Patent Resources Group is pleased to present another installment in the Patent Bar Review Question of the Week series. This week’s question was number 49 on the April 2001 morning exam session. Be sure to return at the end of the week because that’s when we’ll post the USPTO’s Model Answer along with detailed commentary and further analysis by PRG’s Academic Director Paul Gardner.
If you’re new to our series please check out our previous installments here:
- Question of the Week #1 Roundup
- Question of the Week #2 Roundup
- Question of the Week #3 Roundup
- Question of the Week #4 Roundup
Question of the Week No. 5 (Q and A No. 49 from April 2001 Exam, Morning Session):
QUESTION: In regard to disclosure of a utility in a nonprovisional utility patent application filed in the Office in April 2001, which of the following is not in accord with proper USPTO practice and procedure?
(A) For each claimed invention an applicant need only provide one credible assertion of specific and substantial utility to satisfy the utility requirement.
(B) A patent examiner can properly support a rejection based on lack of utility by providing documentary evidence regardless of the publication date to show a factual basis for the prima facie showing of no specific and substantial credible utility.
(C) Using a complex claimed invention as landfill is an example of a specific and substantial utility for the claimed invention.
(D) An invention has a well-established utility if a person of ordinary skill in the art would immediately appreciate why the invention is useful based on the characteristics of the invention, and the utility is specific, substantial, and credible.
(E) Where the asserted specific and substantial utility is not credible, a prima facie showing of no specific and substantial utility must establish that it is more likely than not that a person skilled in the art would not consider credible any specific and substantial utility asserted by the applicant for the claimed invention.
Don’t forget to visit us at the end of the week to read the USPTO’s Model Answer which has been modified to accommodate Rules and MPEP changes that have been made since the question was first released as well as Mr. Gardner’s detailed commentary and analysis.
For more information on preparing for the Patent Bar, please see our Patent Bar Review Course homepage, where you can get information on upcoming dates and locations for the course, including New York in September, San Francisco in November, and Dallas in December. If you aren’t able to attend in person, you can even take the review courses via extensive home study DVD course materials.
No matter how you take the course, you’ll receive thousands of dollars of study material and software, an exceptional value. The PRG Patent Bar Review Course is the authoritative Bar Review course designed to get you the best results.
This post was edited by Julie Cook.