Patent Bar Exam Patentability Requirements & Procedures 4

Question 1

Under the USPTO's broadest reasonable interpretation (BRI) standard used during examination, a claim term is given:

Accepted Answer

Its ordinary and customary meaning as understood by a PHOSITA in light of the specification

Answer

BRI means the broadest reasonable interpretation consistent with the specification as understood by a PHOSITA — not the absolute broadest meaning.

Question 2

Under 35 U.S.C. § 102(b)(1)(B), a third party's disclosure does NOT count as prior art if:

Accepted Answer

The inventor had previously publicly disclosed the subject matter before the third party's disclosure

Answer

Under the grace period exception in § 102(b)(1)(B), a third party's disclosure is not prior art if it came after the inventor's own prior public disclosure of the subject matter.

Question 3

What is the purpose of a 'terminal disclaimer' filed during patent prosecution?

Accepted Answer

To overcome a double patenting rejection by tying the patent's term to a related patent

Answer

A terminal disclaimer overcomes a nonstatutory (obviousness-type) double patenting rejection by disclaiming any patent term beyond the expiration of a co-owned patent.

Question 4

Under MPEP § 2173, which of the following renders a claim indefinite under 35 U.S.C. § 112(b)?

Accepted Answer

Use of relative terms like 'substantially' without any standard in the specification

Answer

Relative terms like 'substantially' may render a claim indefinite if the specification provides no standard by which to measure them.

Question 5

In an inter partes review (IPR) proceeding, which grounds may be raised to challenge patent validity?

Accepted Answer

Only § 102 and § 103 based on patents or printed publications

Answer

IPR is limited to challenges under § 102 or § 103 based only on prior art consisting of patents or printed publications.

Patent Bar Exam Practice Test

Patent Bar Exam Practice Test

Patent Bar Exam Patentability Requirements & Procedures 4