Longhorn2806 wrote:Hi thwalls, Thanks for the reply!
Here is one question:
http://mypatentbar.com/2010/04/12/q-pro ... ss-claims/
Please forgive me for being new to the MPEP, and especially 2100 right now - but other than taking an educated guess at the answer, how would you come up with 2113 as the place to look for the answer, under "102/103 rejection...for obviousness" (
http://www.uspto.gov/web/offices/pac/mp ... m#sect2113). Note, I also haven't done very much with 102/103 yet either, which I know is very important and could probably also lead me to the answer.
- If you didn't know the answer to this question, what would be your approach? Try to think of either the MPEP section, U.S.C. section, or CFR section that might be relevant and go from there? Which would you look at first?
I can understand how, overall, it is more valuable to know the big picture of each chapter and the main sections within the chapter...but I feel like they put a lot of little, nitty gritty detail far down in the depths of the sub-sections...which appears on the tests. Maybe (hopefully) I'm just reading far to into the sections and worrying too much.
Thanks in advance for any comments!
You may already be doing it, but remember to only use a pdf version of the MPEP in practice. From the question, I see that it deals with a rejection based on anticipation or alternitively obviousness. Therefore, I know the information is going to be in either 700 or 2100. Next, I go to the table of contents for each of those sections and look for information regarding product-by-process claims. As a caveat, you don't need to memorize everything, but you should be able to identify the common different claiming formats, i.e., Apparatus, Method, Jepson (no one uses this one anymore but it's still on some of the old exams), Markush, means-plus-function, dependent, multiple dependent, and product-by-process.
I don't see anything about product-by-process claims in the TOC in Section 700, so I check 2100. In the TOC I see the section on Product by process (MPEP 2113). I search "2113" to get to the right page. On that page I find "PRODUCT-BY-PROCESS CLAIMS ARE NOT LIMITED TO THE MANIPULATIONS OF THE RECITED STEPS, ONLY THE STRUCTURE IMPLIED BY THE STEPS." Going back to the question, I see that B and D both deal with the process, and I know that the products of the manipulations must be different, not the process or manipulation to make them. Answers C and E don't get me anywhere because to answer the rejection I have to distinguish the products from each other. Answer A then is the best answer because I'm arguing that the processes themselves yield different products of Mixture Y.
Q1 produces mixture Y but with an unexpected melting point 150, Q2 produces mixture Y with a melting point of 300. Therefore, they're not the same. This is the only answer identifying the distinction that Q1 and Q2 yield different products.
Just by identifying the type of claim that is in the question, even if you don't know what a 102/103 rejection is, you can zero in on the answer.
If you couldn't identify what type of claim it was, I would still start in sections 700 and 2100 since they, more often than not, contain either the answer or reference to the section that has the answer. You'll find that 700 will very often refer to 2100. In general though, unless you know exactly what you're looking for, I would stick with searching the MPEP rather than the USC or CFR. But again, there are sections of both that you just need to know. For example, you should know the information in USC sections 101, 102, 103, 112 paragraphs 1, 2, and 6. You should have a general idea of what is in CFR sections 1.5-.215. Heck, read the CFR language at least once while you're at it. By reading/skimming these sections at least once, the questions or answers in the test should trigger the memory, providing a hint of where you should get started.
If you're hopelessly lost on a question and you have some time to kill on the exam (which you might, they give you a lot of time), locate the section of the MPEP that you believe the answer to be found and plug each answer on the exam into the search box. A lot of times, they'll take the right answer verbatim out of the MPEP. This of course is strategy of desparation.
People may call it overkill but if you want to pass the Patent Bar and, y'know, BE registered as a patent agent/attorney you should know the rules that govern your practice.