Practice Quiz

Patent Agent USPTO Registration Exam Prep - Question List

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1. A claim in a pending patent application stands rejected under 35 USC 103(a) as being obvious over Kim in view of Lance. The Kim and Lance references are both U.S. Patents issued on respective applications filed before the date of the application in question. In the rejection, the primary examiner asserted that no determination of the level of ordinary skill in the art was necessary because the subject matter of the application and of Kim and Lance were so easily understandable; and that the Kim reference relates to the applicant’s endeavor. The examiner properly found motive in Kim and Lance for combining the references, but the motive would produce a benefit different from that offered by applicant’s invention. Neither reference teaches or suggests the ambiguous limitation. In the rejection under 36 USC 103(a), the examiner did not address an ambiguous limitation in the claim. However, the examiner separately rejected under 35 USC 112, second paragraph as indefinite due to the ambiguity. According to the patent laws, rules and procedures as related in the MPEP, which of the following arguments, if true, would overcome the rejection?
  1. The examiner asserted that because the subject matter of the application and of Kim and Lance were so easily understandable, a factual determination of the level of skill in the art was unnecessary.
  2. The Kim reference is nonanalogous art because, although it relates to the field of the applicant’s endeavor, it is not pertinent to the particular problem with which the applicant was concerned.
  3. The reason given by the examiner to combine Kim and Lance is to obtain a benefit different from that offered by the applicant’s invention.
  4. Neither the Kim nor Lance references teaches or suggests the ambiguous claimed limitation that the examiner separately rejected as indefinite.
  5. All of the above.
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2. Claim 1 of an application recites “[a]n article comprising: (a) a copper substrate; and (b) a electrically insulating layer on said substrate.” The specification defines the term “copper” as being elemental copper or copper alloys. In accordance with the patent laws, rules and procedures as related in the MPEP, for purposes of searching and examining the claim, the examiner should interpret the term “copper” in the claim as reading on:
  1. Elemental copper only, based on the plain meaning of “copper.”
  2. Copper alloys only, based on the special definition in the specification.
  3. Elemental copper and copper alloys, based on the special definition in the specification.
  4. Any material that contains copper, including copper compounds.
  5. None of the above.
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3. In a reexamination proceeding a non-final Office action dated November 8, 2001 set a shortened statutory period of 2 months to reply. The patent owner, represented by a registered practitioner, filed a response on March 7, 2002, which included an amendment of the claims. No request for an extension of time was received. As of May 8, 2002, which of the following actions would be in accord with the patent laws, rules and procedures as related in the MPEP?
  1. The registered practitioner should file a request and fee for an extension of time of two months
  2. The registered practitioner should file a petition for revival of a terminated reexamination proceeding showing the delay was unavoidable or unintentional, and the appropriate petition fee for entry of late papers.
  3. The primary examiner responsible for the reexamination should mail a Notice of Allowance and grant a new patent. The patent owner’s failure to timely respond to the outstanding Office action does not affect the allowability of the claims in the patent.
  4. The examiner should provide an Office action based upon the claims in existence prior to the patent owner’s late amendment, and mail a Final Office action.
  5. The registered practitioner should request an extension of time of four months, and file a Notice of Appeal.
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4. 35 USC 102(d) establishes four conditions which, if all are present, establish a bar against the granting of a patent in this country. In accordance with the patent laws, rules and procedures as related in the MPEP, which of the following is not one of the four conditions established by 35 USC 102(d)?
  1. The foreign application must be filed more than 12 months before the effective U.S. filing date.
  2. The foreign application must have been filed by the same applicant as in the
    United States or by his or her legal representatives or assigns.
  3. The foreign patent or inventor’s certificate must be actually granted before the
    U.S. filing date
  4. The foreign patent or inventor’s certificate must be actually granted and published before the U.S. filing date.
  5. The same invention must be involved.
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5. In accordance with the patent laws, rules and procedures as related in the MPEP, definiteness of claim language under 35 U.S.C. 112, second paragraph must be analyzed, not in a vacuum, but in light of:
  1. The content of the particular application disclosure.
  2. The teachings of the prior art.
  3. The claim interpretation that would be given by one possessing the ordinary level of skill in the pertinent art at the time the invention was made.
  4. The claim interpretation that would be given by one possessing expert skill in the pertinent art at the time the invention was made
  5. (A), (B) and (C).
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