Q) Smith, Jones & Brown (10.03.42p)

by admin on April 19, 2010 · 8 comments

in Exam Questions

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.

{ 8 comments… read them below or add one }

1 PhirebirdNo Gravatar August 30, 2010 at 1:30 pm

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?

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2 DNo Gravatar February 19, 2011 at 8:55 pm

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.

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3 BigbadvoododaddyNo Gravatar July 11, 2011 at 1:01 am

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

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4 MirandaNo Gravatar February 13, 2012 at 12:28 pm

This is very confusing, can someone explain it to me?
I agree that this would constitute a new rejection in the examiner’s answer, but since it seems the appellant waived his right to address the new rejection by not filing a petition/reopening prosecution/filing a reply brief, wouldn’t the examiner dismiss the appeal as to the claims subject to the new rejection?

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5 EZNo Gravatar February 23, 2012 at 11:39 am

Also, post KSR, motivation does not seem to be required so the newly cited Brown probably would not constitute a new ground of rejection. The board wouldn’t need Brown to rejection. The answer, if based on the new law, would be A. Pls correct me if I am wrong…

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6 SolNo Gravatar April 4, 2012 at 3:47 pm

post KSR, the motivation is still required but not has be to expressly found in a prior art. The examiner still needs to provide the motivation.

This is a new ground of rejection but not designated by the Examienr as a new ground of rejection. Under the new rules, the Applicant should petition to desiginate the new ground. After the petition is granted and a new ground is designated, the Applicant can either reopen the prosecution with or without amendment and/or evidence, or maintain the appeal without amendment or evidence.

What if the Applicant does not petitioin but go directly to Board? Like said this question. The board will reverse the old rejection over Smith/Jones, and may or may not give a new ground of rejection over Simith/Jones/Brown.

Welcome to correct me.

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7 Gary WNo Gravatar March 21, 2012 at 10:32 pm

Page 1200-26, Section 1(iv):
For each rejection under 35 U.S.C. 103, the Examiner’s Answer shall state the ground of rejection and point out where each of the specific limitations recited in the rejected claims is found in the prior art relied upon in the rejection, shall identify the differences between the rejected claims and the prior art relied on (i.e., the primary reference) and shall explain why it would have been obvious at the time the invention was made to a person of ordinary skill in the art to have modified the primary reference to arrive at the claimed subject matter”

- the Examiner in this Q did not do so.

Page 1200-27, continued, section 2:
If there are any new grounds of rejection, use form paragraph 12.154.04 to provide a prominent heading and use form paragraph 12.179.01 instead of form paragraph 12.179 to conclude the examiner’s answer.

- the Q does not say anything about a different form, implying that the examiner simply added a footnote without identifying a new ground of rejection.

The examiner does not seem to have followed the above instructions in the MPEP. I would say the Board should reverse his rejection.

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8 Dana G. RoseNo Gravatar June 7, 2013 at 8:41 am

The examiner could cite different prior art than that reported by the inventors. Nevertheless, the comparison examples of the specification might sufficiently overlap with the cited prior art that a rejection can be overcome or averted using the same data. In other words, the data obtained in a bona fide attempt by the inventors to address obviousness against one set of references can be beneficial in the construction of legal arguments against another set of references. When it comes to comparative data, something is almost always better than nothing.

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