Test takers report a #17 from the October 2003 (AM) patent bar exam is in the current question pool.
17. Inventor files an application containing the following original Claim 1:
1. A widget comprising element A, and element B.
In a first Office action on the merits, a primary examiner rejects claim 1 under 35 USC 103 as being obvious over reference X. Reference X explicitly discloses a widget having element A, but it does not disclose element B. The examiner, however, takes official notice of the fact that element B is commonly associated with element A in the art and on that basis concludes that it would have been obvious to provide element B in the reference X widget. In reply to the Office action, the registered practitioner representing the applicant makes no amendments, but instead requests reconsideration of the rejection by demanding that examiner show proof that element B is commonly associated with element A in the art. Which of the following actions, if taken by the examiner in the next Office action would be in accord with the patent laws, rules and procedures as related in the MPEP?
I. Vacate the rejection and allow the claim.
II. Cite a reference that teaches element B is commonly associated with element A in the art and make the rejection final.
III. Deny entry of applicant’s request for reconsideration on the ground that it is not responsive to the rejection and allow applicant time to submit a responsive amendment.
(A) I and II only.
(B) II only.
(C) II and III only.
(D) I, II, and III.
(E) I and III only.
ANSWER: (A) is the most correct answer. MPEP § 2144.03 provides that when anapplicant seasonably traverses an officially noticed fact, the examiner may cite a reference teaching the noticed fact and make the next action final. Here, applicant did seasonably traverse the noticed fact by demanding proof in response to the rejection. II is therefore an appropriate action by the examiner. I is also an appropriate action because the examiner should vacate a rejection based on official notice if no support for the noticed fact can be found in response to a challenge by the applicant. See In re Ahlert, 424 F.2d 1088, 1091 (C.C.P.A. 1970) (“[a]ssertions of technical facts in areas of esoteric technology must always be supported by citation to some reference work” and “[a]llegations concerning specific “knowledge” of the prior art, which might be peculiar to a particular art should also be supported”). (B) is incorrect because (A) is correct. (C), (D), and (E) are incorrect because action III is improper. An applicant is entitled to respond to a rejection by requesting reconsideration, with or without amending the application.37 CFR § 1.111(a)(1). Applicant is also required to timely challenge a noticed fact in order to preserve the issue for appeal. MPEP § 2144.03.
Element A was explicitly disclosed in reference X, even the examiner can not present support for B as common knowledge, but since A was disclosed in the reference, how can the examiner vacate the rejection and allow the claim??? What about the obviousness of A that was disclosed in reference X? A is no longer obvious anymore just bc examiner can not proof B was common sense?
My answer was B.
If the examiner cannot support his/her assertion that B was common knowledge, the examiner’s only option is to vacate that grounds for rejection. Thus, unless the examiner can come up with an additional reference to support an obviousness rejection (e.g., something that discloses B), examiner has to vacate rejection.
Thanks PeeJ. Does MPEP have a section says so? Why can not the examiner still reject Element A as a final rejection?
MPEP 2144.03 (shown in the PTO answer)
You should be able to search the MPEP and find this section in a few seconds during the exam. This is a 2100 issue (evidence related to patentability), so pull up 2100 and search for “common knowledge”. Bingo.
Then scroll the exam window (always full screen) so that the answers are in the top half, and move the MPEP floating window to the bottom half of your screen. If the answer depends on exact MPEP language, you can scroll through the relevant section quickly this way. Cross-check the language of the best responses choices against the MPEP, and look for an affirmative or negative version of the likely responses. Master this process and you are golden. I learned this during the test and finished the afternoon section 45 minutes early.
Also relevant here is MPEP 706.07(a), since choice 2 makes the rejection final. Since the newly cited reference in choice 2 is merely support for the same grounds for rejection in the prior office action, the rejection can be made final.
(A) remains a correct response under KSR, since none of the KSR factors are included in the question text. In order for KSR to apply without TSM, the examiner need support for a KSR factor, such as “obvious to try” a combination of A and B.
This question, and KSR in general, presume certain rules of evidence that should be familiar to attorneys taking the exam. Namely that a conclusory statement is not admissible evidence on its own. Never has been; never will be.
Unless of course you are Justice Breyer, who has an unlimited license to spout nonsense conclusory statements, such as “Prometheus’ patents set forth laws of nature — namely, relationships between concentrations of certain metabolites in the blood and the likelihood that a dosage of a thiopurine drug will prove ineffective or cause harm.”
Not one of the nine SCOTUS Justices has a science or technical degree or even a modicum of background that includes any rigorous training aside from the liberal arts. This pathetic, ignorant, and conclusory use of the term “Law of nature” is frightening. Conclusory statements are the refuge of the ignorant. 9-0 on Prometheus is just repulsive.
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Also relevant 706 (IV)
IV.RECONSIDERATION OF CLAIMS AFTER REPLY BY APPLICANT
37 CFR 1.112. Reconsideration before final action.
After reply by applicant or patent owner (§ 1.111 or § 1.945) to a non-final action and any comments by an inter partes reexamination requester (§ 1.947), the application or the patent under reexamination will be reconsidered and again examined. The applicant, or in the case of a reexamination proceeding the patent owner and any third party requester, will be notified if claims are rejected, objections or requirements made, or decisions favorable to patentability are made, in the same manner as after the first examination (§ 1.104). Applicant or patent owner may reply to such Office action in the same manner provided in § 1.111 or § 1.945, with or without amendment, unless such Office action indicates that it is made final (§ 1.113) or an appeal (§ 41.31 of this title) has been taken (§ 1.116), or in an inter partes reexamination, that it is an action closing prosecution (§ 1.949) or a right of appeal notice (§ 1.953).
2144.03: “To adequately traverse such a finding, an applicant mustspecifically point out the supposed errors in theexaminer’s action, which would include stating why thenoticed fact is not considered to be common knowledgeor well-known in the art. See 37 CFR 1.111(b). See alsoChevenard, 139 F.2d at 713, 60 USPQ at 241 (“[I]n theabsence of any demand by appellant for the examiner toproduce authority for his statement, we will not considerthis contention.”). A general allegation that the claimsdefine a patentable invention without any reference to theexaminer’s assertion of official notice would be inadequate.”
My interpretation is that the practitioner’s reply was not adequate. did not specifically point out supposed errors.
I agree, the question provides no indication the practitioner stated WHY the noticed fact is not considered to be common knowledge or well-known in the art.