24. Mr. Brick, the inventor, files an application with the USPTO on January 2, 2001
containing a single claim for his invention: a new bouncing ball called “Y”. Brick
receives a first Office action dated June 4, 2001 from the primary examiner handling
Brick’s application. The examiner rejected Brick’s claim only under 35 U.S.C. § 103 on
the grounds that Reference X teaches a bounc ing ball called “Q,” and that although “Y”
and “Q” are not the same, it would have been obvious to one of ordinary skill to make
changes to the “Q” ball in order to obtain a ball just like Brick’s “Y” ball.
On August 2, 2001, Brick responds by stating that his new “Y” ball bounces
unexpectedly higher than the “Q” ball described in Reference X. Brick includes a
declaration, signed by Mrs. Kane, that includes extensive data comparing the bouncing
results for the “Y” and “Q” balls and showing that the “Y” ball bounces unexpectedly
higher than the “Q” ball. Brick argues that the rejection under 35 U.S.C. § 103 should be
withdrawn because he has proven that, in view of the unexpectedly higher bounce of the
“Y” ball as compared to the “Q” ball, it would not have been obvious to one of ordinary
skill in the art to make changes to the “Q” ball to obtain Brick’s “Y” ball.
On October 2, 2001, Brick receives a final rejection from the examiner. The rejection
states, in its entirety: “The response has been reviewed but has not been found persuasive
as to error in the rejection. The claim is finally rejected under 35 U.S.C. § 103 for the
reasons given in the first Office action.” Brick believes he is entitled to a patent to his
new bouncing ball “Y.” How should Brick proceed?
(A) Brick should give up because the declaration did not persuade the
examiner of the merits of Brick’s invention.
(B) Brick should timely file a Request for Reconsideration asking the
examiner to reconsider the rejection on the basis of the Kane declaration
and, as a precaution against the Request for Reconsideration being
unsuccessful, also timely file a Notice of Appeal.
(C) Brick should respond by submitting a request for reconsideration
presenting an argument that Reference X does no t provide an enabling
disclosure for a new ball with the unexpectedly higher bounce of his “Y”
(D) Brick should respond by submitting a request for reconsideration
presenting an argument that Reference X does not provide a written
description for a new ball with the unexpectedly higher bounce of his “Y”
(E) Brick should respond by submitting a request for reconsideration
presenting an argument the declaration data proves that the “Q” ball and
the “Y” are not identical.
24. ANSWER: (B) is the correct answer. It is inappropriate and injudicious to disregard any
admissible evidence in any judicial proceeding. Stratoflex, Inc. v. Aeroquip Corp., 713 F.2d
1530, 218 USPQ 871 (Fed. Cir. 1983). The examiner has not analyzed the data in the declaration
nor provided an explanation as to why the declaration did not overcome the rejection.
Furthermore, the rejection has not been reviewed anew in light of the declaration. The examiner
should have reweighed the entire merits of the prima facie case of obviousness in light of the
data. In re Hedges, 783 F.2d 1038, 1039, 228 USPQ 685, 686 (Fed. Cir. 1986). Accordingly,
Block should ask that the rejection be reconsidered and file a Notice of Appeal to safeguard his
interest for a review of the rejection by the Board of Patent Appeals and Interferences if the
rejection is not reconsidered. 37 C.F.R. § 1.116. (A) is wrong because there is no evidence that
the examiner made any review of the declaration. (C) is wrong because whether or not Reference
X provides an enabling disclosure for Block’s invention is immaterial to the question of
obviousness. If there were to be a question of enabling disclosure for Reference X, it would be
with respect to the “Q” ball relied upon by the examiner, not applicant’s “Y” ball. (D) is wrong
because whether or not Reference X provides a written description for Block’s invention is
immaterial to the question of obviousness raised by the examiner. (E) is wrong because the issue
is one of obviousness under 35 U.S.C. § 103, not identity under 35 U.S.C. § 102. Given that the
examiner has rejected the claim under 35 U.S.C. § 103 and not under § 102, the examiner has
already conceded that the “Q” and “Y” balls are not the same.