Q) Claim anticipation / Paprika! (4.03.42p)

by admin on April 8, 2010 · 9 comments

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Recent test takers report question #42 from the October 2003 (pm) exam is in the Patent Bar database of tested questions.


42. Paprika is a known product. A patent application discloses a composition which is made by subjecting paprika to processing steps X, Y and Z. The composition is disclosed to be useful in treating cancer. The application was filed June 1, 2002. A reference published May 1, 2001 discloses a food product made by subjecting paprika to processing steps X, Y and Z. The reference does not disclose that the resulting composition has any properties that would make it useful for treating cancer. In accordance with USPTO rules and procedures set forth in the MPEP, which of the following claims is not anticipated by the reference?
(A) A composition made by the process of subjecting paprika to processing steps X, Y and Z, wherein the composition is effective for treating cancer.
(B) A composition for treating cancer, made by the process of subjecting paprika to processing steps X, Y and Z.
(C) A method of making a cancer-treating composition, comprising subjecting paprika to processing steps X, Y and Z.
(D) A method of treating cancer, comprising administering an effective amount of a composition made by subjecting paprika to processing steps X, Y and Z.
(E) All of the above.



ANSWER: (D) is the most correct answer. See 35 U.S.C. § 102(b); MPEP § 2131. Citing Verdegaal Bros. v. Union Oil Co. of California, 814 F.2d 628, 631, 2 USPQ2d 1051, 1053 (Fed. Cir. 1987), MPEP § 2131, under the heading, “To Anticipate A Claim, The Reference Must Teach Every Element Of The Claim” states, “A claim is anticipated only if each and every element as set forth in the claim is found, either expressly or inherently described, in a single prior art reference.”. The claim is directed to a method of use that is not disclosed by the reference. Answer (A) is incorrect. 35 U.S.C. § 102(b); MPEP §§ 2112, 2112.01. The claimed composition is the same as that disclosed in the prior art, because it is made from the same starting material subjected to the same processing steps. The recitation of “the composition is effective for treating cancer,” is only a statement of the inherent properties of the composition. Where the claimed and prior art products are identical in structure or composition, or are produced by identical processes, a prima facie case of anticipation has been established. In re Best, 195 USPQ 430, 433 (CCPA 1977). The burden is shifted to applicant to show that the prior art product does not necessarily possess the characteristics of the claimed product. The reference is prior art under 35 U.S.C. § 102(b), and therefore the claim is anticipated. Answer (B) is incorrect. 35 U.S.C. § 102(b); MPEP §§ 2112, 2112.01, and 2112.02. The claimed composition is the same as that disclosed in the prior art, because it is made from the same starting material subjected to the same processing steps. The recitation of a composition “for treating cancer” reflects only a preamble statement of an intended use of the claimed composition, which does not limit the scope of the claim. Answer (C) is incorrect. See 35 U.S.C. § 102(b); MPEP §§ 2112, 2112.01. The claimed method is the same as that disclosed in the prior art, because it subjects the same starting material to the same manipulative steps. The recitation of making “a cancer-treating composition” reflects only a preamble’s statement of an intended use of the claimed composition, which does not further limit the claimed method. Answer (E) is incorrect, because (A), (B), and (C) are incorrect.

{ 9 comments… read them below or add one }

1 PotentialNo Gravatar June 30, 2012 at 4:25 pm

I still don’t get what the answer says. I will just memorize this answer. If anyone wants to explain, I would like to listen to your inputs.

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2 PotentialNo Gravatar June 30, 2012 at 4:28 pm

My answer would be A. it is a Product-By-Process claim, the final product in reference does not treat cancer, now this Paprika (product) has a distinguishing function of treating cancer, which is a novel product over reference product. So claiming Paprika with step xyz to treat cancer is not wrong.

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3 KarlMalownzNo Gravatar August 27, 2012 at 8:51 pm

I believe the patentability of the PRODUCT is the concern when a product by process claim is potentially anticipated. The product was disclosed in the prior art and was not claimed in the prior art to treat cancer, but it is still the same product with presumably the same properties. That’s why I think A cannot be correct here.

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4 steveNo Gravatar July 8, 2012 at 5:45 pm

The correct answer (more or less) says….we want to patent a method (process)
The wrong answers tell us….lets patent this composition (a tangible object which has been already done)

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5 HopeNo Gravatar October 23, 2012 at 12:58 am

I still dont get this one… Help please

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6 BradNo Gravatar December 17, 2012 at 1:08 pm

MPEP 2173.05 “. . . A claim to a device, apparatus, manufacture, or composition of matter may contain a reference to the process in which it is intended to be used without being objectionable under 35 U.S.C. 112, second paragraph, so long as it is clear that the claim is directed to the product and not the process.”

A and B are product-by-process claims. The process part basically doesn’t count as a claim limitation. The product (the composition) is not novel. Regarding A, an inherent property of the composition also does not limit the claim. See MPEP 2111.04 “Something which is old does not become patentable upon the discovery of a new property”

Regarding C, the preamble does not limit the claim, so the only limitation is “subjecting paprika to processing steps X, Y and Z” which is shown in the prior art.

D is novel because the prior art reference does not disclose the step of “administering an effective amount of a composition made by” the process.

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7 BennygNo Gravatar June 13, 2013 at 1:27 am

D is correct. The claim is the same in a through c. it is directed towards the process of x y z in each of them. Thus, since that process is in the prior art reference, they are no good. The key is that d adds an extra layer, removing what is being claimed from subjecting paprika to x y z and making it about administering that paprika instead of treating it like is done in all the other claims.

8 trmckenzNo Gravatar December 19, 2013 at 11:43 am

The compositions claimed in A-C have already been disclosed in the prior art reference. Therefore, A-C are incorrect.

The novel aspect of the present invention is its usefulness for treating for cancer. Answer choice D provides a method for treating cancer using the composition. This has not been disclosed in the prior art. Therefore, D is correct.

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9 DeaterNo Gravatar November 21, 2014 at 2:20 pm

Makes sense. The product of Paprika already exists, and the process/method of steps X, Y and Z already exist, but the “method of making a cancer treating composition” does not already exist. This is definitely a tough question though.

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