Question #33 from the April 2003 (AM) patent bar exam is in the Prometric database.
A claim in a pending patent application for an electric toothbrush is rejected under 35 USC 102 as being anticipated by a U.S. Patent, which was issued to Lancer, the soel name inventor, for a similar electric toothbrush. The Lancer patent was issue one day before the filing date of the application in question. The claim in the pending application contains a limitation specifying the location of an on/off switch. In accordance with USPTO rules and procedures set forth in the MPEP, which of the following arguments, if true, would overcome the rejection?
(A) The Lancer patent discloses and claims an electric toothbrush, but does not mention whether its toothbrush includes a power supply.
(B) Evidence is submitted to show the electric toothbrush claimed in the application is commercially successful.
(C) The Lancer patent teaches away from the bristles of the claimed toothbrush.
(D) Lancer is one of three named inventors of the claimed toothbrush in the pending application.
(E) The on/off switch in the Lancer patent is on a different side of the body than that recited in the claim for the electric toothbrush in the patent application.
Some recent test takers have indicated that this question has been rephrased to correct any ambiguity in answer (A) leaving (E) as the only correct answer.
ANSWER: (A) and (E) are accepted as correct answers. Regarding (E), see MPEP §2131. To anticipate a claim, the elements of a reference “must be arranged as required by the claim…” See MPEP §2131, citing In re Bond, 910 F.2d 831, 15 USPQ2d 1566 (Fed. Cir. 1990). In (E), the on/off switch of Lancer’s toothbrush is arranged differently that that of the claimed toothbrush. (A) is accepted as correct because the given facts do not specify the location of the power supply as being within the toothbrush. Though the description of the toothbrush as being electric can imply as inherent source of power, it may also imply an external power source fro the electric toothbrush. Accordingly, (A) is also accepted as a correct answer in the circumstances. (B) is incorrect because evidence of secondary considerations, such as commercial success, is irrelevant to a 36 USC § 102 rejection. See MPEP §2131.04. (C) is incorrect. “’Arguments that the alleged anticipatory priori art…’teaches away from the invention’…[are] note ‘germane’ to a rejection under section 102.’” MPEP § 2131.05 (quoting Twin Disc, Inc. v. United States, 231 USPQ 417, 424 (Cl. Ct. 1986)). (D) is incorrect. “The term ‘others’ in 35 USC 102(a) refers to any entity which is different from the inventive entity. The entity need only differ by one person to be ‘by others.’ This holds true for all types of references eligible as prior art under 35 USC m102(a) including publications…” MPEP §2132. Here, because Lancer is only one of there inventors of the claim, the patent is by others.
That’s what happened to me in December 2007 when I took the test. I marked (A) as answer, not knowing better. Upon review of my (wrong answered) questions with the USPTO, I saw that (E) is the ONLY, correct answer.
Electric toothbrush switch location question (on March 2008 and May 2008 exam) — on previous released exams this question is listed as having two correct answers, however, on computerized exams there is only one correct answer: the location of the switch (verified during exam review at PTO).
1/27/09 – Had this question ver batim from 2003 exam. Still had both A and E responses. Hopefully they’re still accepting both “power supply” and “on/off switch on opposite side of toothbrush”.
Got this today – same choices. I picked E.
Never commented, but I got this one 11/3/11.
question- Putting the switch on a different side of the body wouldn’t have allowed it to duck anticipation unless the previous patent specifically recited a certain side, correct?
yes, but the question says the application’s claim specifies the location of the on/off switch so the answer in E can overcome anticipation
Got this. 06.30.2012
A is clearly not the correct answer. A power supply would reasonably be expected to be implicitly provided for any electric device. In this case a claim in the lancer patent for some peculiar reason specifies a location for the switch, and E is therefore the only answer that can be viewed as correct.
All in all a very strange question. as normally in a utility patent the exact position of a switch would be considered inconsequential, in the same manner that a power supply is inconsequential for many electronic device patents. Perhaps this question would make sense for a design patent.
The location of the switch may be inconsequential, but that is relevant only to obviousness under 35 U.S.C. 103, not to a rejection under 35 U.S.C. 102. Granted, the argument listed in (E) would probably lead to the examiner raising obviousness in the next office action, but the question doesn’t ask about that.