QiYao-Wang/IPEval huggingface dataset:
Question: You have filed an application containing three claims drawn to two properly divisible inventions, Claims 1 and 3, linked by Claim 2. Claim 1 is directed to an injection molding process for a thermoplastic, Claim 2 is directed to a molding process for making a synthetic heat exchanger, and Claim 3 is directed to a synthetic heat exchanger. The primary examiner makes a restriction requirement stating that "Claim 2 links the injection molding process and the heat exchanger" and requires you to elect between the inventions defined by Claims 1 and 3. Which of the following would be the most appropriate reply to the restriction requirement?
A. Traverse the requirement, ask for reconsideration and withdrawal of the requirement because Claim 2 links both Claims 1 and 3 together.
B. Traverse the requirement, and amend Claim I to limit the claim to an injection molding process for making a heat exchanger.
C. Elect the invention defined by Claim 1 or Claim 3, and urge that since Claim 2 is a linking claim, it should be examined with the claims of the elected invention.
D. Elect the invention defined by Claim 2, and argue that you want the choice of using an injection process for making a heat exchanger so that the restriction would be moot since all the claims would be included.
(category: patent, Chinese translation: 专利)
Question: Which of the following statements regarding design patent applications is not correct?
A. The specification may contain a brief description denoting the nature and environmental use of the claimed design.
B. The drawings may be color drawings or color photographs if accompanied by a grantable petition.
C. The design application may have only a single claim.
D. Different embodiments or modifications may be set forth in the specification, but do not need to be shown in the drawings.
(category: design patent, Chinese translation: 外观设计专利)
Question: Which PTO official will decide a petition requesting reopening of prosecution of a patent application after a final decision by the Board of Patent Appeals and Interferences under 37 CFR 1.198, where no court action has been filed?
A. The Solicitor.
B. The primary examiner to whom the application was originally assigned.
C. The Administrative Patent Judge who wrote decision.
D. The Group Director for the group where the application originated.
(category: patent, Chinese translation: 专利)
Question: Which of the following statements regarding amending a reissue application is not correct?
A. An entire paragraph in the specification other than the claims may be deleted by a statement deleting the paragraph without presentation of the text of the paragraph.
B. In a claim, hand entry of an amendment of five words or less is permitted.
C. Each amendment submission must set forth the status, on the date of the amendment, of all patent claims and of all added claims.
D. When responding to an Office action, each amendment when originally submitted must be accompanied by an explanation of the support in the disclosure of the patent for the amendment.
(category: patent, Chinese translation: 专利)
Question: You have filed a patent application on behalf of your client, Jane Smith. Since then, Jane has married and legally changed her name to Jane Jones. Which of the following would be the most appropriate procedure to make the corresponding name change in Jane's patent application?
A. File a petition with the appropriate fee directed to the Office of the Assistant Commissioner for Patents requesting the name change, and include an affidavit signed with both names setting forth the procedure whereby the change of name was effected.
B. File an amendment in the application requesting the examiner to change the applicant's name on the application to Jane Jones.
C. Expressly abandon the application, and file a continuation application naming Jane Jones as the inventor.
D. File a Certificate of Correction with the appropriate fee while the application is pending requesting that Jane Smith be changed to Jane Jones.
(category: patent, Chinese translation: 专利)
Question: Prior art references may be combined to show obviousness of the claimed invention under 35 U.S.C. § 103. Which of the following most correctly completes the statement: "In establishing obviousness
A. a suggestion to modify the art must be expressly stated in one of the references used to show obviousness.
B. a suggestion to modify the art must be expressly stated in all the references used to show obviousness.
C. a suggestion to modify the art may be inherently or implicitly taught in one of the references used to show obviousness.
D. a suggestion to modify the art is unnecessary unless the patent applicant presents evidence or argument tending to show unobviousness.
(category: patent, Chinese translation: 专利)
Question: Claimed subject matter has been properly rejected under 35 U.S.C. § 103 over a combination of prior art references which render the claimed subject matter prima facie obvious. Which of the following actions by a practitioner in accordance with proper PTO procedure is most likely to be sufficient to overcome the prima facie case of obviousness?
A. Filing a declaration under 37 CFR § 1.132 containing evidence that the claimed subject matter possesses unexpected results, disclosed in the application, which are not described in the prior art, and arguing that the evidence rebuts the prima facie case.
B. Filing a reply arguing and giving your opinion that the claimed apparatus provides unexpectedly superior productivity
C. Filing a declaration under 37 CFR § 1.132 presenting evidence of superior properties for iron-containing compositions, disclosed in the application where the broad rejected claim is drawn to a "metal-containing" composition. The prior art reference discloses and describes an aluminum composition which satisfies the broad claim, and the practitioner argues that the evidence rebuts the prima facie case of obviousness.
D. Filing a declaration under 37 CFR § 1.132 which demonstrates that a "metallic" apparatus of Claim I has superior properties to a plastic apparatus having all the structural limitations recited in the claim, and arguing that the evidence, which relies on properties disclosed in the application, rebuts the prima face case of obviousness, where Claim 1 was rejected under 35 U.S.C. § 103 over references disclosing metallic apparatuses, and the references made out a prima facie case of obviousness.
(category: patent, Chinese translation: 专利)
Question: Assuming that each claim given below is from a different application, which of the following claims contain improper multiple dependent claim wording?
A. Claim 6. A ceramic camshaft as in either Claim I or Claim 2, further comprising . . . .
B. Claim 4. An intake valve as in any of the preceding claims, in which . . . :
C. Claim 3. A fuel injector according to Claims 1 or 2, further comprising . . .
D. Claim 7. A turbocharger as in one of Claims 3-5, in which . . .
(category: patent, Chinese translation: 专利)
Question: The claimed invention in inventor Jones' application is a digital transmission system which communicates a plurality of separate digital streams over a common channel. It includes a transmitter portion (block encoding arrangements and multiplexer), and receiver portion (a demultiplexer and block decoding arrangements). The receiver portion includes a phase comparator having four inputs and one output and a divider having two inputs and one output. The functions of the phase comparator and divider are adequately disclosed in the specification. However, the specification does not describe how to make and use the phase comparator and divider. The examiner correctly and reasonably asserting that the comparator was not a typical two input phase comparator, and the divider was not a typical one input divider, properly rejected the claims under 35 U.S.C. § 112, first paragraph, for lack of enabling disclosure because the structural details of the phase comparator and divider were not disclosed. Which of the following declarations would be minimally legally sufficient to overcome this rejection in accordance with proper PTO practice and procedure?
A. A declaration of a professor stating that "the elements referred to in the application as the divider and the phase comparator were well-known to those of skill in the art as of June 17, 1997," the filing date of the Jones application.
B. A declaration of a professor stating that "the elements referred to in the application as the divider and the phase comparator were well-known to those of skill in the art as of June 17, 1997," the filing date of the Jones application, and that these elements were "routinely built."
C. A declaration of a professor stating that "the elements referred to in the application as the divider and the phase comparator were well-known to those of skill in the art as of June 17, 1997," the filing date of the Jones application, that these elements were "routinely built," and the professor provides details in the declaration concerning the structure and function of the elements.
D. A declaration of a professor stating that "the elements referred to in the application as the divider and the phase comparator were well-known to those of skill in the art as of June 17, 1997," the filing date of the Jones application, that these elements were "routinely built and sold to the public by [two identified corporations] before June 17, 1997, and were used in constructing a digital transmission system at the university."
(category: patent, Chinese translation: 专利)
Question: X invented a bending machine. On June 18, 1996, the practitioner filed a first patent application in the PTO for X disclosing and claiming the bending machine. The disclosure, drawings, and claims in the first application complied with all regulations for obtaining a filing date. On August 1, 1998, the practitioner became aware of a foreign patent published on July 1, 1997, which discloses a bending machine invented by Y that is identical to the bending machine described and claimed in the first application. X informed the practitioner on August 2, 1998, that X will need an additional two months to complete tests to demonstrate that X's invention provides unexpected results. The practitioner decides to file a continuation application. Which of the following courses of action preclude the foreign patent from possibly being prior art under 35 U.S.C. § 102(b), and complies with the provisions for filing a continuation application in the PTO?
A. On September 2, 1998, file in the PTO a document wherein the practitioner requests a continuation application under 37  CFR § 1.53(d), identify and expressly abandon the first application, identify X as the inventor, retain the same claims as were finally rejected, request utilization of the file jacket of the first application, petition for a three month extension of time, and pay the appropriate extension of time and filing fees.
B. On September 2, 1998, file in the PTO a document wherein the practitioner requests a continuation application under 37  CFR § 1.53(d), identify and expressly abandon the first application, identify X as the inventor, retain the same claims as were finally rejected, request utilization of the file jacket of the first application, and pay the appropriate filing fee.
C. The foreign patent never could be prior art under 35 U.S.C. § 102(b) against X because the first application was filed more than one year before the publication date of the foreign patent. File in the PTO, on October 5, 1998, a duplicate of the first application together with X's affidavit under 37  CFR § 1.132 showing the results of X's tests, an appropriate filing fee, and a preliminary amendment amending the first sentence of the specification to refer to the first application.
D. The foreign patent never could be prior art under 35 U.S.C. § 102(b) against X because the first application was filed more than one year before the publication date of the foreign patent. File in the PTO, on October 5, 1998, a duplicate of the first application, X's affidavit under 37 CFR  1.132 showing the results of X's tests, a petition for a five month extension of time, and appropriate filing and five month extension of time fees.
(category: patent, Chinese translation: 专利)
Question: Inventor Smith prepared and filed on February 11, 1997, a provisional application regarding a machine Smith invented in the United States on November 5, 1996. A Notice to File Missing Parts dated March 6, 1997, informed Smith that the filing fee was omitted, and that the filing fee along with the surcharge are required. The Notice set a period for reply which was two months from the filing date. Smith failed to pay the filing fee and the required surcharge. The provisional application became abandoned. A Notice of Abandonment, dated May 11, 1997, was sent to Smith. Smith engaged practitioner P to prepare and file a patent application, and informed P that Smith had filed a provisional application on February 11, 1997. On February 11, 1998, P filed a complete nonprovisional patent application for Smith, claiming benefits under 35 U.S.C. 119(e) of the filing date of the provisional application. On March 4, 1998, Smith furnished P with a copy of a publication by Allon, dated February 2, 1997, fully describing the machine and a manner of making and using the machine. Also on March 4, 1998, Smith gave P copies of the two notices. P, upon asking Smith why no reply had been filed to either notice, learned that Smith had been hospitalized for a heart attack and ensuing complications from March 5 through May 4, 1997, and Smith's significant other put the notices away without opening or showing them to Smith so as not to disturb Smith, and then forgot about the notices. Smith first learned of the notices on March 3, 1998, while sorting through papers to prepare Smith's 1997 income tax return. To properly protect Smith's patent rights, the most appropriate course of action for P to take is
A. to do nothing inasmuch as the regulations no longer provide for revival of an abandoned provisional application after a nonprovisional application has been filed
B. to promptly file a request to withdraw the holding of abandonment explaining that abandonment was improper inasmuch as Smith's significant other had withheld the notices from Smith, and Smith had not received the notices. Also, with the request file the filing fee, a copy of the Allon publication, and an explanation of the relevance of the Allon publication.
C. to promptly file a petition requesting the Commissioner to exercise his supervisory authority to withdraw the holding of abandonment as improvident inasmuch as Smith's significant other had withheld the notices from Smith, and Smith had not received the notices.
D. promptly file a petition and fee to revive the provisional application as being unintentionally abandoned, the appropriate surcharge, the filing fee, and a statement that the entire delay was unintentional. Also file in the nonprovisional application an IDS listing the Allon publication along with a copy of the Allon publication, and an explanation of the relevance of the Allon publication to the claims in the patent application.
(category: patent, Chinese translation: 专利)
Question: On September 10, 1997, Smith invented a process for implanting processing chips in human heads. The chips permit the human to control replies when angered. Smith filed a pro se patent application in the PTO on the process on November 17, 1997. Shortly afterwards, Smith was hired by Ez Corporation, a processor and distributor of chips. During the pendency of the Smith patent application, on January 3, 1998, Smith invented an improvement to the process, and pursuant to Smith's employment agreement, Smith executed an assignment of the improved process invention to EZ Corporation. You are patent counsel for EZ Corporation. Pursuant to instructions, you prepared a patent application on the improved process invention. On February 3, 1998, you filed a complete patent application together with the executed assignment in the PTO. The application filed on February 3, 1998, in addition to disclosing the process disclosed in the pro se application, also disclosed and claimed only the improved process. The first sentence of the specification in the application filed on February 3, 1998, stated that the application was a CIP of the copending pro se Smith patent application, which was adequately identified therein. On May 11, 1998, the pro se Smith patent application became abandoned. On June 4, 1998, all the claims to the improved process in the application filed on February 3, 1998, were rejected by the primary examiner as unpatentable under 35 U.S.C. § 103 over a U.S. patent that issued on March 3, 1998, on an application that was filed on December 11, 1995. Which of the following actions accords with proper PTO practice and procedure, and represents the most appropriate action for overcoming the examiner's rejection?
A. File a reply which argues that the claims of the present application are nonobvious over the U.S. Patent issued on March 3, 1998.
B. File a reply which argues that since Smith is the same inventor named in the previously filed pro se application, and since the CIP application contains a specific reference to the earlier filed application, the CIP application is entitled to the benefit of the earlier filing date in accordance with 35 U.S.C. § 120 for purposes of the improvement process claims.
C. File an affidavit under 37  CFR § 1.132 presenting test data showing that the process in the CIP application is significantly superior to the process in the pro se application.
D. File a reply which argues that the reference patent cannot be the basis of a rejection because its issue date postdates the filing date of the CIP application.
(category: patent, Chinese translation: 专利)
Question: Inventor X, a citizen of Germany, invented a tape dispenser in Germany on May 5, 1996. On January 22, 1997, X filed a patent application for the tape dispenser in the German Patent Office. On January 22, 1998, you filed a complete U.S. patent application in the PTO claiming a tape dispenser on behalf of X. The U.S. application was filed with a declaration under 37  CFR § 1.63 signed by X claiming foreign priority of the German patent application. In an Office action dated June 17, 1998, and setting a three month shortened statutory period for reply, a primary patent examiner properly rejected all the claims in the U.S. patent application as being anticipated under 35 U.S.C. § 102(a) by the disclosure in magazine articles describing how to make and use an identical tape dispenser. The articles were published in the United States in February 1997, and in Great Britain in March 1997. Which of the following actions accords with proper PTO practice and procedure, and represents the most appropriate action for overcoming the rejection?
A. On or before September 17, 1998, file a certified copy of the German application, and an English translation of the German application.
B. On or before September 17, 1998, file a certified copy of the German application, an English translation of the German application, and point out that the reference is no longer available as prior art.
C. File a reply on or before September 17, 1998, which argues that the reference cannot be used because the application inventor X filed in the German Patent Office antedates the article.
D. File an affidavit under 37  CFR § 1.132 signed by you stating that the reference cannot be used because the application which inventor X filed in the German Patent Office antedates the articles.
(category: patent, Chinese translation: 专利)
Question: Which of the following utility statements, which correspond in scope to the subject matter sought to be patented, is sufficient to meet the requirements of 35 U.S.C. §§ 101 and 112, first paragraph?
A. The invention is a novel process for making certain steroids which, in turn, are known to be useful in the formation of A-nor steroids. There is nothing in the record of the application file showing that any "A-nor steroid" which might ultimately be produced from the claimed compounds would itself be a useful product.
B. The invention is a composition which is the cure for all cancer.
C. The invention is a novel composition using a new source of stannous tin for incorporation in dentifrices by which term is meant mouth washes, tooth pastes, tooth powders and chewing gums, i.e., compositions for introduction into the oral cavity as cleansing compositions.
D. The invention is a composition which prevents the process of aging.
(category: patent, Chinese translation: 专利)
Question: In connection with an appeal to the Board of Patent Appeals and Interferences, which of the following rejections would be a new ground of rejection?
A. In a final Office action, Claim 1 is rejected under 35 U.S.C. § 103 over A in view of B. On appeal, in the examiner's answer, the primary examiner again states that Claim 1 is rejected under 35 U.S.C. § 103 over A in view of B, but the actual argument or rationale supporting the rejection, while having the same basic thrust as the argument or rationale advanced in the final rejection differs therefrom.
B. In a final Office action, Claim 6 is rejected under 35 U.S.C. § 103 over A in view of B, and Claim 8 is rejected under 35 U.S.C. § 103 over A in view of C. No claim was rejected under 35 U.S.C. § 103 over A in view of B and C. In reply, an amendment proposes to combine the limitations of Claims 6 and 8 together in a new claim, Claim 9, and canceling Claims 6 and 8. In an advisory action, the primary examiner permits entry of the amendment as reducing issues on appeal. On appeal, in the examiner's answer, the primary examiner rejects Claim 9 under 35 U.S.C. § 103 over A in view of B and C, supported by the argument advanced in the rejections of Claims 6 and 8.
C. In a final Office action, Claims I and 2, where Claim 2 depends on Claim 1, are rejected under 35 U.S.C. § 103 over A in view of B. In reply, an amendment proposes to rewrite Claim 2 in independent form and cancel Claim 1. In an advisory action, the primary examiner advises that the proposed amendment will be entered as reducing issues on appeal, and that the final rejection would be used to reject Claim 2 as amended. On appeal, in the examiner's answer, the primary examiner rejects Claim 2 under 35 U.S.C. § 103 over A in view of B, supported not only by the argument advanced in the rejections of Claims 1 and 2, but also by rationale not advanced in the final rejection, though the rationale has the same thrust as the rationale in the final Office action.
D. In a final Office action, Claims 2 and 3 are rejected under 35 U.S.C. § 103 over A in view of B. In reply, an amendment proposes to cancel Claims 2 and 3, and add Claim 4, which incorporates the limitations of Claims 2 and 3. In an advisory action, the primary examiner advises that the proposed amendment will be entered, and that the final rejection would be used to reject the added Claim 4. On appeal, in the examiner's answer, the primary examiner rejects Claim 4 under 35 U.S.C. § 103 over A in view of B, supported by the argument advanced in the rejections of Claims 2 and 3.
(category: patent, Chinese translation: 专利)