Patent Bar Exam Patentability Requirements & Procedures 2 — Questions and Answers
Question 1: Under 35 U.S.C. § 102(a)(1), a disclosure does NOT qualify as prior art if it was made by the inventor and publicly disclosed within how many months before the effective filing date?
- 6 months
- 12 months (Correct answer)
- 18 months
- 24 months
Correct answer: 12 months
Under the AIA, an inventor's own disclosure made within 12 months before the effective filing date is exempt from being prior art under § 102(a)(1).
Question 2: Which doctrine prevents a patent applicant from recapturing claim scope that was surrendered during prosecution through claim amendments?
- Prosecution history estoppel
- Doctrine of equivalents
- File wrapper estoppel
- Both A and C (Correct answer)
Correct answer: Both A and C
Prosecution history estoppel and file wrapper estoppel are two names for the same doctrine preventing recapture of surrendered claim scope.
Question 3: A claimed invention is considered obvious under § 103 when the differences between the claimed invention and the prior art would have been obvious to a person having ordinary skill in the art (PHOSITA) at the time of:
- The patent's issuance date
- The effective filing date of the claimed invention (Correct answer)
- The date of first public use
- The date the application was published
Correct answer: The effective filing date of the claimed invention
Obviousness under § 103 is evaluated from the perspective of a PHOSITA at the time of the effective filing date of the claimed invention.
Question 4: Under MPEP guidelines, which of the following is NOT one of the Graham v. John Deere factors used to assess obviousness?
- The scope and content of the prior art
- Differences between the prior art and the claims
- The commercial success of the invention
- The date of the inventor's conception (Correct answer)
Correct answer: The date of the inventor's conception
The Graham factors are: scope of prior art, differences from prior art, level of ordinary skill, and secondary considerations (like commercial success); conception date is not a Graham factor.
Question 5: A patent application claims a chemical compound. The specification discloses how to make it but provides no data on utility. Under § 101, what type of utility must be demonstrated?
- Theoretical utility based on structural analogy
- Specific, substantial, and credible utility (Correct answer)
- General utility in the field of chemistry
- Commercial utility demonstrated by sales
Correct answer: Specific, substantial, and credible utility
Under § 101, an invention must have specific, substantial, and credible utility — a vague or speculative utility is insufficient.
Question 6: Under 35 U.S.C. § 112(f), a means-plus-function claim element is construed to cover:
- Any structure that performs the recited function
- The corresponding structure in the specification and its equivalents (Correct answer)
- The broadest reasonable interpretation of the function
- Only the literal embodiment described in the claims
Correct answer: The corresponding structure in the specification and its equivalents
Under § 112(f), means-plus-function elements are limited to the corresponding structure disclosed in the specification and its structural equivalents.
Question 7: When an examiner issues a final rejection, an applicant may NOT do which of the following as a matter of right?
- File a Notice of Appeal
- File an RCE (Request for Continued Examination)
- File a continuation application
- File additional claim amendments without a showing that they raise no new issues (Correct answer)
Correct answer: File additional claim amendments without a showing that they raise no new issues
After a final rejection, an applicant cannot freely add amendments; amendments after final are only entered at the examiner's discretion unless they clearly place the application in condition for allowance.
Patent Bar Exam Patentability Requirements & Procedures 2
Under 35 U.S.C. § 102(a)(1), a disclosure does NOT qualify as prior art if it was made by the inventor and publicly disclosed within how many months before the effective filing date?