Q) Toy Airplane with Foil Wings (10.03.46p)

by patentbar on May 20, 2007 · 26 comments

in Exam Questions

A variant question #46 citing a Toy Plane with Foil Wings from the October 2003 (pm) exam is in the Prometric database.

Original Question:

46. A primary examiner is examining a patent application. The application includes a specification and a single claim to the invention that reads as follows:

1. A building material to be used as an alternative to brick in the construction of a house, said building material comprising compressed refuse, the majority of which is wood.

In the specification, the inventor explains that the wood to be used in the inventive building material should be balsa wood. According to the specification, balsa-containing building material has the advantage of being lighter than brick. In a first Office action mailed to the registered practitioner representing the inventor the single claim was rejected as anticipated under 35 U.S.C. § 102 over Patent A. Patent A issued more than one year before the effective filing date of the application, and teaches a building material to be used as an alternative to brick in the construction of a house comprising compressed refuse, the majority of which is pine. The practitioner replies to the first Office action by arguing that the invention is different from that of Patent A. According to the practitioner, the inventor uses balsa wood, not pine. The claim has not been amended. Which of the following describes how the examiner should proceed in accordance with the patent laws, rules and procedures as related in the MPEP?

(A) The examiner should allow the claim.

(B) The examiner should allow the claim only after including a Reasons for Allowance pointing out that the inventor argues that her invention is directed to using balsa wood, not pine.

(C) The examiner should issue a Final Rejection again rejecting the claim as anticipated under 35 USC102 over Patent A.

(D) The examiner should reopen prosecution and begin anew, this time searching for a reference that shows a building material containing balsa wood.

(E) The examiner should withdraw the rejection but issue a new Office action this time rejecting the claim under 35 USC 112, second paragraph, because the claim is broad enough to encompass using pine.

ANSWER: (C) is the best answer. 35 U.S.C. § 102; MPEP §§ 2111 and 2131. MPEP § 2131, under the heading, “To Anticipate A Claim, The Reference Must Teach Every Element Of The Claim.” “A claim is anticipated only if each and every element as set forth in the claim is found, either expressly or inherently described, in a single prior art reference.” See Verdegaal Bros. v. Union Oil Co. of California, 814 F.2d 628, 631, 2 USPQ2d 1051, 1053 (Fed. Cir. 1987). Here, every element of the claim is found in Patent A. See MPEP 2111, under the heading “Claims Must Be Given Their Broadest Reasonable Interpretation,” where it explained that “[d]uring patent examination, the pending claims must be ‘given the broadest reasonable interpretation consistent with the specification,” and cites In re Prater, 415 F.2d 1393, 1404-05, 162 USPQ 541, 550-51 (CCPA 1969) to explain that “reading a claim in light of the specification, to thereby interpret limitations explicitly recited in the claim, is a quite different thing from ‘reading limitations of the specification into a claim,’ to thereby narrow the scope ofthe claim by implicitly adding disclosed limitations which have no express basis in the claim.” (A) and (B) are incorrect. MPEP § 2111. The claim, as written, is not allowable over Patent A since Patent A disclosed every element recited in the claim. (D) is incorrect. There is no need to search again for a building material, this time looking for balsa wood. The claim has not been amended to be directed to balsa wood. Since it still broadly recites “wood,” Patent A that discloses pine remains germane and anticipates the claim. (E) is incorrect for one or more reasons. It is incorrect because it wrongly agrees with the practitioner’s argument that Patent A is poor reference. It also is incorrect because it seeks to reject the claim over 35 U.S.C. § 112, second paragraph, for indefiniteness. The claim is clear on its face and there is nothing indefinite about what the claim says. This answer makes the mistake of confusing breadth with indefiniteness. The claim is broad but it is definite.

Variant question with a toy airplane with foil wing:

Applicant claims a toy plane whose wings are covered in aluminum foil. The spec describes a toy plane whose wings are covered in foil but whose body isn’t. Reference discloses a plane that is covered entirely in chewing gum wrapper, which includes aluminum foil and another material. Claim is rejected, and applicant responds by arguing that covering only the wings in foil provides useful aerodynamic properties, and therefore the claimed invention is distinguishable from the reference. How should the examiner respond? I said the examiner should maintain the rejection b/c the claim is broad enough to include a plane that is covered entirely in aluminum foil (limitations present in the spec will not be read into the claim if not expressly recited A patent of a paper airplane with aluminum foil (I think) wings. The prior art is a plane covered with aluminum I think. Is it patentable? similar to Oct 2003: PM 46 (airplane with foil on wings, prior art has airplane covered completely in chewing gum wrapper)

I recently reviewed this answer at the PTO. Yes, the examiner should maintain the rejection in view of practitioner’s arguments. The answer description points out that the claim is open-ended (“…comprising wings covered in aluminum foil”). Thus, the prior art anticipates the claim.

1 JustinNo Gravatar March 2, 2011 at 5:03 pm

I had a variant of the foil wing airplane. Instead of rejecting on a 102 basis the examiner rejected on a 103 and the practitioner replied to the 103. I’m not sure what the answer (I don’t remember all of them) but I guessed and selected
A) the examiner should be persuaded by the arguments since the prior art does not teach the limitation of only the wings covered in foil. Again, not sure about the answer, but I did pass. Just thought I’d give everyone a heads up that another variation exists with a 103 rejection.

2 ELSNo Gravatar March 7, 2011 at 12:13 pm

Saw the toy airplane with foil wings version yesterday. Said examiner should maintain rejection.

3 OverworkkedNo Gravatar April 28, 2011 at 1:26 pm

Saw Toy Airplane with Foil, same as above on 4/27/2011 E8R8

4 ohsoobviousNo Gravatar May 25, 2011 at 6:14 pm

i had the toy airplane version on 5/18/11

5 AxoNo Gravatar July 1, 2011 at 10:29 am

Got the foil wing question 6/28/11.

6 VodkaNo Gravatar July 27, 2011 at 6:10 pm

Receieved this one today 7/27/11. Unsure about the answer the variant was with wings only and the other with two layers with one layer consisting of gum wrappers.

7 BobNo Gravatar August 3, 2011 at 2:14 am

Got this on 8/2/11

8 maggieNo Gravatar August 27, 2011 at 3:39 am

I had a variant of the foil wing airplane. Prior art showed entire plane covered in gum wrappers (which have foil) to applicant’s plane which only had plane wings with only foil. The examiner rejected on a 103, Q, what can rebutt prima facie showing. –answer choice I choose was unexpected results better,longer flying ect. 8/24/2011

9 patentgeekchickNo Gravatar September 22, 2011 at 8:22 pm

Foil wing. 9.22.11
* Examiner should not be persuaded… Claim broad enough to be anticipated.

10 KenNo Gravatar October 9, 2011 at 8:10 am

I was hoping to get this one on 10/8 but unfortunately I didn’t.

11 fengyuwuzuNo Gravatar October 12, 2011 at 3:21 pm

hope I will get is tomorrow, :)

12 AnonNo Gravatar October 12, 2011 at 12:20 am

Got the toy plane with foil variant10/11/11

13 ChemEEENo Gravatar November 9, 2011 at 6:20 pm

Got toy airplane variant as my the first question on the test
-my answer choice was for the examiner to maintain the rejection b/c the claim is broad enough to include a plane that is covered entirely in aluminum foil

14 RemandedNo Gravatar January 20, 2012 at 8:31 pm

Saw Toy Airplane with Foil, same as above on 20 January 2012.

15 PhoenixNo Gravatar February 4, 2012 at 10:56 pm

Had toy plane aluminum foil variant verbatim 2/4/12

16 DavidNo Gravatar February 19, 2012 at 1:26 am

Got the foil wing Q on 2/10/2012

I believe the correct answer is: examiner should maintain the rejection b/c the claim is broad enough to include a plane that is covered entirely in aluminum foil

17 GDBNo Gravatar April 20, 2012 at 1:08 am

Got this 04/19/12

18 VenuSareenNo Gravatar August 21, 2012 at 9:03 pm

Does anyone know what is the answer to the variant with 103 rejection? Is it unexpected results?

19 TakingittomorrowNo Gravatar September 20, 2012 at 6:31 am

I would like to know the answer to the 103 variant too. I imagine that anyone of the ways to over come obviousness in 2100 could be used? However, the broadest interpretation thing throws me off?

20 EENo Gravatar September 20, 2012 at 2:57 pm

I believe the answer is still the same. Because the underlying reference–even under the broadest reasonable interperetation standad–anticipates the claim, the examiner should maintain the rejection.

21 NamelessNo Gravatar October 25, 2012 at 8:57 pm

This was on the exam today.

22 ZNo Gravatar March 31, 2013 at 2:11 pm

Got toy plane with foil wings 103 variant on 3/30/13.

23 VinoNo Gravatar November 21, 2013 at 10:18 pm

Variant on 11/14

24 iyerNo Gravatar October 1, 2014 at 5:41 am

had the toy plane on 9/29

25 KINo Gravatar January 6, 2016 at 1:59 pm

In toy plane case, can examiner reject 102/103 both at same time? or should choose one?

26 mayteaNo Gravatar January 18, 2016 at 10:02 am

I believe I have read examiner can do a 102/103 rejection, but a 102 rejection is always preferred when it is statutory.

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