New Patent Bar Online Exam - Prometric

[looking4probono]

I agree with the last post.  They do not know when the first half finishes, so you can probably take time and make the sheets. (Then raise your hand and they come and escort you out of the center)

On the start of the second half, a proctor walked me in and watched the initiatation of the startup second half.

[lukertin]

I agree with the last post.  They do not know when the first half finishes, so you can probably take time and make the sheets. (Then raise your hand and they come and escort you out of the center)

On the start of the second half, a proctor walked me in and watched the initiatation of the startup second half.

You have no idea what other test sites are like, so how can you 'agree' with the last post?  the proctor at my site only initiated the test at the beginning and didn't do anything else besides that.

[Sammm]

My proctor also only initiated the test in the beginning. She did not do anything after that. When I finished the first half, I sat there a few minutes and then left. Same thing after the second half.

[josh60]

Hello All,

I have a PRG patent bar exam material that I would like to sell. I bought it first hand In January 2009 for $2400. It includes the following items:

1. Patent Practice - 4 volume set (this covers all the chapters 1-27 in MPEP)
2. Working Papers Binder - it contains Lecture Charts for chapters 1-27. This covers important points in every chapter in the form of a summary (handy during the last few weeks of revisions)
3. Video lectures on 3 DVD-Rs
4. Exam Preparation Software - It allows 2 installations. Also it expires within one year of the first installation. I installed the software in the first week of April 2009. Therefore, you can install it on one computer and the installation will be valid till the first week of April 2010.

I would like to sell this material for $1200. Please let me know if you are interested. You can send me an email at jotrupti@gmail.com.

[turnersd]

Took the exam a few minutes ago, passed on my first try.  I’m a geneticist, and I came into this completely cold.  I read Durham’s Patent Law Essentials before I started really studying for the test.  I’d recommend this to anyone without experience getting started in this to put things into context when you actually start studying.  Thanks to everyone on this website for your comments.  I also used mypatentbar. 

I used the testing center in metrocenter in Nashville.  It was just built last week.  Very friendly staff, quiet and courteous when entering and leaving the testing area.  Nice fast computers, 19" monitors, mice with scroll wheels.

The AM section was very easy.  Finished in <2 hours.  The afternoon section was a different story.  Had some really random and obscure topics.  See below.

I had the following repeat questions:
-Tribell aromatherapy
-Smith DRAM
-Compound Y/Z pain relief utility
-Compound Y process Q 300 degrees
-Can’t disqualify art under 102e rejection using commonly owned affidavit

And some new questions:
-Lot of questions about 102e dates, concerning pre and post 11/29/00 filings.  Just make sure to look at the timelines in 700.
-Lots of questions about PCT filing date – what happens if USPTO not competent RO.  There were about 8 questions that were identical, except one was Japan, other were Costa Rica, German, Swedish, Mexican applicants, or in other languages
-Some really random obscure stuff (PTO-892 form, PTOL-37 form)
-That awful question about filing multiple reissues to separate claims when inventor B wants his own patent without inventor A’s claims.  I still think this is a bad question.
-Didn’t get the titanium baseball question

I can’t remember who it was, but one person here emailed me a set of flashcards for every question asked since 2000.  It’s a PDF divided into 6 sections.  If you print on both sides of the paper, you can make nice flashcards with the question on the front and the answers on the back.  Anyhow, I uploaded the PDF online.   You can download it here:

http://drop.io/past_exam_flashcards

Good luck to all who are taking the exam.  It really is a manageable experience.  Start with some review materials, then study the old tests, and you’ll be ready.

Now, time for a beer or six.

Stephen T.

[VeryHungryPatentAgent]

  18. A March 2003 application if filed as a PCT app without designation, how to fix?  Applicant faxed fee and designation, what result?

Anyone can help me with this one?
For the first question, I think the receiving office will invite applicant to make correction, just like notice of omitted items (quoted below). But I didn't find any support for 2nd question.  MPEP 1834.01 "Use of Telegraph, Teleprinter, Facsimile Machine" didn't specifically say if you can fax designation and IA fee or not (can't fax basic national fee).


"If the requirements under PCT Article 11(1) are not satisfied as of the date of initial receipt of the international application papers, the receiving Office will invite applicant to correct the deficiency within a set time limit. See PCT Article 11(2) and PCT Rule 20.6. In such case, the international filing date will be the date on which a timely filed correction is received by the receiving Office." 1810

[liljaykt]

The following question is from the April 2000 PM portion of the exam, can someone explain to me why the correct answer is (A)? Thank you!

---------------------------------------------------------------

2000 APRIL PM

44. Which of the following statements best correctly describes current PTO practice and procedure?

(A) Where a patent discloses subject matter being claimed in an application undergoing examination, if the patent’s designation of inventorship differs from that of the application, then the patent’s designation of inventorship does not raise a presumption of inventorship regarding the subject matter disclosed but not claimed in the patent so as to justify a rejection under 35 U.S.C. § 102(f).

(B) The fact that a claim recites various components, all of which can be argumentatively assumed to be old, provides a proper basis for a rejection under 35 U.S.C. § 102(f).

(C) A person can be an inventor without having contributed to the conception of the invention.

(D) In arriving at conception, an inventor may not consider and adopt ideas and materials derived from other sources such as an employee or hired consultant.

(E) It is essential for the inventor to be personally involved in reducing the invention to actual practice.

[MYK]

The following question is from the April 2000 PM portion of the exam, can someone explain to me why the correct answer is (A)? Thank you!

---------------------------------------------------------------

2000 APRIL PM

44. Which of the following statements best correctly describes current PTO practice and procedure?

(A) Where a patent discloses subject matter being claimed in an application undergoing examination, if the patent’s designation of inventorship differs from that of the application, then the patent’s designation of inventorship does not raise a presumption of inventorship regarding the subject matter disclosed but not claimed in the patent so as to justify a rejection under 35 U.S.C. § 102(f).

TL;DR.  So, let's save this for later.

(B) The fact that a claim recites various components, all of which can be argumentatively assumed to be old, provides a proper basis for a rejection under 35 U.S.C. § 102(f).

102(f) is the "not the real inventor" paragraph, i.e., Person X saw a new fishing knife while on vacation in Vietnam, came back, and filed a patent application claiming to have invented it.  (I'm pulling that example from another question off the old exams.)  A claim as posited in the question might get rejected under some other 102 or 103 paragraph, but not 102(f).  So, false.

(C) A person can be an inventor without having contributed to the conception of the invention.

Obviously false.  This is basic definition-of-inventorship stuff.

(D) In arriving at conception, an inventor may not consider and adopt ideas and materials derived from other sources such as an employee or hired consultant.

Again, obviously false.  There are no such restrictions, although the subordinates might need to be named on the patent application as well.

(E) It is essential for the inventor to be personally involved in reducing the invention to actual practice.

This one is a little more arguable, since if the inventor wasn't involved in RTP, is he really the inventor, or did he just manage the group that invented the thing?  But "actual practice" throws a monkey wrench into the argument, since you don't need actual RTP to file, you just need CONSTRUCTIVE RTP (i.e., filing a piece of paper describing and claiming the invention), and besides, the inventor is allowed to hire whomever he wants to implement his creation as per (D).  So, false.

Now go back to (A).  Doesn't sound blatantly wrong.  (B), (C), and (D) are instant blowouts;  they aren't even possible.  A little thought about (E) indicates it's arguably false.  I still haven't even parsed (A) fully, but pick it and move on.

ETA: I should note that I didn't even notice your question about "why the correct answer is (A)?", I just went through it and solved it as described above.  Then, when typing this up, I noticed it.  It's nice to have confirmation.

[mdavis68]

6. (I can't quite remember this one right, but D was the answer to how the question was written)

Which one does not work to invoke 112 6th paragraph?

(A) the claim limitations uses the phrase “means for” or “step for;”

(B) the “means for” or “step for” must be modified by functional language; and

(C) the phrase “means for” or “step for” must not be modified by sufficient structure, material or acts for achieving the specified function.

(D) the claim limitation recites "step for"

(E) None of them invoke 112 6th paragraph


My answer was D) due to that funny E ending, and since


--------------------------------------------------------------------------------

EDIT: 2181 Identifying a 35 U.S.C. 112, Sixth Paragraph Limitation [R-6]

I. LANGUAGE FALLING WITHIN 35 U.S.C. 112, SIXTH PARAGRAPH

A claim limitation will be presumed to invoke 35 U.S.C. 112, sixth paragraph, if it meets the following 3-prong analysis:

(A) the claim limitations must use the phrase "means for" or "step for;"

(B) the "means for" or "step for" must be modified by functional language; and

(C) the phrase "means for" or "step for" must not be modified by sufficient structure, material, or acts for achieving the specified function.


There are three elements (notice they are conjunctive using “and”) to invoke 112(6).

All the elements A, B, and C must be in the claim to invoke 112(6).

The above question, if it’s reproduced correctly, only lists one element per answer choice.


*** Then which one is the answer??? Is it D) or is it E)??  

[liljaykt]

Am I correct in noticing that there are two different Potter Questions?

2003 APRIL AM

12. The Potter patent application was filed on June 6, 2002, claiming subject matter invented by Potter. The Potter application properly claims priority to a German application filed on June 6, 2001. A first Office action contains a rejection of all the claims of the application under 35 USC 103(a) based on a U.S. patent application publication to Smith in view of a U.S. patent to Jones. A registered practitioner prosecuting the Potter application ascertains that the relevant subject matter in Smith’s published application and Potter’s claimed invention were, at the time Potter’s invention was made, owned by ABC Company or subject to an obligation of assignment to ABC Company. The practitioner also observes that the Smith patent application was filed on April 10, 2001 and that the patent application was published on December 5, 2002. Smith and Potter do not claim the same patentable invention. To overcome the rejection without amending the claims, which of the following timely replies would comply with the USPTO rules and the procedures set forth in the MPEP to be an effective reply for overcoming the rejection?

(A) A reply that only contains arguments that Smith fails to teach all the elements in the only independent claim, and which specifically points out the claimed element that Smith lacks.
(B) A reply that properly states that the invention of the Potter application and the Smith application were commonly owned by ABC Company at the time of the invention of the Potter application.
(C) A reply that consists of an affidavit or declaration under 37 CFR 1.132 stating that the affiant has never seen the invention in the Potter application before.
(D) A reply that consists of an affidavit or declaration under 37 CFR 1.131 properly proving invention of the claimed subject matter of Potter application only prior to June 6, 2001.
(E) A reply that consists of a proper terminal disclaimer and affidavit or declaration under 37 CFR 1.130.

ANSWER B.
-----------------------------------

2003 APRIL PM

22. The Potter patent application was filed on June 6, 2002, claiming subject matter invented by Potter. The Potter application properly claims priority to a German application filed on June 6, 2001. In a first Office action all the claims of the Potter application are rejected under 35 USC 102(e) based on a U.S. patent application publication to Smith et al (“Smith”). A registered practitioner prosecuting the Potter application ascertains that the relevant subject matter in Smith’s published application and Potter’s claimed invention were, at the time Potter’s invention was made, owned by ABC Company or subject to an obligation of assignment to ABC Company. The practitioner ascertains that the Smith application was filed on April 10, 2001 and that the Smith application was published on December 5, 2002. Smith and Potter do not claim the same patentable invention. To overcome the rejection without amending the claims which of the following replies would not comply with the USPTO rules and the procedures set forth in the MPEP to be an effective reply for overcoming the rejection?

(A) A reply that only contains arguments that Smith fails to teach all the elements in the only independent claim, and which specifically points out the claimed element that Smith lacks.
(B) A reply that consists of an affidavit or declaration under 37 CFR 1.131 properly proving invention of the claimed subject matter of the Potter application prior to April 10, 2001.
(C) A reply that consists of an affidavit or declaration under 37 CFR 1.132 properly showing that Smith’s invention is not by “another.”
(D) A reply that properly states that the invention of the Potter application and the Smith application were commonly owned by ABC Company at the time of the invention of the Potter application.
(E) All of the above.

ANSwER D.
-----------------------------------

If so, which one is the repear question, or have both of them reappeared on the exam?

Thanks!

[liljaykt]

The following question is from the April 2000 PM portion of the exam, can someone explain to me why the correct answer is (A)? Thank you!

---------------------------------------------------------------

2000 APRIL PM


41. Which of the following may not be properly used as prior art for purposes of rejecting a claim under 35 U.S.C. § 102(b) in an application having an effective filing date of Monday, May 3, 1999?

(A) A journal article, published Saturday, May 2, 1998, disclosing all the claimed elements and fully teaching how to make and use the invention as claimed.
(B) A foreign patent, published March 3, 1998, which applicant referenced in the application when claiming foreign priority based on the foreign application date, and applicant submitted a certified copy of the original foreign application.
(C) Applicant’s statement in a declaration under 37 C.F.R. § 1.132 that although the invention as claimed had been offered for sale in department stores in New York during 1997, this was done only to analyze consumer acceptance of the packaging in which the invention is marketed.
(D) A journal article, published May 1, 1997, disclosing all the elements of the claim and teaching how to make and use the claimed invention. The examiner used the article in combination with another journal article in a previous non-final Office action to reject the same claim under 35 U.S.C. § 103.
(E) All of the above.

41. ANSWER: (A). MPEP 706.02(a).

[DogDayPM 9er9er9er]

I'll take a guess and say A is the answer because the patent office is not open for business on Sunday, May 2nd 1999, therefore filing Monday, May 3 1999 is not considered to be "more than one year" prior to Applicant's filing date.

EDIT:  PS, no longer guesssing.  I was curious so I looked it up.  See MPEP @ 706.02(a) under part II, A, second para discussing Ex parte Olah for confirmation that you get until the next business day.

http://www.uspto.gov/web/offices/pac/mpep/documents/0700_706_02_a.htm#sect706.02a

[Sixes]

Anytime they include a day of the week in the question or answer, perk up your ears.

[horsechute]

"(E) It is essential for the inventor to be personally involved in reducing the invention to actual practice.

This one is a little more arguable, since if the inventor wasn't involved in RTP, is he really the inventor, or did he just manage the group that invented the thing?"

Hmmm, you might want to see Burroughs Wellcome Co. v. Barr Lab., 40 F.3d 1223.

[outphase]

I took the test today and passed thanks to the questions and discussion in this thread.

I counted about 36 repeat questions from mostly the 2003 exams. They include at least the following:
Tribell
Mirror
Titanium baseball
147 claims
Velcro
Hair gel
Composition Y at 150º
and many more I cannot recall w/o looking at a past exam.

For those who are still studying for the exam, I highly recommend going through the past exams like they were your lifeline. Understanding the past exams is key to passing the current exams. Many questions come from the old ones, and the newer questions use a lot of the same logic.

Good luck!