1. In accordance with the patent laws, rules and procedures as related in the MPEP, for a
nonprovisional application to receive a filing date in the USPTO under 37 CFR 1.53(b), all of
the following must be filed except:
(A) The basic filing fee required by 37 CFR 1.16(a).
(B) A specification as prescribed by the first paragraph of 35 USC 112.
(C) A description pursuant to 37 CFR 1.71.
(D) At least one claim pursuant to 37 CFR 1.75.
(E) Any drawing required by 37 CFR 1.81(a).
ANSWER
ANSWER: (A) is the most correct answer. 35 U.S.C. § 111; 37 CFR § 1.53; MPEP § 601.01. As
provided in MPEP § 601.01(a), the filing fee for an application filed under 37 CFR 1.53(b) can
be submitted after the filing date. (B), (C), (D) and (E) are incorrect. 37 CFR § 53(b); MPEP §
601.01. 37 CFR § 1.53(b) provides that a filing date is granted on the date on which a specifi-
cation as prescribed by 35 U.S.C. § 112 containing a description pursuant to 37 CFR § 1.71
and at least one claim pursuant to 37 CFR § 1.75, and any drawing required by 37 CFR §
1.81(a) are filed in the Office. Thus, (B), (C), (D) and (E) are needed to obtain a filing date.
2. A U.S. patent was granted on May 8, 2001. The sole independent claim in the patent is di-
rected to a combination of elements ABCD. A registered practitioner filed a reissue applica-
tion on April 11, 2003 to narrow sole independent claim. In the reissue application, the inde-
pendent claim is amended to a combination to elements ABCDE. The reissue application is
accompanied by a transmittal letter stating that the application was filed to narrow a claim,
that
all inventors could not be located to sign the reissue oath or declaration at that time, and
that a declaration would be submitted in due course. No other amendments to the claims
were filed on April 11, 2003. On May 8, 2003, a declaration signed by all inventors is filed de-
claring that they had claimed less than they had a right to claim, and that the error arose
without deceptive intent. The inventors also filed on May 8, 2003 a preliminary amendment
deleting e
1
,ANSWER
ANSWER: (D) is the most correct answer. MPEP §§ 1403 and 1412.03, under the heading
"When A Broadened Claim Can Be Presented." A broadening reissue claim must be filed
within the two years from the grant of the original patent. (D) is the most correct and the ex-
aminer should examine the case as any other application and address appropriate issues
concerning reissue examination. See Switzer v. Sockman, 333 F.2d 935, 142 USPQ 226 (CCPA
1964) (a similar rule in interferences). Since applicant filed the amendment by Express Mail,
the amendment is treated as being filed with the USPTO on the date of deposit with the US
Postal Service. Therefore, (A), (B) and (C) are incorrect answers. A reissue application can be
granted a filing date without an oath or declaration, or without the filing fee being present.
See 37 CFR § 1.53(f). Applicant will be given a period of time to provide the missing parts
and to pay the surcharge under 37 CFR § 1.16(e). See MPEP § 1410.01. Choice (E) is not cor-
rect since the mere deletion of an element of a claim does not automatically raise a ground
of rejection based on the recapture doctrine. See MPEP § 1412.02.
3. An applicant submits a product-by-process claim to a shoe made by a series of specific
process steps. The claim is rejected over a publication under 35 USC 102(b) and 103. Assume
for this question that the publication reasonably appears to show the identical shoe, but de-
scribes a different method of making the shoe. What is the proper procedure to try to over-
come the rejection in accordance with the patent laws, rules and the procedures as related
in the MPEP?
(A) Argue that all limitations in the claim must be given weight and that rejection must be
withdrawn because the reference does not disclose the claimed method of making steps.
(B) Argue that the examiner has not carried the burden of proving that the shoes are identi-
cal.
(C) Present evidence why the steps of the claimed process produce a patentably different
structure.
(D) Submit a declaration under 37 CFR 1.132 by the author of the publication describing
ANSWER
ANSWER: (C) is correct. MPEP §2113, under the heading "Once A Product Appearing To Be
Substantially Identical Is Found And A 35 U.S.C. 102/103 Rejection Made, The Burden Shifts
To The Applicant To Show An Unobvious Difference," states "[o]nce the examiner provides a
rationale tending to show that the claimed product appears to be the same or similar to that
of the prior art, although produced by a different process, the burden shifts to applicant to
come forward with evidence establishing an unobvious difference between the claimed
product and the prior art product. In re Marosi, 710 F.2d 798, 802, 218 USPQ 289, 292 (Fed.
2
,Cir. 1983)." (A) is incorrect because the patentability of product-by-process claims is based
on the product itself. See In re Thorpe, 227 USPQ 964, 966 (Fed. Cir. 1985). Where the end
products are the same, the process of making limitations do not have to be given weight in
ex parte examination. See Atlantic Thermoplastics Co. v. Faytex Corp., 23 USPQ2d 1481,
1490-91 (Fed. Cir. 1992) (product-by-process claims are treated differently for patentability
purposes during ex parte examination in the USPTO than for infringement and validity pur-
poses during litigation). (B) is incorrect because "[o]nce the Examiner provides a rationale
tending to show that the claimed product appears to be the same or similar to that of the
prior art, although produced by a different process, the burden shifts to applicant to come
forward with evidence establishing an unobvious difference between the claimed product
and the prior art product." MPEP § 2113. "To the extent that the process limitations distin-
guish the products over the prior art, they must be given the same consideration as tradi-
tional product characteristics." In re Hallman, 210 USPQ 609, 611 (CCPA 1981). Thus, (C) is
correct because applicant can show by fac
4. A registered practitioner files an international application submission that includes a de-
scription, claims and drawings in the United States Receiving Office (RO/US) on Wednesday,
January 8, 2003. The submission did not include the required request, international and
search fees, or the designation of a PCT contracting State. The RO/US mails an "Invitation to
Correct the Purported International Application," dated January 10, 2003, to the practitioner
indicating that the designation of at least one Contracting State, as required by PCT Article
11(1)(iii)(b), was not included. A one-month period for response is set in the Invitation. On
Monday, February 10, 2003, the practitioner submits by facsimile a designation sheet of the
Request Form designating every available Contracting State, and authorization to charge all
required fees. In accordance with the patent laws, rules and procedures as related in the
MPEP, wi
ANSWER
ANSWER: (C) is the correct answer. 37 CFR §§ 1.6(d)(3) and 1.8(a)(2)(i)(d); MPEP § 502 (re-
producing Rule 1.6(d)(3)); MPEP § 512 (reproducing Rule 1.8(a)(2)(i)(d)); and MPEP
§1817.01. As stated in MPEP § 1817.01, "[a]ll designations must be made in the interna-
tional application on filing; none may be added later." The application will not be accorded
an international filing date since the practitioner has tried to cure the failure to designate at
least one contracting State by filing a paper using facsimile which is not permitted according
to 37 CFR §§ 1.6(d)(3) and 1.8(a)(2)(i)(d). (A) is wrong because applicant has failed to comply
with Article 11(1)(iii)(b) on such date. See MPEP § 1810 (reproducing PCT Article 11(1)(iii)(b).
(B) is wrong because according to 37 CFR 1.6(d)(3) and 37 CFR 1.8 (a)(2)(i)(d), applicant can-
not file an international application by facsimile. See MPEP § 502 (reproducing 37 CFR §
1.6(d)(3)); MPEP § 512 (reproducing 37 CFR § 1.8(a)(2)(i)(d)). Since no designations were in-
3
, cluded on filing, the application papers cannot be accorded an international filing date. See
PCT Article 11(1)(iii)(b). Applicant cannot correct this by filing the designation sheet by fac-
simile. See MPEP § 502 (reproducing Rule 1.6(d)(3)); MPEP § 512 (reproducing Rule
1.8(a)(2)(i)(d)). (D) is wrong because according to PCT Rule 80.5, when a response is due on
a day where the receiving Office is not open for business, applicant has until the next busi-
ness day. See Appendix T of the MPEP. (E) is incorrect because (C) is correct.
5. In accordance with the patent laws, rules and procedures as related in the MPEP, satisfac-
tion of the written description requirement may not be demonstrated by:
(A) including in the specification a description of an actual reduction to practice.
(B) describing the claimed invention with all of its limitations using such descriptive means
as words, structures, figures, diagrams, and formulas that fully set forth the
claimed invention.
(C) describing during prosecution of a new or amended claim an element or limitation
(omitted from the original disclosure in the specification) as an essential or critical
feature of the invention.
(D) including in the specification a description of distinguishing identifying
characteristics sufficient to show that the applicant was in possession of the
claimed invention at the time of filing.
(E) including in the patent application disclosure of drawings or structural chemical
formu
ANSWER
ANSWER: (C) is the most correct answer. MPEP §2163, under the heading "GENERAL PRINCI-
PLES GOVERNING COMPLIANCE WITH THE "WRITTEN DESCRIPTION" REQUIREMENT FOR AP-
PLICATIONS," and subheading "New or Amended Claims," states "A claim that omits an ele-
ment which applicant describes as an essential or critical feature of the invention originally
disclosed does not comply with the written description requirement. See Gentry Gallery, 134
F.3d at 1480, 45 USPQ2d at 1503; In re Sus, 306 F.2d 494, 504, 134 USPQ 301, 309 (CCPA
1962) ('[O]ne skilled in this art would not be taught by the written description of the inven-
tion in the specification that any 'aryl or substituted aryl radical' would be suitable for the
purposes of the invention but rather that only certain aryl radicals and certain specifically
substituted aryl radicals [i.e., aryl azides] would be suitable for such purposes.')." (A), (B), (D)
and (E) are incorrect. Each lists a proper way to demonstrate satisfaction of the written de-
4
nonprovisional application to receive a filing date in the USPTO under 37 CFR 1.53(b), all of
the following must be filed except:
(A) The basic filing fee required by 37 CFR 1.16(a).
(B) A specification as prescribed by the first paragraph of 35 USC 112.
(C) A description pursuant to 37 CFR 1.71.
(D) At least one claim pursuant to 37 CFR 1.75.
(E) Any drawing required by 37 CFR 1.81(a).
ANSWER
ANSWER: (A) is the most correct answer. 35 U.S.C. § 111; 37 CFR § 1.53; MPEP § 601.01. As
provided in MPEP § 601.01(a), the filing fee for an application filed under 37 CFR 1.53(b) can
be submitted after the filing date. (B), (C), (D) and (E) are incorrect. 37 CFR § 53(b); MPEP §
601.01. 37 CFR § 1.53(b) provides that a filing date is granted on the date on which a specifi-
cation as prescribed by 35 U.S.C. § 112 containing a description pursuant to 37 CFR § 1.71
and at least one claim pursuant to 37 CFR § 1.75, and any drawing required by 37 CFR §
1.81(a) are filed in the Office. Thus, (B), (C), (D) and (E) are needed to obtain a filing date.
2. A U.S. patent was granted on May 8, 2001. The sole independent claim in the patent is di-
rected to a combination of elements ABCD. A registered practitioner filed a reissue applica-
tion on April 11, 2003 to narrow sole independent claim. In the reissue application, the inde-
pendent claim is amended to a combination to elements ABCDE. The reissue application is
accompanied by a transmittal letter stating that the application was filed to narrow a claim,
that
all inventors could not be located to sign the reissue oath or declaration at that time, and
that a declaration would be submitted in due course. No other amendments to the claims
were filed on April 11, 2003. On May 8, 2003, a declaration signed by all inventors is filed de-
claring that they had claimed less than they had a right to claim, and that the error arose
without deceptive intent. The inventors also filed on May 8, 2003 a preliminary amendment
deleting e
1
,ANSWER
ANSWER: (D) is the most correct answer. MPEP §§ 1403 and 1412.03, under the heading
"When A Broadened Claim Can Be Presented." A broadening reissue claim must be filed
within the two years from the grant of the original patent. (D) is the most correct and the ex-
aminer should examine the case as any other application and address appropriate issues
concerning reissue examination. See Switzer v. Sockman, 333 F.2d 935, 142 USPQ 226 (CCPA
1964) (a similar rule in interferences). Since applicant filed the amendment by Express Mail,
the amendment is treated as being filed with the USPTO on the date of deposit with the US
Postal Service. Therefore, (A), (B) and (C) are incorrect answers. A reissue application can be
granted a filing date without an oath or declaration, or without the filing fee being present.
See 37 CFR § 1.53(f). Applicant will be given a period of time to provide the missing parts
and to pay the surcharge under 37 CFR § 1.16(e). See MPEP § 1410.01. Choice (E) is not cor-
rect since the mere deletion of an element of a claim does not automatically raise a ground
of rejection based on the recapture doctrine. See MPEP § 1412.02.
3. An applicant submits a product-by-process claim to a shoe made by a series of specific
process steps. The claim is rejected over a publication under 35 USC 102(b) and 103. Assume
for this question that the publication reasonably appears to show the identical shoe, but de-
scribes a different method of making the shoe. What is the proper procedure to try to over-
come the rejection in accordance with the patent laws, rules and the procedures as related
in the MPEP?
(A) Argue that all limitations in the claim must be given weight and that rejection must be
withdrawn because the reference does not disclose the claimed method of making steps.
(B) Argue that the examiner has not carried the burden of proving that the shoes are identi-
cal.
(C) Present evidence why the steps of the claimed process produce a patentably different
structure.
(D) Submit a declaration under 37 CFR 1.132 by the author of the publication describing
ANSWER
ANSWER: (C) is correct. MPEP §2113, under the heading "Once A Product Appearing To Be
Substantially Identical Is Found And A 35 U.S.C. 102/103 Rejection Made, The Burden Shifts
To The Applicant To Show An Unobvious Difference," states "[o]nce the examiner provides a
rationale tending to show that the claimed product appears to be the same or similar to that
of the prior art, although produced by a different process, the burden shifts to applicant to
come forward with evidence establishing an unobvious difference between the claimed
product and the prior art product. In re Marosi, 710 F.2d 798, 802, 218 USPQ 289, 292 (Fed.
2
,Cir. 1983)." (A) is incorrect because the patentability of product-by-process claims is based
on the product itself. See In re Thorpe, 227 USPQ 964, 966 (Fed. Cir. 1985). Where the end
products are the same, the process of making limitations do not have to be given weight in
ex parte examination. See Atlantic Thermoplastics Co. v. Faytex Corp., 23 USPQ2d 1481,
1490-91 (Fed. Cir. 1992) (product-by-process claims are treated differently for patentability
purposes during ex parte examination in the USPTO than for infringement and validity pur-
poses during litigation). (B) is incorrect because "[o]nce the Examiner provides a rationale
tending to show that the claimed product appears to be the same or similar to that of the
prior art, although produced by a different process, the burden shifts to applicant to come
forward with evidence establishing an unobvious difference between the claimed product
and the prior art product." MPEP § 2113. "To the extent that the process limitations distin-
guish the products over the prior art, they must be given the same consideration as tradi-
tional product characteristics." In re Hallman, 210 USPQ 609, 611 (CCPA 1981). Thus, (C) is
correct because applicant can show by fac
4. A registered practitioner files an international application submission that includes a de-
scription, claims and drawings in the United States Receiving Office (RO/US) on Wednesday,
January 8, 2003. The submission did not include the required request, international and
search fees, or the designation of a PCT contracting State. The RO/US mails an "Invitation to
Correct the Purported International Application," dated January 10, 2003, to the practitioner
indicating that the designation of at least one Contracting State, as required by PCT Article
11(1)(iii)(b), was not included. A one-month period for response is set in the Invitation. On
Monday, February 10, 2003, the practitioner submits by facsimile a designation sheet of the
Request Form designating every available Contracting State, and authorization to charge all
required fees. In accordance with the patent laws, rules and procedures as related in the
MPEP, wi
ANSWER
ANSWER: (C) is the correct answer. 37 CFR §§ 1.6(d)(3) and 1.8(a)(2)(i)(d); MPEP § 502 (re-
producing Rule 1.6(d)(3)); MPEP § 512 (reproducing Rule 1.8(a)(2)(i)(d)); and MPEP
§1817.01. As stated in MPEP § 1817.01, "[a]ll designations must be made in the interna-
tional application on filing; none may be added later." The application will not be accorded
an international filing date since the practitioner has tried to cure the failure to designate at
least one contracting State by filing a paper using facsimile which is not permitted according
to 37 CFR §§ 1.6(d)(3) and 1.8(a)(2)(i)(d). (A) is wrong because applicant has failed to comply
with Article 11(1)(iii)(b) on such date. See MPEP § 1810 (reproducing PCT Article 11(1)(iii)(b).
(B) is wrong because according to 37 CFR 1.6(d)(3) and 37 CFR 1.8 (a)(2)(i)(d), applicant can-
not file an international application by facsimile. See MPEP § 502 (reproducing 37 CFR §
1.6(d)(3)); MPEP § 512 (reproducing 37 CFR § 1.8(a)(2)(i)(d)). Since no designations were in-
3
, cluded on filing, the application papers cannot be accorded an international filing date. See
PCT Article 11(1)(iii)(b). Applicant cannot correct this by filing the designation sheet by fac-
simile. See MPEP § 502 (reproducing Rule 1.6(d)(3)); MPEP § 512 (reproducing Rule
1.8(a)(2)(i)(d)). (D) is wrong because according to PCT Rule 80.5, when a response is due on
a day where the receiving Office is not open for business, applicant has until the next busi-
ness day. See Appendix T of the MPEP. (E) is incorrect because (C) is correct.
5. In accordance with the patent laws, rules and procedures as related in the MPEP, satisfac-
tion of the written description requirement may not be demonstrated by:
(A) including in the specification a description of an actual reduction to practice.
(B) describing the claimed invention with all of its limitations using such descriptive means
as words, structures, figures, diagrams, and formulas that fully set forth the
claimed invention.
(C) describing during prosecution of a new or amended claim an element or limitation
(omitted from the original disclosure in the specification) as an essential or critical
feature of the invention.
(D) including in the specification a description of distinguishing identifying
characteristics sufficient to show that the applicant was in possession of the
claimed invention at the time of filing.
(E) including in the patent application disclosure of drawings or structural chemical
formu
ANSWER
ANSWER: (C) is the most correct answer. MPEP §2163, under the heading "GENERAL PRINCI-
PLES GOVERNING COMPLIANCE WITH THE "WRITTEN DESCRIPTION" REQUIREMENT FOR AP-
PLICATIONS," and subheading "New or Amended Claims," states "A claim that omits an ele-
ment which applicant describes as an essential or critical feature of the invention originally
disclosed does not comply with the written description requirement. See Gentry Gallery, 134
F.3d at 1480, 45 USPQ2d at 1503; In re Sus, 306 F.2d 494, 504, 134 USPQ 301, 309 (CCPA
1962) ('[O]ne skilled in this art would not be taught by the written description of the inven-
tion in the specification that any 'aryl or substituted aryl radical' would be suitable for the
purposes of the invention but rather that only certain aryl radicals and certain specifically
substituted aryl radicals [i.e., aryl azides] would be suitable for such purposes.')." (A), (B), (D)
and (E) are incorrect. Each lists a proper way to demonstrate satisfaction of the written de-
4
