Q) Toy Airplane with Foil Wings (10.03.46p)

A variant question #46 citing a Toy Plane with Foil Wings from the October 2003 (pm) exam is in the Prometric database.

Original Question:

46. A primary examiner is examining a patent application. The application includes a specification and a single claim to the invention that reads as follows:

1. A building material to be used as an alternative to brick in the construction of a house, said building material comprising compressed refuse, the majority of which is wood.

In the specification, the inventor explains that the wood to be used in the inventive building material should be balsa wood. According to the specification, balsa-containing building material has the advantage of being lighter than brick. In a first Office action mailed to the registered practitioner representing the inventor the single claim was rejected as anticipated under 35 U.S.C. § 102 over Patent A. Patent A issued more than one year before the effective filing date of the application, and teaches a building material to be used as an alternative to brick in the construction of a house comprising compressed refuse, the majority of which is pine. The practitioner replies to the first Office action by arguing that the invention is different from that of Patent A. According to the practitioner, the inventor uses balsa wood, not pine. The claim has not been amended. Which of the following describes how the examiner should proceed in accordance with the patent laws, rules and procedures as related in the MPEP?

(A) The examiner should allow the claim.

(B) The examiner should allow the claim only after including a Reasons for Allowance pointing out that the inventor argues that her invention is directed to using balsa wood, not pine.

(C) The examiner should issue a Final Rejection again rejecting the claim as anticipated under 35 USC102 over Patent A.

(D) The examiner should reopen prosecution and begin anew, this time searching for a reference that shows a building material containing balsa wood.

(E) The examiner should withdraw the rejection but issue a new Office action this time rejecting the claim under 35 USC 112, second paragraph, because the claim is broad enough to encompass using pine.

ANSWER: (C) is the best answer. 35 U.S.C. § 102; MPEP §§ 2111 and 2131. MPEP § 2131, under the heading, “To Anticipate A Claim, The Reference Must Teach Every Element Of The Claim.” “A claim is anticipated only if each and every element as set forth in the claim is found, either expressly or inherently described, in a single prior art reference.” See Verdegaal Bros. v. Union Oil Co. of California, 814 F.2d 628, 631, 2 USPQ2d 1051, 1053 (Fed. Cir. 1987). Here, every element of the claim is found in Patent A. See MPEP 2111, under the heading “Claims Must Be Given Their Broadest Reasonable Interpretation,” where it explained that “[d]uring patent examination, the pending claims must be ‘given the broadest reasonable interpretation consistent with the specification,” and cites In re Prater, 415 F.2d 1393, 1404-05, 162 USPQ 541, 550-51 (CCPA 1969) to explain that “reading a claim in light of the specification, to thereby interpret limitations explicitly recited in the claim, is a quite different thing from ‘reading limitations of the specification into a claim,’ to thereby narrow the scope ofthe claim by implicitly adding disclosed limitations which have no express basis in the claim.” (A) and (B) are incorrect. MPEP § 2111. The claim, as written, is not allowable over Patent A since Patent A disclosed every element recited in the claim. (D) is incorrect. There is no need to search again for a building material, this time looking for balsa wood. The claim has not been amended to be directed to balsa wood. Since it still broadly recites “wood,” Patent A that discloses pine remains germane and anticipates the claim. (E) is incorrect for one or more reasons. It is incorrect because it wrongly agrees with the practitioner’s argument that Patent A is poor reference. It also is incorrect because it seeks to reject the claim over 35 U.S.C. § 112, second paragraph, for indefiniteness. The claim is clear on its face and there is nothing indefinite about what the claim says. This answer makes the mistake of confusing breadth with indefiniteness. The claim is broad but it is definite.

Variant question with a toy airplane with foil wing:

Applicant claims a toy plane whose wings are covered in aluminum foil. The spec describes a toy plane whose wings are covered in foil but whose body isn’t. Reference discloses a plane that is covered entirely in chewing gum wrapper, which includes aluminum foil and another material. Claim is rejected, and applicant responds by arguing that covering only the wings in foil provides useful aerodynamic properties, and therefore the claimed invention is distinguishable from the reference. How should the examiner respond? I said the examiner should maintain the rejection b/c the claim is broad enough to include a plane that is covered entirely in aluminum foil (limitations present in the spec will not be read into the claim if not expressly recited A patent of a paper airplane with aluminum foil (I think) wings. The prior art is a plane covered with aluminum I think. Is it patentable? similar to Oct 2003: PM 46 (airplane with foil on wings, prior art has airplane covered completely in chewing gum wrapper)

I recently reviewed this answer at the PTO. Yes, the examiner should maintain the rejection in view of practitioner’s arguments. The answer description points out that the claim is open-ended (“…comprising wings covered in aluminum foil”). Thus, the prior art anticipates the claim.