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   Oct 2003 Afternoon Question Help
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   Author  Topic: Oct 2003 Afternoon Question Help  (Read 548 times)
PatentExaminer
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Oct 2003 Afternoon Question Help
« on: May 21st, 2007, 5:41pm »
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I'm studying for the patent bar and in reviewing question 6 of the Oct 2003 exam questions, I'm a little confused and helpless in deciphering the MPEP. I was wondering if someone can help me with the some questions I've listed below.
 
1. What does the term "material" mean (MPEP 2001.05 and 37 CFR 1.56(a, c))?
2. Can someone explain to me why Tip does not have to disclose his concerns to the USPTO?
 
Thanks in advance.
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tjrc
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Posts: 4
Re: Oct 2003 Afternoon Question Help
« Reply #1 on: May 23rd, 2007, 5:58pm »
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Testing.  System rejecting my reply, thinks I'm including a URL.  
 
Okay, that worked, let me modify with my actual response.
 
This is a "prophetic invention" (a term I never encountered before studying for the patent bar): one based only on theory and never actually experimented with.
 
The inventors, neither in their application nor in any associated filings, ever claimed that there were any actual experiments with the moon dust, and so never did anything to mislead the PTO.
 
I had some problem with this, too; as I read the question, it's very close to saying that Tip is not certain that there actually has been an invention, i.e. that the claimed invention actually can be made from the disclosure.  In my practice sessions, I got this wrong, for that reason.  But the actual fact pattern is slightly different. it does *not* say that Tip was concerned that the moon dust will not be effective; he's concerned that it would mislead the public into thinking it had been found to be effective.
 
I think if Tip believed the moon dust would not actually work, then he would be under an obligation to disclose, because that's material to patentability: if it doesn't work, there's no utility.
 
But his concern in the facts is only whether the public will be misled about whether actual experiments took place; and that is not material to patentability.
 
By the way, this question did come up on my exam (May 10).
« Last Edit: May 30th, 2007, 2:34pm by tjrc » IP Logged
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