QiYao-Wang/IPEval huggingface dataset:
Question: The practitioner timely files an appeal brief together with an Information Disclosure Statement (IDS) disclosing references X and Y, an appropriate certification, a petition requesting consideration of the IDS, and the appropriate petition fee. References X and Y were not previously of record in the application. The primary examiner properly concludes that new rejections must be made of Claim 1 under 35 U.S.C. § 102(b) over X, and Claims 1 and 2 under 35 U.S.C. § 103 over X in view of Y. With the approval of a supervisory patent examiner, the primary examiner reopens prosecution, and enters the rejections in an Office action. Which of the following actions accords with proper PTO practice and procedure, and represents the most appropriate action for overcoming the primary examiner's rejections?
A. The practitioner files a reply under 37 CFR § 1.111 together with an amendment rewriting Claim I to incorporate the limitations of Claim 2, and canceling Claim 2; a declaration under 37 CFR § 1.132 showing that the invention set out in amended Claim 1 produces unexpected results; and arguments in the reply pointing out the supposed errors in the examiner's rejection, and replying to each ground of rejection.
B. The practitioner may timely file a reply brief arguing that Claim I is not anticipated by reference X, and file an affidavit under 37 CFR § 1.132 in support of an argument that the invention set out in Claim 2 provides unexpected results not suggested by references X and Y.
C. The practitioner requests reinstatement of the appeal, and files a supplemental appeal brief accompanied by an amendment canceling Claim 1, and amending Claim 2. In the supplemental appeal brief, the practitioner argues that the rejections of Claims 1 and 2 are overcome by the amendment to the claims. The practitioner does not argue that Claims 1 and 2 are patentable independent of the amendment.
D. The practitioner requests reinstatement of the appeal, and files a supplemental appeal brief accompanied by an amendment canceling Claim 1, and a declaration under 37 CFR § 1.132 showing that the invention set out in Claim 2 produces unexpected results. In the supplemental appeal brief, the practitioner argues that the rejections have been overcome. The amendment and declaration are necessary to overcome the rejection.
(category: patent, Chinese translation: 专利)
Question: During the pendency of inventor Smith's first patent application, he filed a request for a Continued Prosecution Application (CPA). On February 4, 1998, a primary examiner again rejected Claims 1-4 in the CPA application under 35 U.S.C. § 103 over references X and Y, and again rejected Claim 5 under 35 U.S.C. § 103 over references X, Y, and Z. The examiner did not set a shortened statutory period for reply. On August 4, 1998, the practitioner filed a notice of appeal to the Board of the Patent Appeals and Interferences from the examiner's decision rejecting Claims 1-5. Claims 6-10 in the CPA application stand allowed. Which of the following actions was not in accord with proper PTO practice and procedure regarding the appeal and Smith's CPA application?
A. The practitioner timely filed the notice of appeal containing an authorization to charge fees to a deposit account, which is signed by the practitioner.
B. The practitioner timely filed the notice of appeal containing an authorization to charge the appeal fee to a deposit account which is signed by the practitioner and does not specify which claims are appealed.
C. The practitioner timely filed the notice of appeal containing an unsigned authorization to charge the appeal fee to a deposit account; the notice of appeal specifies which claims are appealed.
D. The practitioner timely filed an unsigned notice of appeal; the notice of appeal specifies which claims are appealed; a proper authorization to charge fees to a deposit account accompanied the notice of appeal.
(category: patent, Chinese translation: 专利)
Question: Which of the following statements regarding a CPA application is correct?
A. A proper CPA division application is filed on August 17, 1998, where, on February 20, 1998, a final Office action setting a three month shortened statutory period for reply was mailed in a prior application; and on August 17, 1998, a request is filed by facsimile for a CPA division application of the prior application; the request, signed by the practitioner, includes an authorization to charge small entity fees under 37 CFR § 1.16 to a deposit account, identifies the correct application number of the prior application, and refers to and is accompanied by a preliminary amendment causing the CPA application to have two independent claims, and 12 dependent claims.
B. A CPA continuation application stands abandoned where, before the abandonment of a prior application wherein there was a final rejection, a request was filed in the PTO on December 8, 1997, for a CPA continuation application of the prior application; the request was filed without a filing fee; the PTO sent to the practitioner a Notice To File Missing Parts of Application dated December 17, 1997, requiring payment of the $790.00 filing fee, and $130.00 surcharge on or before February 17, 1998; and on July 17, 1998, the practitioner files a petition and check covering the fees for a five month extension of time, the filing fee, and surcharge.
C. An improper, as opposed to a proper CPA division application, has been filed where a Notice of Allowance and Issue Fee Due setting a three month statutory period for reply was mailed in a prior application on February 4, 1998; the issue fee was never paid; a completed request for a CPA division application was filed in the PTO on May 6, 1998, with a certificate of mailing by first class mail under 37 CFR § 1.8; the certificate is dated May 4, 1998; and the request correctly identifies the application number of the prior application and is signed by the practitioner.
D. A proper CPA continuation application has been filed where a provisional application was filed in the PTO on August 12, 1997; a completed request for a CPA continuation application was filed by hand delivery in the PTO on August 11, 1998; and the request correctly identifies the application number of the prior provisional application and is signed by the practitioner.
(category: patent, Chinese translation: 专利)
Question: The Jones patent application was filed in the PTO in January 1998. Jones conceived and reduced the claimed invention to practice in the United States. A claim in the application has been rejected under 35 U.S.C. § 102 as being unpatentable over a U.S. patent to Smith. Smith did not derive anything from Jones, or vice versa, and at no time were Smith and Jones obligated to assign their inventions to the same employer. In which of the following situations should a declaration by Jones under 37 CFR § 1.131 overcome the rejection in accordance with proper PTO practice and procedure?
A. The rejected claim is drawn to a genus. The Smith patent issued in March 1997, on an application filed in June 1993. The patent discloses, but does not claim, a single species of the genus claimed by Jones. The declaration shows completion in April 1993, of the same species disclosed by Smith.
B. The rejected claim is drawn to a species. The Smith patent issued in March 1997, on an application filed in June 1993. The patent discloses, but does not claim, the species claimed by Jones. The declaration shows completion in April 1993, of a different species.
C. The rejected claim is drawn to a genus. The Smith patent issued in March 1997, on an application filed in June 1993. The patent discloses, but does not claim, several species within the genus claimed by Jones. The declaration shows completion in April 1993, of a species different from the reference's species and the species within the scope of the claimed genus.
D. The rejected claim is drawn to a genus. The Smith patent issued in March 1996, on an application filed in June 1993. The patent discloses, but does not claim, several species within the genus claimed by Jones. The declaration shows completion in April 1993, of one or more of the species disclosed in the patent.
(category: patent，Chinese translation: 专利)
Question:  On August 12, 1998, reexamination was ordered of the Smith patent based on a proper substantial new question of patentability. The Smith patent was granted on September 12, 1995, on a patent application filed on July 2, 1992. Considering each of the following situations separately from the other, which of the situations complies with PTO practice and procedure regarding a rejection of Claims 1-5 in the Smith patent?
A. Claims 1-5 are rejected as being obvious under 35 U.S.C. § 103 over Jones in view of Winslow. The Jones patent issued in 1990, and the Winslow patent issued in 1989. In the application filed on July 2, 1992, Claims 1-5 were rejected under 35 U.S.C. § 103 over Jones in view of Winslow on the same rationale, and the same claimed subject matter was in Claims 1-5 in the application and patent.
B. Claims 1-5 are rejected as being anticipated under 35 U.S.C. § 102(b) over Jiles, a British patent specification published on April 16, 1991. Claims 1-5 are drawn to irradiating a broad genus of "fungus material" first disclosed in the application filed July 2, 1992. The Smith application filed on July 2, 1992, was a continuation-in-part application of an application filed on March 21, 1990, and claims the benefit of the filing date of the application filed on March 21, 1990. The application filed on March 21, 1990, did not disclose or support treating a broad genus of "fungus material," but disclosed irradiating only a fungus species.
C. Claims 1-5 are rejected as being anticipated under 35 U.S.C. § 102(b) over Janes, a British trade journal published on April 16, 1991. Claims 1-5 are drawn to electrolytically etching a metal. The British trade journal describes a species with the broad scope of Claims 1-5. The rejection can be overcome by antedating the reference by filing Smith's declaration under 37 CFR § 1.131 showing that Smith reduced the claimed invention to practice prior to April 16, 1991 in the United States.
D. Claims 1-5 are rejected as constituting obviousness type double patenting with Claims 6 and 7 of the U.S. patent to Johns, which issued on August 5, 1997. Claims 1-5 in the Smith patent have not been amended as of the date of the rejection. The U.S. patent to Johns formed the basis of a provisional obviousness type double patenting rejection during the initial prosecution of the Smith application.
(category: patent，Chinese translation: 专利)
Question: In regard to the Jones application, a complete Office action dated January 20, 1998, and setting a three month shortened statutory period for reply was mailed to the office of the attorney of record. The Office action contains rejections under 35 U.S.C. §§ 112 and 102. Considering separately the following different circumstances regarding the Office action, which course of action by the attorney complies with proper PTO practice and procedure and will correct the problem?
A. The Office action is in an envelope postmarked January 20, 1998, and was received in the attorney's office on Friday, January 30, 1998, due to delays in the U.S. Postal Service. The attorney should file and the PTO should grant a petition to restart the previously set reply period to run from the date of receipt of the Office action if the petition is filed on or before Friday, February 13, 1998, and the petition includes evidence showing the date of receipt, and the attorney's statement setting forth the date of receipt.
B. The Office action is in an envelope postmarked January 22, 1998, and was received in the attorney's office on Friday, January 30, 1998. The attorney should file and the PTO should grant a petition to restart the previously set reply period to run from the date of receipt of the Office action if the petition is filed on or before Friday, February 13, 1998, and the petition includes evidence showing the address on the Office action, a copy of the envelope which contained the Office action showing the postmark date, and the attorney's statement setting forth the date the Office action was received at the attorney's office and that the Office action was received in the postmarked envelope.
C. The Office action is in an envelope postmarked January 22, 1998, and was received in the attorney's office on Friday, January 30, 1998. The attorney should file and the PTO should grant a petition to restart the previously set reply period to run from the postmark date on the envelope if the petition is filed on April 30, 1998, with a reply to the Office action, and the petition includes evidence showing the address on the Office action, a copy of the envelope which contained the Office action showing the postmark date, and the attorney's statement setting forth the date the Office action was received at the attorney's office and that the Office action was received in the postmarked envelope.
D. A Notice of Abandonment dated August 19, 1998, is received in the attorney's office. The attorney should file and the PTO should grant a petition to revive the application as unavoidably abandoned where the petition is filed on September 24, 1998, contains the attorney's statement that the Office action was not received by the attorney, and is accompanied by the appropriate petition fee and a proposed reply is not included.
(category: patent, Chinese translation: 专利)
Question: Which of the following, published before the effective filing date of an application, is not an enabling prior art reference when used as anticipatory prior art under 35 U.S.C. § 102?
A. A picture of a chair in a magazine. The magazine is published monthly in England. The picture shows all of the structural features recited in the application claims, and how they are put together.
B. Disclosure in a magazine article of the compound claimed in the application wherein only the compound is claimed. The magazine is published monthly in the United States. The article discloses a manner of making the compound which differs from the manner disclosed in the application. No utility for the compound is disclosed in the article.
C. Disclosure in a magazine article of a liquid named "Rejuvinator Juice." The magazine is published monthly in the United States. The article discloses that the liquid restores youth when ingested. The article does not disclose the composition or manner of making the liquid. The application has claims directed to a liquid composition which is described in the specification as restoring youth when ingested.
D. The drawings in a U.S. design patent disclose all the structural features recited in the claims of the application. The drawings also show how the features are combined.
(category: patent, Chinese translation: 专利)
Question: Five different situations are presented below wherein the attorney of record calls an error to the attention of the examiner. Which request (or lack of request) by the attorney, and reply by the examiner is not in accord with proper PTO practice and procedure?
A. An Office action dated February 11, 1998, and setting a three month shortened statutory period for reply was accompanied by a citation of references wherein a prior art patent was identified with an incorrect patent number. The attorney of record, on April 6, 1998, called the error to the attention of the examiner and requested that the examiner restart the reply period. The attorney should receive from the examiner a new citation of references correcting the error, a copy of the Office action redated, and a communication restarting the three month shortened statutory period for reply to run from the date the error is corrected.
B. A page of rejections is omitted from an Office action dated April 21, 1998, which set a three month shortened statutory period for reply. The attorney of record, on May 25, 1998, called the error to the attention of the examiner and requested that the examiner set a new reply period. The attorney should receive from the examiner a complete, redated Office action setting a three month shortened statutory period for reply to run from the date the error is corrected.
C. A copy of a patent reference is omitted from an Office action dated April 21, 1998, which set a three month shortened statutory period for reply. The attorney of record, on May 25, 1998, called the error to the attention of the examiner and requested that the reply period be reset. The attorney should receive from the examiner a copy of the omitted patent reference, and a communication resetting the reply period to be a two month shortened statutory period running from the date the error is corrected.
D. A copy of a patent reference was omitted from an Office action dated April 16, 1998, which set a three month shortened statutory period for reply. The attorney of record, on May 19, 1998, called the error to the attention of the examiner, but did not request that the examiner set a new reply period. The attorney should receive from the examiner a copy of the omitted patent reference with a letter noting that the time period set for reply remains as set forth in the Office action dated April 16, 1998.
(category: patent, Chinese translation: 专利)
Question: Your client, the Happy Co., has come to you and requested that you file an international application under the Patent Cooperation Treaty (PCT) which designates Canada, Mexico, and the European Patent Office. Since today, August 26, 1998, is the last day of the Paris Convention priority year, you are rushing to prepare an application which will be granted an international filing date. Given the following elements, which combination is necessary to have an international filing date granted? 
I: The designation of at least one PCT contracting state. 
II: The payment of the international fee. 
III: A part of the application which appears to be a claim. IV: The name(s) of the inventor(s). 
V: An application in a language prescribed by the receiving office.
A. I, II, and V.
B. I, II, and IV.
C. I and III.
D. I and V.
(category: patent, Chinese translation: 专利)
Question: Smith, an electrical engineer working as an independent contractor, entered into a contract to install an emergency generator at the research facilities of the Wesson Cellular Phone Company. The contract contained no patent rights clause. While so employed, Smith had an opportunity to observe the research work being done and to chat with the Wesson research staff. Smith soon developed an interest in the research work being done, and realized that he could improve on the operation of the Wesson cellular phone. Soon afterwards, Smith designed a unique link scanning switching control mechanism which significantly improved the operation of the Wesson cellular phone. Wesson quickly recognized the importance of using Smith's invention in its business, and retained the services of Mr. I. M. Goody, a registered patent agent who is not an attorney. Which of the following actions by Mr. Goody would (1) best serve his client's business interests, (2) accord with proper PTO practice and procedure, and (3) be consistent with the PTO Code of Professional Responsibility?
A. Negotiate with Mr. Smith for an assignment of his invention to Wesson, draft an assignment agreement and have the same executed by Smith and Wesson, and record the original executed assignment with the assignment branch of the PTO.
B. Negotiate with Mr. Smith for an assignment and disclosure of his invention to Wesson, draft an assignment agreement and a patent application on the Smith invention, have both the assignment agreement and a combined oath, and power of attorney for the patent application executed by Smith, and file the documents with the PTO accompanied by the appropriate fees.
C. Request that Wesson obtain an assignment or license of the Smith invention and thereafter prepare a patent application on the Smith invention and file the same in the PTO in the name of Smith as sole inventor.
D. Negotiate with Mr. Smith to license his invention to Wesson, draft the license agreement and have same executed by Smith and Wesson, and record the original executed assignment with the assignment branch of the PTO.
(category: patent, Chinese translation: 专利)
Question: Jack loved to tinker with electrical gadgets in his youth, but adulthood and the responsibilities of a job and a family forced him to spend his time with other pursuits. Retirement, however, opened the door to renew his passion for tinkering, and soon he began to spend so much time at his pastime that he developed a reputation as an eccentric among his friends and neighbors. One day, while Jack was tinkering in his homemade shop and his wife, Jil, was entertaining relatives, Bruce, a visiting relative and a registered patent attorney, wandered into Jack's shop, and soon became entranced with one of the gadgets that Jack had invented. Bruce informed Jack that his invention appeared to be patentable and that he, Bruce, would be delighted to obtain patent protection for Jack for no more than the expenses involved, and that he, Bruce, could probably arrange to market the invention for little more than the effort involved in making a few phone calls. After very little persuasion, Jack retained Bruce to patent the invention, insisting, however, that he be permitted to review the final draft of the application, that he be consulted at every step of the prosecution, and that no prosecution decision be made without his concurrence. Bruce agreed, and thereupon prepared and filed a patent application naming Jack as sole inventor. Subsequently, Bruce succeeded in negotiating the sale of Jack's entire interest in the invention to the Star Financial Group, which in turn conveyed an exclusive license in the invention to the Omega Electrical Corporation. Both the assignment to Star and the license to Omega were properly executed and recorded in the PTO. According to proper PTO practice and procedure, which of the following statements is true?
A. Omega may intervene in the prosecution of Jack's patent application and appoint a patent attorney other than Bruce without Jack's consent.
B. Omega may intervene in the prosecution of Jack's patent application and appoint a patent attorney other than Bruce, and specifically request that Jack be excluded from access to his patent application file.
C. Star may intervene in the prosecution of Jack's patent application and appoint a patent attorney other than Bruce, and specifically request that Jack be excluded from access to his patent application file.
D. Omega may intervene in the prosecution of Jack's patent application and appoint a patent attorney other than Bruce, and specifically request that Jack be excluded from access to his patent application file, but Jack may be permitted to inspect the file on sufficient showing why the inspection is necessary to conserve his rights.
(category: patent, Chinese translation: 专利)