Patent Bar Practice Exam Questions with Correct
Answers
Which of the following practices or procedures may be properly
employed to overcome a rejection 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 variation of the subject matter
in the rejected claim(s).
D. (A) and (C).
E. (A) (B) and (C). Correct Answer-E.
(MPEP § 717.02(a) under the heading "B. Requirements to Establish
Common Ownership.)
The specification in your client's patent application has been objected to
for lack of enablement. 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 enabling.
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 demonstrate that the specification is enabling to one of
ordinary skill. Correct 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 disclosure."
Which of the following is in accordance with the provisions in the
MPEP?
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 consideration 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 Correct
Answer-E.
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 identical
language. In accordance with the MPEP which of the following actions
should the examiner 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 question of double patenting.
E. The Correct 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 commonly 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 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 having 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 invention.
C. Filing a declaration under 37 CFR 1.132 showing that the reference
invention is by "others."
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). Correct Answer-
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.
Answers
Which of the following practices or procedures may be properly
employed to overcome a rejection 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 variation of the subject matter
in the rejected claim(s).
D. (A) and (C).
E. (A) (B) and (C). Correct Answer-E.
(MPEP § 717.02(a) under the heading "B. Requirements to Establish
Common Ownership.)
The specification in your client's patent application has been objected to
for lack of enablement. 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 enabling.
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 demonstrate that the specification is enabling to one of
ordinary skill. Correct 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 disclosure."
Which of the following is in accordance with the provisions in the
MPEP?
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 consideration 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 Correct
Answer-E.
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 identical
language. In accordance with the MPEP which of the following actions
should the examiner 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 question of double patenting.
E. The Correct 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 commonly 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 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 having 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 invention.
C. Filing a declaration under 37 CFR 1.132 showing that the reference
invention is by "others."
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). Correct Answer-
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.
