Question #24 from the October 2003 (AM) patent bar exam is in the Prometric database.
A registered practitioner filed an application for an applicant claiming a “a means for pulling the door open.” The specification describes a handle and a knob being used together as a corresponding structure for pulling the door open. A prior art patent discloses a door opened by pulling on an attached bar. The primary examiner issued an Office action rejecting the claim under 35 USC 102 as being anticipated. In the action, the examiner properly identified the corresponding structure described in the applicant’s specification as the means for pulling the door open and properly explained why the prior art attached bar is the equivalent of the structure described in applicant’s specification. In accordance with the patent laws, rules and procedures as related in the MPEP, which of the following is the most correct reply to overcome the rejection under these circumstances?
(A) An amendment to the claim changing the pulling means to expressly include an attached bar.
(B) Only arguer that the claimed pulling means is not found in the prior art relied-upon reference and therefore the claim is patentable.
(C) An amendment to the specification that adds an attached bar to correspond to the prior art.
(D) An amendment to the claim substituting for the term “means for pulling the door open” the structure of a handle and a knob.
(E) An amendment to the specification that excludes an attached bar as a pulling means.
Negative limitation is usually OK, but here is “new matter” so negative limitation is wrong answer here. Correct answer is (D) An amendment to the claim substituting for the term “means for pulling the door open” the structure of a handle and a knob.
ANSWER: (D) is the most correct answer. MPEP § 2181 under the heading “Procedures For Determining Whether The Written Description Adequately Describes The Corresponding Structure, Material, Or Acts Necessary To Support A Claim Limitation Which Invokes 35 U.S.C. 112, Sixth Paragraph.” 35 U.S.C. 112, sixth paragraph states that a claim limitation expressed in means plus function language “shall be construed to cover the corresponding structure, materials, or acts described in the specification and ‘equivalents thereof.’” See also B. Braun Medical, Inc. v. Abbott Lab, 124 F.3d 1419, 1424, 43 USPQ2d 1896, 1899 (Fed. Cir. 1997).” The examiner has made a prima facie case of equivalent in the Office action to support the rejection based on 35 U.S.C. § 102. By amending the claim to no longer include the means limitation in question, the claim becomes narrower inasmuch as it no longer includes equivalents under 35 U.S.C. § 112, paragraph 6 for examination purposes. Thus, (D) overcomes the lack of novelty rejection under these circumstances. (A) is not the most correct answer because such an amended claim would continue to lack novelty, since both it and the prior art would have the attached bar expressly. Furthermore, such an amendment would introduce new matter lacking support in the application as originally filed. 35 U.S.C. §112, first paragraph. (B) is not the most correct answer because the “not found in the prior art” argument does not rebut the prima facie case of equivalents raised by the examiner. (C) is not the most correct answer because it does not address the rejection. (E) is not the most correct answerbecause the amendment would raise a new matter issue.