Recent test takers report that question #42 from the October 2003 (PM) test is in the patent bar exam database.
42. The primary examiner has rejected claims 1-10 under 35 USC 103(a) as being unpatentable over the Smith patent in view of the Jones reference. Appellant properly argues that there is no motivation to combine the teachings of Smith and Jones. The examiner repeats the rejection of claims 1-10 as being “unpatentable over Smith in view of Jones.” The examiner additionally cites a patent to Brown that was necessary to provide motivation for combining the teachings of Smith and Jones. The examiner does not list Brown in the statement of the rejection. Appellant timely appeals to the Board of Patent Appeals and Interferences, and files a proper appeal brief. The examiner files an examiner’s answer addressing the rejection of claims 1-10 under 35 USC 103(a) as being unpatentable over Smith in view of Jones, and cites Brown in the argument as providing motivation to combine Smith and Jones. In accordance with the patent laws, rules and procedures as related in the MPEP, what will be the most proper decision of the Board?
(A) The Board will affirm the rejection based on Smith and Jones only.
(B) The Board will affirm the rejection based on Smith, Jones and Brown.
(C) The Board will reverse the rejection based on Smith and Jones only.
(D) The Board will reverse the rejection based on Smith, Jones and Brown.
(E) None of the above.
ANSWER: (C) is the most correct answer. 37 CFR § 1.193(a)(2); MPEP § 1208.01. If the claimed invention is rendered obvious by Smith in view of Jones and Brown, the statement of rejection must include all three references. Reliance on Brown to support the rejection is a different rejection from a rejection relying only on Smith in view of Jones. In accordance with MPEP § 1208.01, the Board will not consider the teachings of Brown because Brown was used to support the rejection, but was not listed in the statement of the rejection. As stated in MPEP § 1208.01, “Even if the prior art reference is cited to support the rejection in a minor capacity, it should be positively included in the statement of rejection. In re Hoch, 428 F.2d 1341, 1342 n.3, 166 USPQ 406, 407 n.3 (CCPA 1970).” Therefore, (B) and (D) are clearly wrong. (A) is incorrect. The decision cannot affirm the rejection since there is no motivation for combining the teachings of Smith and Jones absent the teachings of Brown. Therefore, the rejection must be reversed, not affirmed.
{ 3 comments… read them below or add one }
Has the answer changed to (B) in accordance with the new MPEP?
“1207.03 41.39(a)(2) permitsmailed on or after September 13, 2004.”
Or is (C) still correct because the question never affirmatively stated that the Examiner properly entered the new ground of rejection by getting prior supervisory approval, and on the basis of the vague condition that new grounds in Examiners’ Answers should be a rare occurrence?
Anyone have an update on this? It does not seem that the changes to the MPEP are meant to cover this situation. The new 1207.03 seems to be for situations where an examiner needs to submit a new ground of rejection in the answer due to changes by the applicant. In this case, the examiner simply made a mistake by not including Brown. The MPEP says in 1207.03 that the new ground does not HAVE to be because of a new argument by applicant, but it seems to imply that if the new ground is not a response to new applicant information, the examiner should reopen prosection.
There is no new ground of rejection when the basic thrust of the rejection remains the same such that an appellant has been given a fair opportunity to react to the rejection.
In this case it is not the same thrust, because it is not obvious over the two listed refs
The following applies
A new prior art reference >applied or< cited for the first time in an examiner’s answer generally will constitute a new ground of rejection. If the citation of a new prior art reference is necessary to support a rejection, it must be included in the statement of rejection, which would be considered to introduce a new ground of rejection. Even if the prior art reference is cited to support the rejection in a minor capacity, it should be positively included in the statement of rejection
1207.03