Test takers report a #21 from the October 2003 (AM) patent bar exam is in the current question pool.
21. Patent application A was filed on January 12, 1995, containing claims 1-10. A primary examiner rejects the claims under 35 USC 102(b) as being anticipated by a U.S. patent issued on June 2, 1992. The rejection also relies on a technical paper published March 12, 1993 to show that a characteristic is inherent in the patent, although not expressed in its disclosure. According to the patent laws, rules and procedures as related in the MPEP, which of the following actions is most likely to overcome the rejection?
(A) Filing a declaration and exhibits under 37 CFR 1.131 to antedate the reference U.S. patent.
(B) Filing evidence under 37 CFR 1.132 tending to show commercial success of the invention.
(C) Filing evidence under 37 CFR 1.132 tending to show unexpected results of the invention.
(D) Amending the specification of application A to claim priority under 35 USC 120 by a specific reference to a prior copending application B that was filed before June 2, 1992 by the same inventor and discloses the invention claimed in at least one claim of application A in the manner provided by the first paragraph of 35 USC 112.
(E) Submitting arguments pointing out that the rejection under 35 USC 102(b) relies on more than one reference.
ANSWER: (D) is most correct. MPEP § 706.02(b) (8th ed., Rev. 1) states that “[a] rejection based on 35 U.S.C. § 102(b) may be overcome by…(C) perfecting priority under…35 U.S.C. § 120 by amending the specification of the application to contain a specific reference to a prior application…” Answer (A) is incorrect because a declaration and evidence filed under 37 CFR § 1.131 cannot antedate a reference that qualifies as prior art under 35 U.S.C. § 102(b), a statutory bar. See 37 CFR § 1.131(a); MPEP § 715, “SITUATIONS WHERE 37 CFR 1.131 AFFIDAVITS OR DECLARATIONS ARE INAPPROPRIATE.” Answers (B) and (C) are incorrect because, as noted in MPEP § 2131.04, evidence of secondary considerations, such as unexpected results or commercial success, is irrelevant to 35 U.S.C. § 102 rejections and thus cannot overcome a rejection so based. In re Wiggins, 488 F.2d 538, 543, 179 USPQ 421, 425 (CCPA 1973). Answer (E) is incorrect because to serve as an anticipation when the reference is silent about an asserted inherent characteristic, such gap in the reference may be filled with recourse to extrinsic evidence. Continental Can Co. USA v. Monsanto Co., 948 F.2d 1264, 1268, 20 USPQ2d 1746, 1749 (Fed. Cir. 1991). See also MPEP § 2131.01, “Multiple Reference 35 U.S.C. 102 Rejections.”
