Patent Bar Exam Patent Prosecution 2

Question 1

An applicant receives a final rejection. Which of the following is NOT a proper response to a final rejection under 37 C.F.R. § 1.116?

Accepted Answer

Filing a new continuation application with entirely new claims

Answer

Filing a new continuation application is a separate proceeding, not a proper response to a final rejection — the other options are all recognized responses under 37 C.F.R. § 1.116 or related rules.

Question 2

Under 37 C.F.R. § 1.136(a), how long may an applicant extend the time to respond to an Office Action, and what is the maximum total period allowed?

Accepted Answer

Up to 5 months, for a maximum of 6 months total

Answer

Under 37 C.F.R. § 1.136(a), an applicant may obtain extensions of up to 5 months, making the maximum response period 6 months from the mailing date of the Office Action.

Question 3

Which doctrine requires a patent applicant to be bound by arguments and claim amendments made during prosecution to distinguish prior art, even after the patent issues?

Accepted Answer

Prosecution history estoppel

Answer

Prosecution history estoppel prevents a patentee from recapturing claim scope surrendered during prosecution through narrowing amendments or arguments distinguishing prior art.

Question 4

A patent examiner issues a non-final Office Action rejecting claims 1-5 under 35 U.S.C. § 103. To traverse the rejection, applicant amends claim 1 to add a new limitation. What must applicant also do to preserve the right to appeal the rejections of claims 2-5?

Accepted Answer

Specifically argue the patentability of claims 2-5 in the remarks section

Answer

Applicant must specifically argue the patentability of each claim not amended; otherwise the examiner may maintain the rejection for claims 2-5 without separate consideration.

Question 5

Under 37 C.F.R. § 1.131, an applicant may antedate (swear behind) a prior art reference by submitting a declaration showing conception and reduction to practice. Which reference type CANNOT be sworn behind under Rule 131?

Accepted Answer

A patent with a filing date more than one year before applicant's filing date

Answer

A reference that predates the applicant's filing date by more than one year is a statutory bar under pre-AIA § 102(b) and cannot be overcome by a Rule 131 declaration.

Patent Bar Exam Practice Test

Patent Bar Exam Practice Test

Patent Bar Exam Patent Prosecution 2