Recent test takers report question #23 from the October 2003 (am) exam is in the Patent Bar database of tested questions.
23. Applicant files a claim which includes the following limitation: “a step for crossing the road.” The specification recites the following acts: “(1) go to the curb, (2) look both ways, (3) if the road appears safe, walk across the road, (4) step up onto the far curb, (5) continue walking.” The primary examiner properly construes the step limitation to cover the foregoing acts. A prior art reference, published two years before the application was filed, expressly describes acts (1)-(4), but not (5). This same reference also discloses the remaining limitations recited in applicant’s claim, i.e., those other than the step plus function limitation. The examiner rejects the claim under 35 USC 102(b) as being anticipated by the prior art reference. In accordance with the patent laws, rules and procedures as related in the MPEP, which of the following is the most complete reply to overcome the rejection under these circumstances?
(A) An argument explaining that since act (5) is not disclosed in the reference, it does not anticipate the claim.
(B) An amendment to the specification deleting act (5) – continue walking.
(C) An argument showing that neither the equivalent of act (5) nor act (5) is disclosed in the reference, which therefore does not anticipate the claim.
(D) An amendment to the claim by adding a negative limitation to expressly exclude act (5) from crossing the road.
(E) (B) and (D).
Argue the limitation nor its equivalent is present in the prior art. ANSWER: (C) is the most correct answer. Pursuant to 35 U.S.C. § 112, paragraph 6, In re Donaldson Co., 16 F.3d 1189, 1193, 29 USPQ2d 1845, 1849 (Fed. Cir. 1994) (in banc), and MPEP § 2181, under the heading “Written Description Necessary To Support A Claim Limitation Which Invokes 35 U.S.C. 112, Sixth Paragraph,” “step” plus function limitations shall be construed to cover the corresponding acts disclosed in the specification and their equivalents. Accordingly, the step plus function imitation correspondingly includes acts (1)-(5) and their equivalents. Thus, in order to anticipate, a prior art reference must disclose each and every act, or its equivalent, for the step plus function. If the reference is shown to not disclose one of the acts, or its equivalents, then the reference fails to anticipate, which is the answer set forth in (C). Thus, (C) is the most complete answer. (A) is not the most complete answer because acts (1)-(4) are disclosed in the reference and the equivalent of act (5) has to be dealt with, i.e., the equivalent of continuing to walk may still be met by the reference unless the applicant shows through argument that the reference also fails to contain any equivalent for act (5). Thus, the most complete answer is (C) as compared to (A). (B) is not the most correct answer because once act (5) is removed from the specification, the prior art reference clearly anticipates (since it otherwise expressly has acts (1)-(4) and the other claim limitations) under the above recited facts absent act (5) in the specification. See Donaldson, 16 F.3d at 1193, 29 USPQ2d at 1849; MPEP § 2181. (D) is not the most complete answer the prior art still anticipates the claim. (E) is not the most correct answer because it includes two incorrect answer choices, (B) and (D).
FYI, no such heading in 2181.
MPEP 2181 (Eight Edition, Revision 4) has a section heading “WRITTEN DESCRIPTION NECESSARY TO SUPPORT A CLAIM LIMITATION WHICH INVOKES 35 U.S.C. 112, SIXTH PARAGRAPH” for section II.
If we weren’t dealing with a means-plus-function claim, the correct answer would not include the “equivalents,” correct? In other words, for a normal claim, the 102 art must teach each and every limitation, to the exclusion of equivalents. Is this correct?
I think that’s true – this “equivalents” issue only applies to means plus function
I got this question 5/16/2011.
I think I had this question on 5/18/11
Got this one today, 18 September 2011.
Had this question yesterday. October 31, 2011.
This is such stupid question. “a step for crossing the road” without step (5) continuing working is still “a step for crossing the road”
(1)-(4) is equivalent to (1)-(5) in regard to “a step for crossing the road”
Also, the means-plus-function is directed to “a step for crossing the road” not step (5). The applicant/agent needs to argue neither “a step for crossing the road” or its equivalent is disclosed. Step (5) or its equivalent is not disclosed, OK, so what? An equivalent of “a step for crossing the road” is disclosed in the prior art.
got this 6/29/12