EXAMINATION FOR PROMOTION OF FIRST AND SECOND ASSISTANT EXAMINERS.

January 18, 1923.

Note,-The answers to the following questions have been carefully prepared and are believed to be substantially correct. They have not however been passed upon by the office authorities and are not therefore official.

Question 1. What is the procedure in suggesting claims for interference under the following conditions? (a) To an application in issue where the final fee has been paid.

(b) To an application in interference when the claims to be suggested are not related to the issue of the pending interference.

Question 2. State what the examiner should do on receipt. of an amendment in issue. What are the essential features of an examiner's answer to a petition to revive?

Question 3. What action should the examiner take(a) When an appeal is filed from an action which he regards as not appealable?

(b) When a petition is filed from an action which he

considers as nonpetitionable?

Question 4. X filed February 23, 1906, and obtained patent December 15, 1908; Y filed original application September 2, 1905, and obtained patent April 27, 1915. Y filed divisional application March 31, 1915, containing a claim canceled from original on December 1, 1906. X's patent contains claim to same subject matter as Y's claim, readable on Y's divisional application.

(a) Should Y's claim which is readable on X's patent be rejected?

(b) Should Y be permitted to have an interference with X's patent?

Question 5. An applicant copies claims from an unexpired patent within one year of its issue, and also has claims covering matter disclosed but not claimed in the patent. All claims being rejected on the patent, he files an affidavit merely stating that he made the invention prior to the filing date of the patent. What should the examiner do? Question 6. (a) What change by the examiner, if any, does the filing and the final determination of a reissue application necessitate in the record of the original patent?

(b) In response to a requirement of division, applicant

elects species a without traversing the requirement or canceling the claims to species b. After allowance of all claims to species a and final requirement for cancellation of the claims to species b, the applicant files an appeal to the examiners in chief. What action should the examiner give?

Question 7. In what actions by the examiner should a time limit for reply or appeal be set?

Question 8. State everything that should be done by the examiner on submission to him of a request for the issuance of a certificate of correction to remedy a mistake on the part of the examiner or his clerk. Question 9. (a) Who may sign the petition for the renewal of an application?

(b) What parts of the original application may be used in a renewal thereof?

(c) Can an applicant waive his right to pay the final fee and file his renewal prior to the expiration of the six months?

(d) Under what circumstances, if any, may an applicant be required to explain delay in filing a renewal?

Question 10. In the following affidavits, is it necessary to state that the invention has not been abandoned? (a) Oath in original application.

(b) Oath in reissue application.

(c) Oath in divisional application.

(d) Supplemental oath.

(e) Oath to antedate a patent claiming the invention. (f) Oath to antedate a patent not claiming the invenvention.

Question 11. Name three important factors which should be considered in determining whether the adaptation of a machine originally designed to be used in one industry for use in another industry constitutes invention?

Question 12. (a) The examiner is of opinion that the disclosure of the invention is insufficient. What should be his action?

(b) An applicant in case x relies on related case y, filed the same day, for complete disclosure of the operation of the invention. Taken together, the disclosure is complete for case x. What action on the point should the examiner make in his first letter in case x?

(c) Should an amendment supplying from case y the deficiency in case x be held to constitute new matter?

(d) The disclosure in an application is complete as to method of operation, but the applicant states he does not understand the principles of its operation and therefore does not give them. What action with respect to this statement should the examiner take?

Question 13. What is the effective difference, if any, between a final rejection under Rule 68, as on references, and Rule 132, following a judgment in interference? State answer briefly.

Question 14. August 1, 1920, A files an application containing claims copied from a patent granted January 1, 1920, and also claims which are met by references. What should be the examiner's action? Question 15. (a) When, if ever, is an examiner justified in requiring corroborative affidavits to support an affidavit filed to overcome a cited reference which shows but does not claim the invention?

(b) Indicate by number which, if any, of the following grounds of rejection may be sufficiently answered by affidavit:

1. Anticipation by printed publication.
2. Lack of utility.

3. Lack of invention.
4. Abandonment.

5. Public use or sale.

6. Inoperativeness.

7. Aggregation.

8. Want of identity with invention originally disclosed.

9. Original patent not invalid in application for reissue.

10. Personal knowledge of employee.

Answers.

1. (a). Notify Issue and Gazette Division not to apply the final fee. Write to Commissioner and request authority to suggest the claim in the allowed application. The patent must issue within three months after the payment of the final fee unless withdrawn-Rule 167. If there is not sufficient time to make or refuse to make the claim before the application must be prepared for issue the application must be withdrawn immediately.

2.

(b). Request the Commissioner to restore jurisdiction of the application to the primary examiner for the purpose of suggesting claims.

If the amendment can be entered under Rule 78 follow order No. 2698 (see also notice of Aug. 1, 1922.) If the amendment cannot be entered under Rule 78 write an answer to the petition giving reasons for not recommending its entry.

In answering a petition to revive an abandoned application the examiner should state

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the date when the application became abandoned, whether the amendment, if any, is responsive, and if not, in what respect it is defective, and whether it puts the application in condition for allowance. If no amendment is filed, or if the petition is not verified, the answer should so state. See notice of June 18, 1920. (a). The examiner should notify applicant that the appeal does not appear to relate to an appealable matter and from the examiner's action applicant may take a petition to the Commissioner as provided in Rule 135.

(b). The examiner should answer and forward all petitions to avoid compelling applicant to file a second petition to compel the examiner to forward the first petition to the Commissioner. 4. (a). Y's claim should be rejected on the ground that his delay of more than two years after X's patent issued, in presenting the claim and insisting upon it bars his right to assert the claim even in a divisional application-In re Nathan, 301 O. G. 183; Chapman & Chapman v. Winthroat, 272 O. G. 913.

5.

6.

(b). No, because the claim is not allowable in Y's

application-Rule 94.

The examiner should proceed to institute an interference between the parties on the claims copied from the patent. The affidavit is not sufficient to support the claims covering matter shown but not claimed by the patentee because it does not meet the requirements of Rule 75, but an affidavit under Rule 75 may be regarded as unnecessary by the interference proceedings, Ex parte Sorlle, 90 O. G. 2133.

(a). The examiner should place in the patented file a notice that an application for reissue has been filed and the date when filed. When the reissue is granted or the reissue application is other