The specification in your client's patent application has been objected to for lack of enable-
ment. To overcome this objection your client may do any of the following except:
A. traverse the objection and specifically argue how the specification is enabling.
B. traverse the objection and submit an additional drawing to make the specification ena-
bling.
C. file a continuation-in-part application that has an enabling specification.
D. traverse the objection and file an amendment without adding new matter in an attempt
to show enablement.
E. traverse the objection and refer to prior art cited in the specification that would demon-
strate that the specification is enabling to one of ordinary skill.
ANSWER
(B) is the most correct answer.
35 U.S.C. § 113 reads "Drawings submitted after the filing date of the application may not be
used (i) to overcome any insufficiency of the specification due to lack of an enabling disclo-
sure."
Which of the following practices or procedures may be properly employed to overcome a re-
jection properly based only on AIA 35 USC 102(a)(2)?
A. Persuasively arguing that the claims are patentably distinguishable from the prior art.
B. Filing an affidavit or declaration under 37 CFR 1.130 showing that the reference invention
is not by "another."
C. Filing an affidavit or declaration under 37 CFR 1.130 showing common ownership if the
reference is not a U.S. patent that either claims the same invention or claims an obvious var-
iation of the subject matter in the rejected claim(s).
1
,D. (A) and (C).
E. (A) (B) and (C).
ANSWER
E.
(MPEP § 717.02(a) under the heading "B. Requirements to Establish Common Ownership.)
Adams filed Application X on March 1, 2021. Beth filed application Y on May 1, 2021. Neither
application has been published. Applications X and Y are copending and commonly assigned.
Earlier filed application X claims the same invention as claimed in application Y using identi-
cal language. In accordance with the MPEP which of the following actions should the exam-
iner or assignee follow?
A. The claims to the same invention in application Y should be rejected under 35 USC
102(a)(1) as being anticipated by application X.
B. The claims to the same invention in application Y should be rejected under 35 USC
102(a)(2) as being anticipated by application X.
C. The claims to the same invention in application Y should be rejected under 35 USC
102(a)(2) as being provisionally anticipated by application X.
D. The common assignee should file a terminal disclaimer in application Y to avoid any ques-
tion of double patenting.
E. The
ANSWER
(C) is correct. 35 U.S.C. § 102(a)(2); MPEP § 804.
(C) is correct because section I. of MPEP § 706.02(f) states "If (1)...the applications are com-
monly assigned and (2) the effective filing dates are different then a provisional rejection of
the later filed application should be made."
Which of the following is in accordance with the provisions in the MPEP?
2
,A. In order to correct inventorship in a nonprovisional application where the statement of
the lack of deceptive intent is not available from an inventor to be added a petition under 37
CFR 1.181 may be properly filed.
B. If a person A learns that a patent application has been filed by person B without naming A
as coinventor A may file in the USPTO a petition that protests inventorship and directs B to
add A's name as a coinventor to the patent application.
C. If the application is involved in an interference and a petition under 37 CFR 1.48 is filed to
correct inventorship the PTAB will remand the case to the primary examiner for considera-
tion of the petition to ensure that a search of the relevant prior art is performed.
D. When a submission under 37 CFR 1.130 is attempted by the practitioner the acceptance
decision will be made by the Techno
ANSWER
E.
Which of the following is not in accordance with the provisions of the MPEP?
A. If there is a discrepancy between the information submitted in an application data sheet
and the information submitted elsewhere in the application the application data sheet will
control.
B. A patent examiner should object to text of a patent application if it contains an embedded
hyperlink and /or other form of browser-executable code.
C. All patent applicants should use the English units of measurement followed by the equiva-
lent metric units when describing their inventions in the specifications of patent applica-
tions.
D. The paper used for patent applications must have a surface such that amendments may
be written thereon in ink; so-called "Easily Erasable" paper having a special coating so that
erasures can be made more easily may not provide a permanent copy as is required.
E. The following documents may be submitted to the Office
ANSWER
C.
according to MPEP § 608.01
3
, Which of the following practices or procedures may be properly employed to overcome a
potential rejection properly based on 35 USC 102(a)?
A. Perfecting a claim to priority under 35 USC 119(a)-(d) based on a foreign application hav-
ing a foreign priority filing date that antedates the reference.
B. Filing a declaration under 37 CFR 1.131 showing that the cited prior art antedates the in-
vention.
C. Filing a declaration under 37 CFR 1.132 showing that the reference invention is by "oth-
ers."
D. Perfecting priority under 35 USC 119(e) or 120 by in part amending the declaration of the
application to contain a specific reference to a prior application having a filing date prior to
the reference.
E. (A) (B) (C) and (D).
ANSWER
The procedures in the MPEP do not require an applicant claiming foreign priority in a
nonprovisional utility application to:
A. submit the certified copy of the priority document within the later of four months from
the U.S. filing date or within 16 months from the priority date.
B. identify the foreign application for which priority is being claimed as well as any foreign
application for the same subject matter having a filing date before that of the application for
which priority is being claimed.
C. file the claim in the application.
D. have the same inventive entity listed in the foreign application as in the U.S. application in
which the priority claim has been filed.
E. identify the intellectual property authority or country in or for which the foreign applica-
tion was filed.
ANSWER
4
ment. To overcome this objection your client may do any of the following except:
A. traverse the objection and specifically argue how the specification is enabling.
B. traverse the objection and submit an additional drawing to make the specification ena-
bling.
C. file a continuation-in-part application that has an enabling specification.
D. traverse the objection and file an amendment without adding new matter in an attempt
to show enablement.
E. traverse the objection and refer to prior art cited in the specification that would demon-
strate that the specification is enabling to one of ordinary skill.
ANSWER
(B) is the most correct answer.
35 U.S.C. § 113 reads "Drawings submitted after the filing date of the application may not be
used (i) to overcome any insufficiency of the specification due to lack of an enabling disclo-
sure."
Which of the following practices or procedures may be properly employed to overcome a re-
jection properly based only on AIA 35 USC 102(a)(2)?
A. Persuasively arguing that the claims are patentably distinguishable from the prior art.
B. Filing an affidavit or declaration under 37 CFR 1.130 showing that the reference invention
is not by "another."
C. Filing an affidavit or declaration under 37 CFR 1.130 showing common ownership if the
reference is not a U.S. patent that either claims the same invention or claims an obvious var-
iation of the subject matter in the rejected claim(s).
1
,D. (A) and (C).
E. (A) (B) and (C).
ANSWER
E.
(MPEP § 717.02(a) under the heading "B. Requirements to Establish Common Ownership.)
Adams filed Application X on March 1, 2021. Beth filed application Y on May 1, 2021. Neither
application has been published. Applications X and Y are copending and commonly assigned.
Earlier filed application X claims the same invention as claimed in application Y using identi-
cal language. In accordance with the MPEP which of the following actions should the exam-
iner or assignee follow?
A. The claims to the same invention in application Y should be rejected under 35 USC
102(a)(1) as being anticipated by application X.
B. The claims to the same invention in application Y should be rejected under 35 USC
102(a)(2) as being anticipated by application X.
C. The claims to the same invention in application Y should be rejected under 35 USC
102(a)(2) as being provisionally anticipated by application X.
D. The common assignee should file a terminal disclaimer in application Y to avoid any ques-
tion of double patenting.
E. The
ANSWER
(C) is correct. 35 U.S.C. § 102(a)(2); MPEP § 804.
(C) is correct because section I. of MPEP § 706.02(f) states "If (1)...the applications are com-
monly assigned and (2) the effective filing dates are different then a provisional rejection of
the later filed application should be made."
Which of the following is in accordance with the provisions in the MPEP?
2
,A. In order to correct inventorship in a nonprovisional application where the statement of
the lack of deceptive intent is not available from an inventor to be added a petition under 37
CFR 1.181 may be properly filed.
B. If a person A learns that a patent application has been filed by person B without naming A
as coinventor A may file in the USPTO a petition that protests inventorship and directs B to
add A's name as a coinventor to the patent application.
C. If the application is involved in an interference and a petition under 37 CFR 1.48 is filed to
correct inventorship the PTAB will remand the case to the primary examiner for considera-
tion of the petition to ensure that a search of the relevant prior art is performed.
D. When a submission under 37 CFR 1.130 is attempted by the practitioner the acceptance
decision will be made by the Techno
ANSWER
E.
Which of the following is not in accordance with the provisions of the MPEP?
A. If there is a discrepancy between the information submitted in an application data sheet
and the information submitted elsewhere in the application the application data sheet will
control.
B. A patent examiner should object to text of a patent application if it contains an embedded
hyperlink and /or other form of browser-executable code.
C. All patent applicants should use the English units of measurement followed by the equiva-
lent metric units when describing their inventions in the specifications of patent applica-
tions.
D. The paper used for patent applications must have a surface such that amendments may
be written thereon in ink; so-called "Easily Erasable" paper having a special coating so that
erasures can be made more easily may not provide a permanent copy as is required.
E. The following documents may be submitted to the Office
ANSWER
C.
according to MPEP § 608.01
3
, Which of the following practices or procedures may be properly employed to overcome a
potential rejection properly based on 35 USC 102(a)?
A. Perfecting a claim to priority under 35 USC 119(a)-(d) based on a foreign application hav-
ing a foreign priority filing date that antedates the reference.
B. Filing a declaration under 37 CFR 1.131 showing that the cited prior art antedates the in-
vention.
C. Filing a declaration under 37 CFR 1.132 showing that the reference invention is by "oth-
ers."
D. Perfecting priority under 35 USC 119(e) or 120 by in part amending the declaration of the
application to contain a specific reference to a prior application having a filing date prior to
the reference.
E. (A) (B) (C) and (D).
ANSWER
The procedures in the MPEP do not require an applicant claiming foreign priority in a
nonprovisional utility application to:
A. submit the certified copy of the priority document within the later of four months from
the U.S. filing date or within 16 months from the priority date.
B. identify the foreign application for which priority is being claimed as well as any foreign
application for the same subject matter having a filing date before that of the application for
which priority is being claimed.
C. file the claim in the application.
D. have the same inventive entity listed in the foreign application as in the U.S. application in
which the priority claim has been filed.
E. identify the intellectual property authority or country in or for which the foreign applica-
tion was filed.
ANSWER
4
