Recent test takers report question #44 from the April 2003 (am) exam is in the Patent Bar database of tested questions.
44. A claim in an application recites “[a] composition containing: (a) 35-55% polypropylene; and (b) 45-65% polyethylene.” The sole prior art reference describes, as the only relevant disclosure, a composition containing 34.9% polypropylene and 65.1% polyethylene. In accordance with USPTO rules and procedures set forth in the MPEP, the primary examiner should properly:
(A) Indicate the claim allowable over the prior art because there is no teaching, motivation or suggestion to increase the amount of polypropylene from 34.9% to 35% and decrease the amount of polyethylene from 65.1% to 65%.
(B) Reject the claim under 35 USC 102 as anticipated by the prior art reference.
(C) Reject the claim under 35 USC 103 as obvious over the prior art reference.
(D) Reject the claim alternatively under 35 USC 102 as anticipated by or under 35 USC 103 as obvious over the prior art reference.
(E) None of the above.
ANSWER: (C) is the most correct answer. A prima facie case of obviousness exists where the claimed ranges and the prior art are close enough that one of ordinary skill in the art would have expected them to have the same properties. See MPEP § 2144.05. In Titanium Metals Corp. v. Banner, 778 F.2d 775, 783, 227 USPQ 773, 779 (Fed. Cir. 1985), a claim recited a titanium base alloy consisting essentially of 0.8% nickel, 0.3% molybdenum, up to 0.1% maximum iron, and the balance titanium. A prior art reference described two similar alloys: (i) one with 0.25% molybdenum, 0.75% nickel, and balance titanium; and (ii) another with 0.31% molybdenum, 0.94% nickel, and balance titanium. The court held:
As admitted by appellee’s affidavit evidence from James A. Hall, the Russian article discloses two alloys having compositions very close to that of claim 3, which is 0.3% Mo and 0.8% Ni, balance titanium. The two alloys in the prior art have 0.25% Mo-0.75% Ni and 0.31% Mo-0.94% Ni, respectively. The proportions are so close that prima facie one skilled in the art would have expected them to have the same properties. Appellee produced no evidence to rebut that prima facie case. The specific alloy of claim 3 must therefore be considered to have been obvious from known alloys.
Id. Thus, (A) is incorrect. (B) and (D) are incorrect because a claim is anticipated by a prior art reference only when the prior art discloses, either expressly or inherently, every limitation of the claimed invention. (E) is incorrect because (C) is correct.
Good question to distinguish between anticipation and obviousness. While it may not qualify for an anticipation type of rejection, an obviousness type is pretty straight forward. I am starting to realize that if common sense dictates that duh! this invention is pretty much obvious in view of of a reference, then more likely than not – an obviousness type rejection will apply, more likely than not.
Got a very very close variant on 8/24/11
Sorry of the first Q type: Recent test takers report question #44 from the April 2003 (am) exam is in the Patent Bar database of tested questions.
Got this one today, 18 September 2011.
Saw this one 20 January 2012.
The question as stated in the PLI materials is slightly different and so corresponds with the latest version of the MPEP.
QUESTION
45. An examiner’s answer, mailed on January 2, 2003, contains a new ground of rejection. If
an amendment or new evidence is needed to overcome the new ground of rejection, what is the
best course of action the appellant should take in accordance with the USPTO rules and the
procedures set forth in the MPEP?
A. File a reply brief bringing the new ground of rejection to the attention of the Board of
Patent Appeals and Interferences and pointing out that 37 CFR 41 prohibits entry of the new
ground of rejection.
B. Reopen prosecution with the Examiner.
C. File a reply brief arguing the merits of the new ground of rejection.
D. File an amendment or new evidence to overcome the new ground of rejection.
E. B) or C).
ANSWER
Related MPEP chapter(s): 1200
ANSWER: (E) is the most correct answer. 37 CFR 41.39.
2144.05 Obviousness of Ranges [R-5]
I can understand why the range is obvious in this question. What I don’t understand is how demonstrating the criticality of the claimed range is not optimization. For example, if person A claims a broad range and person B claims a narrower range that gives better results, would person B have demonstrated both optimization and criticality of range? If so, is person B be entitled to a patent? Can someone please explain the difference?
B would get the patent based on the demonstrated Criticality of the limitation. Or that is how I have interpreted the below cites. The description I quote under On Optimization, also distinguishes Opt…. from Crt….
On Criticality:
2144.04 Legal Precedent as Source of Supporting Rationale [R-6]
As discussed in MPEP § 2144, if the facts in a prior legal decision are sufficiently similar to those in an application under examination, the examiner may use the rationale used by the court. Examples directed to various common practices which the court has held normally require only ordinary skill in the art and hence are considered routine expedients are discussed below. If the applicant has demonstrated the criticality of a specific limitation, it would not be appropriate to rely solely on case law as the rationale to support an obviousness rejection.
On Optimization:
2144.05 Obviousness of Ranges [R-5]
II. OPTIMIZATION OF RANGES
A. Optimization Within Prior Art Conditions or Through Routine Experimentation
Generally, differences in concentration or temperature will not support the patentability of subject matter encompassed by the prior art unless there is evidence indicating such concentration or temperature is critical. “[W]here the general conditions of a claim are disclosed in the prior art, it is not inventive to discover the optimum or workable ranges by routine experimentation.” In reAller, 220 F.2d 454, 456, 105 USPQ 233, 235 (CCPA 1955) (Claimed process which was performed at a temperature between 40°C and 80°C and an acid concentration between 25% and 70% was held to be prima facie obvious over a reference process which differed from the claims only in that the reference process was performed at a temperature of 100°C and an acid concentration of 10%.);
And On Criticality:
In reHoeschele, 406 F.2d 1403, 160 USPQ 809 (CCPA 1969) (Claimed elastomeric polyurethanes which fell within the broad scope of the references were held to be unpatentable thereover because, among other reasons, there was no evidence of the criticality of the claimed ranges of molecular weight or molar proportions.).
I had it 9/22/2012.