Copyright 200-2001, Constantine Orogo
1
Abigail has invented a novel watering mechanism for a flower pot. The flower pot also possesses a unique ornamental design. Abigail consults with patent practitioner P for advice on the differences between a design patent and a utility patent. Which of the following general statements regarding design and utility patents, if made by P, would be accurate?
A 'utility patent' protects the way an article is used and works, while a 'design patent' protects the way an article looks.
Unlike utility patent applications, a design patent application may not make a claim for priority of a provisional patent application.
Maintenance fees are required for utility patents, while no maintenance fees are required for design patents.
Both design and utility patents may be obtained on an article if the invention resides both in its utility and ornamental appearance.
All of the above.
E
TBD
50
D
Y
44
2
18
LO
47
2
3/10/00
2
A patent application filed in the PTO claims a nylon rope coated with element E for the purpose of preventing breakage of the rope. In the first Office action, the examiner rejects the claim as obvious over P in view of a trade journal publication, T. P teaches a nylon rope coated with resin for the purpose of making the rope waterproof. T teaches a nylon tent fabric coated with element E for the purpose of making the tent waterproof, and suggests the use of element E for making other nylon products waterproof. Following proper PTO practices and procedures, the combination of P and T:
cannot support a prima facie case of obviousness because T lacks a suggestion to combine with P for the purpose of preventing breakage in nylon rope.
cannot support a prima facie case of obviousness because P lacks a suggestion to combine with T for the purpose of preventing breakage in nylon rope.
cannot support a prima facie case of obviousness because T only contains a suggestion to combine with P for the purpose of waterproofing nylon rope.
can support a prima facie case of obviousness, even though T only contains a suggestion to combine with P for the purpose of waterproofing nylon rope.
can support a prima facie case of obviousness because the applicant is always under an obligation to submit evidence of non-obviousness regardless of whether the examiner fully establishes a prima facie case of obviousness.
D
TBD
69
C
Y
47
1
6
MED
43
1
3/10/00
3
What would not be permitted to be incorporated by reference in your client's U.S. utility patent application?
Essential material from a U.S. patent.
Essential material from a foreign application.
Non-essential material from a prior filed, commonly owned U.S. application.
Essential material from a magazine article.
(B) and (D).
E
TBD
67
B
N
98
1
25
HI
36
2
3/13/00
4
Beverly is a research chemist. While cleaning a clogged shower drain she recovers several ounces of goop from the drain. She analyzes the ingredients and properties, and finds that the goop makes a highly effective industrial lubricant. She comes to you for help in preparing and filing an application. She informs you that the goop is formed from equal parts of chemicals W, X, Y and Z. She knows that chemical W comes from the soap she uses and that chemicals Y and Z are components of the conditioner she uses on her hair. Her soap uses the tradename 'Acme SmellNice', and her shampoo and conditioner both use the tradename 'A-1 Silky.' Chemicals W, Y and Z are all readily available on the commercial market. Chemical X is also a common, readily available chemical, but she cannot determine how it got in the shower drain. She suspects it is the result of a reaction between A-1 Silky shampoo and Acme SmellNice soap that occurs when the two are mixed in the presence of hot water. You prepare an application describing a prophetic example setting forth one way to make the goop from commercially available chemicals and a working example describing (as well as the inventor can) how the goop is formed in the bathroom drain. The working example describes mixing of A-1 Silky shampoo and Acme SmellNice soap in the presence of water having a temperature of at least 100 degrees F to form chemical X. Because you know that the ingredients for at least Acme SmellNice soap have recently changed, but the nature of the change is unknown, you list every ingredient of A-1 Silky shampoo, and Acme SmellNice soap in positive language so there will be no confusion as to what is meant. The application includes the following claims: Claim 1. An industrial lubricant consisting essentially of equal parts of chemical W, chemical X, chemical Y and chemical Z. Claim 2. The industrial lubricant of Claim 1, wherein said chemical X is formed by mixing A-1 Silky shampoo and Acme SmellNice soap in the presence of water having a temperature of at least 100 degrees F. Which of the following statements is/are correct?
Claim 1 cannot be supported by an enabling specification because Beverly does not fully understand the processes that occurred in the drain, and a prophetic example alone is never sufficient to enable a claim.
Claim 2 is not patentable because it sets forth an incorrect theory of formation of chemical X.
Claim 1 is not patentable because Beverly merely found the goop in her drain and did not formulate it herself.
Claim 2 is not patentable because it is indefinite.
(B) and (D).
D
TBD
67
E
N
71
1
28
HI
55
3
3/10/00
5
Jack, a registered patent agent, received a final rejection of all of the claims in an application directed to an article of manufacture. Jack is about to file a timely Notice of Appeal to the Board of Patent Appeals and Interferences. Before filing his notice of appeal, Jack would like to tie up some loose ends by amendment. Which of the following reply(replies) may he file without triggering the requirements of 37 CFR section 1.116(b)?
A reply that presents his argument in a more defensible light and adds additional claims.
A reply amending the claims into process claims.
A reply amending all of the independent claims, accompanied by a declaration from the inventor.
A reply complying with a requirement of form expressly set forth in the previous Office action.
(A) and (D).
D
TBD
50
A
N
99
1
4
LO
53
4
3/10/00
6
You are preparing a patent application for filing in the PTO. The application contains the following partial claim: A walking device comprising: (i) a vertical member having opposing top and bottom portions; (ii) a handle connected to the top portion of the vertical member forming a 45E angle with the top portion of the vertical member; (iii) (iv) a set of non-skid covers for the set of legs, said set of legs being aluminum. Following proper PTO practices and procedures, which of the following claim limitations best completes the claim by providing the missing limitation (iii)?
a horizontal member, substantially round in shape, having opposing sides connected along one of the opposing sides to the bottom side of the vertical member and along the other of the opposing sides to a set of legs; and
a horizontal member, substantially round in shape, having first and second opposing sides connected along the first opposing side to the bottom side of the vertical member and along the second opposing side to a set of legs; and
a horizontal member, substantially round in shape, connected to the bottom portion of the vertical member; and
a horizontal member, substantially round in shape, having opposing top and bottom portions; the top portion of the horizontal member is connected to the bottom portion of the vertical member, and the bottom portion long the bottom portion of the vertical member is connected to a set of legs; and
a horizontal member, substantially round in shape, having a top side connected to the bottom side of the vertical member and a bottom side connected to the set of legs; and
All answers accepted
TBD
57
A
Y
65
1
13
LO
54
3
3/10/00
7
Which of the following statements, regarding amendments filed after final rejection in a timely manner, is correct?
Amendments touching upon the merits of the application presented after final rejection shall be entered upon payment of the proper fee and a showing of good and sufficient reasons why they are necessary and were not earlier presented.
An amendment filed after final rejection is entitled to entry if it amends only the claims that were finally rejected.
Amendments after final rejection may be made canceling claims or complying with any requirement of form expressly set forth in the final Office action.
An amendment after final rejections is entitled to entry if it cancels claims and adds new claims that clearly set forth a previously unclaimed embodiment of the invention.
Applicant cannot make any further amendments after final rejection, but may submit remarks and a notice of appeal.
C
TBD
61
B
N
61
1
18
MED
56
4
3/17/00
8
In which of the following situations, considered independently of each other, is the original, new, or amended claim supported in the application as filed?
An amendment to the specification changing the definition of 'holder' from 'is a hook' to 'is a hook, clasp, crimp, or tong' and no amendment is made of the claim, which uses the term 'holder.' The amendment is filed one month after the application was filed. There was no previous supporting disclosure in the specification of the holder being a clasp, crimp, or tong.
An amendment to the specification and claims changing the definition of 'holder' from 'is a hook' to 'is a hook, clasp, crimp, or tong.' The amendment is filed one month after the application was filed. There was no previous supporting disclosure in the specification of the holder being a clasp, crimp, or tong.
Original claim 1 in the application refers to 'a holder,' and original claim 2 depends from and refers to claim 1 stating, 'said holder is a hook, clasp, crimp, or tong.' There is no disclosure in the specification preceding the claims in the application as filed for the holder to be a clasp, crimp, or tong.
An amendment is filed presenting a claim to an electrical insulating device, copied from a patent for the purpose of provoking an interference. The claim refers to 'nonconductive plastic holder.' The application as filed contains a broad generic disclosure describing electrical insulating devices. The holder is described in the specification of the application as 'conducting electricity.' There is no disclosure in the specification of the holder being 'nonconductive.'
All of the above.
C
TBD
57
C
N
62
1
7
HI
35
3
3/10/00
9
An application as originally filed contains the following Claim 1: Claim 1. A doughnut making machine comprising: (i) an input conveyor that receives dough to be used in making said doughnuts; (ii) portioning means for portioning dough from said input conveyor into a plurality of dough balls, each of said plurality of balls containing dough sufficient to create a single doughnut; (iii) forming means for forming each of said dough balls into a ring of dough; (iv) a deep fat fryer which receives rings of dough from said forming means and cooks said rings of dough; (v) applying means for selectively applying a flavored coating on cooked rings of dough to produce doughnuts; and (vi) placing means for placing a plurality of said doughnuts on a flat sheet. The specification adequately describes the claimed subject matter. Two different 'means for selectively applying' are described in the specification: a sprayer and a brush. Which of the following original claims is an improper dependent claim?
2. The doughnut making machine of Claim 1, wherein said placing means is a conveyor that extends from said applying means to said flat sheet.
3. The doughnut making machine of Claim 1, wherein said forming means includes a cutter that removes a center portion of each of said dough balls to form a ring of dough.
4. The doughnut making machine of Claim 1, wherein said applying means is omitted for making plain doughnuts.
5. The doughnut making machine of Claim 1, wherein said applying means includes a sprayer which receives a sugar based flavored coating, wherein said sugar based flavored coating is sprayed on said cooked rings of dough.
6. The doughnut making machine of Claim 1, wherein said applying means is a sprayer.
C
TBD
65
C
N
96
1
29
MED
30
4
3/10/00
10
Which of the following dependent claims, each occurring in different patent applications, is in a proper claim format?
Claim 4. The process of claim 5, further characterized by and
Claim 2. The process of claim 1 or claim 5, further comprising and
Claim 6. The widget as in claims 1, 2 or 3, further including and
Claim 3. The widget as in the preceding claims, further containing and
Claim 5. The process as in claims 1-2 or 3, further comprising and
C
TBD
63
D
Y
70
2
1
MED
51
3
3/10/00