Q) 103 Obviousness (10.03.16p)

by admin on April 13, 2010 · 12 comments

in Exam Questions

Recent test takers report that question #16 from the October 2003 (PM) test is in the patent bar exam database.

16. Which of the following statements is or are in accord with the patent laws, rules and procedures as related in the MPEP?
(1) In a 35 USC 103 obviousness analysis, the proper question is whether the differences between the prior art and the claims would have been obvious to one of ordinary skill in the art.
(2) In a 35 USC 103 obviousness analysis, an inventor’s assertion the he has discovered the source or cause of an identified problem should never be considered.
(3) A 35 USC 103 obviousness analysis requires consideration not just of what is literally recited in the claims, but also of any properties inherent in the claimed subject matter that are disclosed in the specification.
(A) Statement 1
(B) Statement 2
(C) Statement 3
(D) Statements 1 & 2
(E) Statements 1 & 3


ANSWER: (C) is the most correct answer. The principle in Statement 3, that consideration of inherent properties is part of proper consideration of the invention as a whole, is recited in MPEP § 2141.02, under the heading “Disclosed Inherent Properties Are Part Of ‘As A Whole’ Inquiry,” and in In re Antonie, 559 F.2d 618, 620, 195 USPQ 6, 8 (CCPA 1977). (A) is incorrect, because the proper question is whether the invention as a whole, not just the differences, would have been obvious. See MPEP § 2141.02, under the heading “The Claimed Invention As A Whole Must Be Considered,” (citing Stratoflex, Inc. v. Aeroquip Corp., 713 F.2d 1530, 218 USPQ 871 (Fed. Cir. 1983). (B) is incorrect because an examiner should consider such assertions by an inventor as part of the “subject matter as a whole.” See MPEP § 2141.02 (citing In re Sponnoble, 405 F.2d 578, 585, 160 USPQ 237, 243 (CCPA 1969)). (D) and (E) are incorrect because they include incorrect Statements 1 and/or 2.

{ 12 comments… read them below or add one }

1 studierNo Gravatar December 3, 2010 at 12:16 pm

I think A is tricky. Yes, you should look at the invention as a WHOLE, but the correct comparison IS between the prior art and the claims.

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2 SolNo Gravatar April 3, 2012 at 7:37 pm

very tricky

an invention as a whole is obvious if it is obvious for a skilled artisan to modify the prior art to remedy the difference to arrive at the invention.

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3 BoNo Gravatar July 4, 2011 at 3:02 pm

Maybe I’m not understanding properly, but in E8R8 we have 706.02(n):
“7.23 Graham v. Deere, Test for Obviousness
The factual inquiries set forth in Graham v. John Deere Co., 383 U.S. 1, 148 USPQ 459 (1966), that are applied for establishing a background for determining obviousness under 35 U.S.C. 103(a) are summarized as follows:
1.Determining the scope and contents of the prior art.
2.Ascertaining the differences between the prior art and the claims at issue……….”

Shouldn’t statement 1 be right, or am I not getting the subtleties?

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4 JunNo Gravatar August 6, 2011 at 9:15 pm

The DAR test is to determine whether “the invention as a whole would have been obvious.” Kinda sub issues.

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5 KFNo Gravatar March 2, 2012 at 3:32 am

I think this was in tricky too. I picked statements A and C. Doesn’t seem like this question has cropped up again. Anyone see it?

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6 KillianRedNo Gravatar March 17, 2012 at 5:25 pm

Got this one 3/17/12

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7 PrometricEarphonesNo Gravatar April 17, 2012 at 5:37 pm

I got a variant of this one today, 4/17/12.

There were a LOT of obviousness questions on my exam, at least 3-4 involving KSR (explicitly and impliedly). Know the current role of t/s/m, review the interim guidelines for KSR and the 6 (actually 7) factors.

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8 GDBNo Gravatar April 20, 2012 at 12:47 am

Got a variant of this 04/19/12

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9 PatentGrrlNo Gravatar July 4, 2012 at 8:28 am

When is the KSR decision applicable? Does it only apply to applications filed during or after 2007? Or obviousness rejections during or after 2007? Something else?

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10 Churning Away NoMoreNo Gravatar July 4, 2012 at 4:20 pm

PatentGrrl,

The KSR related questions I got during the exam were straightforward in determining if you needed to use the KSR rationale or not. I remember one question that stated that the examiner used the obvious to try rationale and it listed the correct answers verbatim and asked you to select the EXCEPT answer.

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11 PatentGrrlNo Gravatar July 4, 2012 at 6:16 pm

Thanks, Churning Away. It just dawned on me that I haven’t had to watch for new material when going through the old exams, so I may not recognize it when I see it and still apply the old rules.

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12 mayteaNo Gravatar February 9, 2016 at 9:15 am

On a side note, I wish this site had a place to post AIA questions. I have some AIA questions from sample tests that have no good place to ask on this site.
~~~~~~~~~~~~~~~~~~~~~~~~~~~~~~
I have come across a 103 question for which I do not understand the stated correct answer:

Examiner has rejected an application as obvious under KSR (obvious to try). Examiner should do any of the following “except”:
1) Tell applicant he picked from set of finite numbers
2) Obvious to one of ordinary skill in art
3) TSM
4) Clearly articulate reason for obvious
5) Another Obvious to try.

Correct answer is listed as 4) but no explanation given

MPEP 1207.02 states for a 103 rejection examiner must state & point out where each limitation of rejected claim can be found.

Would this not make 4) a correct response?

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