43. A patent application filed in the USPTO claims a nylon rope coated with element E for the purpose of preventing breakage of the rope. In the first Office action, the examiner rejects the claim as obvious over P in view of a trade journal publication, T. P teaches a nylon rope coated with resin for the purpose of making the rope waterproof. T teaches a nylon tent fabric coated with element E for the purpose of making the tent waterproof, and suggests the use of element E for making other nylon products waterproof. Following proper USPTO practices and procedures, the combination of P and T:
(A) cannot support a prima facie case of obviousness because T lacks a suggestion to combine with P for the purpose of preventing breakage in nylon rope.
(B) cannot support a prima facie case of obviousness because P lacks a suggestion to combine with T for the purpose of preventing breakage in nylon rope.
(C) cannot support a prima facie case of obviousness because T only contains a suggestion to combine with P for the purpose of waterproofing nylon rope.
(D) can support a prima facie case of obviousness, even though T only contains a suggestion to combine with P for the purpose of waterproofing nylon rope.
(E) can support a prima facie case of obviousness because the applicant is always under an obligation to submit evidence of non-obviousness regardless of whether the examiner fully establishes a prima facie case of obviousness.
43. ANSWER: (D). “It is not necessary in order to establish a prima facie case of obviousness…that there be a suggestion or expectation from the prior art that the claimed [invention] will have the same or a similar utility as one newly discovered by the applicant.” In re Dillon, 919 F.2d 688, 692, 16 USPQ2d 1897, 1900 (Fed. Cir. 1990) (emphasis in original). Thus, “[i]t is not necessary that the prior art suggest the combination to achieve the same advantage or result discovered by applicant.” MPEP § 2144 (“Rationale Different from Applicant’s is Permissible”). Here, T suggests the combination with P to achieve a different advantage or result, i.e., waterproofing, from that discovered by applicant, i.e., reducing breakage. Answers (A) – (C) are incorrect because the suggestion to combine does not need to be for the same purpose as applicant discloses in the application. Dillon, 919 F.2d at 692, 16 USPQ2d at 1900; MPEP § 2144 (“Rationale Different from Applicant’s is Permissible”). Answer (E) is incorrect because an applicant is under no obligation to submit evidence of non-obviousness unless the examiner meets his or her initial burden to fully establish a prima facie case of obviousness. MPEP § 2142.
Verbatim Q2 1999.11.am and Q20 2001.04.am
{ 5 comments… read them below or add one }
I got this one on 3/17/12
Is this one D because the claim was written in apparatus form instead of method form? How is waterproofing left out of consideration? I looked at 2143.01 V and thought I had the answer until I read the USPTO’s answer.
Can someone explain to me how it is that preventing breakage is now obvious since it’s waterproof? Just because something is waterproof doesn’t necessarily mean it cannot be broken. It’s not obvious to me. Am I missing something?
Totally agree. If I coatd wax on that nylon rope may make the nylon rope waterproof but does not make it stronger… however, if USPTO answer says D, just go with D. Or, you can speak to USPTO OED, ask them. I am interested to hearing how they explain it.
This is how I think of it:
First, references P and T provide us with the recipe for “coating a Nylon rope with Element E”.
Now, once you coat the Nylon rope with Element E to make it waterproof, you will also happen to make it less likely to break — in other words, preventing breakage was a recently discovered, but INHERENT property of a Nylon rope coated with Element E.
Therefore, the examiner can make a proper initial 103 rejection.
Hope this helps.