Mini Exam 6
To comply with 112 1st paragraph support requirements in the specification the applicant cannot leave out any except one of the following: A) At least one successful example of applying the invention for its stated utility so that undue experimentation is not required to prove utility by another in the field. B) The best mode of practicing the invention known to the inventor at the time of filing the application. C) A written description of sufficient adequacy to enable one of skill in the art to practice the invention. D) A written description sufficient to make and use the invention. E) The best mode of the invention known to co-workers of the inventor who had made this best mode known to the inventor who thought it over and agreed it was better than what he had come up with on his own.
(A) is correct because it is not necessary to provide a successful example in the specification. MPEP 2164.02.
Claim 1 in the application is directed to an apparatus. Claim 2 is directed to the same apparatus and further defines the apparatus. Claim 3 is directed to a method of using the apparatus set forth in claims 1 and 2. Claim 4 is an independent method claim directed to a method of using the apparatus. A rejection/objection of these claims would be: A) Claim 3 is rejected under 35 USC 112(b) for being in improper multiple dependent form. B) Claim 3 is objected to as being in improper multiple dependent form and is rejected under 35 USC 112(b) as being indefinite for mixing claim types. C) Claim 4 is rejected under 35 USC 112(b) for mixing claims types in an application. D) All of the claims are rejected under 112(a) as lacking antecedent in the specification. E) B and C.
(B) is correct because claim 3 is an improper multiple dependent claim. Multiple dependent preambles must refer to the claims from which it depends in the alternative. Further, when writing a method claim, you do not mix claim types. Instead merely refer to "A method of using a meat slicer comprising..." (A) is incorrect because it is incomplete in comparison to answer (B). (C) is incorrect because claim 4 does not mix claim types. (D) is incorrect because there are no antecedent basis issues in these claims. Furthermore, a lack of antecedent basis would result in an objection and a rejection under 112(b), not under 112(a).
The single independent claim reads: A nickel alloy comprising nickel and at least one metal selected from the group consisting of iron copper cobalt and chromium. The single reference advanced in a rejection under 35 USC 102(b) is a nickel alloy consisting of nickel and iron. An amendment to overcome this rejection would be (in "marked-up" form): A) l.(Amended) A (nickel) metal alloy consisting (comprising) of nickel and at least one of either metal selected from the group consisting of (iron) copper cobalt and chromium. B) 1.(Amended) A nickel alloy comprising nickel and at least one metal selected from the group consisting of [[iron]] copper cobalt and chromium. C) 1. A nickel alloy comprising nickel and at least one metal selected from the group comprising copper cobalt and chromium. D) 1. (Amended) A nickel alloy comprising [nickel and] at least one metal selected from the group consisting of [iron] copper cobalt and chromium. E) Cancel claim 1 and rewrite the claims in a non-Markush format to avoid the implication of equivalents between the group constituents leaving out iron.
(B) is correct because it is the only one that uses the proper amendment protocol. The claim includes a parenthetical expression characterizing the claim, and it deletes iron with double brackets. Double brackets may be used because what is being deleted is 5 or fewer characters.
Choose from among the following utility claims and identify the claim which is not indefinite. A) A device as described in col. 1 line 46 - 64 of the specification. B) A method of painting an article comprising: providing the article; spraying said article with paint; and allowing said article to dry. C) The ornamental design for a device as shown and described. D) The ornamental design for a device the improvement comprising: a non-stick coating provided on a cooking surface. E) None of the above.
(B) is correct. Method claims must use gerunds (i.e., "ing words"). (A) is incorrect because it does not specifically define the invention in the claim, but rather merely points to an embodiment in the specification. (C) is incorrect because it is an attempted design patent claim. (D) is incorrect because it uses a design patent preamble that is then mixed with an apparatus body.
The invention is directed to a tooth brush for toddlers. The forward end of the tooth brush includes a soft impact absorbing pad so that parents or older siblings who are assisting the toddler will not injure the toddler inadvertently when brushing the teeth by bumping harshly into tender teeth and gums nearby. It is essential that the impact absorbing pad be impervious to fluoride compounds since they are present in every toothpaste available in western society. Your inventor has read a book about claim drafting and has written up some claims to go with the specification you will write. Pick the claims you will keep. A) A toothbrush for toddlers comprising a toothbrush and an impact absorbing pad on an end thereof having resistance to fluoride compounds. B) A toothbrush for toddlers consisting of a toothbrush having a pad on an end thereof forward of said bristles said pad being impervious to fluoride compounds. C) A toothbrush for toddlers comprising: a toothbrush having a forward end and a handle end and having a soft impact absorbing pad included on said forward end to prevent harsh impacts between said brush and proximate teeth and gums said pad being impervious to fluoride compounds. D) A toothbrush comprising a toothbrush and a pad impervious to fluoride the pad being attached to an end of said brush opposite the handle. E) C and D
(C) is correct because it properly defines the invention and it will not lead to either a rejection or objection. 37 C.F.R. 1.75.
The single claim reads as follows: 1. Means for lifting a horse onto a trailer comprising: a sling for attachment to a suspended winch for placing beneath the horse and winching said horse upward and bearing means adapted to enable the winch to swing while loaded with said horse onto said truck. A) This claim will be rejected as an improper 35 USC 112(f) claim. B) This claim will be rejected under 35 USC 112(a) for being inoperative. C) This claim will be rejected under 35 USC 112(b) as being indefinite. D) This claim will be rejected under 35 USC 102/103 as being an accumulation of parts. E) This claim will not be rejected.
(C) is correct because the claim as provided does not explain how the winch is structurally in communication with the bearing means. Merely saying the winch is adapted to enable the winch to load the horse is not sufficient. General characterizations explaining intended function are insufficient. MPEP 2173 and MPEP 2173.02.
The invention is to a method of cleaning a surface of a crystal prior to etching the surface. The cleaning method requires first placing the crystal in an evacuated chamber exposing the crystal to a pure inert gas at a temperature above 500 degrees Celcius and thereafter allowing the crystal to cool and removing the crystal from the chamber. The prior art discloses a method of cleaning a crystal which includes the steps of placing the crystal in a pressure vessel containing a pure inert gas heating the vessel to a temperature of not less than 500 degrees Celcius and rapidly quenching the crystal in an ammonia solution which is sprayed under pressure into the pressure vessel. A patentable claim to the method would be: A) A method of cleaning a crystal prior to etching comprising the steps of: placing the crystal into a vessel containing a pure inert gas heating said crystal and gas to a temperature above 500 degrees Celcius and thereafter quenching said crystal. B) A method of cleaning a crystal wherein said crystal is placed into an evacuated chamber and is exposed to an inert gas at a temperature above 500 degrees Celcius and then allowed to cool whereupon the crystal is removed from the chamber and is etched. C) A method of preparing a crystal for etching wherein the evacuated chamber surrounds the crystal and an inert gas is placed into the chamber at a temperature of more than 500 degrees and cooling is then allowed to occur and the crystal is etched. D) A method of cleaning a crystal comprising the steps of: placing said crystal into an evacuated chamber exposing said crystal to a pure inert gas at a temperature above 500 degrees Celcius allowing said crystal to cool and removing said crystal from said chamber. E) An apparatus for cleaning a crystal comprising: an evacuated chamber a source of inert gas a heater and a quenching spray device connected to said chamber.
(D) is correct because it properly captures the invention without capturing the prior art. MPEP 608.01(n) and 37 C.F.R. 1.75. (A) is incorrect because the method described includes the step of quenching the crystal, which is not mentioned in the description of the invention. (B) is incorrect because the transition used suggests that it is a dependent claim and not an independent claim (i.e., wherein vs. comprising). Furthermore, the invention is to clean the crystal prior to etching and etching is mentioned in the claim itself in the past tense. (C) is incorrect because there is no mention in the question about the gas surrounding the crystal.
The application is filed in a foreign language and later translated into English with an appropriate certification. To your horror the application is not enabling with respect to one of the two inventions falling within the scope of the only generic claim in the application. Your client's invention is being actively copied by the United States Government at a missile test facility in Kansas. Prior art disclosing the identical invention published in Missile Weekly by Werner von Rocket between the priority date and the U. S. filing date of your application. Your client insists the application must issue quickly. A) You advise your client the application is fatally defective and should be abandoned. B) Since the prior art is identical you advise your client to abandon the application. C) You cancel the claims including those to the non-enabled invention through amendment. D) You cancel the generic claim and submit a new claim directed to the enabled version of the invention. E) You file a CIP adding the enabling disclosure previously left out to enable the invention as to the scope of the generic claim.
(D) is correct because you presently have a claim where 50% of the embodiments are not enabled; thus, that claim is lost and you need to cancel the generic claim and submit a new claim directed only to the enabled version of the invention. MPEP 2164.08(b).
Your client has invented a new animal shampoo in her basement lab. Her husband was looking for a gasoline additive for the chain saw and in the dimly lit basement mistakenly picked up some of her shampoo and used it in the chain saw fuel mix. Surprisingly the chain saw had more power and even more remarkably produced no visible smoke at all. Upon returning to the lab and conducting tests your client confirms that the shampoo acts as a catalyst and makes the fuel in the chain saw burn at a 100% conversion rate into pure steam and carbon dioxide. Your client and co-inventor husband hasten to your office chain saw in hand to seek immediate help in writing the claims. You are away on extended leave in the Caymans on a patent attorney diving retreat and are unable to help. A senior partner who has not written claims in years but who has been left behind to mind the firm is available to help. He crafts the following claims. Which claims will the Patent Office not reject if any. A) An animal shampoo for use in a chain saw fuel whereby 100 % burning takes place and steam and carbon dioxide are the result. B) A chain saw fuel comprising shampoo and gasoline mixed so that no pollution comes out of the saw upon activation of the motor. C) A mixture of animal shampoo and gasoline for use as a fuel wherein complete combustion of the fuel occurs in a chainsaw. D) A catalyst for use as a fuel additive which results in 100% conversion of the fuel into steam and carbon dioxide. E) The Patent Office will reject all of the above.
(E) is correct because all of the claims will be rejected by the Patent Office. In fact, each of the claims suffers from the same infirmity. MPEP 2111.02. Notice how in (A) though (D) the claims all incorporate the hoped-for result rather than providing a definite formula for the compound.
A claim in an application refers to a fastener means to attach two sheet material pieces together. In the specification the only item corresponding to the fastener means is a conventional rivet. The examiner gives the claim its broadest reasonable interpretation and properly rejects the claim elements including the fastener means based on the following prior art. A) The prior art discloses a bolt and a nut which fastens onto the bolt to fasten sheet material together. The disclosure in the prior art also says a variety of different types of fasteners including rivets can be used interchangeably with the bolt and nut for attaching two sheet material pieces together. B) The prior art discloses welding for attaching two sheet material pieces which are especially adapted for welding without fasteners. C) The prior art discloses a pin for attaching two sheet material pieces together. The pin includes separate bulbous end elements which attach to each end of the pin to resemble and function like a rivet. The prior art also discloses that the pin and bulbous end element combination is especially adapted for replacing rivets where rivets are usually specified for attaching two sheet material pieces together. D) The prior art shows a screw having a special self-tapping head for piercing only the second of two sheet material pieces placed together. The prior art screw is especially adapted for attaching two dissimilar sheet materials where one readily accepts a single threaded fastener into the material and the other material does not. E) A and C
(E) is correct because both (A) and (C) are correct. MPEP 2181. (A) is a correct rejection because the prior art explains that a nut is interchangeable with a rivet. (C) is a correct rejection because the pin is described as incorporating a bulbous end element to function like a rivet.
You have been handed a patent application which is about to be filed. The application includes 4 claims. Claim 1 is an independent claim to an apparatus. Claim 2 is a dependent claim which further defines the apparatus. Claim 3 is a method claim for using the apparatus. Claim 4 is an apparatus claim which depends from claims 1 or 3. An important feature of one embodiment of the invention has been left out of the apparatus claims and you are asked to write claim 5 to include this feature in a claim directly or indirectly dependent from all the apparatus claims already claimed. You write which of the following: A) 5. An apparatus as in claim 1 or claim 2 further comprising: B) 5. An apparatus as in any one of the preceding claims further comprising: C) 5. An apparatus or method as recited in any one of the preceding claims further comprising: D) 5. An apparatus as in claim 2 further comprising: E) A and D
(E) is correct because both (A) and (D) are appropriate claims that satisfy the call of the question and which will not be objected to or rejected. MPEP 608.01(n).
A generic claim to an invention specifies a range of 30 - 60 percent by weight of a mixture comprising a certain compound Y. The specification also discloses a species of the invention which results in a dramatic increase in the yield of the process the mixture is used in if the mixture comprises 57 percent of the certain compound Y. Claims which cover the generic and species versions of this invention have been filed and read as follows: 1. A mixture comprising inert ingredients and compound Y wherein Y is 30 - 60 percent of the total mixture by weight. 2. A mixture as in claim 1 wherein Y is preferably 57 percent of said mixture. Your client is concerned that with the many other claims also present in the application the total number of claims should be reduced to avoid excessive claim fees but also to avoid the potential rejection on the basis of prolixity. You are instructed to combine claims 1 and 2 into a single claim with the same scope. You write the following claims. Which if any will the Patent Office accept and not be in violation of 35 USC 112 2nd paragraph A) A mixture comprising inert ingredients and compound Y in the proportion of 30 - 60 percent by weight of the total mixture and preferably 57 percent. B) A mixture comprising an inert ingredient in a proportion of 40 - 70 by weight and compound Y for the remainder by weight preferably in the amount of 57 percent. C) A mixture comprising an essentially inert ingredient in combination with a compound Y in the amount of 30 to 60 percent most preferably at the rate of 57 percent. D) B and C E) None of the above
(E) is correct because each of (A) through (C) will be rejected by the patent examiner due to a violation of 112(b).MPEP 2173.05(c).
The claims read as follows to a bicycle built for two. 1. A bicycle built for two comprising: a bicycle frame having two seat posts; two pairs of handlebars said first pair mounted on a forward end of said frame connected to said front wheel for steering said front wheel said second pair mounted behind said second seat post; and a back wheel connected rotatably to said frame at a rearward end thereof for supporting said frame as it rolls over a surface. Which of the following rejections of the claim is proper? A) A "first pair" lacks antecedent basis. B) A "second pair" lacks antecedent basis. C) The "front wheel" lacks antecedent basis. D) The respective sets of handle bars have more than one attachment to the frame which results in a vague and indefinite claiming for failure to properly interconnect elements as required under 35 USC 112(b). E) All of the above.
(E) is correct because each of (A) through (D) represent proper rejections. MPEP 2173.05(e).
The application as filed includes the following series of claims. 1. A radio transmitter comprising: a transistor a resistor electrically connected to said transistor and a switch electrically connected to said resistor and a power source for switching said radio on and off. 2. A radio as in claim 1 further comprising: a loudspeaker 3. A loudspeaker as in claim 1 or 2 wherein: said loudspeaker has a rating of 20 watts. 4. A radio as in any one of the preceding claims wherein: said power source is a battery A British reference discloses a radio having a micro-processor having all of the functions of the components recited in the claims and has a publication date more than one year prior to the filing date of the application. From among the filed claims choose the claims which are in an acceptable format. A) Claim 2. B) Claim 3. C) Claim 4. D) All of the claims. E) Claim 1.
(E) is correct because it is the only claim in acceptable format. MPEP 2173.05(e). (A) is incorrect because, in claim 2, the loudspeaker is not attached and is left dangling. (B) is incorrect because the invention is a radio circuit and the preamble of claim 3 recites "A loudspeaker." Furthermore, claim 3 will inherit the defects of claim 2, making it unacceptable for that reason alone. (C) is incorrect because claim 4 is a multiple dependent claim that depends from a previous multiple dependent claim. Further, claim 4 inherits the defects of both claims 2 and 3. (D) is incorrect because claims 2, 3 and 4 each have one or more problems and will not be allowable in their present form.
The application specification as originally filed under oath includes the range of 40 - 50 grams per gallon only in the claims portion of the specification. The claims including this limitation have been rejected under 35 USC 112 1st paragraph. An amendment to fix this defect would be: A) Re-filing the application also under oath this time with the information also in the specification. B) Eliminating the subject matter from the claims. C) This defect cannot be fixed. D) Amending the specification by submitting a new specification including the new matter previously only found in the claims. E) Amending the specification by adding the range of "40 - 50 grams per gallon" to the specification.
(E) is correct. An originally filed claim can support itself. By moving the limitation found within an originally filed claim into the specification, you are not adding new matter. What is considered new matter is defined by what arrives at the time of filing. If it is present at the time of filing, it is not new matter. If it is not present at the time of filing, then it is new matter.
The two types of dependent claims are single dependent and multiple dependent claims. Which of the following are correct multiple dependent claims preambles. A) A device as in any one of the preceding claims. B) A device as in the preceding claims. C) A device as in claims 1-3 or 8-10. D) A device as in any of claims 1-3 or 8-10. E) A and D above.
(E) is correct. MPEP 608.01(n). When confronted with a multiple dependent claim on the Exam, you absolutely must consult 608.01(n) in order to see whether the preamble is on the acceptable list or on the list that is deemed unacceptable.
The specification recites a nozzle for a highly caustic acid spray for decalcifying fresh water intake ducts at a water treatment plant. The nozzle is coated so that the nozzle itself does not dissolve in use. The coating is made from an epoxy latex combination wherein the epoxy is mixed at the rate of 2-3 parts epoxy for every 1-2 parts latex. The original claim is as follows. 1. A coating for a high pressure nozzle assembly comprising: a mixture of epoxy and latex where latex is in the range of 1 - 2 parts for every 2 -3 parts of epoxy by weight in the mixture. The examiner has found a prior art reference under 35 USC 102 (b) which discloses a coating mixture for a manure spreader nozzle which is 2 parts epoxy and 2 parts latex by weight in the mixture. Your client has done further testing and determined that in fact an equal mixture of epoxy and latex doesn't work nearly as well if at all for the highly caustic decalcification spray. Testing does confirm however that a 3 part epoxy to 1 part latex mixture is very good and greatly extends the service life of the nozzle. You propose to amend the claim to overcome the reference and propose the following. A) Cancel Claim 1 and submit Claim 2: (New) A coating for a high pressure nozzle assembly comprising: a mixture of epoxy and latex where latex is 1 part for every 3 parts of epoxy by weight in the mixture. B) In claim 1 line 2 delete "in the range of 1-2 parts for every 2-" and insert "one part of said latex for every--." C) In claim 1 line 2 delete "latex is in the range of 1-2 parts for every 2-" and insert "-said latex being at one part and--." D) Claim 1. (Currently Amended) A coating for a high pressure nozzle assembly for dispensing an acid spray comprising: a mixture of epoxy and latex where said latex is in the range of 1 [-2] part[s] for every 3 parts of epoxy by weight in the mixture. E) A and D
A) Cancel Claim 1 and submit Claim 2: (New) A coating for a high pressure nozzle assembly comprising: a mixture of epoxy and latex where latex is 1 part for every 3 parts of epoxy by weight in the mixture.
The original single-LED version of the invention discussed in question 30 is not selling well because customers perceive it as a cheaper inferior product to the two-LED model of the prior art. Your initial filing does not include an independent claim to the second two-LED embodiment and you decide to cancel claims 1 and 2 and submit a new claim to the embodiment which mimics operation of the prior art device but which is less expensive to produce. Choose the proper claim from among the following. A) 2. A soldering iron comprising: a handle a working end for heating solder connected at one end to said handle a power cord also connected to said handle a trigger switch mounted on said handle and electrically coupled between said working end and said power cord a bimetallic coil timer also electrically coupled to and actuated by said trigger switch in parallel with said working end said bimetallic coil timer being located within said handle a first LED mounted on said handle and electrically coupled in parallel with said bimetallic coil and switched by said bimetallic coil timer after five seconds have elapsed and a second LED connected in series with said trigger switch and working end said second LED being mounted on said handle. B) 3. (New) A soldering iron comprising: a handle a working end for heating solder connected at one end to said handle a power cord also connected to said handle a trigger switch mounted on said handle and electrically coupled between said working end and said power cord a bimetallic coil timer also electrically coupled to and actuated by said trigger switch in parallel with said working end said bimetallic coil timer being located within said handle a first LED mounted on said handle and electrically coupled in parallel with said bimetallic coil and switched by said bimetallic coil timer after five seconds have elapsed and a second LED connected in series with said trigger switch and working end said second LED being mounted on said handle. C) 1. (Amended) A soldering iron comprising: a handle a working end for heating solder connected at one end to said handle a power cord also connected to said handle a trigger switch mounted on said handle and electrically coupled between said working end and said power cord a bimetallic coil timer also electrically coupled to and actuated by said trigger switch in parallel with said working end said bimetallic coil timer being located within said handle a first LED mounted on said handle and electrically coupled in parallel with said bimetallic coil and switched by said bimetallic coil timer after five seconds have elapsed and a second LED connected in series with said trigger switch and working end said second LED being mounted on said handle. D) 2. (Amended) A soldering iron comprising: a handle a working end for heating solder connected at one end to said handle a power cord also connected to said handle a trigger switch mounted on said handle and electrically coupled between said working end and said power cord a bimetallic coil timer also electrically coupled to and actuated by said trigger switch in parallel with said working end said bimetallic coil timer being located within said handle a first LED mounted on said handle and electrically coupled in parallel with said bimetallic coil and switched by said bimetallic coil timer after five seconds have elapsed and a second LED connected in series with said trigger switch and working end said second LED being mounted on said handle. E) 10. A soldering iron comprising: a handle a working end for heating solder connected at one end to said handle a power cord also connected to said handle a trigger switch mounted on said handle and electrically coupled between said working end and said power cord a bimetallic coil timer also electrically coupled to and actuated by said trigger switch in parallel with said working end said bimetallic coil timer being located within said handle a first LED mounted on said handle and electrically coupled in parallel with said bimetallic coil and switched by said bimetallic coil timer after five seconds have elapsed and a second LED connected in series with said trigger switch and working end said second LED being mounted on said handle.
B) 3. (New) A soldering iron comprising: a handle a working end for heating solder connected at one end to said handle a power cord also connected to said handle a trigger switch mounted on said handle and electrically coupled between said working end and said power cord a bimetallic coil timer also electrically coupled to and actuated by said trigger switch in parallel with said working end said bimetallic coil timer being located within said handle a first LED mounted on said handle and electrically coupled in parallel with said bimetallic coil and switched by said bimetallic coil timer after five seconds have elapsed and a second LED connected in series with said trigger switch and working end said second LED being mounted on said handle.
The invention is a surgical scalpel having a handgrip for left handed orthopedic surgeons. The handgrip is oriented so that it cannot be used by a right handed surgeon. In addition the scalpel includes a light and a mirror attachment for illuminating and viewing portions of the surgical field not otherwise visible. The prior art discloses the identical mirror image handgrip equipped scalpel for right handed surgeons but does not include the light and mirror attachment. The prior art also discloses a magnetic pick-up tool designed for use by mechanics who work on complex machinery. This tool can be used by either left or right handed mechanics but does not include a special hand grip for either the left or right hand. The pickup tool does include a light and mirror attachment to illuminate and view nooks and crannies in and - around the complex machinery. The original claims for the invention on file in the application are as follows and have been rejected under 35 USC 102 35 USC 103 and 35 USC 112 2nd paragraph. 1. A surgical scalpel comprising: a blade and a handle connected to said blade. 2. A scalpel as in claim 1 wherein: said handle includes a handgrip especially adapted for a left handed operator. 3. A scalpel as in claim 1 further comprising: a light and mirror combination mounted to said handle. You propose to amend the claims as follows and include the following associated arguments in your remarks. A) Cancel all of the claims and submit a new claim 1 including all the features of claims 1- 3 along with the argument that there is no suggestion for the combination of the right-handed scalpel and mechanic's light. B) Amend claim 1 to include a particular and distinct characterization of the left-handed grip supported by the specification along with an argument that it cannot be used by right-handed surgeons that the prior art contains no suggestions to convert the prior art right-handed configuration and that the specifically adapted handgrip yields unexpected results. Cancel Claim 2. C) Amend claim 1 to include the light and mirror combination along with the argument that a novel and unobvious combination is the result and that the rejection is traversed. D) Cancel all of the claims and submit a new claim 10 particularly describing the left-handed grip and scalpel combination with a light and mirror mounted thereto along with arguments that the 112 rejection has been overcome and the 102 and 103 rejections no longer apply. E) Re-write claim 1 to include all of the limitations previously present in claims 1 2 and 3. In addition make the argument that the prior art combination is non-analogous inasmuch as the level of skill between mechanics and surgeons is very different.
B) Amend claim 1 to include a particular and distinct characterization of the left-handed grip supported by the specification along with an argument that it cannot be used by right-handed surgeons that the prior art contains no suggestions to convert the prior art right-handed configuration and that the specifically adapted handgrip yields unexpected results. Cancel Claim 2.
An application is filed describing a series of species of the invention in the specification. A generic claim covering the various species is the only claim in the application. The claim is rejected under 35 USC 103 based on the broadest reasonable interpretation of the claim in light of the Abstract of the Disclosure. In response to this rejection a proper argument would be: A) Seek reconsideration on the basis that the Abstract may not be used as a basis to determine the scope of the claim in question. B) Amend the generic claim to avoid the prior art. C) File an Affidavit under 37 CFR 1.132 showing unexpected results regarding several of the species of the invention also falling within the scope of the claim. D) File an Affidavit under 1.131 swearing behind the reference in question. E) Cancel the Abstract and submit a rewritten Abstract which excludes the rejected subject matter.
B) Amend the generic claim to avoid the prior art.
Assume that the following claim is already on file at the Patent Office. 1. A soldering iron compromising: a handle a working end for heating solder connected at one end to said handle a power cord also connected to said handle a trigger switch mounted on said handle and electrically coupled between said working end and said power cord and an LED mounted on said handle and a bimetallic coil timer also electrically coupled to and actuated by said trigger switch in parallel with said working end said bimetallic coil timer being located within said handle and connected in parallel with said LED which is switched by said bimetallic coil timer after five seconds have elapsed. In a second embodiment a second dedicated "power on" LED (12) is also included which is connected in series with the working end (10) and the trigger switch (2). This second LED (12) is critical to the second embodiment and indicates "power on" at the same time as the trigger switch is activated. In this embodiment the first LED (11) (already claimed) switched by the bimetallic coil becomes a "heat on" LED. In operation this second embodiment mimics the operation of a more expensive resistor-equipped soldering iron disclosed in the prior art. When the power trigger is first activated the "power on" LED (12) lights immediately followed in 5 seconds by the temperature ready or "heat on" LED (11). You are directed to write a dependent claim to cover the second embodiment of the invention. Choose the proper claim from among the following: A) 2. A soldering iron comprising: a handle a working end for heating solder connected at one end to said handle a power cord also connected to said handle a trigger switch mounted on said handle and electrically coupled between said working end and said power cord a bimetallic coil timer also electrically coupled to and actuated by said trigger switch in parallel with said working end said bimetallic switch being located within said handle and an LED mounted on said handle and connected in parallel with said bimetallic coil and switched by said bimetallic coil and switched by said bimetallic coil timer after five seconds have elapsed. B) 2. A soldering iron comprising: a handle a working end for heating solder connected at one end to said handle a power cord also connected to said handle a trigger switch mounted on said handle and electrically coupled between said working end and said power cord a bimetallic coil timer also electrically coupled to and actuated by said trigger switch in parallel with said working end said bimetallic coil timer being located within said handle a first LED mounted on said handle and electrically coupled in parallel with said bimetallic coil and switched by said bimetallic coil timer after five seconds have elapsed and a second LED connected in series with said trigger switch and working end. C) 2. A soldering iron as in claim 1 further comprising: a second LED connected in series with said trigger switch and working end said second LED being mounted on said handle. D) 3. A soldering iron as in the preceding claim further comprising: a second LED said LED connected in series with said trigger switch and mounted on said handle. E) 2. A second LED for addition claim 1 said second LED being connected in series with said trigger switch and mounted to said handle.
C) 2. A soldering iron as in claim 1 further comprising: a second LED connected in series with said trigger switch and working end said second LED being mounted on said handle.
The invention is an assembled CD holder which includes a cover member hingedly connected to a backing member. Inside the cover and backing member the CD holder includes a snap connected to the inside surface of the cover member which retains the outer rim edge of the CD which is to be placed inside. The prior art is a conventional CD holder which includes a cover member hingedly connected to a backing member. Inside the CD cover in the space between the cover and the backing member is a snap which retains the CD by gripping the inner rim of the through passage in the center of the CD. You are asked to write the claims for the invented CD cover for your friend the computer wiz and you write the following claims. Which if any are not indefinite. A) A CD holder comprising: a cover member a backing member connected to said cover member and a snap member inside said cover and backing member which retains an outer edge of a CD which is inserted into the CD cover. B) A combination CD holder comprising a cover member hingedly connected to a backing member and a snap adapted to retain said CD by retaining an outer rim edge of said CD. C) A CD holder comprising: snap means for holding an outer rim edge of a CD said snap means attached inside a space defined between a cover member which is hingedly connected to a backing member to an inwardly directed surface of said cover member. D) A CD adapted for placement into a holder that snaps to its outer rim. E) A CD holder consisting of a cover member hingedly connected to a backing member and having therein a snap member attached thereto which retains an outer edge of a CD.
C) A CD holder comprising: snap means for holding an outer rim edge of a CD said snap means attached inside a space defined between a cover member which is hingedly connected to a backing member to an inwardly directed surface of said cover member.
Which of the following statements is not false? A) Claims in a patent application cannot be rejected when the disclosure fails to adequately disclose the invention. B) A claim cannot be rejected for failing to interconnect elements of the invention when it is clear to one of ordinary skill where the elements would go. C) A claim can be rejected for including improper connection even if undue experimentation is not required to perform the invention. D) A claim can be rejected as being vague and indefinite when all of the words and phrases can be found and defined in the supporting specification if the examiner believes more definite words could have been used in the field. E) C and D.
C) A claim can be rejected for including improper connection even if undue experimentation is not required to perform the invention.
Your client has discovered in a remote part of the South American jungle a plant called planti cokius which has remarkable curative properties when the plant is chopped cooked and combined with equal parts of Jack Daniels brand 100 proof sour mash whiskey. Your client claims it can cure most anything but has not performed any tests which would not result in undue experimentation to discover the dosage. Instead your client seems to drink up most of the experiments but is in a remarkable state of health. While discussing the invention at your office your client becomes disoriented and tips over the earthen jug containing the mixture and it spills onto what you thought to be a long dead office plant. The plant is revived within minutes and blossoms. You commence writing the application and include the description of the mixture as having remarkable curative properties and also its use as a fertilizer. You write the following claims some of which will not succeed at the Patent Office but you want your client to be happy so that she will sign the oath and leave your office. Which claims will not be cancelled by your preliminary amendment because you know the Patent Office needs at least one claim to examine? A) A curative mixture for treating human ailments comprising: chopped cooked planti cokius mixed with equal parts Tennessee whiskey. B) A fertilizer prepared according to the following process: chopping and cooking planti cokius and mixing the chopped and cooked plant with whiskey. C) A fertilizer mixture comprising: chopped and cooked planti cokius mixed in equal parts with Jack Daniels Old No. 7 Sour Mash 100 Proof Tennessee Whiskey. D) A method of reviving a house plant comprising: adding a predetermined amount of a combination of chopped and cooked planti cokius mixed with equal parts 100 proof whiskey to the soil of said plant allowing said plant to revive and blossom. E) All of the above.
C) A fertilizer mixture comprising: chopped and cooked planti cokius mixed in equal parts with Jack Daniels Old No. 7 Sour Mash 100 Proof Tennessee Whiskey.
If the broad generic claim in an application includes an inoperative species of the invention___________________ A) The claim is properly rejected under 35 USC 112(a). B) The claim is properly rejected under 35 USC 112(b). C) The claim cannot be rejected as long as other operable species of the invention are also within the scope of the claim. D) The claim will not be rejected as long as the inoperable species does not correspond to the best mode or a preferred embodiment of the invention. E) A and B.
C) The claim cannot be rejected as long as other operable species of the invention are also within the scope of the claim.
A design application can use which of the following claims constructions. A) A design for the device as shown and described. B) The device substantially as shown and described. C) The ornamental design for a squirt gun as shown and described. D) The aesthetic appearance of the device as shown in the specification. E) C and D above.
C) The ornamental design for a squirt gun as shown and described.
The invention includes multiple embodiments of combination salt and pepper shakers made from a new polyol. The shakers are designed to resemble cartoon characters which are animals from a hit public television series. In the combination shakers the head of the creature is removed and used as the salt shaker and the body of the creature remains and is the pepper shaker. Since such hits are so few the public television station really wants to capitalize on this creation and its popularity but cannot afford as is the case for so many public televisions stations fees for all of the claims which would be necessary to individually cover all of the various embodiments of the invention. You are called in for help and devise the following claims. Which if any are acceptable to the Patent Office. A) Salt and pepper shakers comprising: container means resembling animal shapes made from polyol. B) Shaker combination containers comprising: means for containing salt and resembling a head adapted to sit on a second means for containing pepper which second means resembles a body. C) Nestable containers means for dispensing salt and pepper made from polyol. D) Salt and pepper shakers comprising: a first container means made from polyol for dispensing salt said first container means being a head portion of an animal figurine and a second container means made from polyol for dispensing pepper said second container means being a body portion of an animal figurine said first container means being adapted to be placed atop said second container means when said second container means is resting on a surface. E) None of the above.
D) Salt and pepper shakers comprising: a first container means made from polyol for dispensing salt said first container means being a head portion of an animal figurine and a second container means made from polyol for dispensing pepper said second container means being a body portion of an animal figurine said first container means being adapted to be placed atop said second container means when said second container means is resting on a surface.
After final rejection an amendment may not be entered except under certain specific circumstances. These circumstances include the following: A) A showing of good and sufficient cause why the amendment was not earlier presented. B) Placing the application in better form for Appeal by reducing the issues on Appeal. C) Presenting arguments not previously presented. D) Placing the application in condition for allowance by adopting an examiner suggestion. E) A B and D above.
E) A B and D above.
Your client comes into your office with an ashen face following receipt of the patent you obtained for her. The claims barely leave out an important disclosed but sadly unclaimed invention because of inartful narrowness in the claims. That very invention has been copied by her ex-husband's company and is being sold widely. You quickly explain the basis for filing a correction to the patent. You make five statements. Which if any are incorrect? A) She can file either an ex parte reexamination or reissue at this early date to fix the claims. A reexam is better since the claims are already being infringed. B) She can file a reissue to broaden the claims to include subject matter given up to avoid prior art but she must act quickly to file within two years of the issue date. C) She can file a reissue but not an ex parte reexamination and she must act within two years to file the reissue application. D) A certificate of correction is not possible to correct the defect in this patent. E) A and B.
E) A and B.
All claims in a non-provisional patent application have been rejected for failing to disclose the best mode according to 112 1st paragraph known in the art for practicing the invention. A proper argument to traverse this rejection would be: A) Abandon the application in favor of a continuation-in-part which includes the best mode known in the art. B) Argue that 35 USC 112(b) does not require a best mode disclosure which meets with the examiner's approval. C) Argue that 35 USC 101 utility is disclosed which overrides any best mode requirement of 112(a) as a constitutional and public policy issue. D) Amend the claims to a "means plus function" format to eliminate the need for a best mode. E) Argue that the best mode requirement is evaluated according to the inventor's knowledge at the time of filing and not according to the examiner's knowledge at the time of examination.
E) Argue that the best mode requirement is evaluated according to the inventor's knowledge at the time of filing and not according to the examiner's knowledge at the time of examination.
In an After Final amendment amendments are made which place the case in condition for allowance. Because this amendment will place the case in condition for allowance: A) The remarks do not have to request reconsideration. B) The remarks do not have to show why the amendments were not earlier presented. C) No remarks are necessary. D) The remarks must address each and every objection and rejection of the examiner. E) The remarks must address each and every objection and rejection of the examiner and request reconsideration.
E) The remarks must address each and every objection and rejection of the examiner and request reconsideration.