Q) Obviousness (MPEP 2100, In Progress)

by patentbar on May 6, 2007 · 39 comments

in Exam Questions

Obviousness (General)

USPTO policy is to follow Graham v. John Deere Co. in the consideration and determination of obviousness under 35 U.S.C. 103. The four factual inquires enunciated therein as a background for determining obviousness are as follows:


(A) Determining the scope and contents of the prior art;
(B) Ascertaining the differences between the prior art and the claims in issue;
(C) Resolving the level of ordinary skill in the pertinent art; and
(D) Evaluating evidence of secondary considerations.

Also know that when applying 35 U.S.C. 103, the following tenets of patent law must be adhered to:

(A) The claimed invention must be considered as a whole;
(B) The references must be considered as a whole and must suggest the desirability and thus the obviousness of making the combination;
(C) The references must be viewed without the benefit of impermissible hindsight vision afforded by the claimed invention; and
(D) Reasonable expectation of success is the standard with which obviousness is determined.

Test takers report question #27 from the October 2002 (am) test is in the Prometric database.

Office policy has consistently been to follow Graham v. John Deere Co., 383 U.S. 1, 148 USPQ 459 (1966), in the consideration and determination of obviousness under 35 USC 103. Each of the following are the four factual inquires enunciated therein as a background for determining obviousness except:

(A) Determining the scope and contents of the prior art.
(B) Resolving any issue of indefiniteness in favor of clarity.
(C) Ascertaining the differences between the prior art and the claims in issue.
(D) Resolving the level of ordinary skill in the pertinent art.
(E) Evaluating evidence of secondary considerations.

ANSWER: The most correct answer is (B). 35 U.S.C. § 103; Graham v. John Deere Co., 383 U.S. 1, 148 USPQ 459 (1966); MPEP § 2141. Resolving any issue of indefiniteness in favor of clarity is not among the factual inquiries enunciated in Graham. The four factual inquiries are set forth in answers (A), (C), (D), and (E).

The Obvious vs. Anticipation Misquote –

Test takers report that the “obviousness/anticipation” misquote is a product by process question. One of the answers states that a case for “anticipation” is easier to show when product by process claims are used as compared to traditional claims. The MPEP clearly has a quotation from a federal circuit case that says “obviousness” is easier to show when using product by process claims. But, then on the next page, the MPEP makes reference to another case where both anticipation and obviousness are easier to prove in product by process claims because only the product (and not the process) is examined for anticipation/obviousness.

The test taker picked the answer that states that a case for “anticipation” is easier to show, even though it was an obvious misquote from the MPEP. The other viable answer said product by process claims can ONLY be used when traditional claiming techniques are inappropriate (a gross overstatement).

Another test taker agreed that the MPEP states that anticipation and obviousness are both easier to show when you use a product by process claim. However, this test taker is in the opinion that a direct misquote from the MPEP is never right. The other choices were…product by process can only be used in chemical cases (wrong) and you should use product by process only when the process is novel (wrong). So by process of elimination, this test taker chose product by process should ONLY be used when traditional claiming techniques are inappropriate is correct as the best answer.

Sweet-Smelling Paint – Obviousness and Multiple Reference Rejections.

Test takers report a question involving a claim for sweet smelling paint with six colors, fragrance, and skim milk. This claim is rejected as obvious over eight prior references (one for each of six colors individually, one for fragrance, and one for skim milk). The agent rebuts on the basis of too many references. Answer – there is no fixed limit.

MPEP 2145 – ARGUING ABOUT THE NUMBER OF REFERENCES COMBINED
Reliance on a large number of references in a rejection does not, without more, weigh against the obviousness of the claimed invention. In re Gorman, 933 F.2d 982, 18 USPQ2d 1885 (Fed. Cir. 1991) (Court affirmed a rejection of a detailed claim to a candy sucker shaped like a thumb on a stick based on thirteen prior art references.).

Other “Obviousness” Questions from Past Exams –

Which of the following does not constitute probative evidence of commercial success to support a contention of non-obviousness?
a) In a utility case, gross sales figures accompanied by evidence as to market share.
b) In a utility case, gross sales figures accompanied by evidence as to the time period during which the product was sold.
c) In a utility case, gross sales figures accompanied by evidence as to what sales would normally be expected in the market.
d) In a utility case, gross sales figures accompanied by evidence of brand name recognition.
e) In a design case, evidence of commercial success clearly attributable to the design, and not to improve performance of the device.

716.03(b) Commercial Success Derived From Claimed Invention

Other “Obviousness” Topics Covered on the Prometric Exam –

  • Traversing obviousness and 102(e)
  • 102(d)/172 obviousness rejections
  • A biotechnology question that really deals with obviousness/anticipation; Nucleotide and chemical claims with regard to anticipation,
  • Prima Facie Obviousness – 2144.05 III. REBUTTAL OF PRIMA FACIE CASE OF OBVIOUSNESS – A prima facie case of obviousness may also be rebutted by showing that the art, in any material respect, teaches away from the claimed invention.
  • A past exam question (?) involving a chemical formula is obvious with 34.9% compared to 35% in prior art or 34.9% and 65.1% (obviousness)
  • Obviousness Type Double Patenting – as for the obviousness-type double-patenting rejection, of course that is possible, but that’s what terminal disclaimers are for. Almost all continuing and divisional applications filed on the applicant’s initiative are subject to a terminal disclaimer, as they should be. It is not something to make a big deal out of, or even rightfully call an “issue.” Certainly, it should not stop you from executing your client’s wishes and dealing with a hostile inventor.

{ 39 comments… read them below or add one }

1 patentbarNo Gravatar December 17, 2007 at 10:34 pm

A claim in a pending patent application stands rejected under 35 USC 103(a) as being obvious over Kim in view of Lance. The Kim and Lance references are both U.S. Patents issued on respective applications filed before the date of the application in question. In the rejection, the primary examiner asserted that no determination of the level of ordinary skill in the art was necessary because the subject matter of the application and of Kim and Lance were so easily understandable; and that the Kim reference relates to the applicant’s endeavor. The examiner properly found motive in Kim and Lance for combining the references, but the motive would produce a benefit different from that offered by applicant’s invention. Neither reference teaches or suggests the ambiguous limitation. In the rejection under 36 USC 103(a), the examiner did not address an ambiguous limitation in the claim. However, the examiner separately rejected under 35 USC 112, second paragraph as indefinite due to the ambiguity. According to the patent laws, rules and procedures as related in the MPEP, which of the following arguments, if true, would overcome the rejection?

(A) The examiner asserted that because the subject matter of the application and of Kim and Lance were so easily understandable, a factual determination of the level of skill in the art was unnecessary.
(B) The Kim reference is nonanalogous art because, although it relates to the field of the applicant’s endeavor, it is not pertinent to the particular problem with which the applicant was concerned.
(C) The reason given by the examiner to combine Kim and Lance is to obtain a benefit different from that offered by the applicant’s invention.
(D) Neither the Kim nor Lance references teaches or suggests the ambiguous claimed limitation that the examiner separately rejected as indefinite.
(E) All of the above.

C is wrong because the motivation to combine can be different from the applicant’s purpose. That means E is incorrect as well. D is wrong because even if individual references do not separately teach a limitation, the combined references might teach the limitation. B is wrong because art can be analogous if it either it relates to the field of or is pertinent to the particular problem of concern to the inventor. A is wrong because a specific finding of the level of skill in the art may not be required in all cases. See MPEP 2141.03.

While D is the most attractive answer, I don’t see an answer I could mark correct. Somebody goofed. I suspect the intent was to test whether the examiner has to address an ambigous limitation. The Examiner is suppose to pick the easiest possible interpretation of an ambigous limitation to reject and then to make a complete 103 rejection. Unfortunately the question failed to test anything because another potentially testable point was included in the quesiton.

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2 SolNo Gravatar April 5, 2012 at 3:46 pm

D is probably the best. It is impossible “even if individual references do not separately teach a limitation, the combined references might teach the limitation.”

1 lacks limitation X
2 lacks limitation X
then 1+2 still lacks limitation X

However, I agree that the Examiner did not do a good job by pickin up one limitation and make a complete 103 rejection.

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3 drkyeNo Gravatar January 30, 2008 at 2:18 am

RE: “Obviousness: Kim in view of Lance” This is question 2 from Oct 03 AM Exam. Credit was given for all answers, but if this question returns, you can bet it will be slightly rewritten.

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4 mmmNo Gravatar May 17, 2008 at 3:15 am

Regarding “product by process” claims, the question is stated in the PLI prep software as:

Which of the following statements is true respecting product-by-process claims?
(A) A lesser burden of proof is required to make out a case of prima facie obviousness for product-by-process claims than is required to make out a prima facie case of obviousness when a product is claimed in the conventional fashion.
(B) It is proper to use product-by-process only when the process is patentable.
(C) It is proper to use product-by-process claims only when the product is incapable of description in the conventional fashion.
(D) Product-by-process claims cannot vary in scope from each other.
(E) Product-by-process claims may only be used in chemical cases.

The answer that they give:

“The answer is (A). In re Fessman, 180 USPQ 324, 326 (CCPA 1974); MPEP §2113.”

Note that this citation comes under the heading: “ONCE A PRODUCT APPEARING TO BE SUBSTANTIALLY
IDENTICAL IS FOUND AND A 35 U.S.C. 102/103 REJECTION MADE, THE BURDEN SHIFTS TO THE APPLICANT TO SHOW AN UNOBVIOUS DIFFERENCE”

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5 sethzNo Gravatar January 21, 2010 at 7:56 pm

This question shows up multiple times in past 01/02/03 exams.

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6 mmmNo Gravatar May 17, 2008 at 3:19 am

Regarding probative value, see MPEP 716.03(b) III:

Establishing a nexus between commercial success and the claimed invention is especially difficult in design cases. Evidence of commercial success must be clearly attributable to the design to be of probative value, and not to brand name recognition, improved performance, or some other factor. Litton Systems, Inc. v. Whirlpool Corp., 728 F.2d 1423, 221 USPQ 97 (Fed. Cir. 1984) (showing of commercial success was not accompanied by evidence attributing commercial success of Litton microwave oven to the design thereof).

Emphasis added.

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7 Joe PatentNo Gravatar July 9, 2008 at 11:05 pm

What does it mean: “obvious over Kim in view of Lance”? Does it mean that the Kim patent shows the named item to be obvious in view of Lance as a reference? Or does it mean that the Lance patent shows the named item to be obvious in view of Kim as a reference? Or does it mean something else?

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8 dlbNo Gravatar September 27, 2011 at 5:57 pm

It means that Kims reference + Lances reference combined makes Application A obvious under 103. Thats all! I know its worded real funny.

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9 timtimNo Gravatar April 2, 2012 at 8:37 pm

db pretty much has it. But a step further – suppose you have a claim comprising A, B, C, and D. The whole “obvious over Kim in view of Lance” means that Kim contains most of the elements (so let’s say A, B, C) and then Lance contains the last (D).

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10 patentbarNo Gravatar August 19, 2008 at 11:02 am

103(c) / Effective Date Nov. 29, 1999

One question requires you to know that 35 U.S.C. 103(c) prior art exclusion only applies to applications filed on or after November 29, 1999.

706.02(l)(1) Rejections Under 35 U.S.C. 102(e)/103; 35 U.S.C. 103(c)
Effective November 29, 1999, subject matter which was prior art under former 35 U.S.C. 103 via 35 U.S.C. 102(e) is now disqualified as prior art against the claimed invention if that subject matter and the claimed invention “were, at the time the invention was made, owned by the same person or subject to an obligation of assignment to the same person.” This change to 35 U.S.C. 103(c) applies to all utility, design and plant patent applications filed on or after November 29, 1999, including continuing applications filed under 37 CFR 1.53(b), continued prosecution application filed under 37 CFR 1.53(d), and reissues. The amendment to 35 U.S.C. 103(c) does not affect any application filed before November 29, 1999, a request for examination under 37 CFR 1.129 of such an application, nor a request for continued examination under 37 CFR 1.114 of such an application.

Remember that it is on or after language.

The amendment to 35 U.S.C. 103(c) made by the AIPA to change “subsection (f) or (g)” to “one of more of subsections (e), (f), or (g)” applies to applications filed on or after November 29, 1999.

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11 matt30No Gravatar May 10, 2009 at 11:29 am

I got a new version of obviousness exam question yesterday that I haven’t seen in any other website. Actually, My luck they asked the question twice in the afternoon session changing only 2 selections.
Both questions ask which one is in accordance with MPEP.

In version 1, the right answer was choice A) If proposed modification would render the prior art invention being modified unsatisfactory for its intended purpose, then there is no suggestion or motivation
to make the proposed modification. (in a different wording, all I remember is it ended like “the combination does not render prima facie obvious”) … see MPEP 2143.01.V

In version 2, A) If proposed modification would render the prior art invention being modified unsatisfactory for its intended purpose, then the proposed modification renders prima facie obvious only if the knowledge of ordinary skill in the art is relatively high. (of course again not the exact wording again but it ends with a B.S. about ordinary skill and last two words are exactly “relatively high”) (definitely not the right choice, see version 1)

B) All claim limitations must be anticipated or suggested by the combination to render a Prima facie case of obviousness.

B was the right choice for sure comparing to version 1, although I do not remember the wording of them the rest of the choices in version 2 were also in version 1, verbatim.

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12 BrandonNo Gravatar February 12, 2011 at 3:22 pm

***TONS AND TONS OF OBVIOUSNESS QUESTIONS ON MY EXAM 2/7/11***

In the afternoon section of my exam, I got pretty much every obviousness question I had ever seen on previous exams and/or had read on this site. No joke, there were anywhere from 5-10 obviousness questions, most of them really easy and some almost duplicates of each other.

So, I would make sure to double check that you understand any obviousness question that you come across while studying.

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13 BigBadVoodoDaddyNo Gravatar July 6, 2011 at 4:38 pm

Matt
See 2141 C III – Rationales to support obviousness rejection.
I DONT BELEIVE ALL CLAIM LIMITATIONS HAVE TO BE SUGGESTED OR ANTICIPATED FOR AN OBVIOUSNESS REJECTION

Prior art is not limited just to the references being applied, but includes the understanding of one of ordinary skill in the art. The prior art reference (or references when combined) need not teach or suggest all the claim limitations, however, Office personnel must explain why the difference(s) between the prior art and the claimed invention would have been obvious to one of ordinary skill in the art. The “mere existence of differences between the prior art and an invention does not establish the invention’s nonobviousness.” Dann v. Johnston, 425 U.S. 219, 230, 189 USPQ 257, 261 (1976). The gap between the prior art and the claimed invention may not be “so great as to render the [claim] nonobvious to one reasonably skilled in the art.”Id. In determining obviousness, neither the particular motivation to make the claimed invention nor the problem the inventor is solving controls. The proper analysis is whether the claimed invention would have been obvious to one of ordinary skill in the art after consideration of all the facts. See 35 U.S.C. 103(a). Factors other than the disclosures of the cited prior art may provide a basis for concluding that it would have been obvious to one of ordinary skill in the art to bridge the gap. The rationales discussed below outline reasoning that may be applied to find obviousness in such cases

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14 ISNo Gravatar March 7, 2011 at 7:12 pm

I got a ton of obviousness questions on my exam today. At least 2 were obv v. anticipation questions.

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15 OverworkkedNo Gravatar April 28, 2011 at 12:56 pm

Variants on 4/27/2011 E8R8 + KSR:

Multiple questions.

(Gross approximation) Application A before pto concerning drug-QP dispensal machine with touch screen. Examiner thinks obvious via 103 per X and Y. X teaches drug-BV dispensal machine, Y teaches touch screen and suggests that drug dispensal machines could benefit from touch screen.

How should the examiner properly reject application A via 103?

A. Something tricky and false
B. Disregard the Graham factors and do something true per KSR
C. Something CORRECT – (use the teaching as a rationale to support obviousness) (My answer)
D. Something tricky and false
E. B & C (where C is the answer I ended up going with)

Random KSR stuff:

These are facts that I had to learn on the fly from the KSR questions to knock out answers or validate others. These are not necessarily true answers, just principles that were helpful in systematically evaluating the answers:

1. Per KSR bulletin, patents can be found obvious despite the inconsistency of the teachings in prior art (or inconsistency doesn’t necessarily overcome Prima Facie case).

2. Inoperability (inoperable was a word that kept popping up) affects things in some way when you change the prior art with a TSM.

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16 trmckenzNo Gravatar November 23, 2013 at 5:44 pm

Can confirm via USPTO test review C is correct.

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17 jacquiegardnerNo Gravatar May 3, 2011 at 6:03 pm

Saw this question today (May 2, 2011). Can’t remember what I answered.

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18 DanielNo Gravatar August 3, 2011 at 10:56 am

Numerous, numerous obvious questions on 7/29/11 with several answers contained in the KSR bulletins. Along with Overworkked, there is an answer that requires you to know that obviousness can exist without the prior art being in *agreement* (<— key word).

Most of the obviousness questions were from the 03 tests, however. Knowing the ins and outs of 102 vs. 103 and how they relate to 112 etc. was critical to having enough time to look up the way left-field questions (that were probably beta anyway, but can't be sure).

Passed–so glad not to have to take it again.

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19 DanielNo Gravatar August 3, 2011 at 10:58 am

Sorry to reply to my own post, but there is also a glitch in the testing software (at least mine) where if you open the KSR materials that contains a powerpoint, your search stops working for ALL the MPEP until you change questions (maybe that one isn’t OCR’d?). So, if you’re sitting in a Prometric center and something glitches with the PDF searching, don’t freak out–go forward one question and then back to the previous one, and searching will be restored again.

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20 Go4theGustoNo Gravatar September 12, 2011 at 11:51 pm

I took the exam on 9/1 and passed. there were numerous obviousness ?’s. the kim & lance variation was on the exam

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21 maggieNo Gravatar September 14, 2011 at 2:29 am

Yes, should mention read 103 obviousness in chapter 2100 3X. A lot of the came from here and I felt I handled them well by re-reading this section a couple of times

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22 maggieNo Gravatar September 14, 2011 at 2:31 am

So many question I can’t remember one exactly.

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23 maggieNo Gravatar September 14, 2011 at 2:35 am

A couple had to do this a previous 103 q theme that is, just because the claimed invention has a noted different benefit does not render it non-obvious in the prior art invention which is substantially identical

24 dlbNo Gravatar September 22, 2011 at 8:01 am

What is KSR?

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25 sgwNo Gravatar October 16, 2011 at 4:31 pm

Got overlooked’s question om 10/15/2010.
I thought one the options included articulated (KSR keyword) reasoning or something.

I saw other several KSR related questions.

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26 KFNo Gravatar November 2, 2011 at 3:44 pm

What do you mean by TSM (in overworrked’s post above)..last thought on KSR points to know.

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27 RickyNo Gravatar November 4, 2011 at 2:16 am

some case law ahout if “unexpected results’ could overcome obviousness rejection, are in 716.02, not in 2100.

It is almost impossible to remember all of them. Only way is to search key words in MPEP, I think.

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28 ENo Gravatar November 15, 2011 at 7:35 pm

Does anyone remember recent variations of Kim + Lance?

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29 MirandaNo Gravatar February 3, 2012 at 10:11 pm

does anyone know where i can find a good outline of the ksr supplemental material?

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30 RTNo Gravatar May 11, 2012 at 12:00 pm

Got several of these 5-10-12

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31 zanNo Gravatar May 11, 2012 at 12:28 pm

such as Kim and Lance? can you remember any details? I’m working on putting together a study guide of “new” questions.

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32 Miss_ANo Gravatar May 22, 2012 at 8:52 am

Got a close variant 5/22/12. Easy credit. Passed!

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33 bubzkiNo Gravatar December 11, 2012 at 8:11 am

LOTS of 103(a) and (c) questions on my exam on 12/10. One thing I saw especially frequently was questions regarding applicant owning or authoring one of the prior art references that was being cited against him or her.

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34 TimsvagNo Gravatar February 14, 2013 at 1:38 pm

Had a few obviousness, and obviousness/anticipation on one 02/12/13

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35 EyestrainedNo Gravatar June 21, 2013 at 9:18 pm

Tons of obviousness questions. Tons. Tons! 06/21/13

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36 MehNo Gravatar August 5, 2013 at 4:40 pm

also got quite a few 103 questions today 08/05/2013

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37 J22No Gravatar August 6, 2013 at 9:10 pm

Has anyone recently had a Kim & Lance variant?

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38 KSRBilskiNo Gravatar January 27, 2014 at 1:15 am

Can anyone tell me where I can find the KSR bulletin?

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39 KINo Gravatar December 17, 2015 at 2:24 pm

Can an examiner make an 102/103 or only 103 rejection where prior art cites chemical amounts of 34.9% and the applicant’s range starts at 35%?

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