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.
{ 6 comments… read them below or add one }
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.