be directed to a judicial exception to patent eligibility, the claim will be rejected by the patent examiner. D Determining that a claim falls within one of the enumerated categories of patentable subject matter does not end the eligibility analysis, because claims directed to nothing more than abstract ideas, natural phenomena, and laws of nature are not eligible for patent protection. E None of the above.

C

Which of the following statements is the most correct statement insofar as business method patents are concerned? A Not patentable subject matter because it is unclear how far business method patents would reach, and whether they extend to technologies for conducting a business more efficiently. B Business methods are categorically outside of §101's scope because federal law explicitly contemplates the prohibition of patents pertaining to a method of conducting business. C The Patent Act leaves open the possibility that there are at least some processes that can be fairly described as business methods that are within patentable subject matter under §101. D If a particular business method fits into the statutory definition of a "process," the application claiming that method should be granted. E All of the above are false.

C

Which, if any, of the following would be considered patent ineligible? I. The claims cover a well-known concept of categorical data storage, i.e., the idea of collecting information in classified form, then separating and transmitting that information according to its classification. II. The claims cover digital image halftoning. Halftoning techniques allow computers to present many shades and color tones with a limited number of pixels, which allows computer displays and printers to render an approximation of an image by using fewer colors or shades of gray than the original image. One method of generating a digital halftoned image is called ''thresholding'' that uses a two-dimensional array called a ''mask.'' The claimed method incorporates algorithms and formulas that control the masks and halftoning, but apply them in a technique that improves the generated digital halftoned image. III. The claims cover a GPS satellite navigation system comprising satellites orbiting the Earth that permits a GPS-enabled receiver to detect signals from at least four satellites and use that information to calculate its distance from each satellite and thus its precise position on Earth through trilateration. The claim sets forth the steps of calculating the absolute position, which is a mathematical concept. IV. The claims relate to managing a bingo game while allowing a player to repeatedly play the same sets of numbers in multiple sessions. V. The claim addresses the problem of retaining Web site visitors from being diverted from a host's Web site to an advertiser's Web site, for which ''the claimed solution is necessarily rooted in computer technology in order to overcome a problem specifically arising in the realm of computer networks.'' The claim includes additional elements including: (1) sorting visually perceptible elements; (2) on link activation, automatically identifying the host; and (3) instructing the web server to construct and serve to the visitor a new, hybrid Web page that merges content associated with the products of the third-party merchant with the stored visually perceptible elements from the identified host Web site. A I. B I and III C I and IV D I, III and IV E All of the above

C

With respect to obviousness, which of the following are false? 1.A central principle in the obviousness inquiry is whether the improvement is more than the predictable use of prior art elements according to their established functions. 2.A prima facie case of obviousness for a chemical compound begins with the reasoned identification of a lead compound. 3.In the chemical arts, obviousness determinations are typically straightforward and not complicated because potential solutions are likely to be genuinely predictable. A Statement 1 B Statement 2 C Statement 3 D Statement 1 and 3 E Statement 2 and 3

C

You prepare a patent application to be filed on behalf of LowStar, LLC which will protect their new low-earth-orbiting communications satellite. The claims in the application are drawn to a significant improvement that relates to encryption and decryption of real-time secure messages. This allows for greater security without causing messages to be delayed in transit. Unfortunately, the inventor of the technology on which LowStar wishes to file a patent, a gentleman by the name of Matthew Rodgers, hasn't been seen at LowStar headquarters for many months. Rumors first suggested that he was abducted by aliens, which seems rather implausible given his overall cantankerous demeanor. More recently, a private detective hired by LowStar has reported suspicious activity on Rodgers' credit card statements with repeated monthly charges to a Holistic Wellness Retreat run by Humphrey Hollins, a reputed cult leader in the desert of southwest Arizona. No telephones are allowed at the Hollins compound and attempts to contact Rodgers have all been rebuffed. LowStar would like to file the application in the name of the company and omit any reference to Mr. Rodgers, preferring not to eventually have the sanity of the inventor become an issue. What advice do you give LowStar? A Effective September 16, 2012, it is no longer required that patent applications in the United States be filed in the name of the inventor, so Rodgers' identity can be effectively concealed without violating any law or rule of practice. B An inventor's oath or declaration is no longer necessary; therefore, Mr. Rodgers can be omitted and application for patent can be filed in the name of LowStar. C An application must include, or be amended to include, the name of the inventor for any invention claimed in the application. D The name of an inventor may be omitted if the application filed is a provisional patent application, but if the application filed is a nonprovisional patent application, the name of the inventor and an oath or declaration must be submitted. E The word ''applicant'' refers to the assignee, the person to whom the inventor is under an obligation to assign the invention, or the person who otherwise shows sufficient proprietary interest in the matter. Therefore, the inventor does not need to be identified in an patent application filed in the United States.

C

Your client MegaGiant has discovered a pre-AIA patent to its competitor GigaCorp that it feels may be infringed by its new lawn mower. MegaGiant has learned as well that the lawn mower described in the patent was on sale in the United States by GigaCorp more than one year before the earliest effective filing date of the patent. MegaGiant is seeking your advice. Your advice is: A A Request for Reexamination can be filed based upon the prior sale. B All the claims of the patent are invalid under 35 USC 102(a). C All the claims of the patent are invalid under 35 USC 102(b). D If a Request for Reexamination is brought based upon a prior patent or publication, the PTO may also consider the prior sale. E MegaGiant may petition the PTO to reissue the patent.

C

Regarding obviousness, which of the following are not false? A For there to be a proper obviousness determination, a reasonable expectation of success is not a mandatory requirement in all cases. B Rejections on obviousness grounds can be sustained by conclusory statements when there is sufficient belief and it is readily apparent that the combination of references would be within the common sense understanding of one of skill in the art. C A reference is only said to teach away when a person of ordinary skill, upon reading the reference, would be explicitly discouraged from following a particular path, option or feature. D All rejections under 35 U.S.C. 103 must articulate clear reason(s) why the claimed invention would have been obvious. E All of the above are false.

D

The "formal" examination of the International Design application in Geneva looks for: A A novel design. B A claim. C Identification of the inventor. D Drawing and brief description of the design desired to be protected. E (B) - (D).

E

16. Elias James is the inventor of a system that compares, ranks, sorts and grades animals according to previously determined predicted maximum values. In its most advantageous use, the system uses magnetic resonance imaging (MRI) to evaluate the animal and determine a number of days the animal must be fed to reach a maximum value. A provisional patent application was filed on behalf of James on April 15, 2012. A subsequent nonprovisional patent application was filed on April 14, 2013. The nonprovisional patent application was identical in terms of disclosure when compared to the provisional filing with the exception of a scale connected to the MRI computer system for measuring a weight of the animal, which was not disclosed in the provisional patent application. The nonprovisional patent application does not mention the scale in the specification, but does include a single dependent claim containing reference to the scale embodiment. What is the most appropriate action for James to take in accordance with patent laws and USPTO rules of procedure? A Argue that the nonprovisional patent application filed by James is not considered a transition application because, as of the filing date, the specification was identical in scope to the invention disclosed in the provisional patent application. B Argue that the nonprovisional patent application is entitled to the priority of the provisional filing date, which entitles the applicant to consideration using pre-AIA law. C Argue that the nonprovisional patent application is entitled to the priority of the provisional filing date, which entitles the application to consideration using pre-AIA law. D Provide a statement to the Patent Office no later than August 15, 2013, which identifies the nonprovisional patent application as a transition application. E Cancel all claims that in any way refer to the scale and argue that the claimed invention now only relates to the invention disclosed in the provisional filing.

D

A person to whom the inventor has assigned or is under an obligation to assign the invention may make an application for patent. A person who otherwise shows sufficient proprietary interest in the matter may make an application for patent on behalf of and as agent for the inventor on proof of the pertinent facts and a showing that such action is appropriate. If the applicant is a person who otherwise shows sufficient proprietary interest in the matter, the applicant must submit a petition including which of the following: A The required fee. B Proof that there is sufficient proprietary interest in the matter. C A statement explaining that the action is for the purpose of streamlining the patent process. D A and B. E A, B and C.

D

Andrea Adams is the inventor of a cosmetic that alleviates skin irritation by blending polybutylene glycol together with an ultraviolet absorbent. A provisional patent application was filed on behalf of Adams on March 21, 2012. A subsequent nonprovisional patent application was filed on Monday, March 18, 2013. The nonprovisional patent application was identical to the provisional filing with the exception of the additional inclusion in one embodiment of a requirement that the polybutylene glycol have an average molecular weight of 1000 to 4800, which was not disclosed in the provisional patent application but which is claimed in the nonprovisional patent application. What is the correct statement relating to which law will apply to the Adams nonprovisional patent application? A Pre-AIA. Since we know that Monday was March 18, 2013, that means that March 16, 2013, was a Saturday. Therefore, Adams nonprovisional patent application filed on the next day the Patent Office is open after the change to first-inventor-to-file will be timely filed and considered under pre-AIA. B Pre-AIA. The nonprovisional patent application filed by Adams is entitled to claim priority to the provisional filing, which was accomplished well before transition to first-inventor-to-file under the AIA. C AIA, unless any claims to the polybutylene glycol has an average molecular weight of 1000 to 4800 are canceled from the application. D AIA plus pre-AIA 102(g), because the nonprovisional application filed by Adams contains claims containing the average molecular weight of the polybutylene glycol. E None of the above.

D

Dr. Stephen Vincent is the inventor of a graphical user interface for dynamically relocating and rescaling obscured textual information of an underlying window to become automatically viewable to the user. By permitting textual information to be dynamically relocated based on an overlap condition, the computer's ability to display information is improved. The steps of Vincent's invention, which are recited in the claims, require a processor to calculate the area of the underlying window (the first window) and then to calculate the area of the unobstructed portion of the underlying window (the second window). The step of calculating the scaling factor uses a mathematical algorithm to obtain a factor that is proportional to the difference in area between the underlying window and the unobstructed portion of the underlying window. Vincent files a patent application on November 12, 2015, claiming the aforementioned graphical user interface method with sufficient disclosure to satisfy the requirements of 35 U.S.C. 112. In his patent application, Vincent also claims a new and improved computer display which employs organic light-emitting diodes (OLEDs), which produce incredibly high-resolution images on screens that can be much thinner, cheaper to manufacture, and more energy-efficient. Claims 1-10 are directed to the graphical user interface previously described, with the broadest independent claim also incorporating a screen, a processor, constant monitoring of boundaries, and automatic return when overlap no longer exists. Claims 11-20 are directed to the OLED display. On December 1, 2016, the examiner issues a restriction, requiring Vincent to elect between the GIU and the OLED display, setting a two-month period to respond. Vincent ultimately elects the GIU claims without traverse in a filing made without any other papers or any fee filed on February 1, 2017. On August 1, 2017, the examiner issues a First Office Action on the Merits, rejecting claims 1-10 as lacking patent-eligible subject matter. If properly argued by Vincent or his representatives, can this rejection be successfully overcome? A No. Claims to a graphical user interface as described would not qualify as being patent eligible because they do not fall within one of the four statutory categories of invention. B Yes. Claims to a graphical user interface as described are not directed to an abstract idea and, therefore, would be patent eligible as an improvement. C No. Claims to a graphical user interface as described cover a mathematical relationship and algorithm that have been found by the courts to be patent-ineligible abstract ideas. D Yes. Claims to a graphical user interface as described are directed to one of the four statutory categories of invention. Although the claims would properly be considered to be directed to an abstract idea, the claims as a whole amount to significantly more than the abstract idea. E No. Claims to a graphical user interface as described are directed to one of the four statutory categories of invention. Although the claims would properly be considered to be directed to an abstract idea, the claims as a whole do not amount to significantly more than the abstract idea.

D

Gonzo Gargoyle is the inventor of a process for generating customized stock quotes and alerting a remote subscriber that the quotes can be accessed from their computer or mobile device. The stock quote alerts are generated by filtering received stock quotes, building stock quote alerts and formatting the alerts into data blocks based upon subscriber preference information. If the subscriber's computer is offline, the data blocks are transmitted over a wireless communication channel to the subscriber's wireless device which, when connected to the computer, causes the computer to auto-launch a stock viewer application to display the alert and provide access to more detailed information about the stock quote. Gargoyle files a provisional patent application adequately describing the invention on March 15, 2016. Immediately thereafter, Gargoyle hires several computer programmers, all of who sign confidentiality agreements and agree to assign any and all of their intellectual property creations over to the newly formed Gecko Wall Street Traders, LLC, which is wholly owned by Gargoyle. In addition to creating a working system, Gargoyle's team integrates a biometric security feature, which was not disclosed in the provisional patent application. On March 14, 2017, a nonprovisional patent application is filed that discloses both the original embodiment from the provisional patent application and newly created biometric feature set, but which claims only the embodiment originally disclosed in the provisional application. Gargoyle files a petition for prioritized examination and pays the fee. In the First Office Action, dated July 5, 2017, the Examiner rejects all of the claims in the application as being patent ineligible pursuant to 35 U.S.C. 101. If properly argued by Gargoyle or his representatives, can this rejection be successfully overcome? A No. Claims to a process for generating customized stock quotes as described would not qualify as being patent eligible because they do not fall within one of the four statutory categories of invention. B Yes. Claims to a process for generating customized stock quotes as described are not directed to an abstract idea and, therefore, would be patent eligible as an improvement. C No. Claims to a process for generating customized stock quotes as described cover a mathematical relationship and algorithm that have been found by the courts to be patent-ineligible abstract ideas. D Yes. Claims to a process for generating customized stock quotes as described are directed to one of the four statutory categories of invention. Although the claims would properly be considered to be directed to an abstract idea, the claims as a whole amount to significantly more than the abstract idea. E No. Claims to a process for generating customized stock quotes as described are directed to one of the four statutory categories of invention. Although the claims would properly be considered to be directed to an abstract idea, the claims as a whole do not amount to significantly more than the abstract idea.

D

Hannah Douglas, an independent inventor who resides in Lexington, Kentucky, is the inventor of an internal combustion engine and a method of operating that incorporates the direct injection of gaseous fuel into a combustion chamber and an ignition-assist apparatus disposed within the combustion chamber. The ignition-assist apparatus employs a catalytic coating, which provides advantages that become more evident when used with fuels that are more difficult to ignite by reducing the requisite temperature for assisting ignition and extending the service life of an ignition-assist apparatus. Without the assistance of an attorney or agent, Douglas files a provisional patent application on the device and method at the United States Patent and Trademark Office on December 25, 2012, using the Electronic Filing System. Once again without the assistance of an attorney or agent, a subsequent nonprovisional patent application was filed on Thursday, December 27, 2013. This non provisional filing claimed priority to the earlier filed provisional patent application and was identical to the provisional filing. Which of the following most accurately reflects the way the December 27, 2013, nonprovisional patent application will be treated by the USPTO? A The nonprovisional patent application will be examined under the provisions of the AIA. B The nonprovisional patent application will be examined under the pre-AIA provisions. C Since Douglas represented herself pro se, the failure to properly preserve priority can be restored because the delay in filing the application was unavoidable. Thus, the application will be afforded pre-AIA treatment. D The failure to preserve priority can be restored via a PLTIA filing because the delay in filing the nonprovisional patent application was unintentional; thus, the application will be afforded pre-AIA treatment. E The nonprovisional patent application will be considered a substitute application.

D

In order to obtain examination for an international industrial design in the United States through the Hague Convention on industrial designs, after a complete indirect filing and subsequent publication by the International Bureau in Geneva, an applicant needs to A File paperwork to enter the national phase as to the United States and pay a fee. B Request that Geneva send a copy of the application to the United States. C Be invited by the United States to pay a filing fee. D Do nothing. E Submit drawings of the design directly to the USPTO.

D

Miles Aaron is the inventor of a golf ball with a thin layer covering that improves velocity and distance. A provisional patent application was filed on behalf of Aaron on June 7, 2012. A subsequent nonprovisional patent application was filed on Monday, June 10, 2013. The nonprovisional patent application was virtually identical to the provisional filing with the exception of the inclusion of a preferred thickness. Specifically, in the provisional patent application, the thickness of the thin layer covering was defined as being .1 inches to .01 inches. The nonprovisional patent application specifically disclosed a preference of "about .06 inches." The nonprovisional patent application includes two claims. The first is an independent claim covering the range of possible thicknesses between .1 to .01 inches. The second claim is a dependent claim specifically covering the preference of "about .06 inches." In the First Office Action, the patent examiner treats the application under AIA and rejects claims 1 and 2 based on the foreign filing date of the Smith reference. You determine that the rejection based on the Smith reference is appropriate, but that the Smith reference could be removed if pre-AIA procedures were applied. What is the most appropriate response for Aaron to make in accordance with patent laws and USPTO rules of procedure? A Argue that the nonprovisional patent application is entitled to claim priority to the provisional application, which means that pre-AIA should be applied. B Argue that the nonprovisional patent application is entitled to claim priority to the provisional application, which means that pre-AIA should be applied. Further argue that the Smith reference can be removed because, under pre-AIA, a foreign filing is not prior art as of its filing date. C Argue that the preferential thickness is disclosed in the provisional patent application within the range .1 inches to .01 inches, and therefore is entitled to take priority of the provisional filing date, meaning the application is entitled to treatment under pre-AIA. D Amend claim 1 to make it patentably distinct. E None of the above.

D

On reexamination, the examiner rejected Icon's claims (relating to a treadmill) as obvious under 35 U.S.C. § 103, based on the combination of an advertisement by Damark International, Inc. and U.S. Patent No. 4,370,766 to Teague. The claim at issue, claim 1, recites "a gas spring . . . to assist in stably retaining said tread base." Claim 1 does not limit the degree or manner in which the gas spring assists in stably retaining. Damark consists of an advertisement for a folding treadmill, which is identical to Icon's claimed invention other than the gas spring. Teague describes a bed that folds up into a cabinet or recess. It purports to improve on prior art counterbalancing mechanisms by using a novel dual-action spring rather than the prior single-action springs and explicitly discusses the interchangeability of gas springs and coil springs. The examiner explains that there is a striking similarity between Icon's application and Teague, which "clearly illustrates the similarity of problems they address and solutions to that problem, further supporting that one skilled in the art would combine Teague with Damark." On appeal to the Board, you argue that the counterweight mechanism from Teague uses a large spring that would overpower Icon's treadmill mechanism, thus producing a result inoperable for its intended purpose, thus rendering claim 1 nonobvious. Your argument will: A Succeed because a reference teaches away from a combination when using it in that combination would produce an inoperative result. B Succeed because there is not substantial evidence to support the examiner's rejection and the examiner did not adequately articulate why Damark and Teague would be combined by one of skill in the art. C Succeed because one skilled in the art would not naturally look to prior art addressing the same or similar problem as the invention at hand. D Fail because one skilled in the art would understand the need to size the components from Teague appropriately for Icon's application, thereby producing an embodiment meeting Icon's claims. E Fail because Teague is not analogous art and, therefore, cannot be properly used together with Damark to formulate a valid obviousness rejection.

D

Risedronate, the subject of the rejected claims, is a member of a group of compounds referred to as bisphosphonates. Bisphosphonates, in general, are active in inhibiting bone resorption. The first two promising bisphosphonates studied for the treatment of metabolic bone diseases, etidronate (EHDP) and clodronate, had clinical problems which prevented their commercialization. Applicant went on to conduct a significant amount of experimentation involving hundreds of different bisphosphonate compounds, but could not predict the efficacy or toxicity of the new compounds. Eventually, applicant identified risedronate as a promising drug candidate and later filed the patent application claiming the compound. The examiner rejects all of the compound claims for risedronate based on a patent to Bones, which neither claims nor discloses risedronate. Instead, Bones discloses an intermittent dosing method for treating osteoporosis and addresses the central problem seen in bisphosphonates, namely that they inhibited bone mineralization. Bones teaches the use of a cyclic administrative regimen which alleviates the unwanted side effect of anti-mineralization in patients. The Bones patent lists thirty-six molecules as treatment candidates and eight preferred compounds for intermittent dosing, including EHDP. The examiner's rejection explains the structural similarities between risedronate and EHDP; thus EHDP is a lead compound that would be modified by someone of skill in the art to achieve the claimed invention. Therefore, the claims to risedronate are obvious. This rejection is likely: A Appropriate because when an obvious modification leads to the anticipated success, the invention is likely the product of ordinary skill and is obvious under 35 U.S.C. § 103. B Appropriate because an obviousness determination is appropriate where the prior art teaches a compound having structural similarities. C Appropriate because there is no evidence of any secondary considerations that would mitigate against an otherwise appropriate finding of obviousness. D Inappropriate because even if there was a reason to select EHDP as a lead compound, there was no reasonable expectation of success given its clinical failure. E Inappropriate because the Bones patent does not claim, disclose or teach risedronate.

D

Russell Raven, a resident of Australia, invented a new and improved digital zoom lens while on location filing A Gorgeous Cranium in London, England, during September 2012. After returning to Australia, he decided to file an Australian patent application, which was accomplished on December 14, 2012. On December 17, 2012, while traveling in the United States, Raven, an enthusiastic amateur photographer, offered several prototype versions of his lens for sale to friends attending a party in Las Vegas, Nevada. He successfully obtained his first sale, selling a prototype version to a successful country singer and reality TV personality. Raven also took a few prototypes with him to the Academy Awards gala in Hollywood, California in March 2013, successfully offering one of his prototypes for sale on March 1, 2013. Finally ready to file a US patent application, on December 5, 2013, Raven retains a US patent attorney. He vaguely tells his new attorney of his earlier Australian filing and explains that he will send the information as soon as he gets to his hotel and opens his laptop. Raven does send the information, but apparently because he was using the Internet connection at his hotel, it was routed into the SPAM folder in his attorney's e-mail program. Raven contacts his attorney on December 20, 2013, to inquire about the US filing and ask about the possibility of filing another patent application. It is during this call that a displeased Raven discovers that the US patent application has not yet been filed. A US patent application claiming priority to the previously filed Australian patent application is filed on December 23, 2013. The US patent application filed is identical in scope with the previously filed Australian application. Based on these facts, which of the following statements is correct? I. The Raven US patent application will be examined under AIA 102. II. The Raven US patent application will be examined under pre-AIA 102. III. Raven will be able to obtain a US patent. IV. Raven will not be able to obtain a US patent because of the sale in Las Vegas on December 17, 2012. V. Raven will not be able to obtain a US patent because of the offers for sale in Hollywood, California on March 1, 2013. A I and III B II and III C I and IV D II and IV E II and V

D

Sam Ottawa filed a patent application in Canada on April 26, 2012, which related to his new and improved ice-hole drilling device, and which subsequently published on June 25, 2013. Ottawa subsequently filed a patent application in the United States relating to the same ice-hole drilling device on October 25, 2013, claiming priority to the earlier-filed Canadian patent application. The specification of the U.S. application was identical in scope to the application filed in Canada. On December 10, 2014, Ottawa received indication from the Canadian patent examiner that several of his claims relating to a solar-powered version of his ice-hole drilling device were patentable. Unfortunately, the claims originally filed in the U.S. patent application do not sufficiently correspond to the claims the Canadian patent examiner will allow. Undeterred, Ottawa now wants to request entry into the Patent Prosecution Highway in the U.S. Will his request to enter the PPH be granted? A Yes, provided that Ottawa can demonstrate that the claims he is seeking in the U.S. sufficiently correspond to the allowable claims in the Canadian patent application. B Yes, but only if Ottawa requests that priority be restored and the failure to file in the United States within 12 months of the Canadian filing was unintentional. C Yes, but only if Ottawa provides a copy of the allowable claims from his previously filed Canadian application. D No, because the U.S. application does not have the same priority date as the Canadian application. E No, because the claims he will receive in Canada do not sufficiently correspond to those originally filed in his U.S. patent application.

D

Spackler is the holder of a patent relating to a method and apparatus for electrocuting pests, such as rats (i.e., Rat Zapper patent). Anticipating litigation, Giant Electrode Co. (GE) requested reexamination of the Spackler patent. During reexamination, the PTO rejected Spacker's claims as being unpatentable over the Gopher Zapper, which was previously patented by Spackler and demonstrated at a trade show more than a year before the filing date of the Rat Zapper patent, in view of the Happy patent and the Madison patent, due to obviousness. This rejection is: A Inappropriate because Spackler can file a terminal disclaimer removing the Gopher Zapper patent from the obviousness-type double patenting rejection. B Inappropriate because Spackler is able to obtain obvious variations of claims contained in previously obtained patents. C Appropriate because Spackler's Gopher Zapper patent is substantially similar in terms of function and purpose to the Rat Zapper claims, thereby justifying an obviousness rejection. D Appropriate because a terminal disclaimer can remove the Gopher Zapper patent as a reference but is not effective to remove the public use of its commercial embodiment more than one year prior to filing of the Rat Zapper patent. E None of the above.

D

The claimed invention is an isolated nucleic acid molecule. The claim stated that the nucleic acid encoded a particular polypeptide. The encoded polypeptide was identified in the claim by its partially specified sequence, and by its ability to bind to a specified protein. A prior art patent to Valiante teaches the polypeptide encoded by the claimed nucleic acid, but did not disclose either the sequence of the polypeptide, or the claimed isolated nucleic acid molecule. However, Valiante does disclose that by employing conventional methods, such as those disclosed by a prior art laboratory manual by Sambrook, the sequence of the claimed polypeptide could be determined, and the nucleic acid molecule could be isolated. Is the claimed invention patentable? A YES. Valiante does not disclose either the claimed sequence or the claimed isolated nucleic acid molecule. B YES. Although Valiante teaches the polypeptide encoded by the claimed nucleic acid, it does nothing more than point those familiar with the art in the direction of Sambrook, still requiring substantial experimentation to determine the sequence of the polypeptide. C YES. Biotechnology inventions, specifically the isolation and sequencing of a human gene that encodes a particular domain of a protein, are highly unpredictable. D NO. In view of Valiante's disclosure of the polypeptide, and of routine prior art methods for sequencing the polypeptide and isolating the nucleic acid molecule, a person of ordinary skill in the art would have had a reasonable expectation that a nucleic acid molecule within the claimed scope could have been successfully obtained. E NO. Even though the prior art might provide motivation to solve a problem using conventional methods, an explicit showing that a person of ordinary skill has good reason to pursue the known options is required.

D

The sole claim of a pending patent application claims an improved barbell-shaped hitch-pin locking device used to secure trailers to vehicles. The inventor believes that the claimed hitch pin is a substantial improvement over prior art hitch pins due to two unique features. First, a removable sleeve is placed over the shank of the hitch-pin lock so that the same lock could be used with towing apertures of varying sizes. Second, the improved hitch pin incorporates an external flat flange seal adapted to protect the internal lock mechanism from contaminants. The examiner rejects the sole claim of the patent application on the grounds that the invention is obvious pursuant to 35 U.S.C. 103. In addition to prior art hitch pins, the examiner uses a patent application to Master, which teaches the sleeve improvement in conjunction with a vehicle to tow a trailer, in combination with a patent to Locke, which teaches the sealing improvement in conjunction with a padlock. In response to this rejection, you argue that Locke is not analogous prior art and cannot be appropriately combined to form an appropriate obviousness rejection. This argument is likely to: A Succeed because a padlock is quite different from a hitch pin used to tow vehicles and, therefore, not properly within the sphere of consideration for obviousness purposes. B Fail because the examiner is allowed to refer to references that are not analogous if the combination of such references would be considered to be common sense. C Succeed because a hitch pin locking device with a sleeve is not a statutory equivalent; therefore, the obviousness rejection is inappropriate. D Fail even if sealed padlocks are not in the same field of endeavor, they are reasonably pertinent to the problem of avoiding contamination of a locking mechanism for tow hitches. E Succeed because the examiner has not articulated a sufficient reason to suggest a person of skill in the art would combine references from different disciplines, thereby failing to satisfy the requirement to articulate a prima facie case of obviousness.

D

Today, August 23, 2008 Jane Roe asks you to advise her regarding her patent, which issued on March 13, 2007. The patent is directed to a method of playing chess that she conceived and reduced to practice in December of 2003 while vacationing in Quebec, Canada. The application was filed in the United States on May 2, 2005. Since January of this year Jane has been in negotiation with Chess is Us (CIS), the leading manufacture of chess sets to license her invention exclusively. CIS told her today that their patent attorney has advised them that all the claims of her patent contain unnecessary limitations, and that accordingly the patent has very little value to them. Which of the following is true: A Either Jane or CIS may file a Request for a Reexamination with new claims deleting the unnecessary limitations. B Only Jane may file a Request for a Reexamination with broadened claims. C Any Request for Reexamination submitting new claims must be filed before March 13, 2009. D Claiming less than Jane had a right to claim in her patent may be the basis of a reissue. E A reexamination may only be filed under 37 CFR 1.53(b).

D

When determining whether an invention is obvious, KSR explains: "When there is a design need or market pressure to solve a problem and there are a finite number of identified, predictable solutions, a person of ordinary skill has good reason to pursue the known options within his or her technical grasp." Many cases, particularly in the chemical arts, turn on whether there is a "finite number" of predictable solutions. What is considered a "finite number"? A A small number of options. B An easily traversed number of options. C A closed set and defined number of options. D A and B. E A, B and C.

D

When rebutting a prima facie case of obviousness, all of the following arguments will be helpful except: A The prior art does not identify a starting reference point from which a skilled artisan might identify the problem identified by the applicant and pursue potential solutions. B The examiner has not articulated a reason why the prior art provides a reason why one of skill in the art would make the particular modifications to achieve the claimed invention. C The prior art does not provide any reason for narrowing the universe of prior art solutions to a finite number of identified, predictable solutions. D An obvious-to-try rationale is not proper although possible options for solving a problem were known and finite because an obvious-to-try rationale is specifically prohibited by the last sentence of 35 U.S.C. 103(a), which prohibits consideration of how the inventive contribution was arrived at. E Certain secondary considerations, including "failure by others" and "copying," support the view that this combination would not have been obvious at the time of invention.

D

Which of the following is not required to obtain an international filing date for an application filed under the Patent Cooperation Treaty (PCT); A A claim B A specification. C The designation of at least one PCT contracting state. D The name of the inventor. E An indication that the application is intended to be a PCT application.

D

Which of the following statements is most in accordance with patent laws, practice and procedures relative to analogous art? 1.When determining whether a reference in a different field of endeavor may be used to support a case of obviousness, it is necessary to consider the problem to be solved. 2.Analogous art is not limited to references in the field of endeavor of the invention, but also includes references that would have been recognized by those of ordinary skill in the art as useful for applicant's purpose. 3.Prior art is not considered analogous merely because it would have been recognized by one of ordinary skill in the art as useful for the applicant's purpose, but instead must have some "critical nexus" with the claimed invention. A Statement 1 B Statement 2 C Statement 3 D Statement 1 and 2 E Statement 1 and 3

D

Which of the following statements is not true? A Absolute predictability is not a necessary prerequisite to a case of obviousness. B Patent examiners should consider all rebuttal evidence that is timely presented by the applicants when reevaluating any obviousness determination. C Good science and useful contributions do not necessarily result in patentability. D Evidence of commercial success is no longer pertinent to an obviousness determination. E Evidence of nonobviousness may be outweighed by contradictory evidence in the record or by what is in the specification.

D

Which of the following statements is or are in accord with the patent laws, rules and procedures? (1)A claimed combination of prior art elements may be nonobvious where the prior art teaches away from the claimed combination and the combination yields more than predictable results. (2)A claimed invention is not likely to be obvious even if it is a combination of known prior art elements, provided the combined elements would reasonably have been expected to maintain their respective properties or functions after they have been combined. (3)When determining whether a reference in a different field of endeavor may be used to support a case of obviousness, it is necessary to consider the problem to be solved. A Statement 1 B Statement 2 C Statement 3 D Statements 1 and 3 E Statements 2 and 3

D

Which of the following statements most accurately states the proper test used by patent examiners when determining whether a patent claim constitutes allowable subject matter? A A patent examiner will begin by determining whether the claim is directed to a statutorily eligible category of invention, and if the answer is yes, then the claim will be deemed patent-eligible. B A patent examiner will begin by determining whether the claim is directed to a statutorily eligible category of invention, and if the answer is yes, the patent examiner will then determine whether the claim is directed to an abstract idea. If the claim is directed to an abstract idea, the claim will be deemed patent-ineligible. C A patent examiner will begin by determining whether the claim is directed to a statutorily eligible category of invention, and if the answer is no, the patent examiner will then determine whether the claim adds significantly more such that the claim nevertheless covers an inventive concept, which would satisfy the judicial exception and render the claim patent-eligible. D A patent examiner will begin by determining whether the claim is directed to a statutorily eligible category of invention, and if the answer is yes, then determine whether the claim wholly embraces a judicially recognized exception to patent eligibility. If the claim as a whole amounts to significantly more than the exception itself, then the claim would be deemed to be patent-eligible. E A patent examiner will begin by determining whether the claim is directed to a law of nature, natural phenomenon, or abstract idea. If the answer is yes, the examiner can only find the claim patent-eligible if it is specifically and unambiguously directed to one of the four enumerated patent-eligible categories of invention.

D

You file a patent application on behalf of your new client claiming a new and improved compound to treat memory loss. The patent examiner rejects the claims submitted to the compound on obviousness grounds, citing the Greg reference which discloses over 1 million compounds potentially useful for treating memory loss and additionally citing the Marsha reference which identified Compound Y as being among 20 compounds that seem to have the most positive therapeutic value for treatment of memory loss. The examiner explains in the rejection that Compound Y is the closest known compound to the claimed compound and that the claimed compound would have been obvious to one of skill in the art in view of Compound Y. Your client explains to you that Compound Y is indeed known to significantly enhance memory, but also is known to cause loss of bowel and bladder control in upwards of 40% of those individuals who were administered the compound. Which of the following arguments would not help you to convince the examiner that the obviousness rejection should be withdrawn? A Compound Y would not be selected by one of ordinary skill in the art for experimentation due to the undesirable negative side effects. B Given the negative side effects of Compound Y, it would have been logical to assume that those compounds structurally similar to Compound Y would not prove suitable. C With over 1 million compounds known to be useful for treating memory loss, one of skill in the art would not attempt to select Compound Y for further research. D Compound Y was one of only 20 compounds identified in the prior art to have the most positive therapeutic value for treating memory loss and, therefore, the prior art as a whole would not suggest to one of skill in the art that it would be obvious to try Compound Y over the other 19 compounds. E All of the above would be helpful arguments to make.

D

A patent application relates to an invention that compares the number of successfully delivered e-mail messages in a delivery against a predetermined desired quantity, and if the delivery does not reach the desired quantity, repeating the process of selecting and e-mailing a group of customers until the desired number of delivered messages has been achieved. The application claims methods of managing bulk e-mail distribution to groups of targeted consumers comprising (a) matching a target recipient profile, (b) transmitting a set of bulk emails, (c) calculating the number of successfully received e-mails by target recipients and (d) repeating until the quantity actually received exceeds a predetermined quantity. The examiner locates prior art teaching steps (a), (b) and (c) and rejects the claim as being obvious because the addition of step (d) is "merely the logical result of common sense application of the maxim 'try, try again.'" This rejection is: A Proper because, in making an obviousness determination, the examiner may rely on logic, judgment, and common sense available to the person of ordinary skill that are not necessarily found in any reference or expert opinion. B Proper because the examiner provided a reasoned explanation that avoids conclusory generalizations and, therefore, can appropriately rely on common sense without need to identify a specific hint or suggestion in a particular reference. C Proper because even without experimentation, simple logic suggests that sending messages to new addresses is more likely to produce successful deliveries than re-sending messages to addresses that have already failed. D Proper because there were a finite number of identified, predictable solutions to the identified problem addressed by the invention and no evidence of unexpected results. E All of the above.

E

A proper determination that an invention is obvious will consider which of the following? 1.Whether there exists a starting reference point or points in the art, prior to the time of invention, from which a skilled artisan might identify a problem and pursue potential solutions. 2.Whether the prior art up to the time of invention would give some reasons, available within the knowledge of one of skill in the art, to make particular modifications to achieve the claimed invention. 3.Whether the prior art before the time of invention would supply some reasons for narrowing the prior art universe to a finite number of identified, predictable solutions. A Statement 1 B Statement 2 C Statement 3 D Statements 1 and 3 E All statements are correct

E

A rejection under §112(b) may be appropriate in which of the following situations when examining means-plus-function claim limitations under §112(F)? 1.When it is unclear whether a claim limitation invokes §112(f). 2.When §112(f) is invoked and there is no disclosure or there is insufficient disclosure of structure, material, or acts for performing the claimed function. 3.When §112(f) is invoked and the supporting disclosure fails to clearly link or associate the disclosed structure, material, or acts to the claimed function. A Statement 2 B Statement 3 C Statements 1 and 2 D Statements 1 and 3 E Statements 1, 2 and 3

E

Alberta Nunavut filed a patent application in Canada on a new and improved snow shovel. The Nunavut shovel integrates a lithium-ion battery that powers a heating element within the blade of the shovel, which melts packed snow and ice, thereby making shoveling easier. The Canadian patent application was filed on December 17, 2012. The invention included claims to both a method of using the shovel and to the shovel itself. A U.S. patent application was filed on December 16, 2013, which claimed priority to the earlier filed Canadian application. The U.S. patent application specification was identical in scope to the application filed in Canada, but only a single claim was filed. On January 15, 2014, Nunavut received a Notice of Omitted Items, related to the fact that she said on the transmittal forms that there were 10 sheets of drawings, but only five sheets of drawings arrived. Nunavut timely responded to the Notice of Omitted Items explaining that the form was in error: There were 10 figures over 5 sheets of drawings, so all of the drawings were present. On August 26, 2014, Nunavut received a Restriction from the U.S. patent examiner, requiring her to elect between the method and the shovel. Nunavut replied to the Restriction on October 24, 2014, electing to move forward with claims relating to the shovel, without traverse. On November 11, 2014, the Canadian patent examiner sent a notice to Nunavut, indicating that claims to her shovel containing a lithium-ion battery were allowable, but notifying her that the method claims would not be allowed. Upon receiving this notice, on November 17, 2014, Nunavut filed paperwork to enter the Patent Prosecution Highway (PPH) in the United States. At the time Nunavut requested entry into the PPH, the claim in the U.S. application was more narrow than any of the claims deemed allowable in Canada. Will Nunavut be able to enter the PPH in the United States? A Yes. The U.S. patent application shares a common date of priority with the Canadian patent application, Canada is a partnering PPH office, there has been no substantive examination of the U.S. application, and the claims sufficiently correspond because they are more narrow than what was allowed in Canada. B No. While a response to a Notice of Omitted Items is not substantive, a response to a Restriction Requirement is substantive and, therefore, Nunavut cannot enter the PPH in the U.S. C Yes, but only if a continuation is filed on the U.S. application. D No, because the claim as originally filed in the U.S. patent application is narrower than any of the claims deemed allowable in the Canadian patent application. E Yes, but only if the claim in the U.S. application is amended to make it as broad as one of the claims indicated as allowable in the Canadian patent application.

E

Alfred, the inventor of an emergency escape device, confidentially discloses his invention to Professor William Omaha McElroy on June 1, 2012, in hopes of obtaining independent verification of his test results. McElroy is intrigued by the invention and, without Alfred's knowledge, decides to write about Alfred's invention for publication in Science Daily. The article describing Alfred's invention is published March 15, 2013. Harvey Dent reads Professor McElroy's publication and files a patent application on April 30, 2013, claiming Alfred's invention. Alfred finally files a patent application on May 14, 2013, which discloses the same invention as does the Dent application, but which claims different subject matter. With respect to Dent's patent application, which of the following are true regarding Alfred's application? A The disclosure to Professor McElroy will create an insurmountable 102(a) rejection. B Alfred will be able to overcome a rejection based on the McElroy publication. C Alfred will be able to overcome a rejection based on the Dent application. D (A) and (C). E (B) and (C).

E

Bob has filed an International Design application, which designated the United States, among the various contracting parties. The United States has refused registration following examination. Bob believes the examiner is wrong, and wants to further prosecution in the United States. Your advice to Bob is A File an Appeal to the Board. B File a continuation under Rule 1.53(b). C File a continuation or divisional under Rule 1.53(d). D File a CIP to add further distinguishing features to the design. E (A), (B) and (D)

E

The Supreme Court has identified a number of considerations for determining whether a claim with additional elements amounts to "significantly more" than the judicial exception itself. When determining whether a claim does amount to "significantly more," which of the following may be enough to qualify as "significantly more" when recited in a claim with a judicial exception in order to result in the claim being found to be patent eligible? A Improvements to another technology or technical field. B Improvements to the functioning of the computer itself. C Applying the judicial exception with, or by use of, a particular machine. D Adding a specific limitation other than what is well-understood, routine and conventional in the field, or adding unconventional steps that confine the claim to a particular useful application. E All of the above.

E

Christine Richard is the inventor of a revolutionary process for selecting the winning auctions on eBay. So successful is the method that anyone who follows the method can win an auction every single time. Unfortunately, Richard does not possess the financial resources to prepare and file a nonprovisional patent application. She does have sufficient funds, however, to have a professional patent search done, which suggests claims of sufficient scope could likely be obtained. She then pays a local practitioner to file the best provisional patent application within her budget, which is successfully accomplished. She then writes a business plan, attaches the patent search report and newly filed provisional patent application. Angela Charles reads the business plan and offers to partner with Richard. They form a holding company called Guys First Names (GFN). You are retained and asked to prepare and ultimately file a patent application on behalf of GFC. Unknown to Richard, Charles approaches you to tell you that she would greatly prefer if the patent were issued to GFC and not to Richard directly. If you file an nonprovisional application in the name of GFC, which of the following is true? A You will receive a Notice of Omitted Items. B You will receive a Notice of Incomplete Application. C Both Richard and Charles must execute an oath or declaration before the patent can be issued. D Both Richard and Charles must execute either an oath or a declaration before payment of the Issue Fee. E None of the above.

E

Derek Garcia is the inventor of a new and improved wind turbine. A proper declaration was filed in the nonprovisional patent application filed on July 1, 2008. Since then Derek has continued to improve the invention and is now ready to file a continuation-in-part application. Which of the following statements is most in accordance with USPTO practice and procedures? A Citation to the previously filed declaration in the July 1, 2008, nonprovisional application is sufficient in any continuation-in-part application. B A copy of the declaration filed in the nonprovisional patent application filed on July 1, 2008 may be submitted in any continuation-in-part application. C A newly executed oath or declaration is not necessary. Rather, Derek may file a substitute statement pursuant to 37 CFR 1.64. D A newly executed oath or declaration may be filed by the assignee at any time prior to the continuation-in-part application being placed in condition for allowance. E A newly executed oath or declaration is required.

E

During prosecution of an application, which of the following are ways the applicant can resolve the ambiguities of a functional limitation? A The ambiguity might be resolved by using a quantitative metric rather than a qualitative functional feature. B Applicant could demonstrate that the specification provides a formula for calculating a property along with examples that meet the claim limitation and examples that do not. C Applicant could demonstrate that the specification provides a general guideline and examples sufficient to teach a person skilled in the art when the claim limitation was satisfied. D Applicant could amend the claims to recite the particular structure that accomplishes the function. E All of the above.

E

Harold Finch is the inventor of a system and method for performing rapid facial recognition. The invention begins its work when the image-capture device captures a facial image. The feature extraction module extracts features of the facial image to generate a set of feature data that is broadcasted to a response-recognition computing unit. The feature-recognition modules then perform distributed facial recognition for generating recognition results. Finch files a provisional patent application on April 15, 2011. The provisional filing fully describes the invention as it existed at the time of filing, but does not include any claims. The provisional filing is subsequently followed by the filing of a nonprovisional patent application on April 13, 2012. The nonprovisional patent application does not contain any additional disclosure, but is filed with 20 claims, 4 of which are independent claims. On March 15, 2013, a Continuation-in-Part (CIP) is filed, further disclosing a self-servicing automated transaction machine that permits an authorized user to perform transactions therewith based on facial recognition. On March 17, 2013, a continuation of the April 13, 2012, nonprovisional patent application is filed. On September 20, 2014, a First Office Action on the Merits is received in the nonprovisional filing, and an Amendment containing new claims supported by the original filing is presented on November 3, 2014. Which of the following accurately states which law these applications will be examined under? A The April 13, 2012, nonprovisional will be examined applying AIA because of the addition of claims not presented in the provisional filing. B The April 13, 2012, nonprovisional will be examined applying AIA because of the new claims added by Amendment on November 3, 2014. C The March 15, 2013, CIP will be examined applying AIA. D The March 17, 2013, continuation will be examined applying AIA. E None of the above.

E

If a general concept is involved in executing the steps of the method, this can be a clue that the claim is drawn to an abstract idea. Where a general concept is present, which of the following factors are relevant to determine whether the claim embodies merely an unpatentable abstract idea?'1.The extent to which use of the concept, as expressed in the method, would preempt its use in other fields.'2.The extent to which the claim is so sweeping as to cover both known and unknown uses of the concept.'3.The extent to which the claim would effectively cover all possible solutions to a particular problem. A Statement 1 B Statement 2 C Statements 1 and 2 D Statements 2 and 3 E Statements 1, 2 and 3

E

In accordance with patent laws, rules and procedures, which of the following statements regarding obviousness is the most correct? A The rationale to modify or combine the prior art does not have to be expressly stated in the prior art; the rationale may be expressly or impliedly contained in the prior art or it may be reasoned from knowledge generally available to one of ordinary skill in the art. B Analysis supporting a rejection under 35 U.S.C. 103 should be made explicit by the examiner, but does not require record evidence of an explicit teaching of a motivation to combine in the prior art. C When making an obviousness determination, patent examiners may properly rely on intangible realities such as common sense and ordinary ingenuity. D Simply stating a general principle without providing an explanation of its applicability to the facts of the case at hand is not sufficient to establish a prima facie case of obviousness. E All of the above are correct statements.

E

In which of the following situations would it be prohibited for the applicant to enter the PPH in the United States? A Applicant files a patent application in Japan on November 5, 2012, and subsequently files a patent application in Canada on October 31, 2013, and in the United States on November 4, 2013. Both the Canadian and U.S. applications claim priority to the earlier-filed Japanese patent application. The Canadian patent examiner notifies the applicant that claims are allowable on October 30, 2014. B Applicant files a patent application in Canada on December 5, 2012, and subsequently files an international patent application claiming priority to the Canadian patent application on December 2, 2013. The applicant enters the U.S. national stage on May 5, 2015. On May 6, 2015, the Canadian patent examiner indicates that at least one claim in the Canadian patent application is allowable. C Applicant files an international patent application in Japan on December 11, 2012. The applicant receives an International Preliminary Examination Report that indicates that at least one claim is allowable. Applicant's national stage in the US is now pending, awaiting examination. D Applicant files an international patent application in the United States on October 15, 2012. A Swedish patent application is filed on October 16, 2013, which claims priority to the U.S. international application. On October 17, 2014, a Swedish patent is granted. E None of the above.

E

Max Eisenhardt is the inventor of a graphical user interface for dynamically relocating and rescaling obscured textual information of an underlying window to become automatically viewable to the user. By permitting textual information to be dynamically relocated based on an overlap condition, the computer's ability to display information is improved. The steps of Eisenhardt's invention, which are recited in the claims, require generating first data for describing the area of a first graphical element, generating second data for describing the area of a second graphical element containing textual information, and calculating a scaling factor proportional to the difference between the first data and the second data. Eisenhardt files a provisional patent application on February 12, 2016, describing the aforementioned invention. Subsequently, on November 15, 2016, Eisenhardt files a nonprovisional patent application that discloses the invention from the provisional application, but also disclosed a new embodiment that incorporates virtual retinal display (VRD) technology. Through the use of a headset, VRD draws images directly onto the viewer's retina by way of specially focused lasers and LEDs. Both embodiments are described sufficiently to satisfy 35 U.S.C. 112. Claims 1-20 are directed to the generation steps, while claims 20-35 are directed to the generation steps specifically incorporating the VRD technology. On December 5, 2017, the examiner issues a restriction, requiring election between the GIU generating method and the VRD technology, setting a two-month period to respond. Vincent ultimately elects the GIU generating claims without traverse in a filing made without any other papers or any fee filed on February 7, 2018. On August 8, 2018, the examiner issues a First Office Action on the Merits, rejecting claims 1-20 as lacking patent-eligible subject matter. If properly argued, can this rejection be successfully overcome? A No. The claims would not qualify as being patent eligible because they do not fall within one of the four statutory categories of invention. B Yes. The claims are not directed to an abstract idea and, therefore, would be patent eligible as an improvement. C No. The claims cover a mathematical relationship and algorithm that have been found by the courts to be patent-ineligible abstract ideas. D Yes. The claims are directed to one of the four statutory categories of invention. Although the claims would properly be considered to be directed to an abstract idea, the claims as a whole amount to significantly more than the abstract idea. E No. The claims are directed to one of the four statutory categories of invention. Although the claims would properly be considered to be directed to an abstract idea, the claims as a whole do not amount to significantly more than the abstract idea.

E

Norman North is a resident and citizen of Canada. On January 2, 2008, he conceived of and reduced to practice a new and improved gizmo that allow one to pulse a ripple into the space-time continuum and thereby freeze time. He filed a patent application in Canada on January 25, 2008. Subsequently, on January 24, 2009, he filed a patent application in the United States claiming priority to the Canadian filing date. Given the rather incredible nature of his claims, his patent applications languished in both Offices. Ultimately, in March 2015, North was able to provide documentary evidence that supported several of the most narrow claims in his Canadian application. On April 1, 2015, the Canadian patent examiner notified North that several narrow claims relating to the method of ripping a whole in the space-time continuum were patentable and that a patent would issue. North immediately filed the required paperwork in the United States to enter the Patent Prosecution Highway. Up until this point in the United States, there had only been a Restriction issued between the method of ripping a whole in the space-time continuum and the device used to freeze time. In due course, North elected the method claims in the U.S., but the examiner had not yet began work on the first action on the merits, hoping the North would eventually lose interest and abandon the application. Is North eligible to enter the PPH in the United States? A No, because the PPH between Canada and the United States did not go into effect until January 28, 2008, which is after North originally filed his Canadian patent application. B No, because he responded to a Restriction, which means that prosecution has begun in the United States. C No, because there is no PPH between Canada and the United States. D No, because no patent has yet issued in Canada. E Yes, because Canada is a partnering PPH office, and there has been an indication of allowable subject matter.

E

On October 8, 2012, Sam built what he believed to be a new and improved frame for a motorcycle, which reduced the overall weight of the frame without compromising its structural integrity and overall strength. In trying it out for the first time, the frame quickly collapsed. After further work, Sam added additional brace members welded in a crisscross pattern, which did add some weight to the frame but still allowed for a frame that was substantially lighter in weight than standard motorcycle frames. On October 15, 2012, Sam tested the new frame with the brace members, and the frame held together, confirming that his invention worked and was complete. Satisfied with his work, Sam allowed members of his motorcycle club to have unrestricted use of his motorcycle that incorporated the new and improved frame starting on October 19, 2012. Convinced that the frame could be made stronger still, on February 20, 2013, Sam added another bracing member oriented roughly parallel to the ground and just below the crisscross bracing members already installed. After testing the frame, Sam determined that it did create a much smoother ride. The idea for this additional bracing member came to Sam after reading an article on December 5, 2012, which described a similar brace being added to secure the legs of a child's swing. The article explained that, by placing a brace substantially parallel to the ground and directly underneath crisscrossing bracing members, the swing became more stable, less susceptible to tipping over and allowed for a smoother ride for the child that would make it more likely the child would fall asleep faster. The additional brace member employed by Sam was very similar to the one he read about in the article. On October 18, 2013, Sam filed a patent application at the USPTO. Two claims appeared in the application. Independent claim 1, which was drawn to a lightweight motorcycle frame having crisscrossing bracing members, and dependent claim 2, which further added an additional bracing member that runs substantially parallel to the ground and beneath the crisscrossing bracing members. Given only the facts set forth above, which rejections, if any, would lead to Sam not being entitled to a patent for the invention set forth in claim 1? A 35 U.S.C. 102(a)(1) B 35 U.S.C. 102(a)(2) C 35 U.S.C. 102(b) D 35 U.S.C. 103 E None of the above

E

Phillip Foreman is the inventor of a magnetic retrieving tool. The magnet is mounted on a carrier that can be extended from and retracted into a magnetic shield that is affixed to the distal end of an extended, hollow, flexible tube. A provisional patent application was filed on behalf of Foreman on April 2, 2012. A subsequent nonprovisional patent application was filed on April 1, 2013. The nonprovisional patent application was identical to the provisional filing with the exception of the additional inclusion of a latching device at the proximal end of the tool, which was not disclosed in the provisional patent application. The latching device is an important improvement over the earlier version of the invention because the magnet, after having been extended to an exposed position, can be latched in the exposed position for the remainder of the retrieving operation. The nonprovisional patent application discloses but does not claim the latching device, confining the claims to the invention as disclosed in the provisional patent application. Foreman's attorney calls the patent examiner prior to her work on the First Office Action and conducts an informational interview. The examiner gives certain insights into prior art that will likely be relevant. Foreman's attorney asks the Examiner to hold off working on the First Office Action so that new claims can be submitted. Subsequently, a Preliminary Amendment is filed, which adds claims to the previously unclaimed latching device. In the First Office Action, the patent examiner treats the application under AIA and rejects the application based on the foreign filing date of the Jones reference. What is the most appropriate response for Foreman to take in accordance with patent laws and USPTO rules of procedure? A Argue that the nonprovisional patent application filed by Foreman is not considered a transition application because, as of the filing date, the claims were identical in scope to the invention disclosed in the provisional patent application. B Argue that the nonprovisional patent application is entitled to the priority of the provisional filing date, which entitles the applicant to consideration using pre-AIA law. C Argue that the nonprovisional patent application is entitled to the priority of the provisional filing date. That entitles the application to consideration using pre-AIA law, which further means that the filing date of the Jones reference is unavailable, since foreign filings are not prior art as of the date they are filed. D Cancel all claims that in any way refer to the latching device and argue that the claimed invention now only relates to the invention disclosed in the provisional filing. E None of the above.

E

Sam Grast is the inventor of a new and improved automatic lawn mower, which integrates a variable power motor that causes the lawn more to travel a predetermined path programmed into the onboard processor. Being an independent inventor without funding, he approaches a patent agent who was recently readmitted to the bar after having served a 5-year suspension due to an unfortunate criminal conviction resulting from a sting set up by the San Jose, California police department. Newly back on the roster of patent practitioners, Sam figures that he might be able to handle the work and might give him a discount since he probably doesn't have many other clients at this point. On September 16, 2012, the patent agent files a nonprovisional patent application. This filing was rushed in order to get a filing date ahead of an impending statutory bar. No oath or declaration was filed, although an appropriate fee was submitted. The specification was sufficient to satisfy 112(a) with respect to the primary embodiment. Several poorly written claims were included. In response to a Notice of Missing Parts, what can the patent agent do on behalf of Grast to prevent the application from going abandoned? A An oath or declaration signed by Grast must be submitted within two months from the mailing of the Notice of Missing Parts. B An oath or declaration signed by Grast must be submitted within seven months from the mailing of the Notice of Missing Parts. C The filing of an oath or declaration must occur prior to the patent examiner picking up the file to substantively work on the First Office Action on the Merits. D The filing of an oath or declaration must occur before the earlier of the date of publication of the application or the date on which the patent examiner picks up the file to substantively work on the First Office Action on the Merits. E None of the above.

E

Thomas Roll comes to your office today because he believes he has invented a patentable invention. He explains that he has created an integrated system on a single server that allows issuers to run an auction and bidders to prepare and submit bids using a conventional web browser and without the use of other separate software. Prior to filing a patent application, you do a patent search that uncovers a patent application to Alfred, which discloses a system that allows issuers to monitor the progress of an auction and allows bidders to monitor their bid vis-Ã -vis the current best bid. The Alfred bid submission system also allows bidders who have previously obtained and installed appropriate software to electronically submit bids in an auction over a computer network. Upon thorough review, you come to realize that the Alfred reference discloses all possible claim limitations other than a web browser. At the time Roll comes to your office, you know for certain that the use of web browsers for a variety of functions is well known. Does Roll have a patentable invention as he has currently articulated the invention to you? A YES. Although web browsing technologies are well known, the Alfred reference does not teach or suggest the use of a web browser. Thus, the Roll invention is unique for purposes of 35 U.S.C. 102. B YES. Although web browsing technologies are well known for a variety of functions, there is not evidence that they have been employed for this specific purpose. Thus claims can be drafted to distinguish over Alfred and claim the core invention of Roll. C YES. The Alfred reference does not teach each and every element of what can be claimed and it is inappropriate to combine generally known elements without specific articulation of their specific relation to the claimed invention. D NO. It does not appear as if Roll has contributed inventive conception since he is not the first person to conceptualize a bid submission system. Therefore, he is not an inventor pursuant to 102(f). E NO. Because the Internet and Web browser technologies are commonplace for communicating and displaying information, it would have been obvious to adapt the Alfred system to incorporate a web browser.

E

Under Step 2B of the Alice/Mayo framework, patent examiners have been instructed by the Office to rely on what the courts have recognized, or those in the art would recognize, as elements that are well-understood, routine and conventional. Courts have recognized which of the following computer functions to be well-understood, routine, and conventional functions when they are claimed in a merely generic manner? A Performing repetitive calculations B Receiving, processing, and storing data C Electronically scanning or extracting data from a physical document D Receiving or transmitting data over a network E All of the above

E

When determining whether a claim is directed to patent-eligible subject matter, which of the following statements regarding the burden placed on the examiner are in accordance with USPTO rules and procedure? A After reviewing the totality of the evidence, the examiner must reach a conclusion as to whether it is more likely than not that the claimed invention as a whole either falls outside of one of the enumerated statutory classes or within one of the exceptions to statutory subject matter. B The patent examiner bears the initial burden of presenting a prima facie case of unpatentability. C If the record as a whole suggests that it is more likely than not that the claimed invention would be considered significantly more than an abstract idea, natural phenomenon, or law of nature, then the patent examiners should not reject a claim as lacking patent-eligible subject matter. D After the patent examiner identifies and explains why a claim is for an abstract idea, natural phenomenon, or law of nature without significantly more, then the burden shifts to the applicant. E All of the above.

E

Which of the following are among the factors for determining whether a method claim that recites or inherently requires a machine or apparatus embodies merely an unpatentable abstract idea? A The particularity or generality of the elements of the machine or apparatus. B Whether the machine or apparatus implements the steps of the method. C The extent to which the machine or apparatus imposes meaningful limits on the execution of the claimed method steps. D The extent to which the machine or apparatus contributes only nominally or insignificantly to the execution of the claimed method. E All of the above.

E

Which of the following are among the factors for determining whether a method claim where transformation occurs embodies merely an unpatentable abstract idea? A The particularity or generality of the transformation. B The degree to which the allegedly transformed article can be specifically identified. C The nature of the transformation in terms of the type or extent of change. D The extent to which the transformation imposes meaningful limits on the execution of the claimed method steps. E All of the above

E

Which of the following factors should be considered when examining claims that contain functional language in order to determine whether the language is ambiguous? 1.Whether there is a clear-cut indication of the scope of the subject matter covered by the claim. 2.Whether the language sets forth well-defined boundaries of the invention or only states a problem solved or a result obtained. 3.Whether one of ordinary skill in the art would know from the claim terms what structure or steps are encompassed by the claim. A Statement 1 B Statements 1 and 2 C Statements 2 and 3 D Statements 1 and 3 E Statements 1, 2 and 3.

E

Which of the following statements about reexamination is false: A Any Request for Reexamination must include a statement of each substantial new question of patentability. B Extensions of time for responding to Official Actions in a reexamination must be uder 37 CFR 1.550(c). C A member of the public may obtain access to any reexamination file. D A Reexamination Certificate is issued at the conclusion of each reexamination E Failure to respond to an Official Action in reexamination will result in abandonment.

E

Which of the following statements accurately defines when "obvious to try" is erroneously equated with obviousness under 35 U.S.C. 103? 1.When what would have been "obvious to try" would have been to vary all parameters or try each of numerous possible choices until one possibly arrived at a successful result, where the prior art gave either no indication of which parameters were critical or no direction as to which of many possible choices is likely to be successful. 2.When what was "obvious to try" was to explore a new technology or general approach that seemed to be a promising field of experimentation, where the prior art gave only general guidance as to the particular form of the claimed invention or how to achieve it. 3.Where what is "obvious to try" is determined by merely throwing metaphorical darts at a board filled with combinations of prior art possibilities to find the requisite elements and limitations that together combine to yield the claimed invention. A Statement 1 B Statement 2 C Statement 3 D Statement 1 and 3 E Statements 1, 2 and 3.

E

Which of the following statements is most in accordance with patent laws, practice and procedures relative to the examiner's prima facie case of obviousness where the claimed invention is a compound? 1.Structural similarity between claimed and prior art subject matter, proved by combining references or otherwise, where the prior art gives reason or motivation to make the claimed compositions, creates a prima facie case of obviousness. 2.It is sufficient to show that the claimed and prior art compounds possess a sufficiently close relationship to create an expectation, in light of the totality of the prior art, that the new compound will have similar properties to the old. 3.Once such a prima facie case is established, it falls to the applicant or patentee to rebut it, for example with a showing that the claimed compound has unexpected properties. 4.If it is known that some desirable property of a mixture derives in whole or in part from a particular one of its components, or if the prior art would provide a person of ordinary skill in the art with reason to believe that this is so, the purified compound is prima facie obvious over the mixture even without an explicit teaching that the ingredient should be concentrated or purified. A Statements 1 and 2 B Statements 2 and 3 C Statements 1 and 4 D Statements 2 and 4 E All of the statements are correct.

E

Which of the following tends to support a conclusion that a claimed invention is obvious? A The prior art would have funneled the formulator of a compound toward two options. B The formulator of a compound would not have been required to try all possibilities in a field unreduced by the teachings of the prior art. C The prior art is not vague in pointing toward a general approach or area of exploration, but rather guided the formulator of the compound. D A person having ordinary skill would understand or be motivated to try a course of conduct. E All of the above.

E

With respect to obviousness, which of the following are true? 1.In cases involving new chemical compounds, it is necessary to identify some reason that would have led a chemist to modify a known compound in a particular manner to establish prima facie obviousness of a new claimed compound. 2.If a patent examiner makes a prima facie showing of obviousness, the applicant may rebut based on unexpected results by demonstrating that the claimed invention exhibits some superior property or advantage that a person of ordinary skill in the relevant art would have found surprising or unexpected. 3.In order to demonstrate that a claimed invention is obvious, a patent examiner can demonstrate how one of ordinary skill in the art would be able to retrace the steps of the applicant in order to achieve the claimed invention. A Statement 1 B Statement 2 C Statement 3 D Statements 1 and 2 E Statements 1, 2 and 3.

E

With respect to obviousness, which of the following statements are correct relating to the appropriateness of relying on an obvious-to-try rationale? A A particular course or selection is not obvious to try unless some design need or market pressure or other motivation would suggest to one of ordinary skill to pursue the claimed course or selection. B An obvious-to-try rationale may be proper when the possible options for solving a problem were known and finite. C If the possible options were not either known or finite, then an obvious-to-try rationale cannot be used to support a conclusion of obviousness. D Where there are predictable solutions and there is no evidence of unexpected results, an obvious-to-try inquiry may properly lead to a legal conclusion of obviousness. E All of the above.

E

You prepare and file a patent application for Inventor Dundee. The claims in the application are drawn to footwear in which a one-piece molded foam base section formed the top of the shoe (the upper) and the sole. A strap, also made of foam, was attached to the foot opening of the upper. The strap is attached via connectors that allowed it to be in contact with the base section, and to pivot relative to the base section. The patent examiner Ima Nyeve rejects the claims citing the prior art, Aqua Clog in view of Aguerre. Nyeve explained that the Aqua Clog differed from the claimed invention only as to the presence of the strap, and a suitable strap was taught by Aguerre. Your Response, timely filed, argues that the strap being made of foam distinguishes over the prior art because the unique frictional forces that develop between the foam components keep the strap in place so that it can maintain the shoe in the correct position on the foot without constant contact with the wearer's Achilles. Instead of pushing the foot forward into the shoe, like prior art straps that are elastic or length-adjustable, the claimed invention is a passive restraint system that allows the strap to lend support only when necessary to keep the shoe positioned correctly on the foot. This feature facilitates a loose anatomical fit that makes the claimed invention more comfortable than prior art products. Furthermore, the prior art counsels against using foam straps because they are likely to stretch and deform. Assuming your argument is factually correct and that Examiner Nyeve will appropriately follow the relevant rules and laws, what is the likely outcome? A Examiner Nyeve will finally reject the claims because it would be within the knowledge of one of skill in the art to substitute a foam strap for straps made out of other materials. B Examiner Nyeve will finally reject the claims because you have not presented evidence of any secondary considerations that could appropriately question an otherwise appropriate showing of obviousness. C Examiner Nyeve will finally reject the claims because your argument does not challenge the structural combination of the Aqua Clog in view of Aguerre. D Examiner Nyeve will provisionally allow the claims provided you can produce evidence of success in the marketplace. E Examiner Nyeve will allow the claims because a claimed combination of prior art elements may be nonobvious where the prior art teaches away from the claimed combination and the combination yields more than predictable results.

E