Intellectual Property Forum

Patents => Becoming a Patent Agent/Lawyer => Topic started by: Scanner on 03-03-07 at 07:30 pm

Title: Recent Patent Bar Question Collective
Post by: Scanner on 03-03-07 at 07:30 pm

This will be a topic where hopefully all the recently encountered questions will be listed, and those who recently took the exam will be able to post answers to those questions. Collecting the questions will be done for the benefit of the Patent Bar test-taking public, so please help out by contributing.
Title: Re: Recent Patent Bar Question Collective
Post by: Scanner on 03-03-07 at 07:38 pm

Furthermore, there currently exists a site that lists recently tested patent bar exam questions at: patentbarquestions DOT com,  started as an off-shoot of this forum. However, hopefully this collective will be able to supplement that page (by updating the "Questions Reportedly Asked" section, and also listing all the recently encountered Exam questions here.

For starters, here are some questions that people are looking for answers to:

The Titanium Baseball Question:
A question involving public use if patrons are able to view information concerning a patented titanium baseball.

The Mirror Question:
A question involving whether a reflective qualities of a mirror have to be included in the specification.

The VELCRO Question:
Concerning the proper use of the VELCRO trademark in a patent application - whether it comports with the proper rule for trademarks.

-A Question Involving Hairgel, and inventors named Buzzy, or Razor
-A Question involving the submission of private prior art involving a Joe and a Bob
-A Question involving fraud/disclosure of information involving whether one has to disclose a District Court decision on a patent
-A Question involving Cleaning Soda / Cleaning Product
-A Wireless Phone Question
-A Question involving an inventor named Lance and 102/103.
Title: Re: Recent Patent Bar Question Collective
Post by: MoreQuestions on 03-04-07 at 06:21 pm

Here is a further list of all questions that have came up:

Lipgloss (Flavored Lip Gloss) Question (Public Use)
Shipbell Question (Public Use)
Tribell Question
Potter
Spanish Phone Question
Japanese Foreign Filing
Lancer Toothbrush
DRAM
Aluminum Airplane/Tinfoil
ClockFanLamp
Piecemeal Examination Question
Costa Rica Citizens Question
Mario Lepuiex Question
Question on RNA Interference
Moon Dust Eraser Question
Buzzy Hairgel Question
District Court Judgment
Compound Y for Cancer Curing Question
User Pass Question
JJ Smithy Question
Crossing the Road
Sweet Smelling Paint






Title: Re: Recent Patent Bar Question Collective
Post by: MoreQuestions on 03-04-07 at 06:25 pm
See also the post, "a sample from the pool of questions" for a further breakdown of questions by a conceptual basis.

People should post the questions they encounter here, and more importantly, the answers/analysis/framework for approaching those questions.
Title: Re: Recent Patent Bar Question Collective
Post by: asdfg on 03-05-07 at 10:40 pm
These questions and ans. are taken from previous posts:

1.MIRROR QUESTION:

There is one question discussing the use of "mirror" in the claims and whether its "reflective qualities" should be discussed in the specification. I am not sure if this was a prior question, however. You were to choose from a list of choices a single answer that comported with USPTO practice and procedure.

Among the answers (from memory): (A) because the definition of mirror automatically includes its reflective qualities, there is no need to amend the specification to include the reflective qualties (E) the mirror in one part of the specification is "parallel," and the mirror in another part is "perpindicular," the specification is conflicting and one who has knowledge in the art would not be able to tell the difference so you amend the specification. Did anyone get this question and what would the answer be?

ANS:
It is A, reflective qualities, as a general term, would be inherent, and not need to be discussed. Whether it is positioned parallel or perpendicular has nothing to do with its reflective qualities, and on top of that, would likely be obvious. If it possessed "special" reflective qualities, that would not be known to one skilled in the art, that would be different and need to be included, so that it could be enabled to be claimed later.

2. Titanium /Museum Baseball Question

A question involving an article about a special titanium baseball put on public display in a museum. The main question is: is it public use if only "wealthy museum patrons who have no interest or skill to make baseballs" see it? Or is it public use when the general public see it, or people who have the interest/skill to make baseballs can see it? In other words, the main question is: is something public use if ONLY the people having skill in the art can see it?

ANS:

It only requires that it be accessible to the public, and not hidden away in such a way that one cannot find it except by happenstance, whether people who are skilled in the art have happened to see it or not, as long as it is open to the public, is irrelevant.

The public is the public, it doesn't matter if they had to pay for admission, they don't belong to the same entity. Even if they aren't interested in the baseball, they could easily describe it to a baseball manufacturer who would be very interested.

its a 102(b) bar, due to the "public use" (thats right)when it was displayed to members of the museum.

based on MPEP 2133.03(a) II A. 2
     see In re Blaisdell & Ex parte Kuklo
     Display in a laboratory --> public use
     doesn't have to be displayed to those skilled in the art.
     no need for all inner workings to be shown.
     

Compare to Moleculon (the rubix cube case) where the inventor did not cause a public use by leaving the cube on his desk.

Just go to the MPEP and read the section with Blaisdell and Kuklo, you'll see what they're testing.  There were different times when the reference could have gone into effect, in this case (if I remember correctly) the baseball was displayed to the museum members over a year before the filing date of the application.

Someone please help answer questions.
Thanks.
Title: Re: Recent Patent Bar Question Collective
Post by: RDS on 03-07-07 at 08:35 pm
Hi all,

I just wanted to remind the people who unfortunately did not pass the test the first time (I belong to that group as of Jan 25, 2007 but hopefully not for too long) about the option you have to schedule a personal meeting with the PTO/OED to review the questions which you have answered wrong.
Call 571-272-4097 after you have received your "NO" letter, to schedule the 2 1/2 hours with them.

I had my scheduled meeting today and received a warm welcome, was brought into a meeting room, and obtained the printout of all the "wrong" answered questions, with a person present at all times. They do not let you know the questions which you have answered correctly.I was not allowed to take notes but I had 2.5 hrs to read through the questions. It lists also what I have answered and what the right answer is. In addition, a detailed explanation is given, based on the MPEP, for each possible listed answer (similar to what you have in the previous questions published, up to 2003).

If you are close to Alexandria, VA,  or if you have the time for a visit, this is your great opportunity to find out what you did wrong, and it is at no charge!

By the way, the correct answer for the baseball publication in the museum is the date of July 4th, the date when the publication was available in the catalog and on the shelf (July 4th).

Good luck with your tests.
RDS
Title: Re: Recent Patent Bar Question Collective
Post by: asdfg on 03-09-07 at 10:59 pm
Taken from RDS (he had a look at the ans. in VA) post:

By the way, the correct answer for the baseball publication in the museum is the date of July 4th, the date when the publication was available in the catalog and on the shelf (July 4th).  
Title: Re: Recent Patent Bar Question Collective
Post by: RDS on 03-11-07 at 04:14 pm
Hi all ,

I was asked for more details on current questions but the patentbar-questions site is pretty much current and up to date.

Something which is really helpful can be found on the PLI site,GOOGLE can guide you. Look up Patent Bar Review, Icon Exam, click on the box "previous exams and analysis".
Download the analysis papers (just below the question listing for the year), has great explanations by John White, Esq., on all previous exam questions up to 2003. It's more the "real world" explanations, easier to read and to understand than the PTO justification on previous questions.

Regards and good luck studying!
Title: Re: Recent Patent Bar Question Collective
Post by: Scanner on 03-20-07 at 05:47 pm
RDS,

Thanks for the informative info - do you happen to have the link to this page?
Title: Re: Recent Patent Bar Question Collective
Post by: NeedHelp! on 03-22-07 at 10:39 am
Hi All,

I took the exam previously and didn't pass - I really NEED to know the answer to this VELCRO trademark question, because I had it on the exam I took and I am still uncertain of the answer. If any of you knew the correct answer it would really help me out. The question is as follows:

The VELCRO trademark question deals with the rules about including trademarked names into an application. A claim in a  patent application uses "VELCRO." The examiner rejected the app because of the usage. Among the answer choices are:

(A) maintain the VELCRO rejection because sufficient structure is not recited  
(B) maintain the rejection because VELCRO is a recognized prior art fastener, and this fastener would be obvious to replace with the current fastener  
(C) do not object/reject  
(D) object to the trademark for being a trademark and request the applicant to modify the specification to include further structure  
(E) ... (don't remember, could be "none of the above")

Much Thanks --
Title: Re: Recent Patent Bar Question Collective
Post by: Scanner on 03-22-07 at 10:46 am

I believe the answer to maintain the VELCRO question under 112 second paragraph (and say that the use of the VELCRO trademark is indefinite) because any use of trademark is indefinite under 112 second paragraph EVEN THOUGH VELCRO is a recognized trademark (it is even listed in the MPEP). Also see the section on trademarks:

7.35.01 Trademark or Trade Name as a Limitation in the Claim
Claim [1] contains the trademark/trade name [2]. Where a trademark or trade name is used in a claim as a limitation to identify or describe a particular material or product, the claim does not comply with the requirements of 35 U.S.C. 112, second paragraph. See Ex parte Simpson, 218 USPQ 1020 (Bd. App. 1982). The claim scope is uncertain since the trademark or trade name cannot be used properly to identify any particular material or product. A trademark or trade name is used to identify a source of goods, and not the goods themselves. Thus, a trademark or trade name does not identify or describe the goods associated with the trademark or trade name. In the present case, the trademark/trade name is used to identify/describe [3] and, accordingly, the identification/ description is indefinite.
Title: Re: Recent Patent Bar Question Collective
Post by: asdfg on 03-22-07 at 02:17 pm
Quote
Hi All,
 
I took the exam previously and didn't pass - I really NEED to know the answer to this VELCRO trademark question, because I had it on the exam I took and I am still uncertain of the answer. If any of you knew the correct answer it would really help me out. The question is as follows:
 
The VELCRO trademark question deals with the rules about including trademarked names into an application. A claim in a  patent application uses "VELCRO." The examiner rejected the app because of the usage. Among the answer choices are:
 
(A) maintain the VELCRO rejection because sufficient structure is not recited  
(B) maintain the rejection because VELCRO is a recognized prior art fastener, and this fastener would be obvious to replace with the current fastener  
(C) do not object/reject  
(D) object to the trademark for being a trademark and request the applicant to modify the specification to include further structure  
(E) ... (don't remember, could be "none of the above")
 
Much Thanks --



So is the answer A or is it D because the choices do not mention 112 indefinite?
Title: Re: Recent Patent Bar Question Collective
Post by: Isaac on 03-22-07 at 02:55 pm
Examiners are taught to reject as indefinite under 112 2nd paragraph because a trademark identifies source for a thing and not the details (structure or composition) of the thing.

Answer A "not reciting enough structure" is correct.

The worst part of answer D is that adding structure to the spec won't clear up this problem with the claims.
Title: Re: Recent Patent Bar Question Collective
Post by: Scanner on 03-23-07 at 10:23 pm

I agree with Isaac. Also see MPEP 2173.05(u).

Does anyone know the answers or MPEP sections relevant to the following questions posted in previous posts:

1. "Piecemeal" examination.

2. PCT / Costa Rica: PCT about Costa Rica citizens filing a PCT app in US/RO, had to go to the MPEP to confirm if Costa Rica was a PCT contracting state and also the date when it was admitted.

3. question on RNA Interference (Presumably, an Interference proceeding in an RNA context?)
Title: Re: Recent Patent Bar Question Collective
Post by: asdfg on 03-24-07 at 12:34 pm
Regarding Piecemeal Q, from what I read in previous posts, the whole para from chapter 7 was reproduced. Well, I looked it up, here is the para:

707.07(g) Piecemeal Examination

Piecemeal examination should be avoided as much as possible. The examiner ordinarily should reject each claim on all valid grounds available, avoiding, how­ever, undue multiplication of references. (See MPEP § 904.03.) Major technical rejections on grounds such as lack of proper disclosure, lack of enablement, serious indefiniteness and res judicata should be applied where appropriate even though there may be a seemingly sufficient rejection on the basis of prior art. Where a major technical rejection is proper, it should be stated with a full development of reasons rather than by a mere conclusion coupled with some stereotyped expression.

In cases where there exists a sound rejection on the basis of prior art which discloses the "heart" of the invention (as distinguished from prior art which merely meets the terms of the claims), secondary rejections on minor technical grounds should ordinarily not be made. Certain technical rejections (e.g. negative limitations, indefiniteness) should not be made where the examiner, recognizing the limitations of the English language, is not aware of an improved mode of definition.

Some situations exist where examination of an application appears best accomplished by limiting action on the claim thereof to a particular issue. These situations include the following:

(A) Where an application is too informal for a complete action on the merits. See MPEP § 702.01;

(B) Where there is an undue multiplicity of claims, and there has been no successful telephone request for election of a limited number of claims for full examination. See MPEP § 2173.05(n);

(C) Where there is a misjoinder of inventions and there has been no successful telephone request for election. See MPEP § 803, § *> 810<, § 812.01;

(D) Where disclosure is directed to perpetual motion. See Ex parte Payne, 1904 C.D. 42, 108 O.G. 1049 (Comm'r Pat. 1903). However, in such cases, the best prior art readily available should be cited and its pertinency pointed out without specifically applying it to the claims.

On the other hand, a rejection on the grounds of res judicata, no prima facie showing for reissue, new matter, or inoperativeness (not involving perpetual motion) should be accompanied by rejection on all other available grounds.
Title: Re: Recent Patent Bar Question Collective
Post by: asdfg on 03-24-07 at 02:25 pm


PCT / Costa Rica: PCT about Costa Rica citizens filing a PCT app in US/RO, had to go to the MPEP to confirm if Costa Rica was a PCT contracting state and also the date when it was admitted.

Costa Rica is a PCT contracting state (MPEP 1817) so PCT Rule 19.4 applies. US/RO will send to Int. Bureau and Int. filing date will be date accorded by US/RO.

PCT Rule 19.4 provides for transmittal of an international application to the International Bureau as Receiving Office in certain instances. For example, when the international application is filed with the United States Receiving Office and the language in which the international application is filed is not accepted by the United States Receiving Office, or if the applicant does not have the requisite residence or nationality, the application may be forwarded to the International Bureau for processing in its capacity as a Receiving Office. See  37 CFR 1.412(c)(6). The Receiving Office of the International Bureau will consider the international application to be received as of the date accorded by the United States Receiving Office. This practice will avoid the loss of a filing date in those instances where the United States Receiving Office is not competent to act, but where the international application indicates an applicant to be a national or resident of a PCT Contracting state or is in a language accepted under  PCT Rule 12.1(a) by the International Bureau as a Receiving Office. Of course, where questions arise regarding residence or nationality, i.e., the U.S. is not clearly competent, the application will be forwarded to the International Bureau as Receiving Office. Note, where no residence or nationality is indicated, the U.S. is not competent, and the application will be forwarded to the International Bureau as Receiving Office so long as the necessary fee is paid. The fee is an amount equal to the transmittal fee.

If all of the applicants are indicated to be residents or nationals of non-PCT Contracting States, PCT Rule 19.4 does not apply, and the application is denied an international filing date.

Title: Re: Recent Patent Bar Question Collective
Post by: asdfg on 03-24-07 at 03:04 pm
Again, Regarding the Velcro Q, I think we have to consider 2 things;

- whether it appears in the claims to identify a material or product: in which case not allowed - structure not recited, hence indefinite 112 - 2nd para .

- whether it appears in specification: 608.01v, in which case product to which the trademark  refers to, has to be set forth in clear language then examiner should permit use of trademark. If product identification not properly done, examiner will reject on grounds of insufficient disclosure.


Title: Re: Recent Patent Bar Question Collective
Post by: Estella Estella on 03-24-07 at 07:28 pm


A question regarding the admited date of a contracting state under the PCT rule:
1. what is the meaning of ratification, accession or delcaration under MPEP 1817?
2. to determine if a country is an admited contracting state under the PCT rules, which column would you look at to decide what date the country is admited?

thanks for the help
Title: Re: Recent Patent Bar Question Collective
Post by: asdfg on 03-24-07 at 08:28 pm
Quote

A question regarding the admited date of a contracting state under the PCT rule:
1. what is the meaning of ratification, accession or delcaration under MPEP 1817?
2. to determine if a country is an admited contracting state under the PCT rules, which column would you look at to decide what date the country is admited?

thanks for the help


I checked the wipo link given on top of the 1817 page. It appears the last column "Date From Which State May Be Designated" in 1817 matches with the "Date on which state became bound by PCT" given in the list in WIPO link.
Title: Re: Recent Patent Bar Question Collective
Post by: Scanner on 03-26-07 at 10:12 pm
New Questions Encountered
These were the "new" questions I encountered on the exam, which have been discussed in previous posts:

-The Lipgloss Question (Public Use)
-The Titanium Baseball Question (Public Use)
-The Tinfoil Airplane Question (Anticipation - very similar to an old exam question on Balsa/Pine wood).
-The Broom with Many Claims (Multiplicity)
-The Mexican/U.S. National Question (The USPTO can act as R/O if at least one of the inventors is a U.S. National).
-Tables more than 50 Pages Must be Submitted on CDs and in Duplicate
-Japanese Citizen Files IA in Japanese (PCT - When an IA can be forwarded to the IB)
Title: Re: Recent Patent Bar Question Collective
Post by: asdfg on 03-27-07 at 05:24 pm
Hi all:

I took the exam today and passed. It was my 2nd attempt. Here the Q I remember:

Titanium base ball in the museum.when available as prior art - date publication was displayed in museum and not open to public or date shelved in the library.

112 enablement: some composition given but method of preparation not given. examiner checks prior art and finds that nowhere it is given. So what type  of rejection;
1. 112 1 st para lack of written description and enablement
2. no sufficient disclosure to enable of of ordinary skill in art
3. 112 1st para ...undue experimentation.

the choices looked similar. but mainly to do with 112. shall continue in next post.
Title: Re: Recent Patent Bar Question Collective
Post by: Estella Estella on 03-27-07 at 06:15 pm
I believe the titanium ball question is that it is considered

asdfg:

How was the bar exam?
Was the exam harder than the previous bar exam you have taken?
How did you study for the bar exam?
Do you think going through 2001-2003 past exams are enough to past the bar exam?
Title: Re: Recent Patent Bar Question Collective
Post by: Estella Estella on 03-27-07 at 06:18 pm
What I meant above is:

I think it is when the publication is displayed in the museum and not open to the public
Title: Re: Recent Patent Bar Question Collective
Post by: asdfg on 03-27-07 at 10:39 pm
Quote
I believe the titanium ball question is that it is considered

asdfg:

How was the bar exam?
Was the exam harder than the previous bar exam you have taken?
How did you study for the bar exam?
Do you think going through 2001-2003 past exams are enough to past the bar exam?


I am happy to have passed. But the exam was tough.I felt that way because I was expecting to see a lot repeat Questions like  I had it 1 st time.There were very few repeats. SOme of the repeats had choices which were not quite familiar.I had to read them several times to interpret.I had to refer to the MPEP for several questions. The way to search is - you should 1 st know where it is - whether appeals (1800) whatever. go there then give the find term.

Q regarding enablement and written description (I went through MPEP - all the details on written description, undue experimentation etc.It is better to read them and try to understand. It is given clearly in MPEP).

Piecemeal Q:check  my pevious post A, B,C,D, all of the above. exactly repeated.

Step for crossing the road.(Oct AM, 2003) o

Deleting benefit claim then applying RCE again to get benefit claim: Ans. Not allowed/improper. check in appeal section

Amendment entered after final rejection. will be allowed 1 .after 3 months and no reply brief 2) after 4 months, 3) after 5 months

Recording assignment documents : what are the things needed.some more assignement Q were there, dont remember.

Inventor is ill, son is also legally incapitated. who will sign oath.

Inventor in Germany has 3 months to reply to office action. Today is the last day. His attorney is not registered and is with him. If he sends by fax, it is not going to reach him by midnight US time. How will he send it.
Certificate of mailing
German Express mail
attorney will bring with him something like that.

April 2003 Q 8.

Jo and Tommie (dont remember which year)- 2 Q one repeat, another one is new.

PCT application not complete. given 30 days  to submit. when will the filing date be.

will continue
Title: Re: Recent Patent Bar Question Collective
Post by: asdfg on 03-27-07 at 10:49 pm
Application under reexamination. all claims rejected. Applicant want to apply for reissue. can he do this.

some error in claims. after patent issued, decides to apply for reissue. choices were all confusing.something like filing disclaimer, deleting claim one and broadening another etc.had to read so many things under reissue.

Q on submission of patents, printed publications -when this can be done.
protest Q.choices include fraud.
which one is not new application  provisional, RCE, CPA, national stage of PCT.

One DNA Q: could not understand. 102 rejection.something like prior art says it is used for eyesight, application claims used for hearing. another Q too was similar : difference between prior art and application was just the utility.

How to overcome 102 (b) rejection: choices did not mention sec.considerations.

Q regarding which one to use: 102(a), (e) etc.

lancer toothbrush.

102(e) prior art 2 Q - with respect to patent, patent publication.

Design patent for telephone I think. applied in Spain, then in US withing 6 months.Spain patent issues. Now he wants to add some  new feature. choices:file continuation applicn, send it as a new drawing.., file a utility application.

More than 1 Q on new grounds of rejection by board, reopening prosecution.

6 months AFter filing appeal notice, applicant asks for extension of time and sends amendment .. dont remember.

multiple dependent claims : proper, improper.

application and prior art not commonly owned, no common inventor whether rejection is statutory double patenting, provisional double patenting, 102(e) dont remember.

2 Q on CFR 1.131 affidavit. when is it appropriate.
Japanes filing.(did not rescind in 45days so appl. abndoned).
Q on combination/subcombination
Q on combining references - why it is done. not same choices as in previous exams
102(d) rejections- 4 conditions.
national stage application sent by Fax: proper/improper.
Filing reissue: what do you need to send: filing fee, oath etc.
examiner's amendment (I think) all are correct except: Ans was using black ink (should be done with red)
Reissue application should  it show corrections made earlier using brackets, underlining.
something like this
X applies Prov Appl 1 dt
XYZ apply Prov app 2 dt
XYZ apply non Prov 1 dt
XYZ apply non Prov 2 after 1 yr of prov. 1
what type of rejection?

shall write again if I remember.






Title: Re: Recent Patent Bar Question Collective
Post by: am on 03-29-07 at 08:25 am
does anyone know more info. on these questions:

Hairgel
Cleaning soda / Cleaning producct
AGCT Nucleotide sequence
ClockFanLamp
Mario Lepuiex
District Court Judgement
Jo and Tommie
RNA Interference
Title: Re: Recent Patent Bar Question Collective
Post by: am on 04-06-07 at 06:31 am
hairgel hint and much more found in Dump Load Area at PatentBarQuestions(dot com).
Title: Re: Recent Patent Bar Question Collective
Post by: feljdllb on 08-05-07 at 08:12 am
well, here's my contribution...
one question i had was asking what type of reference a U.S. patent, not commonly owned, claiming the same subject matter would be cited as.  the options were...
a. statutory double patenting
b. nonstatutory double patenting
c. provisional double patenting
d. a 102(e) reference
e. all of the above
(i have no idea what the answer is, but i got this question both times i tested)

another question asked which type of application would NOT be considered newly filed.  the options were (i think)...
a. a reissue
b. an RCE (correct answer)
c. a CPA
d. national stage entry
e. can't remember
i found the answer for this one by luck, looking for the answer for another question.
Title: Re: Recent Patent Bar Question Collective
Post by: patentmoose on 08-09-07 at 09:03 am
Anyone have the answer to the questions feljdllb put up? I am taking the test in a few weeks and I am not ure of those answers. thanks.
Title: Re: Recent Patent Bar Question Collective
Post by: jman63 on 08-09-07 at 09:21 am
Quote
Anyone have the answer to the questions feljdllb put up? I am taking the test in a few weeks and I am not ure of those answers. thanks.

i got that first question. its hard for me without seeing/remembering all the facts of the question. i thought it might have said one or two more things. But you can easily eliminate provisional double patenting since its not commonly owned, which also eliminates E (all the above). I remember thinking that it might be 102(e) rej, something about the question sat/non sat double pat didnt seem to fit. i dont know. maybe its satutory tho. I cant remember it enough now to be sure but i think thats what i went with. hopefully someone can remember more. I remember thinking it was easy when i took the test so i must be forgetting something...but i'll say 102(e) for now
Title: Re: Recent Patent Bar Question Collective
Post by: patentmoose on 08-09-07 at 09:26 am
i was thinking the first one was 102(e) as well.. so that's probalby (hopefully :) ) right.. what about the 2nd one.. that is the one that is kinda stumping me...
Title: Re: Recent Patent Bar Question Collective
Post by: patentmoose on 08-09-07 at 09:29 am
Oh  nevermind! I"m stupid!! I see feljdllb put the correct answer for the 2nd one!! SORRY.
Title: Re: Recent Patent Bar Question Collective
Post by: Philip Soo on 08-21-07 at 05:53 pm
With respect to the first question on "what type of reference a U.S. patent, not commonly owned, claiming the same subject matter would be cited as", I don't think any of the answers seem correct.  

It would not be double patenting since it is not commonly owned, and 102(e) should not be cited for references which both disclose and *claim* the same invention.  If the invention is *claimed* by the reference, then it is an interference situation.

See first few words of U.S.C. 102(e):  
(e) the invention was described in - (1) an application for patent, published under section 122(b), by another filed in the United States before the invention by the applicant for patent or (2) a patent granted on an application for patent by another filed in the United States before the invention by the applicant for patent, except that an international application filed under the treaty defined in section 351(a) shall have the effects for the purposes of this subsection of an application filed in the United States only if the international application designated the United States and was published under Article 21(2) of such treaty in the English language.

Any other thoughts?

Phil.
Title: Re: Recent Patent Bar Question Collective
Post by: still_studying on 08-22-07 at 01:50 am
Quote
With respect to the first question on "what type of reference a U.S. patent, not commonly owned, claiming the same subject matter would be cited as", I don't think any of the answers seem correct.  

It would not be double patenting since it is not commonly owned, and 102(e) should not be cited for references which both disclose and *claim* the same invention.  If the invention is *claimed* by the reference, then it is an interference situation.
Phil.

If it's an issued patent, and it claims the same subject matter, then the specification must describe that same subject matter sufficiently so as to enable the claims.  Interference would only be appropriate if the application's filing date was close to but after the issued patent's.  If the filing dates were more than six months apart, the examiner is supposed to issue a rejection and let the applicant explain why he has priority.  See MPEP 2302 (E8R4), particularly general practices 3 and 4.

Was the inventorship the same?  Same inventors, but different assignees, might qualify for a DP rejection -- the person who posted the question only mentioned ownership, not inventorship.
Title: Re: Recent Patent Bar Question Collective
Post by: Isaac on 08-22-07 at 10:00 am
Common ownership is not a consideration in issuing a double patenting rejection.   Not having common ownership does limit the options for responding to a double patenting rejection.
Title: Re: Recent Patent Bar Question Collective
Post by: still_studying on 08-23-07 at 02:22 am
Quote
Common ownership is not a consideration in issuing a double patenting rejection.   Not having common ownership does limit the options for responding to a double patenting rejection.

I'm guessing that the person who posted the question didn't recall all of its details precisely.  No worries, though.  The MPEP answers all. ;D
Title: Re: Recent Patent Bar Question Collective
Post by: BotchedExperiment on 03-06-08 at 11:34 am
bump