Patent Bar Exam Prior Art Search 3 — Questions and Answers
Question 1: Under pre-AIA 35 U.S.C. § 102(b), a patent is barred if the invention was 'on sale' in the United States more than one year before the filing date. The Supreme Court's Pfaff v. Wells Electronics holding established that the on-sale bar applies when:
- The product was sold and all sales were within the United States only
- The invention was the subject of a commercial offer for sale and was ready for patenting (Correct answer)
- A purchase order was received and the product was physically shipped
- The invention was licensed to a third party for commercial manufacture
Correct answer: The invention was the subject of a commercial offer for sale and was ready for patenting
In Pfaff v. Wells Electronics, the Supreme Court held the on-sale bar requires (1) a commercial offer for sale and (2) that the invention was ready for patenting (either reduced to practice or depicted in drawings enabling a POSITA).
Question 2: An applicant files a PCT application designating the U.S. on March 1, 2023, claiming priority to a provisional filed March 1, 2022. A prior art article was published February 15, 2023. For AIA § 102 purposes, what is the effective filing date for determining if the article is prior art?
- March 1, 2023, the PCT filing date
- March 1, 2022, the provisional filing date, if the provisional adequately supports the claims (Correct answer)
- February 15, 2023, the date the article was published
- The date the national stage is entered in the U.S.
Correct answer: March 1, 2022, the provisional filing date, if the provisional adequately supports the claims
Under AIA § 100(i), the effective filing date is the filing date of the earliest application whose disclosure supports the claims, which here would be the provisional if it adequately supports the claims.
Question 3: A prior art search uncovers a doctoral thesis deposited in a university library but never formally published. Under MPEP § 2128, when does such a thesis become a 'printed publication'?
- Only when the thesis is published in a peer-reviewed journal
- When it is cataloged and accessible to the public in the library (Correct answer)
- When the doctoral candidate successfully defends the thesis
- When the thesis is submitted to ProQuest for indexing
Correct answer: When it is cataloged and accessible to the public in the library
A thesis becomes a printed publication when it is cataloged and accessible to interested members of the public, which can occur when shelved in a publicly accessible library.
Question 4: A practitioner is using the Cooperative Patent Classification (CPC) system to search for prior art. CPC subclass H01L covers semiconductor devices. A search within H01L returns too many results. What is the best next step?
- Abandon CPC searching and switch to keyword-only search
- Narrow the search using more specific CPC subgroups (e.g., H01L 29/66) combined with relevant keywords (Correct answer)
- Expand the search to the entire H01 section
- File an IDS listing all H01L references without further review
Correct answer: Narrow the search using more specific CPC subgroups (e.g., H01L 29/66) combined with relevant keywords
CPC is hierarchical; moving from broad subclasses to specific subgroups, combined with keywords, narrows results to the most relevant prior art.
Question 5: Under AIA § 102(b)(2)(C), the § 102(a)(2) prior art exception applies to a commonly owned application when:
- Both applications are filed on the same day by different inventors
- The subject matter disclosed in the earlier application and the claimed invention were commonly owned at the time the later application was effectively filed (Correct answer)
- The two applications share at least one common inventor
- The applications are filed within one year of each other
Correct answer: The subject matter disclosed in the earlier application and the claimed invention were commonly owned at the time the later application was effectively filed
§ 102(b)(2)(C) excepts § 102(a)(2) prior art when the subject matter and the claimed invention were commonly owned (or subject to a joint research agreement) as of the effective filing date of the later application.
Question 6: An examiner combines two references to reject a claim under § 103. The applicant argues the references cannot be combined because doing so would 'change the principle of operation' of the primary reference. This argument is relevant to which KSR/Graham factor?
- The scope and content of the prior art
- Whether there is a reason to combine the references with a reasonable expectation of success (Correct answer)
- The level of ordinary skill in the art
- The differences between the claimed invention and the prior art
Correct answer: Whether there is a reason to combine the references with a reasonable expectation of success
An argument that combination would change the principle of operation of the primary reference attacks whether a POSITA would have a reason to combine, since such a modification would undermine the reference's intended purpose.
Question 7: Which of the following is NOT a recognized prior art category under AIA 35 U.S.C. § 102(a)(1)?
- A patent granted in a foreign country before the effective filing date
- An invention known only to the inventor and kept as a trade secret (Correct answer)
- A printed publication describing the invention before the effective filing date
- A public use of the invention before the effective filing date
Correct answer: An invention known only to the inventor and kept as a trade secret
Under AIA § 102(a)(1), prior art must be publicly accessible; an invention kept as a trade secret by the inventor is not publicly available and therefore not prior art under § 102(a)(1).
Patent Bar Exam Prior Art Search 3
Under pre-AIA 35 U.S.C. § 102(b), a patent is barred if the invention was 'on sale' in the United States more than one year before the filing date.
The Supreme Court's Pfaff v.
Wells Electronics holding established that the on-sale bar applies when: