Patent Bar Exam Prior Art Search 5 — Questions and Answers
Question 1: Under MPEP § 904, an examiner must conduct a thorough search of prior art. If an examiner finds a reference that anticipates one independent claim but not another, what is the proper course of action?
- Allow the application because not all claims are anticipated
- Reject the anticipated claim under § 102 and separately address the remaining claims on their merits (Correct answer)
- Reject all claims under § 102 based on the one anticipated claim
- Issue a restriction requirement before addressing the prior art
Correct answer: Reject the anticipated claim under § 102 and separately address the remaining claims on their merits
Each claim must be evaluated independently; an anticipatory reference results in a § 102 rejection only of the claims it anticipates, while remaining claims are evaluated separately.
Question 2: A practitioner finds a prior art reference disclosing a range of 10–50% concentration, while the client's claim recites exactly 35%. Under MPEP § 2131.03, the prior art range anticipates the claimed value if:
- The prior art range overlaps with the claimed value
- The claimed value falls within the prior art range and there is no showing of criticality for the specific value (Correct answer)
- The prior art range is broader than the claimed range
- The prior art range was disclosed in a U.S. patent, not a foreign publication
Correct answer: The claimed value falls within the prior art range and there is no showing of criticality for the specific value
Under MPEP § 2131.03, a specific value within a disclosed prior art range is anticipated unless the applicant shows the specific value produces an unexpected result or is otherwise critical.
Question 3: Which of the following statements correctly describes the difference between a 'search' and 'examination' in USPTO patent prosecution?
- Search and examination are the same step performed simultaneously by the examiner
- Search identifies potentially relevant prior art, while examination applies that prior art and legal standards to assess patentability of the claims (Correct answer)
- Search is performed by the applicant; examination is performed by the examiner
- Search is limited to U.S. patents; examination considers all prior art categories
Correct answer: Search identifies potentially relevant prior art, while examination applies that prior art and legal standards to assess patentability of the claims
USPTO examiners first conduct a search to find relevant prior art, then conduct examination by applying the prior art and statutory requirements to determine the patentability of each claim.
Question 4: Under the AIA, a joint research agreement (JRA) exception under § 102(c) can remove prior art status of a § 102(a)(2) reference. What must be true for the JRA exception to apply?
- The JRA must have been in effect before any public disclosure of the invention
- The claimed invention must have been made as a result of activities under a JRA that was in effect on or before the effective filing date, and the application must disclose the JRA parties' names (Correct answer)
- The JRA must be between entities that later merged into a single company
- The JRA must cover all claims in the application equally
Correct answer: The claimed invention must have been made as a result of activities under a JRA that was in effect on or before the effective filing date, and the application must disclose the JRA parties' names
Under § 102(c), the JRA exception requires the invention to result from activities under a qualifying JRA in effect on or before the effective filing date, with the parties' names disclosed in the application.
Question 5: A patent application claims a method with steps A, B, and C. A prior art reference discloses steps A, B, C, and D. How should anticipation be analyzed?
- The claim is not anticipated because the reference discloses more steps than claimed
- The claim is anticipated because the reference discloses all claimed elements, even if it discloses additional elements (Correct answer)
- The claim is anticipated only if step D is optional
- The claim is not anticipated because method claims require exact correspondence of steps
Correct answer: The claim is anticipated because the reference discloses all claimed elements, even if it discloses additional elements
A prior art reference anticipates a claim even if it discloses additional unclaimed elements, as long as each and every claimed element is present in the reference.
Question 6: A practitioner files an IDS containing a foreign patent reference using a non-certified copy and no translation. Under 37 C.F.R. § 1.98(a)(3), what is the consequence if the examiner considers the reference material?
- The IDS is rejected and the application is abandoned
- The duty of disclosure may be satisfied, but the examiner may require a translation of any part considered relevant (Correct answer)
- The IDS is automatically accepted and no translation is ever required
- The IDS is held in abeyance until a certified translation is provided
Correct answer: The duty of disclosure may be satisfied, but the examiner may require a translation of any part considered relevant
Under 37 C.F.R. § 1.98(a)(3), while a translation is not required for submitting a foreign-language reference in an IDS, the examiner may require a translation of relevant portions during prosecution.
Question 7: Secondary considerations (objective indicia of non-obviousness) must have a nexus to the claimed invention to be probative. Which of the following best describes the nexus requirement?
- The secondary consideration must arise from the commercial embodiment of the patent holder's product
- The secondary consideration must be directly tied to the novel features of the claimed invention, not to unclaimed or prior art features (Correct answer)
- The secondary consideration must be documented in a sworn declaration by the inventor
- The secondary consideration must be cited in the prosecution history of a related patent
Correct answer: The secondary consideration must be directly tied to the novel features of the claimed invention, not to unclaimed or prior art features
Secondary considerations have probative value only when they are tied to the novel, claimed features of the invention—not to features already in the prior art or unclaimed aspects of the embodiment.
Patent Bar Exam Prior Art Search 5
Under MPEP § 904, an examiner must conduct a thorough search of prior art.
If an examiner finds a reference that anticipates one independent claim but not another, what is the proper course of action?