QiYao-Wang/IPEval huggingface dataset:
Question: In responding to a final rejection of Claims I to 5 as being obvious, applicant's patent agent argued that the references applied in the rejection neither taught nor suggested the claimed invention. The examiner issued a Notice of Allowance which included a statement of reasons for allowance. In the statement, the examiner explained her reasons for allowance of the claims. Upon receipt of the statement from the examiner, which of the following, if any, describes the most appropriate course of action the agent may take in reply to the examiner's reasons for allowance?
A. The agent may file a reply commenting on the examiner's statement, even though the failure to do so will not give rise to any implication that applicant agrees with or acquiesces in the examiner's reasoning.
B. The agent should object to the examiner's statement to avoid any implication that applicant agrees with or acquiesces in the examiner's reasoning.
C. Applicant may file comments on the reasons for allowance after payment of the issue fee upon submission of a petition for an extension of time.
D. Under current Office policy and procedure, the agent cannot reply to the examiner's statement.
(category: patent, Chinese translation: 专利)
Question: Which of the following statements regarding plant patent applications is (are) true?
A. Only one claim is necessary and only one claim is permitted.
B. The oath or declaration required of the applicant, in addition to the averments required by 37 CFR § 1.63, must state that he or she has asexually reproduced the plant.
C. A method claim in a plant patent application is improper.
D. Specimens of the plant variety, its flower or fruit, should not be submitted unless specifically called for by the examiner.
(category: patent, Chinese translation: 专利)
Question: The last day of a three month shortened statutory period to reply to a non-final rejection occurs today, April 21, 1999. Your client is overseas and sends you a facsimile asking you to cancel all of the current claims in the application. There is no deposit account. She further advises you that a new set of claims to replace the current claims will be sent to you no later than April 29, 1999. Which of the following would be the most appropriate course of action to take with regard to the outstanding Office action?
A. File a request for a one month extension of time today and pay the fee when you file the amendment.
B. File an amendment today canceling all claims in accordance with your client's instructions.
C. Await receipt of the new claims and then file the amendment and request for reconsideration with the appropriate fee for an extension of time, no more than 6 months from the date of the non-final rejection.
D. File a request for reconsideration today and state that a supplemental amendment will be forthcoming.
(category: patent, Chinese translation: 专利)
Question: Which of the following statements is true respecting product-by-process claims?
A. A lesser burden of proof may be required to make out a case of prima facie obviousness for product-by-process claims than is required to make out a prima facie case of obviousness when a product is claimed in the conventional fashion.
B. It is proper to use product-by-process claims only when the process is patentable.
C. It is proper to use product-by-process claims only when the product is incapable of description in the conventional fashion.
D. Product-by-process claims cannot vary in scope from each other.
(category: patent, Chinese translation: 专利)
Question: Patent applicant Smith claims "a rotary vane pump having impellers coated with ceramic X for the purpose of preventing cavitation of the impellers." The examiner rejected the claim under 35 U.S.C. § 103 as being unpatentable over a patent to John in view of a patent to Alex. John teaches a rotary vane pump having impellers coated with epoxy resin for the purpose of preventing corrosion of the impellers. Alex teaches a mixing device having agitator blades coated with ceramic X for the purpose of preventing corrosion of the blades. Alex also suggests that the ceramic X coating material "is useful on various types of pumps for the purpose of preventing corrosion." The examiner determined that (i) it would have been obvious to one having ordinary skill in the art to substitute the ceramic X coating material taught by Alex for the epoxy resin coating material in John and (ii) the resultant rotary vane pump would have coated impeller blades which would inherently prevent cavitation. The combination of John and Alex:
A. cannot support a prima facie case for obviousness unless the Alex reference contains a suggestion that ceramic X will cause cavitation,
B. cannot support a prima facie case for obviousness inasmuch as the discovery that ceramic X prevents cavitation imparts patentability to a known composition.
C. may support a prima facie case for obviousness even though the Alex reference does not disclose that ceramic X will prevent cavitation or can be used on the impellers of a rotary vane pump.
D. cannot shift the burden of proof to the applicant to show that the prior invention lacked the newly discovered property asserted for the claimed invention unless one of the references discloses the property.
(category: patent, Chinese translation: 专利)
Question: Claim 1 is independent. Claim 2 depends from Claim 1. Claim 3 depends from Claim 2. Claim 4 depends from Claims 2 or 3. Claim 5 depends from Claim 3. Claim 6 depends from Claims 2, 3 or 5. The application contains one independent claim. How many dependent claims are there for fee calculation purposes?
A. 5
B. 7
C. 8
D. 9
(category: patent, Chinese translation: 专利)
Question: Registered patent practitioner P prepares and files a patent application for his Japanese client, XYZ Corp., on October 5, 1998, claiming a banana peeler device. A Notice to File Missing Parts dated December 7, 1998, is received by P on December 10, 1998, and P submits an executed oath, along with the surcharge, to fully reply to the Notice, which is received by the PTO on December 23, 1998. In the first Office action dated January 6, 1999, the examiner rejects all of claims 1-5 as being anticipated by the disclosure of a U.S. patent to Apple, which discloses but does not claim a banana peeler, issued October 7, 1997, and based on an application filed on June 26, 1996. On January 20, 1999, P faxes a copy of the Office action and the Apple patent to his client in Japan, with no common ownership between the prior art patent and XYZ's patent application. On March 20, 1999, XYZ faxed instructions to P distinguishing the claims from the Apple patent and includes a reference to a U.S. patent to Zucchini, discovered by XYZ in February 1999, which issued on January 12, 1993, and contradicts the teachings of the Apple patent.On March 20, 1999, XYZ instructs P to file an Information Disclosure Statement (IDS) which includes the Zucchini patent, ten Japanese patents, and a November 13, 1998, magazine article. The magazine article and the ten patents were received from the Japanese Patent Office in XYZ's counterpart foreign application on February 1, 1999. Which of the following actions, if any, taken by P would best comply with PTO practice and procedure?
A. File a properly drafted IDS via "Express Mail" in accord with 37 CFR § 1.9 on March 30, 1999, with the fee set forth in 37 CFR § 1.17(a).
B. File a properly drafted IDS via first class mail with a Certificate of Mailing dated March 30, 1999, with the required fee and a statement that each item of information was cited in a communication from a foreign patent office in a counterpart foreign application not more than three months prior to the filing of the IDS.
C. File a properly drafted IDS via facsimile with a Certificate of Transmission on March 23, 1999, along with a legible copy of each reference.
D. (B) and (C).
(category: patent, Chinese translation: 专利)
Question: Registered patent practitioner P prepares and files a patent application for his Japanese client, XYZ Corp., on October 5, 1998, claiming a banana peeler device. A Notice to File Missing Parts dated December 7, 1998, is received by P on December 10, 1998, and P submits an executed oath, along with the surcharge, to fully reply to the Notice, which is received by the PTO on December 23, 1998. In the first Office action dated January 6, 1999, the examiner rejects all of claims 1-5 as being anticipated by the disclosure of a U.S. patent to Apple, which discloses but does not claim a banana peeler, issued October 7, 1997, and based on an application filed on June 26, 1996. On January 20, 1999, P faxes a copy of the Office action and the Apple patent to his client in Japan, with no common ownership between the prior art patent and XYZ's patent application. On March 20, 1999, XYZ faxed instructions to P distinguishing the claims from the Apple patent and includes a reference to a U.S. patent to Zucchini, discovered by XYZ in February 1999, which issued on January 12, 1993, and contradicts the teachings of the Apple patent.Which of the following most correctly sets forth the sections of Title 35 U.S.C. under which XYZ would not be entitled to a U.S. patent based on the Apple patent?
A. 102(a)
B. 102(c)
C. 102(d)
D. 102(e)
(category: patent, Chinese translation: 专利)
Question: In a first action on the merits dated February 12, 1997, the examiner (1) rejected all of the claims under 35 U.S.C. § 112, second paragraph; (2) objected to new matter added to the specification by a preliminary amendment; and (3) required a substitute specification that includes a revised summary of invention, abstract, and an additional drawing showing the prior art. You, as a patent practitioner prosecuting the application, disagree with the propriety of the rejection, objection and requirement. Which of the following would be the most appropriate course of action to take to reply to the examiner's action?
A. File a petition with the Group Director requesting withdrawal of the examiner's objection to the specification, and suspension of further action on the claims until three months after the petition has been decided.
B. File a request for reconsideration and present arguments distinctly and specifically pointing out the supposed errors in the examiner's requirement, rejection, and objection, and otherwise fully reply to the rejection and objection.
C. Appeal the objection and requirement of the examiner to the Board of Patent Appeals and Interferences, and request that the final rejection of the claims be suspended until the appeal is decided.
D. Amend the claims to overcome the examiner's rejection under 35 U.S.C. § 112, and file a motion to the Board of Patent Appeals and Interferences appealing the examiner's objection to the specification. Change the summary of invention to conform to the broadest claim, request reconsideration of the requirement for a substitute specification, request that the requirement for submission of the additional drawings be held in abeyance until after allowance of the application, and generally allege that the claims define a patentable invention.
(category: patent, Chinese translation: 专利)
Question: Which of the following statements correctly sets forth the manner in which Inventor Ann, a U.S. citizen, may file documents regarding her international patent application with the United States Receiving Office?
A. Where the document is the PCT international application and Ann needs to receive an April 1, 1999, filing date, Ann should file her PCT international application via first class mail with the United States Post Office and include a Certificate of Mailing dated April 1, 1999.
B. Where the document is a Demand for international preliminary examination, two weeks before the deadline, Ann should file her Demand by facsimile transmission with a dated Certificate of Transmission.
C. Where the document is the PCT international application and Ann needs to receive an April 12, 1999, filing date, Ann should file a copy of her international application via facsimile transmission with a Certificate of Transmission dated April 12, 1999.
D. Where the documents are substituted drawing sheets due on April 15, 1999, Ann should file her substitute drawing sheets via facsimile on April 15, 1999.
(category: patent, Chinese translation: 专利)
Question: A design patent application was filed on July 5, 1995, which issued as a design patent on December 3, 1996. On December 16, 1996, a proper reissue design application was filed. The reissue patent was granted on September 2, 1997. When will the first maintenance fee be due?
A. 975715200000
B. 945302400000
C. 944179200000
D. 952041600000
(category: patent, Chinese translation: 专利)
Question: After one of your client's claims has been allowed, another claim in the same application stands objected to as being a substantial duplicate of the allowed claim, i.e., they both cover the same thing. You and your client agree that the claim is a substantial duplicate. Which of the following could NOT overcome the objection?
A. Amending the claim objected to in a manner consistent with the specification to have a different scope.
B. Amending the allowed claim consistent with the specification to have a different scope.
C. Canceling the allowed claim to obviate the objection.
D. Filing a divisional application that includes the objected claim.
(category: patent, Chinese translation: 专利)
Question: Which of the following statements regarding reissue applications is false?
A. If the file record is silent as to the existence of an assignee, it will be presumed that an assignee does exist.
B. An examination on the merits of a reissue application will not be made without an offer to surrender the original patent, the actual surrender, or an affidavit or declaration to the effect that the original is lost or inaccessible.
C. A broadened claim can be presented after two years from the grant in a broadening reissue which was filed within two years from the grant.
D. The filing of a continued prosecution application (CPA) under 37 CFR § 1.53(d) of a reissue application will not be announced in the Official Gazette.
(category: patent, Chinese translation: 专利)
Question: Horatio invented a new widget for vacuum cleaners and you prepared and filed a patent application containing claims 1 through 10 directed to the widget. In a second Office action dated September 10, 1998, the examiner rejected claims 1 through 10 for the second time and on the same grounds, setting a three-month shortened statutory period for reply. You filed a reply to the second Office action on December 9, 1998, and on January 8, 1999, the examiner sent another Office action containing a final rejection of claims 1 through 10 and set a three-month shortened statutory period for reply.Horatio asked you to file a Notice of Appeal. In which of the following situations, would the Notice of Appeal be considered acceptable?
A. A Notice of Appeal signed by you, and the appropriate appeal fee are filed on April 8, 1999. The Notice does not identify the rejected claims appealed.
B. An unsigned Notice of Appeal and the appropriate appeal fee is filed on April 8, 1999, and the Notice identifies the rejected claims appealed.
C. A Notice of Appeal, signed by you, with the necessary fee for appeal and extension of time, are filed on July 8, 1999, without identifying the rejected claims appealed.
D. (A) and (B).
(category: patent，Chinese translation: 专利)
Question: Horatio invented a new widget for vacuum cleaners and you prepared and filed a patent application containing claims 1 through 10 directed to the widget. In a second Office action dated September 10, 1998, the examiner rejected claims 1 through 10 for the second time and on the same grounds, setting a three-month shortened statutory period for reply. You filed a reply to the second Office action on December 9, 1998, and on January 8, 1999, the examiner sent another Office action containing a final rejection of claims 1 through 10 and set a three-month shortened statutory period for reply.An acceptable Notice of Appeal is timely filed in the PTO on March 23, 1999. Absent extraordinary circumstances, which of the following is the last day that an appeal brief can be filed if a proper petition and the necessary fees for the brief and extension of time are filed with the brief?
A. 923529600000
B. Monday, October 25, 1999
C. 935366400000
D. Monday, May 24, 1999
(category: patent, Chinese translation: 专利)
Question: On a sunny January day in Minnesota, neighbors X and Y working together stumble across a novel means for melting snow with a device that X and Y have jointly invented. Being low on funds to market their invention, X and Y decide to save money and file their own patent application. X and Y decide to file a provisional patent application in order to have more time to market their invention. X and Y carefully prepare all the necessary papers for the filing of their provisional patent application and come up with the money to cover the filing fee. On Saturday, January 9, 1999, X and Y meet at their favorite coffee shop to take a final look at the specification and drawings they had prepared and to prepare a cover letter to accompany their application. In their eagerness to get to the Post Office after drinking two double mocha cappuccinos, the handwritten cover letter prepared by X and Y fails to identify X as an inventor. The cover letter only identifies the application as a provisional patent application; inventor Y's full name, residence and correspondence address; and the title of the invention. Unaware that X has not been identified as an inventor, X and Y make a copy of their application papers and mail the cover letter with the specification, drawings and the proper fee to the Patent and Trademark Office via first class mail that same morning. A huge winter storm is expected to hit Minnesota by dusk and X and Y hurry home to conduct further experiments with their snow melting invention. The papers are received in the Patent and Trademark Office on Monday, January 11, 1999. Three weeks later, X and Y return to their favorite coffee shop to celebrate the outstanding success of their experiments with their snow melting device during the huge winter storm which hit Minnesota and to discuss the minor adjustment they made to their invention. In reviewing their application papers for the first time since they were mailed, X notices that the handwritten cover letter does not identify him as an inventor, and fails to include his residence and correspondence address. Which of the following is the best action to be taken by X and Y to correct these omissions from their handwritten cover letter in accordance with proper PTO practice and procedure?
A. X and Y should timely file an amendment to the provisional patent application to add X as an inventor, accompanied by a petition stating that the error occurred without deceptive intent on the part of X and the appropriate fee.
B. X and Y should file an amendment to their provisional patent application which describes the minor adjustment made to the snow melting device and sign the amendment naming X and Y as joint inventors.
C. X and Y should file a request for a certificate of correction and with an explanation of how the error occurred without deceptive intent.
D. X and Y should file a continuation application with a new declaration signed by X and Y.
(category: patent, Chinese translation: 专利)
Question: The claim, "An alloy consisting of 70.5 to 77.5% iron, 15.0 to 17.0% cobalt, 0.5 to 1.0% carbon, up to 2.5% chromium, and at least 7.0% tungsten" is anticipated by a reference disclosing an alloy having:
A. 76.0% iron, up to 15.0% cobalt, 0.5% carbon, and 8.5% tungsten.
B. 71% iron, 15% cobalt, 1.0% carbon, 1% chromium, 8% tungsten, and 4% nickel.
C. 71.3% iron, 15.2% cobalt, 0.9% carbon, 2.6% chromium, and 10% tungsten.
D. 76% iron, 15% cobalt, 1.0% carbon, at least 2.0% chromium, and 6% tungsten.
(category: patent, Chinese translation: 专利)
Question: On January 6, 1999, Doe asked patent agent Bronson to prepare and file a patent application on an automobile jack which Doe had invented. Doe gave Bronson several sketches and a written description of the jack which described and showed the jack as utilizing only a scissors-type lifting mechanism. Bronson prepared a patent application disclosing the scissors-type lifting mechanism based on information provided by Doe. The claims of the patent application recited the lifting mechanism generically as "lifting means" since the specific type of lifting mechanism was not thought by Doe to be critical to the inventive feature of his jack. After Doe reviewed and signed the application, Bronson filed it in the PTO on February 3, 1999. On March 19, 1999, Doe discovered that his jack worked much better with a screw-type lifting mechanism as opposed to the scissors-type mechanism. The screw-type lifting mechanism is not disclosed in the application. Doe immediately informed Bronson of this fact. In reply to the first Office action, Bronson canceled all of the original claims and presented a new claim to the jack which included the provision of the screw-type lifting mechanism. Is the new claim proper at this stage of the prosecution?
A. Yes, because the claim particularly points out and distinctly claims the subject matter which Doe regards as his invention or discovery.
B. No, because the claim could be properly rejected under 35 U.S.C. § 112, first paragraph.
C. Yes, because the claim sets forth the best mode contemplated by Doe for carrying out his invention.
D. No, because the claim could be properly rejected under 35 U.S.C. § 132.
(category: patent, Chinese translation: 专利)
Question: On January 7, 1998, you filed a U.S. patent application containing Claims 1 through 8 on behalf of your client, Grumpy. In a first Office action, the examiner rejected Claims 1-8 under 35 U.S.C. § 103 over a U.S. patent to Happy in view of a U.S. patent to Sleepy. The Happy patent issued on January 6, 1998, based on an application filed on June 11, 1996. The Sleepy patent issued in 1950. Which of the following responses would be the most persuasive in having the rejections withdrawn?
A. Argue that the claimed invention is patentably distinguishable over the combination of the Happy and Sleepy patents, pointing out the specific language in the claims that is not shown by the combination of the references.
B. Argue that the Sleepy patent is outdated and that its teachings are so obsolete that it would no longer be read by one of ordinary skill in the art.
C. Argue that the claimed invention is patentably distinguishable from Sleepy, and point out the specific language in the claims that is not shown by Sleepy.
D. Argue that the devices disclosed by Sleepy and Happy are not physically combinable.
(category: patent, Chinese translation: 专利)
Question: The specification shall conclude with one or more claims and must set forth:
A. the manner of making the invention, the theory of why the invention works, and at least one working example showing how the invention works.
B. the manner and process of making and using the invention, a written description of the invention, and the best mode of carrying out the invention.
C. a description of the invention, how the invention is distinguishable over the most relevant prior art, and the best mode of carrying out the invention.
D. only a full, clear, and concise description of the invention.
(category: patent, Chinese translation: 专利)