Q) Prior Art Disclosed in Abstract (10.03.23p)

by admin on April 18, 2010 · 8 comments

in Exam Questions

Recent test takers report that question #23 from the October 2003 (PM) test is in the patent bar exam database.


23. A patent application is filed having one claim (claim 1). The most relevant prior art uncovered by the primary examiner, after searching the claimed subject matter, is a published abstract summarizing the disclosure of a foreign patent document. The abstract is in English, the foreign document is in German. Both the published abstract and the foreign document are prior art under 35 USC 102(b). The published abstract provides an adequate basis for concluding that claim 1 is prima facie obvious under 35 USC 103. Which of the following actions is in accord with the patent laws, rules and procedures as related in the MPEP?
(A) Reject claim 1 under 35 USC 103, based on the abstract, because it is a publication in its own right and provides sufficient basis for a prima facie case of obviousness.
(B) Reject claim 1 under 35 USC 103, based on the abstract, because disclosures that are not in English cannot form the basis of a prior art rejection.
(C) Reject claim 1 under 35 USC 103, based on the German-language patent document, as evidenced by the abstract.
(D) Do not reject claim 1 based on the abstract; instead, obtain a translation of the German-language document and determine whether its full disclosure supports a rejection under 35 USC 102(b) or 103.
(E) Do not reject the claims based on the abstract because an abstract can never provide sufficient disclosure to be enabling.


ANSWER: (A) or (D) is accepted as correct. As to (A), MPEP § 706.02, under theheading “Reliance Upon Abstracts And Foreign Language Documents In Support Of ARejection,” states “[i]n limited circumstances, it may be appropriate for the examiner to make arejection in a non-final Office action based in whole or in part on the abstract only withoutrelying on the full text document.” In the facts, the “published abstract provides an adequatebasis for concluding that claim 1 is prima facie obvious under 35 USC 103.” As to (D) MPEP§ 706.02, under the heading “Reliance Upon Abstracts And Foreign Language Documents InSupport Of A Rejection,” states “[c]itation of and reliance upon an abstract without citation ofand reliance upon the underlying scientific document is generally inappropriate where both theabstract and the underlying document are prior art. See Ex parte Jones, 62 USPQ2d 1206, 1208(Bd. Pat. App. & Int. 2001) (unpublished).” (B) is incorrect. MPEP § 706.02, under the heading“Reliance Upon Abstracts And Foreign Language Documents In Support Of A Rejection,”indicates that documents that are not in English can form the basis of a prior art rejection,although they must be translated first in order to make clear the facts that the examiner is relyingon. (C) is incorrect. MPEP § 706.02, under the heading “Reliance Upon Abstracts And ForeignLanguage Documents In Support Of A Rejection,” states “[w]hen an abstract is used to support arejection, the evidence relied upon is the facts contained in the abstract, not additional facts thatmay be contained in the underlying full-text document.” (E) is incorrect. See, e.g., MPEP§ 2121.01. Whether a disclosure is enabling is a fact-dependent determination that must be madeon a case-by-case basis. Even pictures may constitute an enabling disclosure in some cases(MPEP § 2121.04).

{ 8 comments… read them below or add one }

1 StephenNo Gravatar August 13, 2010 at 1:42 pm

I’ve read peoples’ posts on this site stating that the Prometric test isn’t giving credit for questions with two answers in many situations. Does anyone who took the test know if credit was given for both these answers? I picked D because it specifically states “[t]o determine whether both the abstract and the underlying document are prior art, a copy of the underlying document must be obtained and analyzed. If the document is in a language other than English and the examiner seeks to rely on that document, a translation MUST be obtained so that the record is clear as to whether the examiner is relying on the abstract or the full text document to support a rejection.” (Emphasis added).

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2 KFNo Gravatar March 2, 2012 at 9:49 pm

MPEP 714.04 seems on point to this question now.

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3 VenuSareenNo Gravatar August 22, 2012 at 3:35 pm

Umm, 714.04 has to do with pointing out claims in amendment. Am I just looking at it wrong?

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4 ENo Gravatar August 28, 2012 at 11:23 pm

It’s not in 714.04. It’s still in 706.02 in Rev 8. I just looked it up.

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5 mimiNo Gravatar September 21, 2012 at 1:50 am

Both (A) and (D) could be an answer. See below in MPEP 706.02
If the rejection is a non-final, the rejection based on the abstract is appropriate.
(Examiner will use the full document in next stage). Of course, the examiner can use both the abstract and the underlying document as a prior art.

Nevertheless, I think the answer (D) is proper(close to the answer) because this is a standard such a case.

————————————————————————————————-
When both the abstract and the underlying document qualify as prior art, the underlying document should normally be used to support a rejection. In limited circumstances, it may be appropriate for the examiner to make a rejection in a non-final Office action based in whole or in part on the abstract only without relying on the full text document. In such circumstances, the full text document and a translation (if not in English) may be supplied in the next Office action. Whether the next Office action may be made final is governed by MPEP § 706.07(a).

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6 Halfdan FaberNo Gravatar December 22, 2012 at 5:35 pm

There can only be one correct answer; in this case it is D.

With respect to A, it contains the incorrect statement that the abstract is a publication in its own right for purposes of prior art.

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7 MLNo Gravatar May 5, 2014 at 1:45 pm

A is correct. The question expressly states that the abstract was published; thus, it is prior art “in its own right.” Moreover, in view of 706.02, it seems possible that D was also marked correct because A makes no mention of whether or not the Examiner cited the underlying document.

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8 BrieNo Gravatar May 10, 2014 at 7:39 pm

It’s A. I found this under 706.02. “In limited circumstances, it may be appropriate for the examiner to make a rejection in a non-final Office action based in whole or in part on the abstract only without relying on the full text document. In such circumstances, the full text document and a translation (if not in English) may be supplied in the next Office action. Whether the next Office action may be made final is governed by MPEP § 706.07(a).”

The facts state that the published abstract provides an adequate basis for concluding claim 1 is prima facie obvious under 103 so it fits the circumstance stated at the very end of the “Reliance Upon Abstracts…” section.

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