PPC Case Analysis & Practical Application 3 — Questions and Answers
Question 1: A patent claims a chemical compound. The specification discloses only one utility — treating headaches — but an examiner argues that utility is not credible without clinical data. This rejection is under:
- 35 U.S.C. § 101 for lack of patentable subject matter
- 35 U.S.C. § 112 for lack of written description
- 35 U.S.C. § 101 for lack of utility (Correct answer)
- 35 U.S.C. § 103 for obviousness
Correct answer: 35 U.S.C. § 101 for lack of utility
A rejection for lacking credible, specific, and substantial utility is made under 35 U.S.C. § 101.
Question 2: During claim drafting review, a paralegal notices the independent claim uses 'comprising.' Which statement about this claim is correct?
- The claim covers only the listed elements, nothing more
- The claim is limited to exactly the elements listed
- 'Comprising' is open-ended and allows additional unlisted elements (Correct answer)
- 'Comprising' and 'consisting of' are legally equivalent
Correct answer: 'Comprising' is open-ended and allows additional unlisted elements
'Comprising' is an open transitional phrase that allows a claim to cover products or processes with additional elements beyond those listed.
Question 3: A small entity paid reduced filing fees on a nonprovisional application. The company is later acquired by a large corporation. What must the paralegal ensure?
- No action is needed because fees are locked at filing
- File a petition to change entity status retroactively
- Notify the USPTO and pay the fee deficiency upon the next fee payment (Correct answer)
- Re-file the application as a large entity application
Correct answer: Notify the USPTO and pay the fee deficiency upon the next fee payment
When entity status changes, the applicant must update the USPTO and pay the fee deficiency on the next fee payment occasion.
Question 4: An examiner issues a non-final Office Action rejecting all claims. The applicant responds by amending claim 1 and adding new claim 21. The examiner then issues a final rejection. Is this proper?
- No — a final rejection can never follow the first Office Action
- Yes — a final rejection is always proper after one response
- It depends on whether new issues were introduced by the amendment (Correct answer)
- No — a final rejection requires at least three Office Actions
Correct answer: It depends on whether new issues were introduced by the amendment
A final rejection after the first response is proper only if the amendment introduces new issues not necessitated by the examiner's prior rejection.
Question 5: An applicant claims priority to a provisional application filed on March 5, 2024. The corresponding nonprovisional must be filed by:
- March 5, 2025 (Correct answer)
- September 5, 2024
- March 5, 2026
- December 5, 2024
Correct answer: March 5, 2025
A nonprovisional claiming priority to a provisional must be filed within 12 months of the provisional's filing date.
Question 6: A patent paralegal reviews a freedom-to-operate (FTO) opinion. The relevant claim uses the term 'about 50°C.' For infringement analysis, how is 'about' most likely interpreted?
- Exactly 50°C with no variation permitted
- As a term of approximation encompassing a reasonable range around 50°C (Correct answer)
- As meaning any temperature between 0°C and 100°C
- As an indefinite term rendering the claim invalid
Correct answer: As a term of approximation encompassing a reasonable range around 50°C
'About' is a term of approximation that courts construe to cover a reasonable range centered on the stated value, informed by context.
Question 7: A client wants to file a design patent application for the ornamental appearance of a bottle. Which section of 35 U.S.C. governs design patents?
- 35 U.S.C. § 101
- 35 U.S.C. § 161
- 35 U.S.C. § 171 (Correct answer)
- 35 U.S.C. § 131
Correct answer: 35 U.S.C. § 171
Design patents are governed by 35 U.S.C. § 171, which allows patents for new, original, and ornamental designs for articles of manufacture.
PPC Case Analysis & Practical Application 3
A patent claims a chemical compound.
The specification discloses only one utility — treating headaches — but an examiner argues that utility is not credible without clinical data.
This rejection is under: