Recent test takers report that question #19 from the October 2003 (PM) test is in the patent bar exam database.
ANSWER: (E) is the most correct answer. MPEP § 2144.06, under the heading “Substituting Equivalents Known For The Same Purpose,” states “[i]n order to rely on equivalence as a rationale supporting an obviousness rejection, the equivalency must be recognized in the prior art, and cannot be based on applicant’s disclosure or the mere fact that the components at issue are functional or mechanical equivalents. In re Ruff, 256 F.2d 590, 118 USPQ 340 (CCPA 1958).” (A) is incorrect. MPEP § 2144, under the heading “Rationale Different From Applicant’s Is Permissible,” states “[t]he 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). . . .” (B) is incorrect. MPEP § 2144, under the heading “Rationale May Be In A Reference, Or Reasoned From Common Knowledge In The Art, Scientific Principles, Art- Recognized Equivalents, Or Legal Precedent,” states “[t]he rationale to modify or combine the prior art does not have to be expressly stated in the prior art; the rationale may be expressly or impliedly contained in the prior art or it may be reasoned from knowledge generally available to one of ordinary skill in the art, established scientific principles, or legal precedent established by prior case law. In re Fine, 837 F.2d 1071, 5 USPQ2d 1596 (Fed. Cir. 1988); In re Jones, 958 F.2d 347, 21 USPQ2d 1941 (Fed. Cir. 1992). See also . . . In re Nilssen, 851 F.2d 1401, 1403, 7 USPQ2d 1500, 1502 (Fed. Cir. 1988) (references do not have to explicitly suggest combining teachings).” (C) is incorrect. MPEP § 2144.01, quotes In re Preda, 401 F.2d 825, 159 USPQ 342, 344 (CCPA 1968) as stating “[i]n considering the disclosure of a reference, it is proper to take into account not only specific teachings of the reference but also the inferences which one skilled in the art would reasonably be expected to draw therefrom.” (D) is incorrect. MPEP § 2144.03 under the heading “A. Determine When It Is Appropriate To Take Official Notice Without Documentary Evidence To Support The Examiner’s Conclusion,” states “[o]fficial notice without documentary evidence to support an examiner’s conclusion is permissible only in some circumstances. . . . Official notice unsupported by documentary evidence should only be taken by the examiner where the facts asserted to be well-known, or to be common knowledge in the art are capable of instant and unquestionable demonstration as being well-known. As noted by the court in In re Ahlert, 424 F.2d 1088, 1091, 165 USPQ 418, 420 (CCPA 1970), the notice of facts beyond the record which may be taken by the examiner must be ‘capable of such instant and unquestionable demonstration as to defy dispute (citing In re Knapp Monarch Co., 296 F.2d 230, 132 USPQ 6 (CCPA 1961).”