Question #41 from the April 2003 (AM) patent bar exam is reported by exam takers as a question in the current exam database.
ANSWER: (B) is the most correct answer. See MPEP § 2143.03. To establish prima facie obviousness of a claimed invention, all of the claimed limitations must be taught or suggested by the prior art. (A) is incorrect. See MPEP § 2141.01(a). Although an argument that the reference is nonanalogous art may be appropriate, it is overcome by the acknowledgment that the reference may be reasonably pertinent to the applicant’s endeavor to solving the particular problem with which the inventor was concerned. As discussed in MPEP § 2141.01(a), under the heading “To Rely On A Reference Under 35 U.S.C. 103, It Must Be Analogous Prior Art,” which quotes In re Oetiker, 977 F.2d 1443, 24 USPQ2d 1443, 1445 (Fed. Cir. 1992), to rely on a reference as a basis for rejection of the applicant’s invention, “the reference must either be in the field of the applicant’s endeavor or, if not, be reasonably pertinent to the particular problem with which the inventor was concerned.” Here, the argument acknowledges that reference may be reasonably pertinent to the applicant’s problem solving endeavor. (C) is incorrect. U.S. patents may b used as of their filing dates to show that the claimed subject matter is anticipated or obvious. See MPEP § 2136.02 under the heading “The Supreme Court Has Authorized 35 U.S.C. 103 Rejections Based On 35 USC 102(e).” (D) is incorrect. MPEP § 716.01(c), under the heading, “To Be Of Probative Value, Any Objective Evidence Should Be Supported By Actual Proof,” states “Objective evidence which must be factually supported by an appropriate affidavit or declaration to be of probative value includes evidence of unexpected results….” It also quotes from In re De Blauwe, 736 F.2d 699, 222 USPQ 191, 196 (Fed. Cir. 1984), “It is well settled that unexpected results must be established by factual evidence. Mere argument or conclusory statements in the specification does not suffice.” De Blauwe, 736 F.2d at 705, 222 USPQ at 196. Here, the conclusory statement in the specification does not suffice. (E) is incorrect. MPEP § 2145, subsection VIII (under the heading “Arguing About The Age Of References”), quoting from In re Wright, 569 F.2d 1124, 193 USPQ 332, 335 (CCPA 1977), states “The mere age of the references is not persuasive of the unobviousness of the combination of their teachings, absent evidence that, notwithstanding knowledge of the references, the art tried and failed to solve the problem.” Here, the mere fact that the Foreman patent issued 105 years before the filing date of the pending patent application is unpersuasive of the non-obviousness of the applicant’s claim.