Q) Obvious (04.03.41a)

by admin on April 10, 2010 · 8 comments

in Exam Questions

Question #41 from the April 2003 (AM) patent bar exam is reported by exam takers as a question in the current exam database.

41. A claim in a pending patent application is rejected under 35 USC 103(a) as being obvious over Barry in view of Foreman. The Barry reference is a U.S. Patent that was issued on an application filed before the date of the application in question. In accordance with USPTO rules and procedures set forth in the MPEP, which of the following arguments, if true, would overcome the rejection?
(A) The Foreman reference is nonanalogous art, but the reference may be reasonably pertinent to Barry’s endeavor to solving the particular problem with which Barry was concerned.
(B) The rejection does not address a claimed limitation, and neither of the references teaches the claimed limitation.
(C) The Barry patent issued after the filing date of the pending patent application.
(D) The original specification states that the results achieved by the claimed invention are unexpected. (The statement is unsubstantiated by evidence).
(E) The Foreman patent issued 105 years before the filing date of the pending patent application.

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.

{ 8 comments… read them below or add one }

1 ZephNo Gravatar April 27, 2011 at 9:09 pm

The question and answers may no longer be relevant in light of MPEP Rev.8 and KSR International Co. v. Teleflex Inc.

(B)
2143.03 now reads:
All Claims Limitations Must Be **>Considered<
** "All words in a claim must be considered in judging the patentability of that claim against the prior art. " In re Wilson…

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2 ZephNo Gravatar May 12, 2011 at 5:32 pm

The reasoning in (C) has been deleted and is no longer in MPEP Rev.8.
If Barry’s patent issued after the filing date of the pending application, then it is not prior art under 102(a) (no mention if it Barry’s application was previously published). Therefore (C) can be used to overcome the rejection.

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3 JamesNo Gravatar July 7, 2011 at 4:43 am

It becomes prior art under 102(e)

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4 MirandaNo Gravatar March 31, 2012 at 12:22 pm

(C) cannot be used to overcome the rejection. even if the 103(c) exception were to apply (assuming that barry’s patent wasn’t published prior to the filing date of the application thus being 102(a) prior art), the 103(c) exception must be asserted.

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5 BigbadvoododaddyNo Gravatar July 11, 2011 at 3:25 pm

From MPEP 2141 III. Rationales to support rejections under 103:
Prior art is not limited just to the references being applied, but includes the understanding of one of ordinary skill in the art. The prior art reference (or references when combined) need not teach or suggest all the claim limitations, however, Office personnel must explain why the difference(s) between the prior art and the claimed invention would have been obvious to one of ordinary skill in the art.

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6 MirandaNo Gravatar March 31, 2012 at 12:28 pm

So based on the MPEP revision, there is no correct answer to this question, right?

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7 SolNo Gravatar April 1, 2012 at 1:54 pm

B is still the best answer, although B may not work either in light of Bilski, especially when the Examiner gives reason why the untaught limitation is obvious to a skilled artisan. However, did the Examiner give that reasoning? Seems No in the question.

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8 youngNo Gravatar May 17, 2016 at 11:09 pm

The answer choice is saying “neither of the references teaches the claimed limitation, [so it must be not obvious].” This is exactly what KSR court called a rigid application of obviousness test. A claimed invention may be still obvious without an explicit teaching in references.

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