THE SECRET PTO GRADING GUIDELINES
FOR
OCTOBER 1993, APRIL 1994, NOVEMBER 1994, 1995, 1996
PATENT BAR EXAMINATIONS.
==========================================================================
This is the "secret" grading guide line used by the PTO to evaluate
the claim drafting section of the Patent Bar Examination. Pried out of
the PTO by an FOIA request.
PART I GRADING GUIDELINES
October 1993
Claim 1 40 points
Claim 2 10 points
Claim 3 10 points
INDEPENDENT CLAIM:
-40 Method claim or Jepson claim or claim is anticipated by prior
art.
-20 Claim that defines an inoperative invention.
-10 Missing element.
-4 Subject matter not within scope of invention disclosed.
-4 Claim language which is vague or indefinite, e.g. language which
does not have antecedent basis or which does not positively set
forth each element or component.
-4 Elements or components not interrelated or incorrectly
interrelated in the claims in the manner disclosed and shown.
-4 Renaming elements of the invention.
-2 Poor grammar or misspelled word.
-2 Unnecessary limitation.
DEPENDENT CLAIMS:
-10 Missing claim or claim anticipated by prior art or claiming a
method or using Jepson format.
-7 Claiming embodiment not disclosed or claim defines an
inoperative invention. Missing element.
-2 Subject matter not within scope of invention disclosed.
-2 Claim language which is vague or indefinite, e.g. language which
does not have antecedent basis or which does not positively set
forth each element or component.
-2 Elements or components not interrelated or incorrectly
interrelated in the claims in the manner disclosed and shown.
-2 Renaming elements of the invention.
-2 Poor grammar or misspelled word.
-1 Unnecessary limitation.
-- end --October 1993
APRIL 13, 1994. GRADING GUIDELINES
These are the "Secret" grading guides used by the PTO graders to evaluate
the claim drafting section for the April 13, 1994 Patent Bare
Examination. They were acquired from the PTO with an FOIA demand for
relevant documents.
The scanner sometimes confuses 1 (one) with l (lower case L), and periods
with commas, and mixes l with I. It also cannot handle sub and super
scripts. Rendering them as regular size and position letters and
numbers. Underlining if used in places that are important for your
use, are marked with html codes, and .
The PTO cannot spell either, but the OCR program might guess at the word,
and get it wrong. Hopefully, the eyeball edit catches them.
--------- -----------------------------------------------------------
MECHANICAL OPTION - GRADING GUIDELINES
April 13, 1994 Examination
MECHANICAL OPTION April 13, 1994
MODEL CLAIMS
1. A chair comprising <---- PTO MISSED THE COLON
a base, a support column having an upper end and a lower end, a
substantially rigid mounting bracket fixedly connected to the upper end
of said column,
a seat having a front portion and a rear portion, each portion having an
upper surface and a lower surface, the lower surface of said rear portion
being fixed to said mounting bracket,
the lower end of said column being adjustably mounted to said base to
permit vertical adjustment of the height of said seat,
a hinge interconnecting said front and rear portions and attached to the
upper surfaces thereof, whereby said front portion is swingable angularly
downwardly with respect to said rear portion, and
an adjustment means for connecting said front portion to said mounting
bracket for adjusting the extent of downward swinging movement of said
front portion, whereby the angle of inclination of the front portion may
be adjusted and the front portion may be retained in a selected position.
2. A chair according to claim 1 wherein
said adjustment means comprises
a first bracket attached to a lower surface of said front portion of the
seat,
a second bracket attached to said mounting bracket adjacent the upper end
of said support column, and
a turnbuckle having two ends and an operating knob, one of said
turnbuckle ends being pivotally connected to said first bracket and the
other of said turnbuckle ends being pivotally connected to said second
bracket, whereby said operating knob may be actuated to create a desired
angular inclination of said front portion.
3. A chair according to claim 1 wherein
said mounting bracket includes
a forwardly and downwardly extending portion to which an internally
threaded bearing is pivotally attached, and
said adjustment means comprises
a U-shaped bracket attached to said lower surface of said front portion
of the seat, said U-shaped bracket having two ends and including a slot
intermediate said U-shaped bracket ends, and
an externally threaded screw having two ends and being threadedly
received in said internally threaded bearing, one of said screw ends
being rotatably received within said U-shaped bracket slot for rotation
of said screw relative to said U-shaped bracket and the other of said
screw ends being attached to an operating knob, whereby rotation of the
operating knob in either direction causes said front portion to swing
about said hinge to a selected angularly adjusted position with respect
to said rear portion.
EVALUATION CRITERIA:
INDEPENDENT CLAIM 1 (Maximum point deduction 18 points, unless
40 points deducted for no Claim, or for apparatus, method or Jepson Claim)
Preamble
-3 Chair not recited
Missing Components
-10 Base ......................... Objects
-10 Support column ............... Objects
-10 Seat ......................... Objects
-10 Adjustment means ............. Objects + Critical
-5 Mounting bracket .............. Critical
-5 Hinge ......................... Objects + Critical
Incomplete Description or Necessary Limitation
-5 Seat having a rear portion and a front portion [OBJECTS]
-3 Hinge attached to upper surfaces of front and rear portions (no
deduction if 5 point deduction has been taken for omitting the hinge
entirely) [CRITICAL: PAGE 4, FIFTH LINE FROM BOTTOM]
-3 Adjustment means connecting the front portion of the seat and the
mounting bracket [CRITICAL: PAGE 4, THIRD LINE FROM BOTTOM]
-3 Mounting bracket fixed to the rear portion of the seat [CRITICAL: PAGE
4, NINTH LINE FROM BOTTOM]
-1 Mounting bracket is substantially rigid [CRITICAL: PAGE 4, NINTH LINE
FROM BOTTOM]
Page M1
INDEPENDENT CLAIM 1 (continued)
Unnecessary Limitations
-2 Legs
-2 Casters
-2 Threaded Adjustment Means (for vertical adjustment of seat)
Backrest (deduction only applies where "seat", not "chair", is claimed
-2 Front and Rear Portions having same width
-2 Rear Portion having greater depth than Front Portion
-2 Rear Portion Comprising major area of overall surface of seat
Miscellaneous
-40 Method claim, Jepson claim, or claim anticipated by prior art
-20 Claim defines an inoperative invention
-5 Claim not generic to dependent claims
-4 Subject matter not within scope of invention disclosed
-3 Inferential claiming, i.e., component not positively recited, e.g.,
first portion hinged to second portion
-2 Misdescriptive
-2 Failure to interrelate or incorrectly interrelating components
-2 Vague or indefinite language
-2 No antecedent basis
-2 Double inclusion of component
-2 Renaming components
-1 Poor grammar (max deduction - 4 points)
-1 Misspelling (max deduction - 4 points)
Page M2
DEPENDENT CLAIMS (Maximum point deduction per Calm - 9 points unless 10
points deducted for no Claim or for apparatus, method or Jepson Calm)
Missing Elements - Claim 2
-3 First bracket .................. attached to lower surface of front
portion
-3 Second bracket ................. attached to mounting bracket adjacent
upper end support column
-3 Turnbuckle ..................... having two ends pivotally attached
to said first and second brackets.
respectively
-2 Operating Knob ................. intermediate the turnbuckle ends
Missing Elements - Claim 3
-3 FDEP (forwardly and downwardly extending portion)
-3 Bearing ..................... internally threaded and pivotally
attached to FDEP
-3 U-shaped bracket ............ attached to FDEP attached to lower
surface of front portion
-1 Slot ........................ intermediate ends of U-shaped bracket,
-3 Screw ....................... externally threaded and having two ends,
said screw being threadedly received in
said bearing, one end being rotatably
received within said U-shaped bracket
slot and the other end being attached to
an operating knob
-2 Operating Knob ............. attached to other end of screw Dependent
Claims (continued)
Page M3
Miscellaneous
-10 Method claim, Jepson claim, claim anticipated by prior art, or
missing claim
-7 Inoperative invention
-3 Subject matter not within scope of invention disclosed
-3 Inferential claiming
-2 Misdescriptive
-2 Failure to interrelate or incorrectly interrelating components
-2 Vague or indefinite language
-2 No antecedent basis
-2 Double inclusion of component
-2 Renaming components
-1 Poor grammar (max. deduction - 2 points)
-1 Misspelling (max. deduction - 2 points)
-1 Dependent claim refers to previous claim by using language other
than an Arabic numeral or does not refer to the previous claim. 37
CFR 1.75(f).
Page M4
end of mechanical option
=====================================================================
ELECTRICAL OPTION, April 13, 1994
Model Claims
1. A disposable enuresis detection device comprising:
a disposable diaper liner having opposite surfaces;
a plurality of perforated metal foil electrodes, said electrodes including a
first electrode being securely attached to one surface of said diaper liner and
a second electrode being securely attached to the surface of the diaper liner
opposite to the diaper liner surface that the first electrode is attached to;
said first electrode being made of a metal which is different from said second
electrode, wherein said electrodes produce sufficient voltage to operate a
sensor/alarm circuit when said diaper liner is wet with urine; and
a disposable sensor/alarm circuit including two NOR gates, coupled to said
disposable diaper liner and electrically connected to said electrodes.
2. The disposable enuresis detection device of claim 1, further comprising:
said two NOR gates consisting of a first NOR gate and a second NOR gate, each
of said NOR gates each having two inputs, one output and a +bias input;
the electrical connection of the disposable sensor/alarm circuit consisting of
a pair of insulated wires, one wire connecting the more positive voltage
electrode to the +bias input of each of said two NOR gates, the other wire
connecting the more negative electrode to one input of the first NOR gate and
one input of the second NOR gate;
the output of said first NOR gate being directly connected to the input of the
second NOR gate that is not directly connected to the more negative electrode;
a capacitor, the output of the second NOR gate being connected through said
capacitor to the input of the first NOR gate that is not directly connected to
the more negative electrode;
a first resistor and a diode, said first resistor and said diode connected to
each other in series;
a second resistor, said second resistor being connected in parallel with said
first resistor and diode, said second resistor and said diode being directly
connected to the input of the first NOR gate that is not directly connected to
the more negative electrode and said output of said first NOR gate being
connected to said first and said second resistors;
and an alarm connected to the output of one of said NOR gates.
ELECTRICAL OPTION - GRADING GUIDELINES
April 1994 Examination
INDEPENDENT CLAIM 1 (Maximum point deduction - 18 points, unless no Claim
presented, Claim anticipates prior art, or a method or Jepson Claim is
presented)
Preamble
-3 Disposable enuresis detection device not recited
Missing Components
-5 Diaper liner ............................. [OBJECTS]
-5 Dissimilar metal foil electrodes...........[OBJECTS]
-5 Alarm .....................................[OBJECTS]
-5 Sensor circuit ............................[OBJECTS]
-5 Two NOR gates ............................[OBJECTS]
Incomplete Description or Necessary Limitation
-3 Claims only one NOR gate [OBJECTS]
-2 Foil electrodes (no deduction if metal electrodes omitted
entirely) [OBJECTS]
-2 Dissimilar metal electrodes (no deduction if metal electrodes
omitted entirely) [OBJECTS
-2 Metal electrodes in direct contact with diaper liner
[CRITICAL: PAGE 10, FIRST LINE OF FOURTH PARAGRAPH]
-2 Dissimilar electrodes produce sufficient voltage to operate
sensor/alarm circuit when diaper liner wet with urine [OBJECTS]
-2 Perforated electrodes (no deduction if metal electrodes
omitted entirely) [OBJECTS]
-2 One electrode on each side of diaper liner [CRITICAL: PAGE 10,
FIRST LINE OF FOURTH PARAGRAPH]
Page E1
INDEPENDENT CLAIM 1
Unnecessary Limitations
-1 Porous plastic film
-1 Adhesive for sensor/alarm circuit
-1 Thin metal foil
-1 Thickness of metal foil
-1 Clicking alarm
Miscellaneous
-20 Method claim, Jepson claim, or claim anticipated by prior art
-10 Claim defines an inoperative invention
-4 Subject matter not within scope of invention disclosed
-3 Inferential claiming, i.e., component not positively recited
-2 Misdescriptive (e.g. confusing diaper with diaper liner)
-2 Failure to interrelate or incorrectly interrelating components
-2 Vague or indefinite language
-2 No antecedent basis
-2 Double inclusion of component
-2 Use means plus function language
-2 Renaming components
-1 Poor grammar (max deduction - 2 points)
-1 Misspelling (max deduction - 2 points)
Page E2
DEPENDENT CLAIM 2 (Maximum point deduction per Claim - 36 points unless
40 points deducted for no Claim)
Preamble
-3 Disposable enuresis detection device according to Claim 1
Missing Elements
-10 NOR gate
-1 0 Alarm
-1 0 Capacitor
-10 First resistor
-10 Second resistor
-1 0 Diode
-5 +Bias input
Miscellaneous
-40 Method claim, Jepson claim, or claim anticipated by prior art
-20 Claim defines an inoperative invention
-4 Subject matter not within scope of invention disclosed
-3 Inferential claiming, i.e., component not positively recited
-2 Misdescriptive
-2 Failure to interrelate or incorrectly interrelating components
-2 Vague or indefinite language
-2 No antecedent basis
-2 Double inclusion of component
-2 Use means plus function language
Page E3
DEPENDENT CLAIM 2 (Miscellaneous Continued)
-2 Renaming components
-1 Poor grammar (max deduction - 4 points)
-l Misspelling (max. deduction - 4 points)
-1 Dependent claim refers to previous claim by spelling the number of
the previous claim rather than using its Arabic numeral or omit
independent claim number. 37 CFR 1.75(f).
Page E4
End of Electrical Option
================================================================
CHEMICAL OPTION:
Model claim is found in 94 answer file.
Note: Remember the OCR process does not properly render sub and super
scripts.
CHEMICAL OPTION - GRADING GUIDELINES
April 1994 Examination
CLAIM 1 (Maximum point deduction 18 points, unless no claim presented,
Claim anticipates prior art, or a method, apparatus, product-by-process
or Jepson Claim Is presented)
Preamble
-3 Multilayered dropcloth not recited
Missing Components
-5 First outer plastic layer............. OBJECTS
-5 Second outer plastic layer ........... OBJECTS
-5 Center layer ......................... OBJECTS
Incomplete Description or Necessary Limitation
-10 Heat bonding plastic layers to center layer [OBJECTS]
-4 Center layer thickness 0.0005 to 0.002 mils [OBJECTS + CRITICAL,
PAGE 8, FIRST FULL PARAGRAPH]
-4 Dropcloth thickness 0.0015 to 0.004 mils [OBJECTS + CRITICAL,
PAGE 8, LAST FULL PARAGRAPH BEFORE DIRECTIONS]
-3 Spun bonded plastic film (first and second plastic layers)
[OBJECTS]
-3 Surface depressions in outer surface of plastic layers [OBJECTS
Unnecessary Limitations
-1 Surface depressions: aligned/small/uniformity distributed/diamond
shaped
-1 Pigment in center layer/TiO2 pigment in center layer
-1 Center layer: polypropylene/linear low density polyethylene/low
density polyethylene
Page C1
CLAIM 2 (Maximum point deduction 18 Points, unless no Claim presented,
claim anticipates prior art, or a method, apparatus, product-by-process
or Jepson Calm Is presented)
Preamble
-3 Multilayered dropcloth not recited
Missing Components
-5 First outer plastic layer
-5 Second outer plastic layer
-5 Center plastic layer
incomplete Description or Necessary Limitation
-10 Heat bonding plastic layers to center layer
-4 First outer plastic layer of spun bonded polypropylene (no
deduction if first outer plastic layer not claimed)
-4 Second outer plastic layer of spun bonded polypropylene (no
deduction if second outer plastic layer not claimed)
-4 Center layer consisting of low density polyethylene linear low
density polyethylene, or polypropylene (no deduction if center
layer not claimed)
-4 Plastic layer thickness 0.0005 to 0.002 mils
-4 Center layer thickness 0.0005 to 0.001 mils
-4 Dropcloth thickness 0.0015 to 0.004 mils
-3 Surface depressions uniformly distributed on outer surfaces of
plastic layers
Page C2
CLAIM 3 (Maximum point deduction 18 points, unless no Calm presented,
Calm anticipates prior art, or a method, apparatus, product-by process or
Jepson Calm Is presented)
Preamble
-3 Multilayered dropcloth not recited
Missing Components
-5 First outer plastic layer
-5 Second outer plastic layer
-5 Center plastic layer
Incomplete Description or Necessary Limitation
-10 Heat bonding plastic layers to center layer
-4 First outer plastic layer of spun bonded polypropylene and short
segments of spun bonded polybutylene dispersed in the spun bonded
polypropylene
-4 Second outer plastic layer of spun bonded polypropylene and short
segments of spun bonded polybutylene dispersed in the spun bonded
polypropylene
-4 Center layer consisting of polypropylene and TiO2
-2 TiO2 uniformly dispersed throughout polypropylene film of center
layer (no deduction if center layer consisting of polypropylene
and TiO2 not claimed)
-2 Amount of TiO2 is 50 to 85% by weight of polypropylene (no
deduction if center layer consisting of polypropylene and TiO2
not claimed)
-4 Plastic layer thickness 0.0005 to 0.002 mils
-4 Center layer thickness 0.0005 to 0.001 mils
-3 Surface depressions are small, closely spaced diamond-shaped
depressions uniformly distributed on outer surface of plastic
layers
Page C3
CLAIM 3 (continued)
-2 Recites surface depressions but does not describe the depressions
as being small, closely spaced diamond-shaped depressions
uniformly distributed on outer surface of plastic layers (no
deduction if surface depressions not claimed)
-1 Recites surface depressions as being small, closely spaced
diamond-shaped depressions but does not describe the depressions
as uniformly distributed on outer surface of plastic layers (no
deduction if surface depressions not claimed)
Claims 1,2 and 3 - Miscellaneous
-20 Method claim, Jepson claim, apparatus claim, product-by-process
claim or claim anticipated by prior art
-10 Claim defines an inoperative invention (e.g. not claimed heat
bonding of layers)
-10 Claiming embodiment not disclosed
-4 Subject matter not within scope of invention disclosed
-3 Inferential claiming, i.e., component not positively recited
-2 Misdescriptive
-2 Failure to interrelate or incorrectly interrelating components
-2 Vague or indefinite language
-2 No antecedent basis
-2 Double inclusion of component
-2 Renaming components
-2 Use means plus function language
-2 Reciting process step (e.g. heating, heating to fusion state,
embossing, etc)
Page C4
Claims 1,2 and 3 - Miscellaneous (continued)
-2 Reciting apparatus components (e.g. supply rolls, bonding
rollers, receiving roll, heating unit, embossing rollers, drive,
drive system, ate.)
-1 Improper Markush language
-1 Poor grammar (max deduction - 2 points)
-1 Misspelling (max deduction - 2 points)
-1 Dependent claim does not refer to previous claim or using
language other than Arabic numeral in referring to previous claim
Page C5
--- end of chemical option --
===========================
GRADING GUIDELINES
November 2, 1994
These are the "secret" grading guides provided to the PTO graders grading
the claim drafting section of the November 2, 1994 Patent Bar
Examination. They were acquired from the PTO with an FOIA request.
The OCR program has difficulty with some letters and missintrepets them
Most of these have been manually corrected.
Also, it cannot distinguish super and sub scripts. I renders them as
regular size letters.
----------------------------------------------------------------------
MECHANICAL OPTION - GRADING GUIDELINES
November 2, 1994 Examination
INDEPENDENT CLAIMS (Maximum point deduction 36 points each claim, unless
40 points deducted for no Claim, method claim, Jepson Claim, or claim
anticipated by prior art)
CLAIMS 1 AND 3
Miscellaneous
-40 No claim, method claim, Jepson claim, or claim anticipated by
prior art
-20 Claim defines an inoperative invention
- 4 Subject matter not within scope of invention disclosed
- 3 Inferential claiming, i.e., component not positively recited
- 2 Misdescriptive
- 2 Failure to interrelate or incorrectly interrelating components
- 2 Vague or indefinite language
- 2 No antecedent basis
- 2 Double inclusion of component
- 2 Renaming components
- 1 Poor grammar (max. deduction - 4 points)
- 1 Misspelling (max. deduction - 4 points)
- 1 Claim is not object of a sentence, e.g., "I (or we) claim..."
[MPEP 608.01(m)]
- 1 Lacking claim numbering/misnumbered
Page M1
CLAIM 1
Preamble
- 3 Modular telephone plug not recited
- 1 Recites an electrical plug
Missing Components
- 1 Body .................................. CRITICAL
-10 Dividers .............................. CRITICAL
- 5 Contacts .............................. OBJECTS
- 5 Strain relief member................... OBJECTS
- 5 Inclined surfaces/Twisted tips ........ OBJECTS
Incomplete description or Necessary Limitation
- 3 Body is nonconducting [CRITICAL]
- 3 Body is made of thermoplastic material [CRITICAL]
- 3 Confronting side walls define spaces or slots [CRITICAL]
- 3 Strain relief member adapted to grip different size cables
must be stipulated in EITHER Claim 1 or Claim 2 [OBJECTS]
Unnecessary Limitations
- 1 Unnecessary contact details such as tang, detents, etc. (max.
deduction - 2 points)
- 1 Unnecessary cable details including insulation, wire,
conductor, etc. (max. deduction - 5 points)
PAGE M2
CLAIM 3
Preamble
- 3 Modular telephone plug crimping tool not recited
Missing Components
-10 Pair of body parts ...................... OBJECTS
-10 Hand lever .............................. OBJECTS
- 5 Interchangeable crimping punch .......... OBJECTS
- 5 Interchangeable crimping anvil .......... OBJECTS
- 5 Roller .................................. OBJECTS
- 5 Guide pin ............................... OBJECTS
Incomplete Description or Necessary Limitation
- 3 Pair of body parts connected by a flexible member [OBJECTS]
- 3 Hand lever and first body part connected by a pivot pin [OBJECTS]
- 3 Roller mounted on pivot pin for engaging crimping punch [OBJECTS]
- 3 Crimping punch comprises integral contact and strain relief
punch portions [OBJECTS]
Unnecessary Limitations
- 2 Integral handle on second body part
- 2 Screw head
- 2 Second pivot pin
- 2 Cap
- 2 Spring trapped between body parts
- 2 Modular telephone plug
- 1 Unnecessary recitations of elements comprising cable, contacts
and strain relief member (max. deduction - 5 points)
PAGE M3
DEPENDENT CLAIMS maximum point deduction 9 points each claim, unless 10
points deducted for no claim, method claim, Jepson claim, or claim
anticipated by prior art)
CLAIMS 2 AND 4
Miscellaneous
-10 No claim, method claim, Jepson claim, or claim anticipated by
prior art
- 7 Claim defines an inoperative invention
- 3 Subject matter not within scope of invention disclosed
- 3 Inferential claiming, i.e., component not positively recited
- 2 Misdescriptive
- 2 Failure to interrelate or incorrectly interrelating components
- 2 Vague or indefinite language
- 2 No antecedent basis
- 2 Double inclusion of component
- 2 Renaming components
- 1 Poor grammar (max. deduction - 2 points)
- 1 Misspelling (max. deduction - 2 points)
- 1 Lacking claim numbering/misnumbered, failing to use Arabic
numeral in referring to previous claim or failing to refer
to previous claim [37 CFR 1.75(f)]
CLAIM 2
Missing Components
- 3 Hinge portion
- 3 Frangible portion
- 3 Locking ratchet teeth
- 3 Locking surface
PAGE M4
CLAIM 4
Missing Elements
- 3 First stripping blade
- 3 Second stripping blade
- 3 Severing blade
- 3 Severing anvil
PAGE M5
End of Mechanical Option
-------------------------------------------------------------------------
ELECTRICAL OPTION -GRADING GUIDELINES
November 2, 1994 Examination
(Maximum point deduction 18 points each Calm, unless 20 points are
deducted for no Calm, a method Calm, a Jepson Calm or a Calm anticipated
by the prior art.)
Miscellaneous (each claim)
-20 No claim, a Jepson claim or a claim anticipated by the prior art
-12 Claim defines an inoperative invention. The total
deduction is appropriate for claims which are extremely incomplete,
where the interconnections are garbled or the claims include such
extraneous matter, not supported by disclosure, that the invention
claimed is not recognizably the same as the invention disclosed.
Fewer than the maximum points can be deducted where the claim shows
substantial understanding and expresses parts of the claim
correctly. If there is evidence that the inoperativeness was due to
carelessness rather than lack of understanding the invention or
lack of claim drafting skills, other deductions may be more
appropriate.
-3 Subject matter claimed that is not within the scope of the
invention disclosed, including new matter.
-3 Inferential or indirect claiming; component not positively
recited.
-2 Not supported by the disclosure or misdescriptive.
-2 Omitting interconnections or incorrectly interrelating
components, parts or materials or the leads interconnecting
parts are open circuited, short circuited, unconnected or
incompletely or incorrectly interconnected as claimed.
-2 Naming unnamed parts or renaming parts already named.
-2 Unclear, vague or indefinite language including calling the same
lead, part or component by two different names in the claims.
-2 Lack of antecedent basis.
-2 Double inclusion of a material, part or component, particularly
found in dependent claims.
-1 Poor grammar (max. deduction -2 points per claim).
-1 Misspelling (max. deduction -2 points per claim).
-1 Claim improperly numbered or not numbered.
Page E1
-1 Claim is not the object of a sentence, "1 (or we) Claim..."
[MPEP 608.01 (m)l.
-1 Prolix, wordy without anything substantive to the claim, unduly
repetitious.
-2 Including an unnecessary or prohibited limitation in broadest
claims 2 and 5.
-3 (Max. per preamble) omitted, misdescriptive, incomplete or (in
dependant claims) inconsistent with instructions or (if a dependent
claim) inconsistent with the independent claim.
CLAIM 1
Missing Components
-5 AC power source (not power supply)
-5 Transformer
-3 Transformer primary or secondary
-5 Bridge Rectifier
-5 Filter
-5 IR detector
Other Deductions
-3 Normally open switch in or with the IR detector
-2 Incorrect identification of the warm object to trigger
the IR detector.
CLAIM 2
Missing Components
-5 Astable multivibrator
-3 Timing signal output from the astable multivibrator
-5 Binary up-counter
-3 Receiving the timing output or providing a timing output
-5 Auto-reverse counter/decoder (or counter/decoder)
-3 At least one (or one or more), but not a plurality or more of
counter/decoders
-3 Arrays
PAGE E2
Other Deductions
-2 Does not connect the outputs of the auto-reverse counter/decoders
to arrays of LEDs
-2 Does not limit the number of LEDs per position in the array to
eight maximum
-2 Does not limit the claim to devices in which only one position in
an array may be flashed at a time.
CLAIM 3
Missing Components
-5 VDD, AST, VSS, RCC, C and R on the astable multivibrator CLKB,
RSTB, RSTA, VSS, VDD, ENA, ENB and Q3 on the binary up-counter VDD
and VSS on the auto-reverse counter/decoder (Max. deduction 10
points) (Grader look for the possible double inclusion of Q. CLKA,
Q4, CLK and/or U/D from claim 2, and expressly claimed again in claim
3, a potential double inclusion problem)
-5 Capacitor and/or variable resistor. -1 if the resistor is not
expressly variable
-5 Power supply
Other Deductions
-2 Not dependent from claim 2 per directions
-2 Not grounding VSS
-2 Not connecting VDD to the power supply
Page E3
CLAIM 4
Missing Components
-5 Three or more auto-reverse counter/decoders
-5 Exactly eighty LEDs. -1 it eighty, but open ended
-5 Missing arrays of LEDs
Other Deductions
-2 No "sides" disclosed for the LEDs
-2 One auto-reverse counter/decoder per array
claim 5
Missing Components
-5 Replaceable music integrated circuit. -1 for omitting "replaceable"
-5 Alternative switch integrated circuit.
-5 Thyristors
-3 Thyristor gates
-5 Receptacles
Other Deductions
-3 Activates on receptacle or string at a time
-1 MIC is replaceable
Page E4
end of Electrical Option
guidelines
=========================================================================
GRADING GUIDELINES
MAY 1995 EXAMINATION
MECHANICAL, ELECTRICAL, AND CHEMICAL OPTIONS
UNPUBLISHED GRADER'S GUIDES FROM THE PTO FOR THE PATENT BAR
EXAMINATION
OF MAY 1995.
These files are derived from documents obtained from the PTO the
The documents were scanned, then converted to ASCII by Optical Character
Recognition programs. Finally, a manual edit removed the many errors
created by the conversion. There may still be errors. If you find any,
please notify me and I will confirm and correct.
Scanning and conversion often interprets a 1 (one) as an l (lc L).
Subscripts are not shown as subscripts. ie, they are full size.
Comas and periods may be confused.
The original documents had points of interest underlined. Underlining
has been lost. However, those underlined portions within the criteria
have manually been marked with U and /U inside HTML pointy brackets,
which are the html command codes for underlining. Viewing/printing
this file with a web browser should (may) properly underline the words.
Underlining of headers has not been so marked, so uninformative
underlining has been lost.
Similarly, italics are between I and /I inside HTML pointy brackets.
Viewing with list.com or a word processor should reveal the codes
and pointy brackets.
If you need to know the underlining or italics, and cannot find them
I can fax them to you
or insert UL or Bold printer commands, where useful, into the text.
(not all underlines confer additional information.)
KEY:
-4 = lose 4 points if your answer is not as indicated.
===================================================================
===================================================================
=================
MECHANICAL OPTION
1995
GRADING GUIDELINES - MAY 1995 EXAMINATION
Mechanical Option - Nozzle Assembly for HELP Paint Spray Gun
Independent Claim 1 (Maximum point deduction - 36 points)
Preamble
PR -3 Nozzle assembly not recited [OBJECTS]
Missing Components
MC -5 Fluid tip [OBJECTS]
MC -5 Air cap [OBJECTS]
MC -5 Baffle [OBJECTS]
MC -5 Atomization or forward air chamber [OBJECTS]
NL -3 Fluid tip has a conical outer surface [OBJECTS]
NL -3 Fluid tip front end has axial paint discharge orifice
[OBJECTS] or fluid tip has bore terminating in axial paint discharge
orifice at a front end of the fluid tip [PAINT DISCHARGE ORIFICE
NECESSARILY IMPLIES BORE OR PASSAGEWAY TERMINATING IN ORIFICE]
NL -4 Fluid tip outer surface has shape of a right circular cone
[CRITICAL: PAGE 18, 7TH LINE FROM BOTTOM]
NL -3 Right circular cone has a vertex axially adjacent paint discharge
orifice and axially aligned with fluid tip [CRITICAL: PAGE 18,
7TH LINE FROM BOTTOM]
NL -3 Fluid tip has externally threaded end [OBJECTS]
NL -5 Fluid tip has a radial flange [OBJECTS]
NL -3 Annular atomization air discharge orifice [CRITICAL: PAGE 19,
LINE 8]
NL -3 Flange has plurality of orifices uniformly spaced around the Lange
circumference [OBJECTS]
Miscellaneous
ICF -40 Improper claim format, e,g., Method claim or Epson claim
[EXCEPTION TO -36 POINT MAXIMUM DEDUCTION]
ANT -40 Claim anticipated by prior art [EXCEPTION TO -36 POINT MAXIMUM
DEDUCTION]
NC -40 No claim [EXCEPTION TO -36 POINT MAXIMUM DEDUCTION]
IN OP -20 Claim defines an inoperative invention
SI -4 Subject matter not within scope of invention disclosed, e.g.,
valve needle is not part of inventive nozzle assembly
CF -1 Claim format error, e.g., Multiple sentences. One point deduction
per claim.
DIR -4 Failure to follow directions, e.g., using means plus function
language
INF -2 Inferential claiming, e.g., "fluid tip end threadedly connected to a
spray gun" in contrast to "fluid tip having a threaded end"
CN -2 Claim number misnumbered, improper, or missing
MD -2 Misdescription
DI -2 Double inclusion
FAIL REL -2 Failure to interrelate or incorrectly interrelating components
IMG -2 Improper Markush group
IML -2 Improper Markush language
VI -2 Vague or indefinite language
NAB -2 No antecedent basis
RN -2 Renaming components
VL -2 Unnecessary limitation, e.g., fluid tip front end includes a
small flat annular surface to reduce the risk of damage to the
fluid tip; threaded retainer ring radially mounted onto baffle
perimeter; rear annular chamber formed between baffle and fluid
tip; fluid tip includes an axial bore.
GR -1 Poor grammar (max deduction - 4 points)
SP -1 Misspelling (max deduction - 4 points)
Dependent Claims (Maximum point deduction per claim -18 points)
Claim 2
Missing Components
MC -4 Air horns
MC -4 Air horn orifices
Failure to Interrelate Baffle to Air Horns
FAIL REL -3 Baffle has a baffle tube with a calibrated orifice for reducing
the pressure of air from the spray gun to a desired low pressure
for delivery of low pressure atomization air to the air horns.
Claim 3
Missing Components
MC -3 Fluid tip has a radial hexagonal section adapted to
receive a wrench
MC -3 Fluid tip has an axial bore
MC -1 Axial bore has a long cylindrical section
MC -1 Axial bore has a tapered conic section adapted to seat a
spray gun valve needle
MC -1 Axial bore has a short cylindrical section
Failure to follow Directions re Multiple Dependency
IR -3 Not written in multiple dependent language. MPEP §608.01(n).
ID -2 Written in multiple dependent language, but in improper form,
e.g., "A nozzle assembly according to claims I and 2 ... " or
"A nozzle assembly according to the preceding claims ... "
Claim 4
Missing Components
MC -10 Air cap has (four) passages extending from the atomization
air chamber to the front face of the air cap
Failure to recite Structure to achieve Dual Purposes stated in
Instructions
DIR -5 Air cap passages are spaced to direct jets of air on either
side of jets of air emitted from air horn orifices.
CLAIMS 2, 3, and 4
Miscellaneous
ICF -20 Improper claim format, e.g., Method claim or Jepson claim
[EXCEPTION TO -18 POINT MAXIMUM DEDUCTION]
ANT -20 Claim anticipated by prior art [EXCEPTION TO -18 POINT MAXIMUM
DEDUCTION]
NC -20 No claim [EXCEPTION TO -18 POINT MAXIMUM DEDUCTION]
IN OP -10 Inoperative invention
CF -3 Claim format error, e.g., Multiple sentences
SI -3 Subject matter not within scope of invention disclosed, e.g., valve
needle is not part of inventive nozzle assembly
IFN -2 Inferential claiming, e.g., "fluid tip comprising a long cylindrical
section tapering to a short cylindrical section" in contrast to
"fluid tip comprising a tapered conic section"
ID -2 Improper dependency
CN -2 Claim number misnumbered, improper, or missing. Rule 75f.
MD -2 Misdescription
DI -2 Double inclusion
FAIL REL -2 Failure to interrelate or incorrectly interrelating components
IMG -2 Improper Markush group
IML -2 Improper Markush language
VI -2 Vague or indefinite language
DIR -2 Failure to follow directions, e.g., using means plus function
language
NAB -2 No antecedent basis
RN -2 Renaming
GR -1 Poor grammar (max deduction - 2 points)
SP -1 Misspelling (max deduction - 2 points)
-------- END OF MECHANICAL SECTION --------
==========================================================
=================
ELECTRICAL OPTION
1995
FINAL, GRADING GUIDELINES - MAY 1995 EXAMINATION ELECTRICAL OPTION
METHOD AND APPARATUS CLAIMS FOR SEPARATING DOLPHIN FROM TUNA
Independent Method Claim 1 (Value = 35 points;
Except as noted, max. point deduction = 32 points)
Preamble
CN -2 Claim does not begin with a capital or end with a period.
See also multiple sentences in miscellaneous, or it begins
with "I claim" after the claim number.
CN -2 Claim number misnumbered or number missing, numbered
improperly or "Claim 1" after "I claim".
INC -3 a) Claim preamble fails to be directed to a method
(although the rest of the claim is a method claim).
-1 each b) if the preamble does not mention that the method is for
protecting dolphin, swimming with tuna, from being caught when
the tuna are caught and other preamble errors.
If both a) and b), or b) alone, -3 max.
Missing Method Steps
NL -5 each
1. Identifying the 2 buoys which define the outer limits of the dolphin.
2. Switching on the outer limit buoy oscillators.
3. Identifying the appropriate third buoy, alternatively. -3 if only
INC.
4. Switching on the third buoy oscillator.
5. Switching on the sine wave generator.
6. Catching the tuna. (IN OP Omission of this step is a -15,
see inoperative invention below.) (INF Not positively claiming
catching the tuna (for example, claim language directed to when
the tuna are caught) -2, see inferential claiming below.)
7. Switching off the sine wave generator.
8. Switching off the three oscillators that were switched on.
Switching on the transmitter or switching off the transmitter without
explicitly claiming that each is a two or more step process,
FAIL REL -2 each step not expressly included, -4 max "on" and
-4 max "off".
Method Step Sequence (comments referring to missing method steps, above)
WS -3 each
Step number 1. must come first in the sequence. Steps 2. and 3. can
be reversed.
Step 4. must come after the third buoy is identified.
Step 8. must come after step 7. (Crit. Iimit. deductions take precedence.)
Critical Limitations
-5 each
The sine wave generator must be switched on after the 3 oscillators are
switched on.
Catching the tuna must follow switching on the sine wave generator.
Step 7. must come after the tuna are caught.
Step 8. must come after the tuna are caught.
The steps claimed are not active method steps, -2 each.
Failure to Follow Directions and Unnecessary Limitations
DIR -2 each
Including steps occurring BEFORE the step the directions specified as
the starting step, i.e., such as painting the buoys, detecting the
tuna by sonar, deploying the net, or flying the helicopter, for example.
-10 A dependent method claim.
Misdescriptive or Unsupported bv the Disclosure
MD -2 each
Misdescribing any procedure covered by the disclosure.
SI -4 each
Deploying a number of buoys which is other than the range of from
5 to 20. This includes methods deploying 3 buoys, from 3 to 20
buoys and/or an open ended upper limit on the number of buoys
(5 or more), identifying buoys other than the ones that are
supposed to be identified, describing phase modulation in the
claim and other method or apparatus limitations not included in
the disclosure.
Miscellaneous, Claim 1
ANT -35 Claim anticipated; claim not submitted; product-by-process or Jepson
or claim format; or where the body of the claim is not directed to a
DIR method of catching tuna while protecting dolphin.
(Exceptions to the 32 point maximum deduction limitation for
claim 1.)
IN OP -15 Inoperative invention. No transmitter or no crystal oscillators
claimed is an example of this deduction.
CF -1 A claim consisting of multiple sentences.
FAIL REL -2 Failure to or incorrectly interrelating materials, parts,
components and/or method steps not specifically noted above.
-4 for turning on the drivers or turning off the drivers
(a two step process in which the order of the steps was
important) by claiming it as a single step.
Vl -2 Vague, unclear and/or indefinite claim language including calling a
single material, part, component and/or method step by two different
names and/or renaming a material, part, component and/or method step.
NL -2 Steps claimed are not active method steps.
INC -2 Incomplete Inferential claiming (not positively claimed) and/or no
antecedent basis.
DI -2 Double inclusion
GR -1 Poor grammar, -4 max.
SP -1 Spelling error, -4 max.
Independent Apparatus Claim 2 (Value = 45 points;
Except as noted, max. point deduction = 41 points)
Preamble
CF -1 Claim does not begin with a capital or end with a period or is not in
independent form. see also multiple sentences under the miscellaneous
heading .
CN -2 Claim number misnumbered or number missing, numbered improperly or
"Claim 2" rather than 2."
INC -3 a) Claim preamble fails to be directed to apparatus (although the rest
of the claim is an apparatus claim).
-1 each b) if the preamble does not mention that the apparatus is supposed to
separate dolphin from tuna and other preamble errors. If both a) and
b) or b) alone, -3 max.
Missing Apparatus or Omitted Functional Limitations
NL -5 each
No solenoid switch.
No ECU or ECU does not expressly include a demodulator.
No metal plates or metal plates are not spaced apart.
No battery.
No antenna.
No PROM.
No audio amplifier.
No driver.
The driver being submerged is missing from the claim.
The marine battery being in the portion of the buoy that is submerged
is missing from the claim.
The metal plates being in the submerged portion of the buoy is missing
from the claim.
The antenna being buoyed above the water is missing from the claim.
NL INC -10
Part of each buoy being underwater and part being buoyed is missing from
the claim.
Failure to or incorrectly interconnecting or interrelating materials,
parts and/or components.
FAIL REL -2 each
Failure to electrically connect one terminal of the marine battery to the
audio amplifier, to the PROM and to the ECU. (3 possible deductions).
Failure to directly electrically connect the other terminal of the marine
battery to one of the metal plates and the audio amplifier. (2 possible
deductions) .
Failure to connect the antenna to the ECU.
Failure to electrically couple the PROM to one terminal of the battery
through a solenoid switch, ECU and metal plates when the ECU receives a
signal at a frequency to which it is tuned. (5 possible deductions).
Failure to electrically couple the switch part of the solenoid and the
PROM in common to the other marine battery terminal. (2 possible
deductions) .
Killer whale feeding signal path from the PROM to the audio amplifier is
missing from the claim.
Killer whale feeding signal path from the audio amplifier to the driver
is missing from the claim.
Failure to Follow Directions and/or Unnecessary Limitations
DIR UL -2 each
Including portions of the transmitter in claim 2. (-2 for each of the
transmitter details expressly included in claim 2).
-10 A dependent apparatus claim.
Misdescriptive or Unsupported by the Disclosure
Sl -4 each
The number of buoys is other than the range of from 5 to 20. This includes
apparatus with 3 buoys, from 3 to 20 buoys and/or an open ended upper
limit on the number of buoys. Claiming an opening which is undefined by
structure and/or claiming metal plates bonded to a structure. Other
deductions as they occur for method or apparatus limitations claimed, but
not included in the disclosure.
Miscellaneous. Claim 2
ANT -45 Method claim; claim anticipated; no claim; product-by-process or
& Jepson claim format; or where the body of the claim is not directed to
DIR an apparatus for separating tuna from dolphin. (Exceptions to the 41
point deduction limitation.)
IN OP -20 Inoperative invention. No buoys claimed or the system is claimed
without water in the claimed operating environment are examples of
this deduction .
CF -1 A claim consisting of multiple sentences.
FAIL REL -2 Failure to or incorrectly interrelating materials, parts,
components and/or including method steps in the apparatus claim
not specifically noted above.
VI -2 Vague, unclear and/or indefinite claim language including calling a
single material, part, component and/or method step by two different
names and/or renaming a material, part, component and/or method step.
Note there should be an AUDIO amplifier in each of the buoys in claim 2
and a POWER amplifier in the transmitter of claim 3. A claimed to an
amplifier must identify which of these amplifiers is claimed.
INC -2 Incomplete.
INF -2 Inferential claiming (not positively claiming) and/or no antecedent
basis.
DI -2 Double inclusion.
GR -1 Poor grammar, -4 max.
SP -1 Spelling error, -4 max.
Dependent Apparatus Claim 3 (Value = 20 points;
Except as noted, max. point deduction = 18 points)
Preamble
CF -1 Claim does not begin with a capital or end with a period.
CN -1 Claim number misnumbered, numbered improperly, or missing.
CN -2 Claim preamble fails to be directed to apparatus (although the rest of
or the claim is an apparatus claim), it fails to be dependent form, or it
ID is dependent on method claim 1.
Missing Apparatus or Omitted Functional Limitations Clog
NL -2 each
A number of crystal oscillators claimed other than 20.
A number of crystal oscillator switches claimed other than 20.
No sine wave generator.
Each oscillator frequency different from the frequency of the other
oscillators.
One and only one switch connected to each oscillator.
Failure to or incorrectly interconnecting or interrelating materials,
Parts and/or components.
FAIL REL -2 each
Failure to electrically connect the oscillator switches claimed to
the respective oscillator and/or to the modulator.
Failure to electrically connect the sine wave generator switch to
the sine wave generator.
Failure to electrically connect the sine wave generator switch to
the modulator .
Failure to electrically connect the modulator to the power amplifier.
Failure to electrically connect the power amplifier to the antenna.
Failure to provide for simulcasting 3 phase modulated signals from
the transmitter antenna.
Failure to Follow Directions and/or Unnecessarv Limitations
DIR UL -2 each
Including ships, the net or the helicopter, or further adding more
parts, materials and/or components described as being in the sparbuoy(s).
Misdescriptive or Unsupported by the Disclosure
Sl -2 each
Putting the transmitter in the buoys, for example.
Miscellaneous, Claim 3
NFL -20 The dependent claim is Not Further Limited by structural
limitations to the
or DIR transmitter beyond whatever is in independent claim 2
ANT -20 Claim anticipated; no claim; product-by-process or Jepson claim
format. (Exceptions to the 1 8 point deduction limitation.)
IN OP-10 Inoperative invention.
CF -1 A claim consisting of multiple sentences.
FAIL REL -2 Failure to or incorrectly interrelating materials, parts,
components and/or method steps not specifically noted
above.
Vl -2 Vague, unclear and/or indefinite claim language. For example, the
switch for the sine wave generator not being distinguished from
the switches controlling the oscillators. Calling a single
material, part, component and/or method step by two different
names and/or renaming a material, part, component and/or method
step. Claiming an antenna in the transmitter without identifying
it as the second antenna or the power antenna.
NC -2 Incomplete.
INF -2 Inferential claiming (not positively claimed) and/or no
antecedent basis.
DI -2 Double inclusion (more likely to occur in dependent claims.)
GR -2 Poor grammar, -4 max.
SP -1 Spelling error, -4 max.
DIR -2 Failure to follow directions.
------- END OF ELECTRICAL SECTION --------
============================================================
================
CHEMICAL SECTION
1995
GRADING GUIDELINES - MAY 1995 EXAMINATION
CHEMICAL OPTION: HETEROAROMATIC ETHYNE COMPOUNDS
NOTE: SCANNING AND ASCII RENDERING DOES NOT RENDER SUB AND SUPER SCRIPT
NUMBERS CORRECTLY.
----
Independent Claim 1 (Value = 30 points; Except as noted, max. point
deduction = 27 points)
Preamble
DIR -2 Method of preparing heteroaromatic etllyne compounds having a formula
wherein Het is 2- or 3- pyrrolyl; 3-, 4- or 5- pyrazolyl;
or l-, 2-, 3-, 4-, 5-, 6-, or 7-indolyl
Missing Components
MC -5 Step 1 - coupling 2-methyl-3- butyn-2-ol with an ortho halophenoxy
propanolamine in the presence of a palladium catalyst
to produce an ortho 2-methyl-3-butyn-2-ol derivative of the phenoxy
propanolamine
MC -5 Step 2 - treating ortho 2-methyl-3-butyn-2-ol derivative of the phenoxy
propanolamine with a base (selected from alkali metal hydroxide
or alkoxides) to produce an ethynyl compound and acetone
MC -5 Step 3 - separating the ethynyl compound from acetone
MC -5 Step 4 - reacting the ethynyl compound with a
C2 - C6 alkanoic acid to produce an ester-containing ethynyl
compound
MC -5 Step 5 - coupling the ester-containing ethynyl compound with a halo-Het
R, to produce an alkanoyl ester of a heteroaromatic ethyne compound
MC -5 Step 6 - treating the alkanoic acid ester of a heteroaromatic ethyne
compound with mild alkaline hydrolysis to produce a
heteroaromatic ethyne compound
Incomplete Description or Necessary Limitation
INC,NL -3 Omission of underlined limitations above; omitting reactant, e.g., a
base in Step 2; or omitting a condition
Unnecessary Limitation
UL -2 Parenthetical limitation above, reciting preference, "providing" a
starting material
DIR -30 Claiming a product, e.g., the heteroaromatic cthyne compounds having a
formula wherein Het is 2- or 3- pyrrolyl; 3-, 4- or 5- pyrazolyl;
or l-, 2-, 3-, 4-, 5-, 6-, or 7-indolyl.
Miscellaneous
ANT -30 Claim anticipated by prior art
DIR,ICF -30 No claim; product-by-process or Jepson claim format, claim product
IN OP -15 Claim defines inoperative invention
SI -4 Subject matter not within scope of invention
PM -4 Means or means plus function (per instance)
INC -4 Referencing compound, e.g., as formula "X," and providing no
formula in claim
FAIL REL -2 Failure to interrelate or incorrect interrelation of steps,
components or materials
MD -2 Misdescription, e.g., formula incorrect regarding a substitutent,
omission of Ym from reagents, referenced formula missing
VI -2 Vague and Indefinite
NAB,INF -2 No antecedent basis; inferential claiming
RN -2 Renaming compounds, reagents
IMG,IML -2 Improper Markush group; Improper Markush language
DIR -2 Failure to follow directions
ID -2 Improper claim dependency, e.g., on following claim; improper
manner of providing for claim to be dependent on another claim
GR -1 Poor grammar (max. deduction = 4 points)
DI -2 Double inclusion
WS -2 Wrong sequence of steps if total method is not inoperative to produce
product
CF -1 Multiple sentences; does not begin with capital letter; "I (or we)
claim..." after claim #
INC,NL -1 Omits number of carbons of particular alkyd alkoxy, or other
group(max. deduction = 4 points)
SP -1 Misspelling (max. deduction = 4 points)
CN -1 Claim numbering missing, erroneous number, or Roman numerals
Independent Claim 2 (Value = 30 points; Except as noted, max. point
deduction = 27 points)
Preamble
DIR -2 Method of preparing heteroaromatic ethyne compounds having a formula
wherein Het is 2-pyridinyl or 2-pyrimidinyl, R1 is selected from the
group consisting of H, dimethylamino, and ethoxy, Y is methoxy or
carboxamidomethyl, m is 1 or 2, and R2 t-butyl, isobutyl or 3-hexyl.
Missing ComPonents
MC -5 Step 1 - reacting sodium hydride or sodium hydroxide with a
phenol to generate a phenolate anion
MC -5 Step 2 - reacting the phenolate anion with bromine or iodine in
an inert solvent at -40 C to 50 C. to produce an ortho bromo or
ortho iodophenol
MC -5 Step 3 - alkylating the ortho bromo or ortho iodophenol with
epichlorohydrin in the presence of a base and in a solvent (at
ambient temperature or elevated temperatures, e.g., 25 C to
125 C.) to produce an epoxide
MC -5 Step 4 - reacting the epoxide with a primary amine, R2NH2, in a
lower alkanol or dipolar aprotic solvent at 35 C to 150 C. to
produce an ortho halophenoxy propanolamine
MC -5 Step 5 - coupling the ortho halophenoxy propanolamine with a
heteroaromatic ethyne, R1(Het)C=_CH, in a dipolar aprotic
solvent, at ambient temperatures, and in the presence of
tetrakis(triphenylphosphine)palladium and copper (I) iodide to
produce the heteroaromatic ethyne compound
Incomplete Description or Necessary Limitation
INC,NL -3 Omission of underlined limitations above; omitting reactant,
e.g., a epichlorohydrin in Step 3; or omitting a condition, e.g.,
inert solvent at 40 C to 50 C. in step 2.
Unnecessary Limitation
UL -2 Parenthetical limitation above, reciting preference, "providing" a
starting material
DIR -30 Claiming a product, e.g., the heteroaromatic ethyne compounds having a
formula wherein Het is 2-pyridinyl or 2-pyrimidinyl
Claim 2, Cont.
Miscellaneous
ANT -30 Claim anticipated by prior art
DIR,ICF -30 No claim; product-by-process or Jepson claim format, claim
compounds
IN OP -15 Claim defines inoperative invention
Sl -4 Subject matter not within scope of invention
PM -4 Means or means plus function (per instance)
INC -4 Referencing compound,
e.g., as formula "X," and providing no formula in claim
FAIL REL -2 Failure to interrelate or incorrect interrelation of steps,
components or materials
MD -2 Misdescription, e.g., formula incorrect regarding a substitutent,
omission of Ym from reagents, referenced formula missing
VI -2 Vague and Indefinite
NAB;INF -2 No antecedent basis; inferential claiming
RN -2 Renaming compounds, reagents
IMG,IML -2 Improper Markush group; Improper Markush language
DIR -2 Failure to follow directions
ID -2 Improper claim dependency, e.g., on following claim; improper
manner of providing for claim to be dependent on another claim
GR -1 Poor grammar (max. deduction = 4 points)
DI -2 Double inclusion
WS -2 Wrong sequence of steps if total method is not inoperative to
produce product
CF -1 Multiple sentences; does not begin with capital LETTER; "I (or
we) claim..." after claim #
INC,NL -1 Omits number of carbons of particular alkyd alkoxy, or other
group (max. deduction = 4 points)
SP -1 Misspelling (max. deduction = 4 points)
CN -1 Claim numbering missing, erroneous number, or Roman numerals
Independent Claim 3 (Value = 20 points; Except as noted, max. point
deduction = 18 points)
Preamble
DIR -2 A heteroaromatic ethyne compound
Necessary Limitations
NL -5 Formula I but must exclude compounds where Het is furanyl or thienyl;
limit alkyl moieties in R1 and Y are straight or branched, not cyclic;
limit alkyl moieties in R2 to having the alpha carbon to being
branched.
Unnecessary Limitation
UL -20 Process of making or using the heteroaromatic ethyne compounds
UL -1 excluding compounds wherein R1 is selected from the group consisting of
H. chloro, fluoro, C1-C6 alkyl, C1-C6 alkoxy, C1-C6 alkylthio, C1-C6
alkoxycarbonyl, and C1-C6 dialkylamino; Het is pyridinyl, pyrrolyl;
pyrazolyl; isoxazolyl; pyrimidinyl; indolyl; quinolyl; or isoquinolyl;
Y is H. chloro, bromo, fluoro, C1-C6 alkyl, C1-C6 alkoxy, C1-C6
alkoxyalkyl, or C1-C6 carboxamidoalkyl; m is 1 or 2; or R2 is a C3-C7
alkyl having the alpha carbon to the nitrogen being branched; --
reciting preference.
Miscellaneous
ANT -20 Claim anticipated by prior art
DIR, ICF -20 No claim; product-by-process or Jepson claim format, process
claim
IN OP -10 Claim defines inoperative invention
SI -4 Subject matter not within scope of invention
PM -4 Means or means plus function (per instance)
INC -4 Referencing compound, e.g., as formula "X," and providing no
formula in claim
FAIL REL -2 Failure to interrelate or incorrect interrelation of components
or materials
MD -2 Misdescription, e.g., formula incorrect regarding a
substitutent, referenced formula missing
VI -2 Vague and Indefinite
NAB, INF -2 No antecedent basis; inferential claiming
RN -2 Renaming compounds, reagents
IMG,IML -2 Improper Markush group; Improper Markush language
DIR -2 Failure to follow directions
ID -2 Improper claim dependency, e.g., on folloiwng claim; improper
manner of providing for claim to be dependent on another
claim
DI -2 Double inclusion
CF -1 Multiple sentences; does not begin with capital letter; "i (or
we) claim..." after claim #.
INC,NL -10 Omits number of carbons of particular alkyl, alkoxy, or other
group (max. deduction = 4 points)
GR -1 Poor grammar (max. deduction = 4 points)
SP -1 Misspelling (max. deduction = 4 points)
CN -1 Claim numbering missing, erroneous number, or Roman numerals
Independent or Dependent Claim 4 (Value = 20 points; Except as noted, max.
point deduction = 18 points)
Preamble
DIR -2 A method for controlling hypertension or angina using a heteroaromatic
ethyne compound
Necessary Limitations
NL -3 Alkyl moieties in R1 and Y are straight or branched, not cyclic;
limit alkyl moieties in R2 to having the alpha carbon to being
branched "Comprising controlling hypertension or angina;" 1-2000 mg.
amount
Unnecessary Limitation
UL -20 Claiming a process of making the ethyne compounds; composition
UL -1 Obtaining, acquiring, or preparing the compounds; a specific dosage or
dosage range; specifying one or more manners of administering the
compounds parenterally or orally; specifying one or more diluents or
carriers; perference; specifying host, such as human; exclusion
of Het = thienyl; exclusion of Het = furanyl.
Miscellaneous
ANT -20 Claim anticipated by prior art
DIR, ICF -20 No claim; product-by-process or Jepson claim format, composition
IN OP -10 Claim defines inoperative invention
VI,SI -10 Does not particularly point out heteroaromatic ethyne compounds
SI -4 Subject matter not within scope of invention
PM -4 Means or means plus function (per instance)
FAIL REL -2 Failure to interrelate or incorrect interrelation of components
or materials
MD -2 Misdescription, e.g., formula incorrect regarding a substitutent,
referenced formula missing
VI -2 Vague and Indefinite
NAB; INF -2 No antecedent basis; inferential claiming
RN -2 Renaming compounds, reagents Improper
IMG;IML -2 Markush group; Improper Markush language
DIR -2 Failure to follow directions
ID -2 Improper manner of providing for claim to be dependent on another
claim
DI -2 Double inclusion
CF -1 Multiple sentences; does not begin with capital letter; "i (or we)
claim..." after claim #.
UL -1 Unnecessary limitation, e.g., specifies administration mode, dosage
range, vehicle for administration
INC,NL - 1 Omits number of carbons of particular alkyd alkoxy,
or other group (max. deduction = 4 points)
GR -1 Poor grammar (max. deduction = 4 points)
SP -1 Misspelling (max. deduction = 4 points)
CN -1 Claim numbering missing, erroneous number, or Roman numerals
[[[[ ARE THE FOLLOWING APPLICABLE TO ALL OPTIONS OR ONLY
THE CHEMICAL OPTION??? ]]]]] ed.
[[[[ this is interesting ---- the remedy for some PTO error is in
these rules, but held secret. Also, the OED cannot spell beans,
but will hit you for being a bad speller. ]]]]] ed.
Re: Misspelled Words. If any word is repeatedly misspelled in a claim, deduct
a point only once for the misspelling (-2SP), but note each occasion it is
misspelled in the claim by marking SP. The same error in another claim warrants
another deduction.
With regard to spelling and grammar only, a dependent claim is graded for what
it recites, not what it incorporates .
Mark each misspelling (SP) and grammatical error (GR) in a claim, but take off
points only for the first 4 different occasions of misspelling or grammatical
error. Mark deductions beyond 4 with parentheses ( )
If the total points deducted exceeds the maximum permitted, write at the end of
the claim "Maximum deduction _____ taken."
Except as noted, if something constitutes a number of different errors and the
value of the deductions is the same or different, the deducted points should be
more than that maximum deduction for the higher value deduction, but less than
the sum of the deductions for all errors. E.g., a -4 and -2 should be -5; and a
-2 and -2 should be -3. Exception: a -1 and -1 should be -2; and a -1 and -2
should be -3.
NONEXHAUSTIVE EXAMPLES OF ERRORS:
Subject matter not within scope of invention
* Adding step to process, e.g., supplying or providing reagent.
Claim defines inoperative invention
* Omits a process step
Failure to interrelate or incorrect interrelation of components or materials
* places heterocyclic ring between benzene ring and ethyne unit
* substituents are in meta or para position relationship, as opposed to
ortho relationship
Misdescription, e.g., formula incorrect regarding a substituent
* missing carbon from ethyne unit
* missing Ym from reagents (though in final product)
* each formula is graded for what it does and does not show, each error is
independent of errors in other drawn formulas since each formula in a
claim is to a different compound
No antecedent basis
* "said compound" when no such compound was previously recited
Inferential Claiming
* a "reacted" compound - infers that something has occurred, did not
positively recite the event or thing
Improper Markush language
* "a member selected from the group comprising..."
* "a member selected from the group consisting of ... or..."
* "R is ... and ..."
Improper Markush group
* Combining reagents and solvent into a Markush group
Failure to follow directions
* Adding steps to process, e.g., supplying reagent
* Starting process with wrong reagents
Improper manner of providing for claim to be dependent on another claim
* Beginning claim with "using said compound" or "using said process"
* Dependent on following claim
* Improper multiple claim dependency.
===========================================================
================
ABBREVIATION KEY
1995
ANT Anticipated claim - Claim anticipated by the prior art
CF Claim format error - Does not begin With a capital letter, comprise a
single sentence, or has errors in the preamble regarding placing
"I (or we) claim" after claim number or referring to wrong elements
CN Claim number misnumbered, Improper, or missing - it the dependency
is Incorrect, use ID Instead
DI Double Inclusion
FAIL REL Failure to or Incorrectly Interconnecting or interrelating
materials, parts, and/or components
DIR Failure to follow directions - be specific
GR Grammatical or punctuation error (other than CF)
ICF Improper claim format ie, Jepson
ID Improper dependency (other than CN)
INF Inferentially claimed (not positively Claimed)
IN OP Inoperative Invention - as to the claim as a whole
ILLEG Claim language is Illegible - no credit it unreadable;
must confer with everyone before doing such
IMG Improper Markush group
IML Improper Markush language
INC Incomplete material, part, component, or method step
MC Missing component
MD Misdescriptive
MPEP Claim language contrary, objectionable, or rejectable for
any other reason expressed in the MPEP - cite which section
of MPEP is being applied
NAB No antecedent basis
NC No claim - deduction is total amount for claim
NL Omission of a necessary limitation
PM Using prohibited means or means plus function language - see
specific discipline sheet for amount of point deduction
RN Renaming components, parts, materials, or procedures
SI Subject matter not within scope of Invention or claiming
undisclosed subject matter Including, it applicable,
undisclosed method limitations
SP Spelling error
UL Unnecessary Limitation
VI Vague, unclear or Indefinite language
WS Claiming method limitations in the wrong sequence,
but does not render claim inoperative
END -- GENERAL ABBREVIATIONS. ALL OPTIONS
---- END OF 1995 DOCUMENT ---
======================================================================
GRADING GUIDELINES
AUGUST 28, 1996 EXAMINATION
MECHANICAL, ELECTRICAL, AND CHEMICAL OPTIONS
UNPUBLISHED GRADER'S GUIDES FROM THE PTO FOR THE PATENT BAR EXAMINATION
OF AUGUST 28, 1996.
These files are derived from documents obtained from the PTO the
The documents were scanned, then converted to ASCII by Optical Character
Recognition programs. Finally, a manual edit removed the many errors
created by the conversion. There may still be errors. If you find any,
please notify me and I will confirm and correct.
Scanning and conversion often interprets a 1 (one) as an l (lc L).
Subscripts are not shown as subscripts. ie, they are full size.
Comas and periods may be confused.
The original documents had points of interest underlined. Underlining
has been lost. However, those underlined portions within the criteria
have manually been marked with U and /U inside HTML pointy brackets,
which are the html command codes for underlining. Viewing/printing
this file with a web browser should (may) properly underline the words.
Underlining of headers has not been so marked, so uninformative
underlining has been lost.
If you need to know the underlining, I can fax them to you or insert
UL or Bold printer commands, where useful, into the text.
(not all underlinings confer additional information.)
KEY:
-4 = lose 4 points if your answer is not as indicated.
===================================================================
===================================================================
August 28, 1996
Mechanical Option - Champagne Bottle Cork Puller and Inserting Apparatus
Independent Claim 1 (Maximum point deduction - 36 Points)
Preamble
PR -4 Device for removing and inserting a bottle cork. The term
Champagne need not be recited. Deduct -2 points if only one action
recited, i.e., "removing" or "inserting".
Missing Components/Necessary Limitations
NL -3 Single piece construction [OBJECTS]
NL -3 Made of resilient material [OBJECTS]
NL -3 Configured as a semi-cylindrical shaped shell [OBJECTS]
NL -2 . Annular groove [OBJECTS]
NL -1 . . Slightly smaller than a bottle spout rim [OBJECTS]
NL -1 . . Adapted to frictionally fit around the spout rim [OBJECTS]
NL -2 . Longitudinal slot [CRITICAL]
MC -10 Cork engager [OBJECTS]
NL -3 Wall defining a lateral opening large enough to receive a
bulbous portion of a bottle cork [CRITICAL] (deduct -1 point if size
omitted)
NL -3 Wall terminating in a ridge defining a base opening large
enough to receive a stem portion of a bottle cork but not the bulbous
portion [CRITICAL] (deduct -1 point if size omitted)
NL -3 Pin [CRITICAL]
MC -10 Raising and lowering device [OBJECTS]
Page M1, August 1996
Miscellaneous
ICF -40 Improper claim format, e. g., Method claim or Jepson claim
(EXCEPTION TO MAXIMUM -36 POINT DEDUCTION)
ANT -40 Claim anticipated by the prior art (EXCEPTION TO MAXIMUM 36
POINT DEDUCTION)
NC -40 No claim (EXCEPTION TO MAXIMUM -36 POINT DEDUCTION)
INOP -20 Claim defines an inoperative invention
SI -4 Subject matter not with scope of invention, e.g., cork,
bottle.
DIR -2, varies Failure to follow directions.
CF -2 Claim format error, e.g., multiple sentences (Max deduction
-2 points)
INF -2 Inferential claiming - using a word form other than a noun
where an element or component is required to be positively recited, e.g.,
"a cork engager pinned to the shell" rather than a "cork engager
having a pin which is slidably movable within a longitudinal slot formed
in the shell. "
CN -2 Claim number misnumbered, improper, or missing.
MD -2 Misdescription
DI -2 Double inclusion
FAIL REL -2 Failure to interrelate or incorrectly interrelating
components
VI -2 Vague or indefinite language
NAB -2 No antecedent basis
RN -2 Renaming components
UL -2 Unnecessary limitation
GR -1 Improper grammar (maximum deduction - 4 points)
SP -1 Misspelling (maximum deduction- 4 points)
Page M2, August 1996
Dependent claims (Maximum Point deduction per claim - 18 points)
Claim 2
Preamble
PR -3 A device according to claim 1 (only if claim 1 has a proper
preamble) Missing Components
MC -4 Screw
MC -4 Handle
MC -4 Bolt (fixedly attaching handle to an upper end of screw)
MC -4 Bolt (rotatably mounting cork engager to a lower end of
screw)
Claim 3
Preamble
PR -6 Not written in multiple dependent language
PR -3 Written in multiple dependent language, but in improper form
(only if claim 1 has a proper preamble)
Proper multiple dependent language
A device according to claim 1 or claim 2
claim(s) 1 or 2
any of claims 1-2
one of claims 1-2
any (one) of the preceding claims
any preceding claim
Missing components
MC -4 Resilient body material is plastic
MC -4 Internally threaded hub (deduct -1 pt if "internally
threaded" omitted)
MC -4 Outer rib formed along an outer surface of body adjacent the
annular groove for reinforcement
Page M3, August 1996
Claim 4
Preamble
PR -3 A device according to claim ____ (only if claim ___ has a
proper preamble)
Missing Components
MC -4 Handle is elongated
NIC -4 Handle has axial cavity with rectangular cross-section
(deduct -I point if rectangular cross-section omitted) which mates with
upper portion of screw
MC -4 Handle comprises a pair of levers extending an equal
distance transversely of the axial cavity and defining the ends of the
handle
MC -4 Handle has an upper surface which is provided with a recess
coaxial with the axial cavity, the recess being adapted to receive a head
of said first bolt
MC -4 Handle includes a recess for reducing weight and material
cost formed between the axial cavity and each end of the handle
Claims 2, 3, and 4
Miscellaneous
lNF -20 Improper claim format, e.g., Method claim or Jepson claim
(EXCEPTION TO MAXIMUM -18 POINT DEDUCTION)
ANT -20 Claim anticipated by prior art (EXCEPTION TO MAXIMUM -18
POINT DEDUCTION)
NC -20 No claim (EXCEPTION TO MAXIMUM -18 POINT DEDUCTION)
INOP -10 Inoperative invention
SI -3 Subject matter not within the scope of the disclosed
invention
INF -2 Inferential claiming, see example for claim 1
ID -2 Improper dependency
PAGE M4, AUGUST 1996
CN -2 Claim number misnumbered, improper, or missing. Rule 75f.
IBID -2 Misdescription
Dl -2 double inclusion
FAIL, REL -2 failure to interrelate or incorrectly interrelating
components
VI -2 Vague and indefinite language
DIR -2 Failure to follow directions, e.g., using means plus
function language
NAB -2 No antecedent basis
RN -2 Renaming component
GR -1 Improper grammar (maximum deduction -2 points)
SP -1 Misspelling (maximum deduction -2 points)
CF -1 Claim format error, e.g., multiple sentences
Page M5, August 1996
----- end of mechanical option -----
=======================================================================
August 28, 1996.
ELECTRICAL OPTION: SYSTEM FOR LASER DRILLING AND MAGNETIC FLUX
BREAKTHROUGH DETECTION
Independent Claim 1: Value 38 points, maximum deduction (except as noted)
35 points.
Preamble
PR -4 A system for laser drilling and magnetic flux breakthrough
detection comprising (-2 for each half of preamble)
Missing Components
MC -6 a laser source for generating a laser beam for drilling a hole
through a front surface of a workpiece and generating a plasma;
MC -6 a magnetic field pick-up coil concentric to said laser
beam and adjacent to the front surface of said workpiece for
sensing a magnetic field change in said plasma;
MC -6 a side magnetic field pick-up coil located to a side of said
laser beam for sensing the magnetic field change;
MC -6 a real-time breakthrough detection circuit (or system)
electrically connected to said concentric and side magnetic field
pick-up coils which receives a laser-on signal for detecting
laser breakthrough of the workpiece and produces a laser breakthrough
signal in response to said magnetic field change and said laser-on
signal; and
MC -6 a laser control electrically connected to said real-time
breakthrough detection circuit and to said laser source for turning off
said laser source in response to said laser breakthrough signal.
Incomplete Description or Necessary Limitation
INC, NL -5 Each omission of underlined limitations above, failure
to interconnect elements, and failure to include function with an element
FAIL, REL -3 Failure to interrelate or incorrect interrelation of
components or materials
page E1 1996
Unnecessary Limitations
UL -2 Claiming workpiece as element, reciting plasma-detect signal,
data logger, or application point control
DIR -38 Claiming a method or process
UL -2 Reciting components used to produce the laser-on signal or
internal structure of breakthrough detector circuit
UL -2 Reciting a method limitation
Miscellaneous
ANT -38 Claim anticipated by the prior art
DIR, ICF -38 No claim; Jepson claim format
INOP -19 Claim defines inoperative invention
SI -4 Subject matter not within scope of invention
PM -4 Means or means plus function language (per instance)
MD -2 Misdescription
VI -2 Vague and indefinite
NAB, INF -2 No antecedent basis, inferential claiming
RN -2 Renaming components
DIR -2, varies Failure to follow directions
DI -2 Double inclusion
GR -1 Improper grammar (maximum deduction 4)
CF -1 Multiple sentences; does not begin with capital letter;
"I (or we) claim" before claim number
SP -1 Misspelling (maximum deduction 4)
CN -1 Claim number missing, wrong, written ("one"), or in
Roman numerals
Page E2, August 1996
Dependent Claim 2: Value 38 points, maximum deduction (except as noted)
35 points
Preamble
PR -4 2. The system for laser drilling and magnetic flux
breakthrough detection of claim 1, wherein said real-time breakthrough
detection circuit comprises:
Missing Components
MC -4 a first amplifier electrically connected to said concentric
magnetic field pick-up coil;
MC -4 a second amplifier electrically connected to said side
magnetic field pick-up coil;
MC -4 a first full-wave rectifier electrically connected to said
first amplifier for producing a first rectified voltage signal;
MC -4 a second full-wave rectifier electrically connected to said
second amplifier for producing a second rectified voltage signal;
MC -4 first and second reference voltage inputs;
MC -4 a first comparator having inputs connected to said first
fullwave rectifier and said first reference voltage input for
generating a first logic true output when said first rectified voltage
signal is lower than said first reference voltage;
MC -4 a second comparator having inputs connected to said second
full-wave rectifier and said second reference voltage input for
generating a second logic true output when said second rectified
voltage signal is lower than said second reference voltage;
MC -4 a first AND gate having inputs electrically connected to said
first and second comparators and having an output;
MC -4 a delay line receiving said laser-on signal as an input for
generating a delayed laser-on signal; and
PAGE E3, AUG 1996
MC -4 a second AND gate having three inputs, one of said inputs
receiving said output of said first AND gate, and the other two of
said inputs receiving said laser-on signal and said delayed laser-on
signal, respectively, for generating said breakthrough signal.
Incomplete Description or Necessary Limitation
INC. NL -3 Each failure to specify both first and second reference
voltage inputs (see underlining above), and failure to include
function with an element
Unnecessary Limitations
UL -2 Reciting plasma-detect signal or components used to produce
plasma-detect signal
UL -2 Reciting a method limitation
DIR -38 Claiming a method or process
DIR -3 Reciting independent claim
Miscellaneous
ANT -38 Claim anticipated by the prior art
DIR,ICF -38 No claim; Jepson claim format
INOP -19 Claim defines inoperative invention
SI -4 Subject matter not within scope of invention
PM -4 Means or means plus function language (per instance)
FAIL REL -3 Failure to interrelate or incorrect interrelation of
components and materials
MD -2 Misdescription
VI -2 Vague and indefinite
NAB, INF -2 No antecedent basis, inferential claiming
RN -2 Renaming components, process steps
DIR -2, varies Failure to follow directions.
Page E4, 1996
ID -2 Improper claim dependency
DI -2 Double inclusion
GR -1 Improper grammar (maximum deduction 4)
CF -l Multiple sentences; does not begin with capital letter
SP -1 Misspelling (maximum deduction 4)
CN -1 Claim number missing, wrong, written ("Two"), or in Roman
numerals
Dependent Claim 3: Value 24 points, maximum deduction (except as noted)
21 points
Preamble
PR - 6 3. The system for laser drilling and magnetic flux
breakthrough detection of claim 1 or claim 2, further comprising:
PR - 6 Not written in multiple dependent form
Missing Components
MC - 8 a photodetector adjacent to said laser source
for sensing said laser beam and generating a photodetector signal; and
MC - 8 a threshold circuit electrically connected to said
photodetector for generating said laser-on signal in response to said
photodetector signal.
Incomplete Description or Necessary Limitation
INC, NL -3 Omission of underlined limitations above, failure to
include function with an element
FAIL REL -3 Failure to interrelate or incorrect interrelation of
components and materials
page E5, AUGUST 1996
Unnecessary Limitations
DIR -24 Claiming a method or process
DIR -3 Reciting independent claim
UL -2 Reciting a method limitation
Miscellaneous
ANT -24 Claim anticipated by the prior art
DIR,ICF -24 No claim; Jepson claim format
INOP -24 Claim defines inoperative invention
SI -3 Subject matter not within scope of invention
PM -3 Means or means plus function language (per instance)
MD -2 Misdescription
VI -2 Vague and indefinite
NAB,INF -2 No antecedent basis, inferential claiming
RN -2 Renaming components, process steps
DIR -2 Failure to follow directions
ID -2 Improper claim dependency
DI -2 Double inclusion
GR -1 Improper grammar (maximum deduction -3)
CF -1 Multiple sentences; does not begin with capital letter
SP -1 Misspelling (maximum deduction -3)
CN -1 Claim number missing, wrongs written (three"), or in Roman
numerals
PAGE E6, 1996
---- END OF ELECTRICAL OPTION ---
========================================================================
GRADING GUIDELINES
CHEMICAL OPTION: HETEROCYCLIC SUBSTITUTED 2-ACYLAMINO-5 THIAZOLES
Independent Claim 1: Value 25 points. maximum deduction (except as noted)
22 points
Preamble
PR -3 Method of preparing 2-acylamino-5-thiazoles wherein R1 is
methyl, ethyl, propyl or phenyl; R4 is phenyl or fluorophenyl; m is 1 to
3, and Z is indolyl
Missing Components
MC -4 Step 1 - reacting a ketochloride with sodium iodide
in the presence of dirnethyl ketone to produce a ketoiodide
MC -4 Step 2 - reacting the ketoiodide with a potassium or cesium
carboxylate to produce a ketoester
MC -4 Step 3 - reacting the ketoester with bromine to produce an
alpha-bromoketoester
MC -4 Step 4 - reacting the alpha-bromoketoester with thiourea
(in the presence of a conventional solvent such as an alkanol) to produce a
2-amino-5-thiazole
MC -4 Step 5 - acylating the 2-amino-5-thiazole with an indole
carboxylic acid in the presence of a base (such as triethylamine
and piperidine)
Incomplete Description or Necessary Limitation
WP -5 Wrong product
INC ,NL -3 Omission of underlined limitations in step 1 or step 5,
omitting reactant, dimethylketone in step 1 or base in step 5
INC,NL -1 Omits number of carbons of particular alkyd alkoxy,
cycloalkyl, or other group (max deduction = 4 pts)
Page C1, August 1996
Unnecessary Limitation
UL -2 Parenthetical limitation, reacting preference, "providing" a
starting material. reciting conventional solvent
DIR -25 Claiming a product. as opposed to a process
Independent Claim 2: Value 25 points, maximum deduction (except as noted)
22 points
Preamble
PR -3 Method of preparing a 2-acylamino-5-thiazole wherein Z is
indolyl, R1 is -CH3 or -C2H5, R5 is phenyl or 2-aminophenyl, and m is 1
or 2
Missing Components
MC -4 Step l - reacting a ketoester with bromine in the presence
of cupric bromide in an organic solvent to produce an
alpha-bromoketoester compound
MC -4 Step 2 - reacting the alpha-bromoketoester with thiourea (in
the presence of a conventional solvent, such as ethanol or propanol) to
produce a 2-amino-5-thiazole compound (includes failure to relate)
MC -4 Step 3 - reducing the 2-amino-5-thiazole compound with an
alkali metal hydride in an aprotic solvent to produce a
2-amino-5-hydroxyalkyl-thiazole compound
MC -4 Step 4 - acylating the 2-amino-5-hydroxyalkyl with
indol carbolic acid in the presence of a base to produce a
2-acylamino-5-hydroxyalkyl-thiazole compound
MC -4 Step 5 - reacting the 2-acylamino-5-hydroxy-alkylthiazole
compound with an isocyanate in an aprotic solvent at 20 C to 100 C
to produce a thiazole compound of formula (I)
Incomplete Description or Necessary Limitation
WP -5 Wrong product
INC ,NL -3 Omission of underlined limitation above, omitting
reactant. e.g., thiourea (step 2); or omitting a condition, e.g., a base
in step 4, aprotic solvent at 20 C to 100 C in step 5
Page C2, August 1996
INC, NL - 1 Omits number of carbons of particular alkyd alkoxy,
cycloalkyl or other group (max. deduction = 4 points)
Unnecessary Limitations
UL -2 Parenthetical limitations above, reciting preference.
"providing" a starting material, reciting conventional solvent
DIR -25 Claiming a product, e.g., a 2-acylamino-5-thiazole wherein Z
is indolyl, R1 is methyl or ethyl, R4 is phenyl or aminophenyl, and m is
1 or 2
Independent Claim 3: Value 25 points, maximum deduction (except as noted)
22 points
Preamble
PR -3 Method of preparing 2-acylamino compounds wherein Z
represents indolyl, isoindolyl, benzimidazolyl, quinolyl, isoquinolyl,
benzoxazolyl, benzofuranyl, benzothiazolyl; R1 represents C1-C5 alkyd
cyclohexyl, phenyl, and substituted phenyl wherein the substituent is
halogen, C1-C3 alkyd C1-C3 alkoxy, nitro, amino, hydroxy and
trifluoromethyl; R4 represents C3-C7 cycloalkyl, substituted cycloalkyl.
phenyl and substituted phenyl wherein the substituent is halogen, C1-C8
alkyd C1-C3 alkoxy, C1-C3 alkylthio, nitro, amino, and trifluoromethyl
MC -4 Step 1 - reacting a ketoiodide with a thiol
to produce a ketothioether
MC -4 Step 2 - reacting the ketothioether with bromine to produce an
alpha-bromoketothioether
MC -4 Step 3 - reacting the alpha-bromoketothioether with
thiourea (in the presence of a conventional solvent, such as an
alkanol) to produce a 2-amino-5-thiazole compound
MC -4 Step 4 - acylating the 2-amino-5-thiazole with Z-CO-OH
in the presence of a base (such as pyridine or trimethylamine)
Incomplete Description or Necessary Limitation
WP -5 Wrong product
INC ,NL -3 Omission of underlined limitations above; omitting
reactant,e.g., the thiol in step 1; urea in step :3; base in step 4
Page C3, August 1996
INC, NL -1 Omits number of carbons of particular alkyl, alkoxy.
cycloalkyl or other group (max. deduction = 4 points)
Unnecessary limitations
UL -2 Parenthetical limitations above, referring to something as
being preferred, "providing" a starting material, reciting conventional
solvent, or reacting a ketochloride with sodium iodide to produce a
ketoiodide.
DIR -25 Claiming a product, e.g., a 2-acylamino-5-thiazole
wherein Z represents indolyl, isoindolyl, benzimidazolyl, quinolyl
isoquinolyl, benzoxazolyl, benzofuranyl, benzothiazolyl: R4 represents
C3-C7 cycloalkyl, substituted cycloalkyl. phenyl, substituted phenyl,
wherein the substituent is C1-C8 alkyl, halogen, C1-C3 alkoxy, C1-C3
alkylthio, nitro, amino, and trifluoromethyl
Independent Claim 4: Value 25 points, maximum deduction (except as noted)
22 points
Preamble
PR -3 A heterocyclic substituted 2-acylamino-5-thiazole compound
Necessary limitation
WP -10 Wrong product
NL -5 Formula (I) must either exclude compounds where Z is
benzimidazolyl, benzofuranyl and benzoxazolyl (b/c otherwise anticipation
by the prior art), or include all heteros and add a proviso excluding Z
as foregoing heteros when R4 and R5 are certain moieties.
Unnecessary Limitations
UL -20 Process of making or using the thiazole compound
UL -2 Excluding compounds where Z is quinolyl, indolyl, isoindolyl,
isoquinolyl, benzothiazolyl
UL -2 Excluding compounds where R4 represents C3-C7 cycloalkyl,
substituted C3-C7 cycloalkyl, phenyl, substituted phenyl wherein the
substitutent is halogen, C1-C3 alkyl, C1-C3 alkoxy, nitro, amino, hydroxy
and trifluoromethyl
Page C4, August 1996
UL -2 Excluding compounds wherein R5 represents C1-C5 alkoxy,
pyridinyl, pyrrolyl, piperazinyl, -(CH2)m-X wherein m is 0 to 5 and X is
bromo, hydroxy, C3-C7 cycloalkyl, phenyl, substituted phenyl, -COOH, COOR1, -OCOR1, -COR1, -S-R1, -CO-NR1R2, -S-cyclohexyl. -NR1R2, and -OCOO-R1, wherein R1 and R2 are Cl-C5 alkyl, phenyl and substituted phenyl.
wherein the substituent is halogen. C1-C3 alkyl. C1-C3 alkoxy, nitro,
amino, hydroxy, and trifluoromethyl
Miscellaneous (for each claim)
DIR -25 Claiming only a product in claims 1, 2, or 3, e.g., the
heterocyclic substituted 2-acylamino-5-thiazole compound
ANT -25 Claim anticipated by prior art
DIR,ICF -25 No claim; product-by-process or Jepson claim format
IN OP -15 Claim defines inoperative invention
Sl -3 Subject matter not within scope of invention (e.g., including
ester groups in R1 for claim 3).
PM -3 Means or means plus function (per instance)
INC -3 Referencing compound as formula "X" and providing no formula
in the claim, dangling valance, formula of compound incomplete
FAIL REL -2 Failure to interrelate or incorrect interrelation of
steps, components or materials
MD -2 Misdescription, e.g., formula incorrect regarding a
substituent. R1, R4, R5, or Z from reagents, referenced formula missing
(max. deduction is -2 for each R. Z. etc. not defined).
VI -2 Vague and indefinite
NAB, INF -2 No antecedent basis; inferential claiming
RN -2 Renaming compounds, reagents
IMG,IML -2 Improper Markush Group: Improper Markush language
DIR -2 varies Failure to follow directions
Page C5, August 1996
ID -2 Improper claim dependency, e.g., claim dependent on following
claim; improper manner of providing for claim to be dependent on another
claim; independent claim depends on another claim.
Dl -2 Double inclusion
WS -2 Wrong sequence of steps if total method is not inoperative to
produce product (per pair)
GR -1 Improper grammar (max deduction = 4 points for 4 different
errors)
CF -1 Multiple sentences; does not begin with capital letter; "I (or
we) claim..." after claim #
SP -1 Misspelling (max deduction = 4 points for 4 different errors)
CN -1 Claim numbering missing, erroneous number, written number, or
Roman numerals
Page C6, AUGUST 1996
---- END OF CHEMICAL OPTION ---
=====================================================================
---- GENERAL ABBREVIATION KEY ----
Note, this is the only page generally published. It is the one supplied
with the $15 answer keys from the PTO.
ANT Anticipated claim - claim anticipated by the prior art
CN Claim format error - Does not begin with a capital letter,
comprise a single sentence, or has errors in the preamble regarding
placing "I (or we) claim after claim number or referring to wrong
elements
CN Claim number misnumbered, Improper, or missing - it the
dependency is Incorrect, use ID Instead
Dl Double Inclusion
FAIL REL Failure to or incorrectly Interconnecting or interrelating
materials, parts, and/or components
DIR Failure to follow directions - be specific
GR Grammatical or punctuation error (other than CF)
ICF Improper claim format, ie., Jepson
ID Improper dependency (other than CN)
INF Inferentially Claimed (not positively claimed)
IN OP inoperative Invention - as to the claim as a whole
ILLEG Claim language is Illegible - no credit if unreadable; must
confer with everyone before doing such
IMG Improper Markush group
IML Improper Markush language
INC Incomplete material, part, component, or method step
MC Missing component
MD Misdescriptive
MPEP Claim language contrary, objectionable, or rejectable for any
other reason expressed in the MPEP - cite which section of MPEP is being
applied
NAB No antecedent basis
NC No claim - deduction is total amount for claim
NL Omission of a necessary limitation
PM Using prohibited means or means plus function language - see
specific discipline sheet for amount of point deduction
RN Renaming components, parts, materials, or procedures
SI Subject maker not within scope of Invention or claiming
undisclosed subject matter Including, If applicable, undisclosed method
limitations
SP Spelling error
UL Unnecessary Limitation
VI Vague, unclear or Indefinite language
WS Claiming method limitations in the wrong sequence, but does not
render claim inoperative
END -- GENERAL ABBREVIATIONS. ALL OPTIONS
---- END OF DOCUMENT ---