/ ./ DEPARnvmNT OF COMMERCE

. UNI'rlm STATES P.ATENT OFFICE EXAMINATION FOR REGISTRATION TO PRACTICE

NOVEMBER 15, 1948

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:Paper No. 1 Time: 3 hoUl"S

~uestions on Law and Practice

Make your answers brief and to the point. Number each answer and leave at least two lines between answers.

Write on on~y one side of the ~aper.

1. How can the design of a .display case be actually reduced to practice?

2. Discuss briefly the validity of a patent issued for a process of artifically spotting tobacco leaves by treatment with a fungus so as to i.mi tate tlle more costly natural spotted tobacco.

). To what obvious criticism is the following claim subject:

"As a new article of manufacture, a catalogue having a memorandum pad bound to it as one of its covers"?

4. Baker filed an application containing claims to coating apparatus and also claims to a coating process on May 1, 1944. In response to a requirement for division, he canceled the claims to the coating apparatus on November 2, 1945t and a patent was thereupon issued to him on May 14, 1946. Baker filed on May 15, 1946, an application ' containing the canceled apparatus claims. (1) What is Baker's date of constructive reduction to practice of the claimed coating ~pparatus? (2) Why?

5. Specify two occasions when a party's right to make . the ·, · ,. count of an interference will be determined by the Board of Interference Examiners at final hearing?

6. Thomas f•iled an application for a design patent on a watch fob. The examiner in his first action objected to the drawing on the ground tha.t it showed the interior construction of the fob. Thomas immediately filed a petition to the Commissioner asking that the examiner be directed to vacate his objection. Indicate why this petition should be dismissed, and also why the petition is lacking in merit.

7. In case of conflicting assignments, to whom will the patent issue? Who decides title?

8. Macey secured a patent upon a method of packaging utilizing a stabilized rubber hydrochloride film. Subsequently, he discovered that the unstabilized rubber hydrochloride film could be used in the same method and thereupon filed a reissue application disclosing and claiming t.h1s feature. Explain, depending upon your view of the correct result, why you think that a reissue patent (a) should, or (b) should not be granted.

9. The Board of Appeals stated in its decision that the claims on appeal would be allowable if amended. Under what circumstances can the primary examiner properly reject the claims which ware amended according to the Board's suggestion?

10. If the primary examiner includes a new ground or rejection in his examiner's statement on an appeal to the Board of Appeals what two courses are open to the applicant?

11. What three alternative responses are ·open to an applicant when a requirement for division is repeated and made final?

12. What is t~e obvious vice of' the following claim:

"A woolen cloth having a tendency to wear rough rather than smooth."

13. To advertise the durability of his synthetic rubber paving composition, Smith paved one city street with that composition on May 3, 1943. An engineering journal distributed as early as January 15, 1943, contained an article by Smith describing the composition and its advantages. If Smith requested his patent attorney on June 1, 1944, to prepare an application for patent tor him on his composition, what advice should have been given him'i

14. To what extent can the buyer of a patented machine make "repairs" thereto?

15. Wilson, a mechanical enginaer, signed a ' contract of employment with the Acme Company, under which he was to assign to that company any and all inventions which he should make during his em~loyment. The Acme Company was engaged exclusively in the manufacture of bearings. Wilson filed an application in the United S.tates Patent Office on the chemical treatment of' sewage sludge. The Acme Company-notified Wilson that he must assign this invention to the company. If Wilson became your client, what advice, briefly, would you give him?

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16. When an applicant copies or substantially 'copies a claim of a ptitent, what information must accompany his presentation of that claim?

17. What criticism would be applicable to the following claim and the application in which it was presented:

"A directory comprising a part in which surnames are ar~anged phonetically with the given names of the respective surnames arranged otherwise than phonetically, and another part in which the surnames are arranged otherwise. than phonetically with reference to the section in the first-mentioned part where surnames are arranged phonetically"'?

18. Specify two conditions under which . a junior party to an interference is denied access to the preliminary statement of the senior party.

19. What action is to be expected from th~ Patent Office, if a patent application is not filed within a reasonable time after the application papers are executed?

' 20. Your client, Whipple, desires patent protection on a process utilizing as an ess~ntial reactant a new material known to him only by a trade name given it by its manufacturer, The Star Company. 'rfhat preliminary advice would you give Whipple?

21. The primary examiner rejected the generic claims in the Box application and required Box to elect one of the three claimed species corresponding to the three different embodiments of the invention shown in his application drawing. What two alternative replies by Box would be acceptable as complete responses to the . examiner's requirement?

22. Brownt a patent attorney appointed by the applicant to prosecute his patent application, notified the Patent Office on September 1, 1948, that he had appointed a "sUbstitute attorney," Jones, and asked that all ruture correspondence on the case be had with Jones, What responsibility does Brown have for the proper prosecution of the application?

23. X discovers that an orange is rendered resistant to blue mold decay if its rind is saturated with borax by immersion in a solution thereo.i'. Discuss briefly the possibility oi' securing a valid product claim to an orange so treate~.

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24. As the assignee of a patent upon a shipping container requiri~g carbon dioAide in its normal service, Gray permitted product~on of the patented container by his customers, but notified them that the required carbon dioxide must be purchased from him. If the . Brica . Company should sell oarbon dioxide to Gray's customers for use in the patented container, what liability would that company incur? Why?

25o In the patent application of Brown, which was filed on December JO, 1946, aud which on filing was assigned to the Success Company, all the claims were rejected as unpatentable over a process disclosed in detail in a patent to Andersen, but not there claimed. The Andersen patent was granted January 7, 1947, upon an application filed November . 28, 1945, and at that earlier date was likewise assigned to the Success

_Company. What is the single proper response to said ·rejection? Why? .

26. Mrs. Louise elec·tric stove. thereon that she filing date?

A. Utile invents a special switch for an What are the plrts of an application for patent must fila in the Patent Office to obtain a

27. Under what .circumstances would an applicant for a patent on a chemical process be entitled to the benefit of the filing date of an application for the same invention filed by him in a foreign country on January 4, 1937?

28. To what extent may a supplemental oath be used to introduce into an application matter not originally shown nor described?

29. Darwin, believing t~at one of the two specific processes claimed in his patent applicat1on was not commercially feasible, canceled his claims to that species, but retained claims to the other species and generic claims. Elaven .months after his patent issued he discovered that his belief was erroneous. What advice would you give Darwin as to the wisdom of filing a reissue application to secure protection upon the species not specifically claimed?.

JO. An interference was declared on August 21) 1944, between an application of Forward~ filed January 13, 1944, and a patent to Backward 1 issued May 1, 1944. Backward's patent was granted on an application filed December 15, 1942, and allowed ,,.-December 29, 1943. Who haa the burden of proof, and what was its character?

)l. What two distinct events or sets of ~vents amount to a "completion of the invention," so that, if shown in an affidavit under Rule 75, they would dispose of a patent disclosing but not claiming the invention?

)2. JonBs, an inventor of a machine, who had hired Smith to perform tests on this machine in order to demonstrate its utility, received Smith's report as to the tests, but did not witness the tests. If Smith could testify in an , interference that the machine had performed successfully when subjected to rigorous tests, haw adequate would Smith's testimony be to establish reduction to practice by Jones? Give reason for your. answer.

)3. On April l, 1935, Smith began manufacturing a nut­treating machine described but not claimed in a patent to Kohler issued May 15, 19)4. Kohler filed an application for reissue with broadened claims covering Smith's machine on January 2 1939; received his reissue patent on June 24, .1936, and thereupon 'sued Smith for infringement, Smith knew nothing of Kohler's patents prior to the suit. Indicate, depending upon your views as to the correct decision, why {a) Kohler or (b} Smith should prevail.

34. At 7 p.m. in San Francisco, California, on December 3, 1943, James completed the drafting of a response to the rejection ot all the claims in his application, .that rejection having been mailed to him on June J, 1943. How could James have complied with the statutory requirements · for a response .to the Patent Office rejeotion?

35. The junior party to an interference took testimony which · · showed and was confined to showing that he actually reduced ur<'. the invention in issue to practice on November 1, 1932. His preliminary state.rnent alleged actual reduction to practice . during January l9JJ. The filing .date of the senior party, who took no testimony, was December 27, 1932. Indicate, according to your opinion of the correct decision, why the junior party {a) should, or (b) should not prevail.

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DEPARTMENT OF COMMERCE UNITED ST~TES.PATENT OFFICE

EXAMINATION FOR REGISTRATION TO PRACTICE

NOVEMBER 15, 1948

Paper No. 2 Time:· 3 hours

This paper is in two parts and requires the drafting of six claims as indicated.

Pl\RT NO. 1

·APPARATUS CLAIMS

Draf'·t three claims .of varying scope covering the poultry decapitator shown in the accompanying drawings.

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46

13 POULTRY DECAPITATOR

PART NOo 2

METHOD CLAIMS

Write three method claims based on the disclosure below of a method or making a brake lining:.

Claim 1 to cover this method ln broad terms.

Claims 2 and 3 to cover distinct species under the broad claim.

MANUFACTURE OF BRAKE LININGS'

This invention relates to brake linings for auto­mobiles and similar vehicleso

In the present invention asbestos is used as the basic material and is held together with a metallic binder. To get the two materials into the necessary close aesociation the asbestos is heated to drive out moisture and to destroy organic matter, · the metal is then applied to the asbestos in the molten state, and the excess is afterward squeezed out. The metal used must be relatively soft to avoid scoring the brake drums, and should melt at a relatively low temperature, to facilitate manufacture. Lead is therefore proposed far the purpose, but it should be understood that other metals or alloys may be employed without depart~ng from the invention.

The asbestos used may be either loose or woven. In the latter case a very heavy asbestos fabric is prepared, with or without brass or other wire but without cellulose. This fabric is made up in the form of a roll, which is immersed in a bath of molten lead. After impregnation of the fabric by the lead hes taken plaoe, it is passed through rolls under heavy pressure. Most of the lead is forced out and the material that remains is simply asbestos with a small quantity of lead filling the interstices.

While the sheets that go through the rolls are preferably narrow, it is not necessary that they be the _ exact size of the finished lining, for the material, held together by the metallic binder, may be trimmed as desired regardless of its weave. The asbestos must be freed of oxygen or air before immersion, as otherwise lead oxide would tend to form about the asbestos and retard or prevent impregnation.

One method of accomplishing this is to place the rolls or asbestos in a closed chamber and to exhaust the air from the chamber, and then to admit nitrogen until the atmospheric

pressure is restored, when the fabric may be removed for impregnation. .Appropriate steps should be taken to prevent oxidation of the lead bath, and to prevent impurities reaching the fabric.

When "loose" asbestos is used, similar precautions must be taken to remove oxygen associated with the asbestos, and steps must be taken to ensure immersion~ since the asbestos would tend to float on the surface of the molten metal. After impregnation surplus metal is removed. between rolls or presses, Finishing operations may bt course be carried out after a reheat if so desired.

Another inorganic substanoe which may be used as a binding material .is sodium silicate. In this case as before the asbestos may .be either woven or loose, and after impregnation with the liq~id; is subjected to pressure to drive out surplus liquid and to consolidate it. It is then placed in an oven and baked,