Last Revision August 7, 1998.

If this download is burdened with extra carriage returns (ie double spaced), run it through my CLASVIEW.BAS to pull them out, or Email me and I will Email a short program that de-dubbles the file..

links to: MPEP/ 37CFR/ 35USC INDEX AND CROSS-INDEX BASED ON QUESTIONS FROM OLD EXAMINATIONS. (1991-1997) . Simpler to use, no junk, combined, and more relevant than the "official" indexes in the MPEP.
Plus other study tools.

                              TEST TAKING TIPS
                           PATENT BAR REVIEW COURSE
                               TEST TIPS
                            February, 1997
                             June  2, 1997
                             June 21, 1997
                             July 25, 1997
                             Aug  24, 1997
                             Aug   7, 1998
The US Patent Bar examination is open to people with an engineering or
certain other natural science degrees, essentially the same requirements
as state engineering EIT registration, which incidentally, is a
sufficient qualification by itself.  Being an attorney does not count.
No actual engineering experience or showing of technical competence is
required.   If it was, few attorneys would be eligible.
The examination is written in a manner significantly favoring young 
attorneys.   The style, the intensity, the type of questioning, the length 
of the sittings, the need for a good memory, reading skill, certain test 
grading rules, and not too much real-life experience or common sense, all 
add difficulty to the older examinee, and even more to the person who 
has been practicing engineering for a long time.  Most of these can be 
overcome by diligent study and a knowledge of the structure of the 
examination, some of which is described herein.  
Age, age related conditions, and personal handicaps making the examination 
unreasonably difficult might be petitionable for relief, but may require 
challenge through the Citizens' with disabilities acts to be recognized.     

Some handicapping conditions like be pregnancy, diabetes, prostrate 
problems, circulation problems, and the like all operate against sitting 
for an intense 3 hour examination, and hence uniquely burden the applicant 
contrary to the spirit if not the letter of the law.   Secret --- The PTO 
let it slip that they do make provisions for pregnancy.  They have given 
at least one preggie a few extra minutes.   (personally, I would rather be 
spotted a few points.)    

 These Tips were written over a period of years.   Rules change.  The 6th 
edition (now on Rev 3) of the MPEP is changed considerably from the 5th

Among other things, Provisional Applications have come into the rules.  There 
are some unique (non-traditional, non-conforming to past practice) details 
relating to Provisional Apps.  In particular about the holiday rule does not 
apply to Prov Apps expiration date.  The PTO likes to test on new and obscure 

The indexes were prepared from the answer keys published by the PTO.   Again 
rules change and old answers might not be correct.  Also, the PTO makes 

Simply put  ----   The indexes and tips have value, but as part of your study, 
verify the current position.

                   TEST TIPS  ----  MORNING SESSION
Nothing beats a good index except a photographic memory and lots of 
studying.  The indexes published in the MPEP are marginal, and divided 
between the 35USC,  37CFR, and MPEP.  The most valuable is the MPEP as the 
MPEP usually cites both the CFR and USC.  You will have time enough to look 
up only abut 1/3 of the questions, and even then you should be familiar 
enough with the documents to quickly separate the junk from the relevant 
reference material by scanning familiar material.  If you can borrow one, 
use a portable computer with a good search engine and a copy of the MPEP in 
RAM, on disk, or CDROM.   

Check with the OED about whether computers are still allowed in the current 
examination.  I have seen them used in the morning session.  They do not 
seem to be allowed in the Afternoon session.  Noisy keyboards and beeps are 
NOT allowed.  Besides, the afternoon test is closed book and requires that 
you write your claim in the official "blue-book" supplied along with 
scratch paper.   The scratch paper is collected when you turn in your blue 
book.          -----> I HAVE CHECKED WITH THE PTO (1997) AND A WILMA TURNER

Examinations for 1995 and earlier are based on the 5th Edition of the 
MPEP.   The 5th Edition has had 16 revisions and few older questions refer 
to deleted or revised paragraphs.   These are obvious when looked up.  
The August 1996 examination is presumably based on the 6th Edition.
The 6th Edition has been revised considerably over the 5th edition 
combining and moving paragraphs.   It is not known if many significant 
rules have been changed.   PPA has been added.  Most of the changes I am 
familiar with are essentially editorial and for the better.   However, the 
information may be in different locations and much more exemplary 
information has been included.  

I have prepared a composite index of all three reference documents based 
on the questions asked since 1991-1997.   It is an index and DOES NOT 
HAVE THE QUESTIONS OR THE ANSWERS, which are against the rules to take into 
the test room anyway.  It does reference all three sources using words, 
phrases, and multiple-entry cross indexing forms more likely to come to 
mind than the "official" wording of the MPEP indexes.  My index is 
available free to all practicing engineers and scientists taking the 
examination for registration.  
A companion index ranking subjects by their frequency of occurrence in 
past tests is included.   It MUST NOT  be taken into the examination 
since the questions are identified and might be construed as "questions" 
and "answers", which are not to be taken in.    Also, it has no practical 
value as a test aid or index.  
Also included are additional observations and analysis of old tests.  

To Professor K's Bar Review Students:
Prof. K's lecture notes are superb and cover a very high percentage of the 
bar questions.   His course notes alone are almost enough to pass the test 
if you can find your way through them.  They are no-nonsense, succinct, 
yet adequately detailed, especially if you added margin notes during his 
lectures.  BUT they are not (or were not) indexed.   Making up a GOOD 
index of them is an almost sure winner.    I made up the index during the 
lecture itself.  It was a small distraction, but took up only a small 
percentage of the time.  
  Better, Know the material, but prepare an index anyway so you can 
quickly  dig them out for verification.  Many bar questions rely on 
selecting the answer option having the correct long list of obscure 
details.  Prod K usually has the complete  needed/not needed details.    
The good Professor has an uncanny ability to anticipate test questions.  
If he or one of his instructors said something is important, "it has been 
a long time since this was asked", or some such emphasis, 
                             Write it down!!!!                    
                       It WILL be on the next Exam!.

I have found that one of the best ways to prepare your reference materials is:

A.  Don't take too much stuff,  You cannot use them anyway.  If you do not
     know your references thoroughly, they are useless because you cannot
     find what you need quickly.  The biggest common offender in this
     matter is Prof Kayton's otherwise excellent 6 volume "Patent Practice"

B.  I split the MPEP into 3 3-ring binders.  
     The first contains 100-1500,
     The second 1600-end, 37cfr sections 2-10.  
     The third has 35USC, 37CFR, the INDEX to the 
     MPEP, and my Index97 and "study notes". 
     It is important to put the various indexes in one or more separate
      binders even if they are the rivet-type file folders.  This saves 
      flipping pages between the index and the text portions of the MPEP.
      Especially useful if more than on index line has to be referred to.
     My index is more usefulits own separate binder. 
     Most questions can be answered from either
     my notes or MPEP 100-1500.  However, in 1997, a very large percentage
     of the questions were directly from MPEP 2100.   Know this section!!

C.  I have found that the CFR is the most concise universal reference, but
     the MPEP is generally preferred for study because it reprints the 
     appropriate CFR reference and has expanded textural information and/or
     examples.   Use the CFR or MPEP, whichever you find most familiar.  
     Your study volume should be highlighted and annotated during your
     study, especially the key words and whether a fee is or is not required.
     The new stuff in Rev 6 is very well done, especially 2100, which repeats
     or expands or re-catalogs much of what was in 700.
    None of the MPEP indexes is complete or cross-indexed, and they are
More tips:
An evaluation of old tests has revealed several interesting foibles.
1.  In earlier tests, if a question had an answer option of "all/none of the
    above",  the correct answer was most often the all/none choice.  Recent
    tests have not continued this pattern.   Scan the other choices with
    easy answers or answers you know.   This may immediately eliminate or
    hint toward the all/none choice.
2.  The last 6 (through 1994) tests have had 27 questions on USC 102.
    35USC 102 A, B, & E are represented approximately equally.
    D is the answer only once.
    None for C, F, or G.    See file "byfreq96.txt"    
      1997 analysis of these points has not been done.

3.  Watch for holidays, PTO likes to ask about period expiration dates
    which end on weekends and holidays.   Clue -- A day of week or common 
    holiday date is  mentioned.    Big ALSO -- An Express mailing on Sat, 
    Sunday, or Holiday in DC used to be given the NEXT working day as the 
    filing date.   (How can a mailing be made on Sunday or a Holiday??  
    Easy, The Airmail Facility Post Office at many airports is open on 
    A rule change (OG 1192, Nov 26, 1996) makes the filing on the date of 
    deposit without regard to Sat. Sun, Hol.  The Rev 2 of the MPEP does 
    not have this change yet.  Beware.    

3a.     Except for Provisional Applications  ---  Provisioal Apps
        run for 1 CALENDAR  year independently of the day when the year ends.  
4.  The first day of a safe period is safe.  Period defining dates are
    inclusive.   ie.  Nov 1, 1993 through Nov 1, 1994.  (1 year + 1 day)
    even though the statute may say "1 year".    Terminal dates of periods 
    expire at midnight.   Therefore, for example, if a 3 month period starts
    on Aug 2, 3 months is Nov 2 and the drop-dead hour is 
    Midnight Nov 2 (immediately after 11:59:59 PM)

5.  Watch for inventions made in Canada or Mexico.  Nafta countries are 
    treated differently.   Verify the current status of both NAFTA and GATT
    modifications to the historical rule.   Most of usc102 is NO NAFTA zone.
    usc104 implies that for some purposes GATT is equivilant to NAFTA.  If so,
    this is a pervsion of the Constitution, Neither NAFTA or GATT are not
    ratified treaties.

6.  Make up a time schedule in 10 or 20 minute  or 5 or 10 question 
    intervals.   One is included in the index files.  
    Keep on schedule.  You have an average of 3.6 
    minutes/question.  You MUST answer all 50 questions.  
    You cannot pass if not all have been tried. 
    Use any extra time to review questionables. 
    Take care not to panic and not to doubt all your answer choices,
    there is not enough time.    
    If you see yourself running out of time without finishing, mark where 
    you stop answering questions, put random pattern onto the unanswered 
    questions.  You just may get some.  In fact, you probably will get 
    more right than you would by using the last few seconds to answer the 
    present question. 

    Make sure you have time to complete the guesses.  
    Then go back and consider as many of the 
    guesses as you have time for.   Perhaps a scan can answer one or more 
    obvious ones or eliminate obvious wrong choices. 

    If you have cause to petition or sue for leniency because of a 
    handicap, the marking of the last considered question may be crucial 
    to your argument.  

7.  Mark up the test booklet.    Devise a set of consistent markings and 
    use them generously.   Mark T/F questions T or F,  strike out the 
    obvious incorrect answers, and for EVERY question, mark or circle the
    correct answer.  
    If you are doubtful about which is the correct answer, mark 
    the question with a priority code  for quick return and review.    
    The primary purpose of marking the selected answer in the test 
    booklet is if you should, as expected, get off mark in marking the 
    test answer sheet, you can quickly find and repair the error.   
    Review the test sheet position often to catch when you get out of 
    order before much damage is done and it is still quickly correctable.    
    DO NOT mix  A, B, C, etc which are part of the question, ie USC 102 
    A, B, C, etc  with answer options A, B, C, etc.  This is an easy 
    mistake to make.  Marking the book helps greatly.  
8.  Take a GOOD eraser, several #1 or #2 pencils, pencil sharpener, 
    reading glasses, Kleenex, clock, food, water, and a sweater or 
    shawl for cold air-conditioning drafts, comfortable clothes for
    sitting, especially shoes and loose slacks.   Too many books is
    a burden, and there is no time to use any you are not totally 
    familiar with.   

9.   There is some question whether a computer is allowed.  It is not
      in the afternoon.  (old format)
      I have seen them in the morning session, but
      have not seen any specific instructions in Admissions bulletins 
      for a long time.   In any case, noisy keys are out.  
      Ask the PTO.  Maybe the PTO website tells,
      The admission papers are posted there.   
          [  I CHECKED AND THEY ARE NOT ALLOWED in 1997 ]
10.  If you wear glasses, wear the ones most comfortable for READING, not 
    driving, etc.    Bifocals cause neck strain in intense reading 
    situations.  A magnifying glass may be handy if your test copy has a 
    bad print on some feature.   

11.  Schedule time for a quick stretch.   Then do them regularly.
12.  Scout the territory.   The day before the test, check out the test 
     site to prevent surprises.   Find:    Parking/bus stop, traffic, 
     testing room(s), restrooms, food, prices, power outlets for a battery 
     charger, lighting, etc.  If you can, select a test room nearest to 
     the appropriate restroom.   Someplaces pre-assign the rooms.   
     Consider taking your own lunch and eating it outdoors to rest your 
     eyes.  In any of the examinations I have taken, the doors have been 
     locked during lunch break.  You can leave your books in the test room 
     during lunch.  
13.  Get a good night's sleep for SEVERAL nights prior, and watch your 
     diet including vitamins, coffee, medication, etc.  
14.  Keep Clam.    (a Seattle slogan) 
                   TEST TIPS  ----  AFTERNOON SESSION
DIFFERENTLY. ----  Rev. July 21,  1997 

The PTO licensing test, Afternoon Session, is replete with peculiarities,
idiosyncrasies, inconsistencies, and out-right violation standing of PTO 
rules, and worse, the stated rules of the test.
The following has tips to avoid as many of these as can be identified.
These tips are distilled from the model answers,  a response to a petition
for re-grade, and from the actual grading instructions used by the PTO
acquired with a FOIA request.
Don't forget  --
   Only 1 capital and only 1 period per claim.     [-1 point]
   Preamble wording =     I claim:
        1.  An  xxxxxx  for    yyyyy comprising:   [-3 points]
          The two 1995  examinations have required method claims.
        1.  A METHOD of preparing xxxxxx for yyyy, using zzzz, comprising:
              (from PTO model answers)
              The instructions usually require the steps to start with a
              particular step.    Often, that is an inadequate starting
              What to do?  Recite the setup or other conditions in the
              Preamble.    Be sure to work in "the word method". [- 3 points]
              Note that " ... , WHICH COMPRISES THE FOLLOWING STEPS:"  was
              used in at least one model answer.
   Improper claim format. ie Jepson, or method when not instructed.
                                              [-40 points <---- ]
    Method step wording =   Use the gerund (ing) form not the present,
     future, other conjugations, or infinitive forms.
                      ie    turnING on switches a,b, and c ---
                            catchING the tuna -----
  Claim numbers are plain.  ie  1.  2.   Do not use "Claim 1" after
      "I Claim:".    [-2 points]
   Markush wording =    Selected from the group consisting of A & B.  or
                         --  wherein M is A, or B,  or C.
                     USE  "CONSISTING OF", never use COMPRISING.   [-2 points]
                     take care in  the use of "OR" and "AND"
   Multiple Dependent wording = The xxxx according to claims 1 OR 2 wherein
                                said zzzzz further comprises:
                            or  An xxxx according to claims 1 OR 2:
                                 always use OR, never use and. [-3 points]
  Clam drafting questions or parts:
   Read Instructions for each claim CAREFULLY THEN REMEMBER THE FOLLOWING:
   Keep close track of "Objects", cite them all, even if old art. 
   Easy to lose points here.        [-5 points each]
   Watch for elements identified as "critical" or "important",  These are
   expected to be used in your claims, (usually the independent claim) even
   if they are prior art.   Do not put in any other features or elements.
      [-3 points each for missing criticals,  -2 each for unnecessary
      elements or limitations]
   Question (to PTO):  "Applicant argues that a problem lies in that not
all of the elements listed in the OBJECTS OF THE INVENTION may be
considered novel, and that it is unclear as to what elements are to be
considered as necessary for inclusion in the claims.
   PTO Reply:  "The purpose of listing the elements in the OBJECTS OF THE 
INVENTION is to stipulate what the inventor considered to be the invention 
as a whole, which may indeed include some elements known in the prior art.  
There is no requirement that EVERYTHING mentioned in the OBJECTS OF THE 
INVENTION needs to be novel.  As for the particular inclusion  of elements 
in the claims, these were clearly defined by the DIRECTIONS FOR THE 
MECHANICAL OPTION in conjunction with the OBJECTS OF THE INVENTION and the 
DESCRIPTION OF THE INVENTION.  In particular, claim 1 required the 
structure both stipulated in the OBJECTS OF THE INVENTION and referred to 
as critical in the DESCRIPTION OF THE INVENTION, while the remaining 
claims referred to the specific structure mentioned in the DESCRIPTION OF 
   Question (to PTO):  "Applicant questions why certain items which may be
in prior art are to be included in the claims, while other items which may
not constitute prior art are not to be recited the claims."
PTO Reply: "The basis on what structure is to be recited depends on what is
being required per the DIRECTIONS FOR THE MECHANICAL OPTION, irrespective
of whether some of the structure may be prior art.  If structure considered
by the applicant as necessary is not called for in the DIRECTIONS, then is
should not be in the claims.  Also, at no time is a claim to be drafted so
as to be completely readable on prior art.  Thus, claims drafted in the
examination, as in reality, can be a mixture  of old and novel structure."
Comment:  This appears to be in direct contradiction to the instructions
which say "..., and which is not anticipated by the prior art"  !!!
However, if the instruction sentence is diagramed and carefully analyzed,
it can be construed that the anticipation relates to the word CLAIM, which
is the PTO position, not a sub-part.   REMEMBER THIS DISTINCTION.  IT
The correct answer still requires a portion of dumb luck to anticipate the
PTO.  It appears overall, that leaving out a non-critical element, as
defined above, is less likely to lose points than including one.
   Use EXACT WORDS including ADJECTIVES from test text.  [-3 points]
   Failure to interrelate structure when asked to do so.  [-3 points]
   Failure to recite structure  or purpose when asked to do so.
      [-5 points]
   If the claim declares an element is 4 parts, ie 4 holes, 3 legs, etc.
   use the number, not  "Plurality".   [-10 points].
   Follow directions closely (except in the wierdos)  [- 2 points]
   Spelling, grammar, capitalization.  Watch for "the the" type errors left
   over from eraser editing, and large "capital" first letters in words
   from sloppy penmanship.  -1 point each.
   Two sentences in a claim   [-3 points]
   Misdescriptive and inferential claiming (describing an element rather
      than calling it by name).    [-2 points]
   Element outside invention (when not needed by the "directions??").
       [-4 points].
   Using means plus function to describe a named element.  USE THE NAME!
       [-4 points]
   Check your claim numbering.   -2 points if misnumbered or missing.
Product by process:
No previous test (afternoon session) have required product by process
claims.  However, only two have required method claims  (in 3 of 6
options).  There have been two morning session questions on product by
Just in case, review Product by Process forms.  Also MPEP 706.03 e and
805.05 e, f, & g.    Also in Patent Practice by Irving Kayton, Chapter 10.
While an ordinary claim may contain a detail that is in fact a product by
process activity, it would be expected that a test question would require a
preamble distinctly identifying the claim as a product by process type.
  Example:   An article of manufacture prepared by a process comprising the
steps of:    (derived from Kayton, 5th edition,  10-44)
Note the similarity to Method Claims.
The PTO does not follow its own rules of practice and worse does not always
follow the rules set for the examination.
May 1995 test required a multiple dependent claim depending on two previous
claims, one of which, claim 2, did not relate directly to the multiple
dependent claim, thus, violating the test instructions to do the best for
the client.  They want the "best" for the PTO.  Obviously, these are trick
questions.   (the multiple dependency on claim 2 claim as presented in the
model answers does not further limit anything within the claim 2.
Therefore such a multiple dependent claim would cost the client a multiple
claim fee for no purpose, which is not in the Client's best interest per
the instructions)
Features you might deem to be prior art must be claimed if the feature
is named in the "objects".
The test text may use wording that is inconsistent with, and even 
describe an impossible-to-construct invention using the ordinary
definitions of common words.  Too bad.  The text and drawings rule.  They 
re-define the words.
Some of the points lost shown here are different when the offense is in the
independent claim than when it is in a dependent claim.
A Strategy:
The three options, mechanical, electrical, chemical are clearly prepared by
three different teams.
Choose your option.   Despite 40 years as an Electronic Engineer and 
developer of several products, I find the electrical option usually 
incomprehensible.  I choose the mechanical option as more straight 
forward and understandable.  In fact this is one of the problems faced by 
experienced engineers during the Examination for Registration.  We have 
too much generalized real knowledge and common sense.  The test is 
designed by and for Attorneys without much practical engineering 
experience even though being an engineer (but apparently not necessarily 
a competent engineer) is the ONLY prerequisite.  There are specific 
faults for which points are deducted that are well within the regular 
techniques and habits of practicing engineers.  Slipping into Upper Case 
letters is one of them.  
1.   Read the Directions first and watch for the elements mentioned to be 
included in the answer claims.    Highlight in several colors, mark 
critical points so they can be found.    Especially "Objects", and 
elements identified as "critical", or "essential" (even if prior art).    
Pencil in marginal notes and indexing marks.  
2.   Do a rough OUTLINE of the claims on scratch paper using the test 
directions as a guide.  (paper is supplied by the PTO).  List the 
objects, features, and points to be put into each claim.   DO NOT attempt 
to write the claims on the scratch paper for transcription to the blue 
book.    There simply is not enough time for copying.  
3.   Fill in the critical points.  Especially the elements listed in the
"objects", as "critical", "it is important", "must have", etc.
4.   It is better to have too much than too little.   Although including 
un-necessary limitations looses points, as does too little interrelation, 
you lose more points by missing something the PTO insists should be 
The examination would be difficult enough even if it was clearly and 
unambiguously drawn.   It is nearly impossible to pass without an 
understanding of the foibles and idiosyncrasies of the PTO.  
Actually, when the test is understood in the light of the need to keep 
the specification compact for use as a test,  it generally quite good.  
Minor problems occur because of editing requirements and the PTO 
occasionally makes a dumb mistake which they vigorously and stubbornly 
The reply to a request for regrading re-stated the PTO position and 
clearly misstated the actual content of the Instructions.   Obviously, 
the "secret" or "hidden", even if unintentional,  PTO positions must be 
anticipated (or followed by sheer luck).  
The test looks like the same crew edits an existing patent into a 
compacted version for the test, makes up the instructions, writes the 
model answers, and finally makes up the grading key.   Mistakes are made 
in the edit and instructions that should be caught if a second crew tried 
out the test.  Also, there are style differences suggesting that the 3 
options are made up by different teams.   A simple patent search has 
found the model patents.  
Electrical Option:
If you should decide to tackle the electrical option, remember the 
following and you should be able to do it: 
1.   Most electrical components have at least two terminals, and both 
must be connected to something.  
ie.  an on-off switch having two terminals selectively connecting said 
terminals thereby completing or opening an electrical path  and; 
a battery having two terminals, to one being connected to a common buss, 
the other to one contact of said on-off switch ----
An electrical claim has THREE PARTS:
1 the elements and their functions,
2. their interconnections, including the power connections, 
   essentially a word description of the wiring diagram,
3. and the path(s) of the signals.
   an antenna for receiving signals;
   a receiver for selecting and demodulating signals having an RF input and
an audio output;
   an audio amplifier having an input and output
   a loudspeaker for converting electrical signals to sound,
where the antenna is connected to the input of the receiver which has its 
output connected to the input of the audio amplifier which has its output 
connected to the loudspeaker,  whereby a signal captured by said antenna 
is converted to audio signals by said receiver, and said audio signals 
are amplified by said audio amplifier, and said amplified audio signals 
are converted to sound by said loudspeaker.  
Add power wiring;  battery connected to the toe bone, etc.  It is 
intuitively obvious to all mechanics of ordinary skill that an electrical 
circuit is closed and contains both outgoing and return paths,  but not 
to the PTO.  Don't forget the ground returns which must ultimately go the 
battery.   Don't verbally daisy chain power or grounds the connections 
are connected to the bus in parallel..  Daisy chaining probably would 
lose points as unnecessary limitations.  

Evaluation of old afternoon tests which included parts having multiple-guess
questions illustrates the PTO has remarkable ingenuity in obfuscating
the correct answer.  In one, the correct answer was a poorly worded claim
that probably would not get by an examiner. 
The next best (but incorrect) answer choice was a
perfectly worded and complete method claim.  It was wrong because the
preamble was not for a method claim. !!  

Most of the old afternoon tests focused on claim drafting and/or amendment. 
A few were for how to compose the accompanying remarks.    There is the usual
series on usc 102a, b, and e rejections based on all kinds of combinations
of action sequences.

The wrong-choice answers for claim amending questions mostly are of a
 very few catagories:
   A.  Claim numbering errors.
   B.  Words added/deleted without proper marking.  Incomplete directives. 
        ie, missing uline, "quotes", [brackets], --dashes--.
   C.  (amended twice) faults of all conceivable combinations.
   D.  Mixed forms.  There are three forms for claim amendment,
        1. [] and underline,
        2. cancel and submit newly re-written,  and 
        3. the form suggested for amendment to the specification 
        ie,  --added words-- with where to add "finder/identifier words" in quotes 
        or delete "words to delete" in quotes can be applied for 
        additions of 5 or fewer words. 
        Typically, a mixed form or improper form will be presented such
        as  "added words" in quotes and also underlined. 
   E.  Misdirections " " as to where the change is to be placed.
   F.  Introduction of new matter. 
   H.  Antecedents.  Fix independent claim to provide.  Identify whether
        dependent claim has proper antecedents.  Fix dependent claim
        to not need the questionable antecedent.
   I.  Support for claim from specification.   Similar questions as 
        presented for improper antecedents. 

   J.  In reissue and reexamination cases, the range of amendment forms
        is limited, and all changes are [] uline form, including claim 
        number.     No directives to delete claim.  use [  ] around whole
        claim to delete or uline under whole claim to add,  including
        the claim number.  cfr 1.121(f)
        Reissues applications have a 2 year window
        of opportunity for ENLARGING the scope of claims.

         *   USC102 a, g, e  rely on the reference being before your U.S.
  invention date.    Invention other than filing date can be established
  by affidavit of activity and/or usc119, usc120 documents.

  There is no 1 year buffer in 102 a, g, e.  The date is the date...!

  102(e) reference patents can issue BEFORE or AFTER your invention date.

         *   USC102 b, d   rely on the U.S. filing date, which is fixed and 
  swearing back does not work.   Effective filing date is established
  by USC120, when applicable.

  There is a 1 year buffer prior to your filing date for b & d.

         *   Understanding these is crucial in selecting the right answer
  for many questions on both morning and new afternoon sessions.

Old afternoon questions on reissues have appeared.  Reissues have their own
rules.   Claim amendment is slightly different. See 714.22, 1400, c1.121 
and my notes at *20*

Re-examination  (see c1.121(f)) seems to be ignored, but has characteristics
similar to reissue.    MPEP 2200++ for reexaminations

This is just as important for the morning session as it is for the afternoon
 sessions, as 102 questions, can appear on both. 

Historically, many correct answers in morning and afternoon have depended
upon whether a fee is or is not applied to the action.   Suggest you download
and mark up a fee schedule for quick reference.  Not for the $ amount, but
whether a fee is charged or not.  Also highlight the MPEP as you come across
"fee" in your study.  Fee schedule can be obtained from the PTO website.
A condensed and annotated schedule is on this website.

The "right" answer is often dependent on whether a fee is due or not.   

There has always been questions on whether a deposit account can or cannot
be used to pay certain fees.

The PTO has instituted an internal mailing box system and may be asking about
proper boxes for communications.   Box index is on the PTO site, and again
a condensed version is on this website.

PJ of the OED sent a letter to all August 1997 examinees 
explaining the format of the new afternoon session.    

She said the afternoon session will consist of:
Section I;    15  true/false questions     1 point each    15  total
Section II;   29  multiple choices         2 points each   58  total
Section III;  four options, do 3
              each option consists of a fact pattern with 3 multiple choice
                 questions                 3 points each,  27 total

Open book!!!!

The PTO has always shown a lot of ingeniuity in devising different kinds 
of questions and sneaky distictions between the correct and incorrect

Below are my best guesses on the subjects that may be included and a 
report of one 1997 examinee's conversation with the OED.

1.  usc 102 rejections.   How to argue against or get around.

1a. usc 102 bars          Which 102, a,b,c,d,e,f,or g applies.

2.  usc 103 objections.   How to argue against or get around.

2a. Appeals to the Appeal Board,  Petitions to the commissioner,  
       requests to the examiner.

3.  Amendments to CLAIMS.   forms, method, proper and improper response, 
       antecedents       [ deletes ]    underline  adds.
3a. Other forms for amending claims.

4.  Amendments to specifications.   forms, methods, new matter

5.  Time to respond, extensions, abandonment

6.  Fees due/not due and formal requirements

7.  Amendment and actions after final rejection

8.  Amendment and actions after notice of allowance.

9.  possibly some appeal stuff, although this is outside the announced
      content.   Don't trust the OED to keep their word on anything.

10  PCT stuff used to be in the afternoon session.  Morning has had it
      more recently.

11. Continuations, divisions, CIP, File-Wrapper,  (rules 60, 61),
      restriction requirements.

12. Identification of true inventors  (note, these are the inventors of
      the CLAIMED invention, as contrasted to the inventors of the DISCLOSURES),
      and ONLY the true inventors, must be listed as the inventors at issue.    It costs a fee to add or drop an inventor.

Almost anything important can occur related to an Office Action and be  
  within the scope of the announcement.
I doubt that there will be anything on  ethics,  deposit accounts, 
  application filing requirements,  Express mail, or appeal to the courts. 
  It is an agent exam  (so says the title of the exam) , and agents cannot
  take their clients into the court system...  They can be expert
  witnesses and advisors to the attorneys, who do not have to be patent
  attorneys.  What a messed up legal system we have developed!!

>    1997 correspondence:
>In the course of talking to PTO, got the following info.
>1. The T/F questions are on claim writing, amending, form, etc.
>2. The 4 options are specific areas like Electrical, Mechanical,
>Chemical, The 4th is probably Electro-Mech combined but could be 2 of one
>kind, unlikely 2 chem.  So looks like long fact pattern, 3 questions.
>3. The M/C are probably the responses to claims and claim content.

>Thanks for the info.

>That is similar, but more detailed than what PJ said in her letter to all
>  of us.

> B.
After you take the test, I would like to hear of your feelings about it 
and other stuff.  Especially if you are a career-changing engineer, and 
most particularly if you are over 50, but attorneys and law students are 
welcome to comment.  
Email,  Seattle
----- good luck -----
file: TESTIPS.DOC    August 1995:  Minor Rev February 1997.  June 2, 
1997, June 21, 1997, July 21, 1997 , Aug 7, 1998

                        ESPECIALLY THE WORK FORMS

NOTES ON USC 102 AND OTHER STUFF:                        FILE: USC102.DOC
Old tests (afternoon and morning) had USC102 questions.   They seem to 
have been the most popular subject on all  tests.
In this discussion, the patent under examination will be referred to as 
"your patent (or application)"  as it would be in an application you are 
prosecuting.  Obviously, the question usually names someone else, but 
again, for simplicity and uniformity, it is personalized here.  
USC 119, foreign priority has no effect on USC 102.      
USC 120, domestic priority (continuations, divisions, etc) do count.
NAFTA and WTO do not affect USC 102 when it says "United States", but 
does when 102 says "this country", (meaning NAFTA Country).  These are 
parts where priority has to be established.  See 706.02.

Conception and diligence to Actual Reduction to Practice can move your 
invention date back to conception for determining who is first to invent.  
   CFR 1.131,  USC 102 G

In the absence of other data, Reduction to practice is assumed to be the 
U.S.  filing date.  
There are several sequences of activity of relevance between your patent 
and the reference.   The sequence slightly affects the selection of the 
correct answer.  
  1.   Filing date is Reduction to Practice   (CRtoP).
  2.   Actual Reduction to Practice (ARtoP) is LESS than one year before 
  3.   Actual Reduction to Practice (ARtoP) is MORE than one year before 
  When filing Reduction to Practice, sequence 1 and 2 combine making 102 A
  and 102 B identical for many references.  
  Sequences 1 and 2 make the 1 year grace period in 102 B moot as all 
applicable references fall under 102 A.  
PTO assumes that the invention date in the U.S. (or NAFTA) is the filing 
date (Constructive Reduction to Practice, CRtoP).  
Actual Reduction to Practice (ARtoP) can be asserted by filing an 
affidavit of facts known as Swearing Behind.  
In some cases, the invention date can be moved back to the date of 
conception when diligence shown between conception and ARtoP.   This is to 
claim "First to Invent".   37cfr 1.131 affidavits,  USC 102 G.  
For some older USC 102 questions (from Kayton, volume 7) the correct(?) 
answer is only by ignoring ARtoP clearly stated in the question.   It is 
not certain whether this continues in the later questions.  

NAFTA  ---  A file search of the MPEP, USC, and CFR shows that the word 
NAFTA occurs in the following places:  

   MPEP 6th Ed. Rev 2.
   1.  35USC 104             Some of these may be simply where USC104
   2.  37CFR 1.131           or the CFR are merely re-printed.
   3.        1.601
   4.        1.616
   5.        1.622
   6.        1.624
   7.        1.628
   9. MPEP 706.02 (c)        Study section 706.02 !!!
  10.      715.07 (c)
  11.     2131.05            Study Section 2100   !!!
  12.     2138.02

The WTO has special significance also in most cases where NAFTA counts.

USC 102  was not re-worded to accommodate NAFTA, U.S. MEANS the United 
States Only, but "this country" includes NAFTA countries.  

//  Verify whether Provisional Apps affect USC 102 a-g //

102 E, which has 3 and terms..  

   PATENT MAY BE GRANTED UNLESS :  35USC102  A or B or C or D or E or G
    or F.  

A = The invention was (PUBLICLY KNOWN   or   USED) and  (BY OTHERS)  and  
    PRIVILEGE  MPEP 706.02 (c)] 

    and  (ANYWHERE) or (IN PUBLIC USE  or  ON SALE)  and  (IN THIS 
    PRIVILEGE  MPEP 706.02 (c)] 


D = The invention was (PATENTED  or  INVENTOR'S CERTIFICATE)  and  




Take this set of equations and the screener (below) into the examination.

USC 102 A, B, D, E, and G  are the tricky ones and are the subject of this 
discussion.    F and C refer to the act of invention.   As used in the 
test, answer F is always coupled with fraud, ie false statements, 
plagiarism, idea stealing, etc.  G is obvious.   The other bars are 
"gotchas" not coupled with intent to slip one by.  
The following can be used as a quick screen especially to filter out some of
the several answer choices:
Reference is:
    YOUR PATENT             ------     A, B, D      D = FOREIGN PATENT
    U.S. PATENT             ------     A, B, E      A, E = OTHER'S U.S. PATENT
    FOREIGN PATENT          ------     A, B, D      D = YOUR FOREIGN PATENT

    YOUR PUBLICATIONS          ------     A, B      A = only for foreign
                                                        invention B4 UR U.S.
                                                        reduction to practice.
    OTHER'S PUBLICATIONS       ------     A, B
    USED OR KNOWN IN THE U.S.  ------     A, B      A, B = U.S.
    ON SALE IN U.S.            ------     B         B = U.S.
    ANOTHER'S U.S. INVENTION   ------     G         Catch-all clause.
                                                    INVENTION, NOT A PATENT
                                                    cuz it then
                                                    would be USC102 A.
                                                    CONCEPTION DATE AND
                                                    DILIGENCE COUNTS BOTH WAYS.  


     AT SOME TIME.             ------     C         Not same as abandoning 
                                                    an application.
  A and B are NO NAFTA!.  706.02(c)


1.   USC 102 A, E, and G    are measured against your invention date in the
U.S..  By definition, therefore, for a U.S. invention, YOUR publications,
patents, and uses cannot be BEFORE your U.S. invention and therefore cannot
create a 102 A, E, G bar.    They CAN create a 102 B bar. !!     Your FOREIGN
inventions CAN  be published, or used BEFORE your U.S. invention date,
creating a bar.
2.  Each bar, except E, requires the reference to be before either your 
invention or filing date.  
3.  If the REFERENCE patent is ISSUED AFTER your filing date (or invention 
date), the answer is most likely  102 E or NO BAR.  
ARGH!  If you do make a mistake transcribing, maybee(??) you can argue for 
re-grading if the book is marked.    Very Important and VITAL TO MARK THE 
TEST BOOK.  If you get out of step on the answer sheet, you can check and
remark without having to re-answer the questions.  
5.  The last 7 examinations (to 1996) have had 38 questions on USC 102 . 
A  11 times,
B  10 times,
C   0 times,
D   2 times,
E  13 times,
F   1 time,
G   1 time.
F and G on recent exams.
6.  If the question names a day, either a day of week or a holiday, PAY
ATTENTION!   It probably modifies the answer in an important way by the Sat,
Sun, Holiday rule.   One big nasty is to have a holiday on a weekend which
moves it effectively to the next workday, usually TUESDAY.  This can move an
effective date several days. 

6a    Tricky,  Express mailing on a Sat, Sun, holiday, is now filed on 
the day mailed.   Note the MPEP (rev 2) does not reflect this  change in 
the rules yet.   Also, it is OK to use the special express mail drop 
boxes found at various street locations.   The PTO recommends against 
their use as there is no official Post Office paper work which is needed 
if something goes wrong like the PTO loses the papers.   
7.  First day of safe year period is safe.   One year is  Nov 1, 1993 --->
Nov 1, 1994, inclusive.   So is last day up until midnight.
8.  Apparently disclosure of invention to U.S. Agent for patenting brings 
it into the U.S.  (as ARtoP or CRtoP?) on the date of disclosure.  
9.  Occasionally a date sequence or action is suggested that is un-
realistic, but technically correct and is likely to be the right answer.  
10.  More often than not, "NONE of the above, or ALL of the above is the 
correct answer when either is presented.   Best uneducated guess.   For 
these type questions, scan the choices for those with easy answers, 
preferably answers you know.   If one of them contradicts the ALL/NONE 
choice you may have the answer in hand, but at least have eliminated the 
ALL/NONE choice.  
11.  A U.S. Patent can be used as a secondary reference even if the patent
date is AFTER your U.S. FILING.   (Under USC 102 E)
12.  When there seems to be an unclear choice between an ARtoP and
CRtoP (filing date) choose the filing date.    This seems to be the
pattern of "most" correct answers.   Might be arguable later.  
13.  Sale of RIGHTS is not sale of PRODUCT, ie on-sale,  Rights is a 
private matter and directed at continued development.   NO-BAR.  
14.  USC 103.   "OBVIOUS MODIFICATION" (USC 103) is not synonymous with
16.  USC 112,  21 times.    Summary and Key Words/points:
           Written Description of -             the INVENTION
             manner and process of MAKING and USING it in such full, 
              clear, concise, and exact terms as to enable any PERSON 
              SKILLED IN THE ART TO WHICH IT PERTAINS, or with which it is 
              most nearly connected to MAKE and USE the same, and 
              BEST MODE contemplated by the INVENTOR at time of filing.
	      Also need to prove utility (an illegal invention has no 
              utility. It cannot be used.)  Usually obvious as part of
              how to use, but may require a specific statement of utility.
         One or more CLAIMS distinctly claiming the subject matter which 
          the APPLICANT regards as his  (the?)  invention. (editorial note) 
         An ELEMENT IN A CLAIM for a combination may be expressed as a 
          MEANS or STEP for performing the specified function without 
          recital of STRUCTURE, MATERIAL, OR ACTS in support thereof,   
         such claim shall be construed to cover the corresponding 
           STRUCTURE, MATERIAL, OR ACTS described in the SPECIFICATION and 
           EQUIVALENTS THEREOF.  (ed note: drawings, incorporated 
         A dependent claim is construed to incorporate by reference all 
           the limitations of the claim upon which it depends.  
         Multiply dependent claims to be in the alternative only  (or) for 
           claims previously set forth.  
        See  MPEP USC112 for detailed description of dependent and 
           multiple dependent claims.  
17.  If FEE is mentioned, be sure that a fee is required!!.  If FEE is not 
mentioned, be sure that a fee is NOT REQUIRED.    Typical trick of PTO is 
to omit or erroneously include some obscure point, usually fee, oath, or 
inventor's signature from the lists of items as answer choices.  
18.  Mark up your test booklet.  Circle or mark key verbs and  adjectives.  
Mark the answer choices at T/F/?/Maybe.    Saves having to re-visit 
already decided stuff.    VERRY important if you get lost and have to go 
back and remark your test sheet.    Also helps in going back over doubtful 
answers if you have some left-over time.  
  these are not answers to questions, but general observations.

        On entitled to filing date no earlier than rcvd by PTO
            II.  FedX is not Xpress Mail
            III. Listing of what was sent as application does not mention 
                 OATH therefore, new matter can be entered as a prelim 
                 amendment until the Oath is filed. 
                 Oath not needed to get a filing date .  
            look for publication date after reduction to practice

         Watch for omission of mention of an oath having been
         filed.   filing ok for date, but not processing without oath.
  Questions on appeals may require very obscure logic to select the right 
   answer.    see 1.196 and mpep 1213.02  alternate (incorrect) choices 
   look reasonable.  The correct choice may be unreasonable, but legal.  
  Questions involving dependent claims may have the correct answer 
   that does not completely satisfies the conditions of the question if it 
   is the best choice or the only one permitted (by rules).  
  Be careful to distinguish between petitions to COMMISSIONER and
   requests (petitions?) to EXAMINER.
When Q refers to USC 112, it seems to mean USC 112 only.  Not including
additional rqmts such as NO NEW MATTER.
Watch for claim amendment questions where the choices presented are 
not accurate true copies of claim being amended.  
Take care to verify that all add/delete markings are in place and 
correctly placed against the proper phrases.  
Incorrect answers may be incorrect because a "TYPO" was intentionally 
Correct answer may be a useless claim as long as it is correctly formatted 
and legal.  
Watch for tricky wording where SAID is used incorrectly.  Usually without 
proper antecedent.  
REEXAMINATION  is not an "application" thus 1.136 does not apply  (2265) 
   Also bcz no application, there is no "applicant".  
-- file USC102.DOC --


ARtoP = Actual Reduction to practice.  ie the hardware works.
CRtoP = Constructive reduction to practice.   Paper invention.   Note: 
        filing an enabling US Patent Application or Provisional Application
        (or an enabling disclosure document?) is
        an act defined as Constructive Reduction to Practice.

Your APP IN       CONCEPT. IN          ARtoP IN             FILED IN
THE U.S.          THE U.S.             THE U.S.             THE U.S.
                                   <---------------<-- 12 mo -->

                                  .               .
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file: USC102TL.DOC

Go to the home page. for links to the other patent, inventor, and business topics.

Links to: MPEP/ 37CFR/ 35USC INDEX AND CROSS-INDEX BASED ON QUESTIONS FROM OLD EXAMINATIONS. (1991-1997) Simpler to use, no junk, combined, and more relevant than the "official" indexes in the MPEP.

From :
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Summary :

COMMENTS on inventing, patents, or patenting, the Patent Bar Exam., this index. TESTIPS.

COMMENTS on inventing, patents, or patenting, the Patent Bar Exam., this index.

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Last Revision Aug 7, 1998

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