43. A patent application filed in the USPTO claims a nylon rope coated with element E for the purpose of preventing breakage of the rope. In the first Office action, the examiner rejects the claim as obvious over P in view of a trade journal publication, T. P teaches a nylon rope coated with resin for the purpose of making the rope waterproof. T teaches a nylon tent fabric coated with element E for the purpose of making the tent waterproof, and suggests the use of element E for making other nylon products waterproof. Following proper USPTO practices and procedures, the combination of P and T:
(A) cannot support a prima facie case of obviousness because T lacks a suggestion to combine with P for the purpose of preventing breakage in nylon rope.
(B) cannot support a prima facie case of obviousness because P lacks a suggestion to combine with T for the purpose of preventing breakage in nylon rope.
(C) cannot support a prima facie case of obviousness because T only contains a suggestion to combine with P for the purpose of waterproofing nylon rope.
(D) can support a prima facie case of obviousness, even though T only contains a suggestion to combine with P for the purpose of waterproofing nylon rope.
(E) can support a prima facie case of obviousness because the applicant is always under an obligation to submit evidence of non-obviousness regardless of whether the examiner fully establishes a prima facie case of obviousness.
43. ANSWER: (D). “It is not necessary in order to establish a prima facie case of obviousness…that there be a suggestion or expectation from the prior art that the claimed [invention] will have the same or a similar utility as one newly discovered by the applicant.” In re Dillon, 919 F.2d 688, 692, 16 USPQ2d 1897, 1900 (Fed. Cir. 1990) (emphasis in original). Thus, “[i]t is not necessary that the prior art suggest the combination to achieve the same advantage or result discovered by applicant.” MPEP § 2144 (“Rationale Different from Applicant’s is Permissible”). Here, T suggests the combination with P to achieve a different advantage or result, i.e., waterproofing, from that discovered by applicant, i.e., reducing breakage. Answers (A) – (C) are incorrect because the suggestion to combine does not need to be for the same purpose as applicant discloses in the application. Dillon, 919 F.2d at 692, 16 USPQ2d at 1900; MPEP § 2144 (“Rationale Different from Applicant’s is Permissible”). Answer (E) is incorrect because an applicant is under no obligation to submit evidence of non-obviousness unless the examiner meets his or her initial burden to fully establish a prima facie case of obviousness. MPEP § 2142.
Verbatim Q2 1999.11.am and Q20 2001.04.am
I got this one on 3/17/12
Is this one D because the claim was written in apparatus form instead of method form? How is waterproofing left out of consideration? I looked at 2143.01 V and thought I had the answer until I read the USPTO’s answer.
Can someone explain to me how it is that preventing breakage is now obvious since it’s waterproof? Just because something is waterproof doesn’t necessarily mean it cannot be broken. It’s not obvious to me. Am I missing something?
Totally agree. If I coatd wax on that nylon rope may make the nylon rope waterproof but does not make it stronger… however, if USPTO answer says D, just go with D. Or, you can speak to USPTO OED, ask them. I am interested to hearing how they explain it.
Zan: The question isn’t whether combining the elements in order to prevent breakage is obvious; the question is whether combining the elements is obvious.
The answer says “Answers (A) – (C) are incorrect because the suggestion to combine does not need to be for the same purpose as applicant discloses in the application.”
This is how I think of it:
First, references P and T provide us with the recipe for “coating a Nylon rope with Element E”.
Now, once you coat the Nylon rope with Element E to make it waterproof, you will also happen to make it less likely to break — in other words, preventing breakage was a recently discovered, but INHERENT property of a Nylon rope coated with Element E.
Therefore, the examiner can make a proper initial 103 rejection.
Hope this helps.
I agree. The apparatus will be the same as the prior art, and the process also will be the same. The only difference is the effect which was not measured before. This would be just a discovery.
But, for 102 together with 103
Q) Claim anticipation / Paprika! (4.03.42p)
Recent test takers report question #42 from the October 2003 (pm) exam is in the Patent Bar database of tested questions.
42. Paprika is a known product. A patent application discloses a composition which is made by subjecting paprika to processing steps X, Y and Z. The composition is disclosed to be useful in treating cancer. The application was filed June 1, 2002. A reference published May 1, 2001 discloses a food product made by subjecting paprika to processing steps X, Y and Z. The reference does not disclose that the resulting composition has any properties that would make it useful for treating cancer. In accordance with USPTO rules and procedures set forth in the MPEP, which of the following claims is not anticipated by the reference?
(A) A composition made by the process of subjecting paprika to processing steps X, Y and Z, wherein the composition is effective for treating cancer.
(B) A composition for treating cancer, made by the process of subjecting paprika to processing steps X, Y and Z.
(C) A method of making a cancer-treating composition, comprising subjecting paprika to processing steps X, Y and Z.
(D) A method of treating cancer, comprising administering an effective amount of a composition made by subjecting paprika to processing steps X, Y and Z.
(E) All of the above.
ANSWER: (D) is the most correct answer. See 35 U.S.C. § 102(b); MPEP § 2131. Citing Verdegaal Bros. v. Union Oil Co. of California, 814 F.2d 628, 631, 2 USPQ2d 1051, 1053 (Fed. Cir. 1987), MPEP § 2131, under the heading, “To Anticipate A Claim, The Reference Must Teach Every Element Of The Claim” states, “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.”. The claim is directed to a method of use that is not disclosed by the reference. Answer (A) is incorrect. 35 U.S.C. § 102(b); MPEP §§ 2112, 2112.01. The claimed composition is the same as that disclosed in the prior art, because it is made from the same starting material subjected to the same processing steps. The recitation of “the composition is effective for treating cancer,” is only a statement of the inherent properties of the composition. Where the claimed and prior art products are identical in structure or composition, or are produced by identical processes, a prima facie case of anticipation has been established. In re Best, 195 USPQ 430, 433 (CCPA 1977). The burden is shifted to applicant to show that the prior art product does not necessarily possess the characteristics of the claimed product. The reference is prior art under 35 U.S.C. § 102(b), and therefore the claim is anticipated. Answer (B) is incorrect. 35 U.S.C. § 102(b); MPEP §§ 2112, 2112.01, and 2112.02. The claimed composition is the same as that disclosed in the prior art, because it is made from the same starting material subjected to the same processing steps. The recitation of a composition “for treating cancer” reflects only a preamble statement of an intended use of the claimed composition, which does not limit the scope of the claim. Answer (C) is incorrect. See 35 U.S.C. § 102(b); MPEP §§ 2112, 2112.01. The claimed method is the same as that disclosed in the prior art, because it subjects the same starting material to the same manipulative steps. The recitation of making “a cancer-treating composition” reflects only a preamble’s statement of an intended use of the claimed composition, which does not further limit the claimed method. Answer (E) is incorrect, because (A), (B), and (C) are incorrect.
Paul, your example is a question of anticipation, which the reference must discloses every limitation of the claimed invention. The claimed invention is a method, thus is not anticipated by the composition of the reference. Though, it may be rejected under obviousness, as in the case of the above question in discussion.
An interesting discussion is definitely worth comment.
There’s no doubt that that you ought to publish more on this subject matter, it might not be a taboo subject but generally people do not speak about these topics. To the next! Many thanks!!
Got this question 9/17