Test takers report a #28 from the October 2003 (AM) patent bar exam is in the current question pool.
28. A registered practitioner files a patent application with the following claim:
1. A plastic insert for the bottom of a shopping cart comprising circular receptacles to receive wine bottles and to maintain them in an upright and stable position even while the shopping cart is moved about a store so that they do not fall and break.
Patent A discloses a plastic insert for the bottom of a shopping cart comprising rectangular receptacles to receive cereal boxes and to maintain them in an upright and stable position even while the shopping cart is moved about a store in order to keep them organized in the cart. Patent A also discloses that the receptacles could be any circular diameter to receive complementary shaped bottles or jars such as to securely hold 2-liter soft drink bottles or mayonnaise jars. A primary examiner rejected the claim as being obvious under 35 USC 103 over Patent A reasoning that Patent A suggests to one of ordinary skill in the art an insert for a shopping cart with circular receptacles for the purpose of stably maintaining any bottle, including wine bottles, while pushing the cart about a store so that the cart remains organized. Assume the examiner has made a sufficient prima facie case of obviousness. Following receipt of the rejection, the practitioner filed a timely reply. The practitioner argued that Patent A does not render obvious the claimed subject matter because there is no suggestion of a plastic insert to keep a wine bottle from falling and breaking in a shopping cart. Which of the following best explains why, in accordance with the patent laws, rules and the procedures as related in the MPEP, the examiner should or should not be persuaded by the practitioner’s argument?
(A) No, because Patent A suggests circular receptacles for any complementary bottle, albeit for a different purpose.
(B) Yes, because there is no suggestion in Patent A that the plastic insert can hold a wine bottle.
(C) Yes, because the claim uses the insert to keep the bottles from falling and breaking while Patent A uses the insert to keep the cart organized.
(D) Yes, because Patent A is more interested in organizing boxes than holding bottles.
(E) Yes, because the prevention from breakage is an unexpected property of the plastic insert.
ANSWER: (A) is the most correct answer. MPEP § 2144, under the heading “Rationale Different From Applicant’s Is Permissible.” Patent A suggests an insert with receptacles that are circular and which can be shaped to complement the shape of the object to be received. The purpose for this in Patent A is to keep the cart organized, not as in the claim to prevent the object from falling and breaking. The difference in objectives does not defeat the case for obviousness because, as MPEP § 2144 states, the “reason or motivation to modify the reference may often suggest what the inventor has done, but for a different purpose or to solve a different problem. It is not necessary that the prior art suggest the combination to achieve the same advantage or result discovered by applicant. In re Linter, 458 F.2d 1013, 173 USPQ 560 (CCPA 1972) …; In re Dillon, 919 F.2d 688, 16 USPQ2d 1897 (Fed. Cir. 1990), cert. denied, 500 U.S. 904 (1991) … .” In other words, it does not matter that Patent A does not appreciate the claimed purpose of preventing breakage. It suggests an insert with receptacles to hold bottles. That is enough to render the claimed subject matter prima facie obvious. The prima facie case is not rebutted by arguing that the purpose for the claimed insert is different form that specified for the insert described in Patent A. That is why answer (C) is wrong. To rebut the prima facie case, the practitioner must show a difference in structure instead. Answer (B) is wrong because the prima facie case is not rebutted by showing that Patent A does not teach wine bottles. This is not an anticipation rejection where identity of subject matter might be an issue. This is a question of obviousness. Therefore, it is sufficient to point out that Patent A is a generic teaching of shopping cart inserts that hold objects of any size and shape. (D) is not the most correct answer because what Patent A is interested in doing is irrelevant to the question of obviousness. (E) is not the most correct answer inasmuch as it was not the practitioner’s argument. However, the question inquires about the merits of the argument that the practitioner made as set forth in the penultimate sentence of the question, not the merits of some hypothetical reply the examiner may communicate.