Q) Obviousness (MPEP 2100, In Progress)

Obviousness (General)

USPTO policy is to follow Graham v. John Deere Co. in the consideration and determination of obviousness under 35 U.S.C. 103. The four factual inquires enunciated therein as a background for determining obviousness are as follows:

(A) Determining the scope and contents of the prior art;
(B) Ascertaining the differences between the prior art and the claims in issue;
(C) Resolving the level of ordinary skill in the pertinent art; and
(D) Evaluating evidence of secondary considerations.

Also know that when applying 35 U.S.C. 103, the following tenets of patent law must be adhered to:

(A) The claimed invention must be considered as a whole;
(B) The references must be considered as a whole and must suggest the desirability and thus the obviousness of making the combination;
(C) The references must be viewed without the benefit of impermissible hindsight vision afforded by the claimed invention; and
(D) Reasonable expectation of success is the standard with which obviousness is determined.

Test takers report question #27 from the October 2002 (am) test is in the Prometric database.

Office policy has consistently been to follow Graham v. John Deere Co., 383 U.S. 1, 148 USPQ 459 (1966), in the consideration and determination of obviousness under 35 USC 103. Each of the following are the four factual inquires enunciated therein as a background for determining obviousness except:

(A) Determining the scope and contents of the prior art.
(B) Resolving any issue of indefiniteness in favor of clarity.
(C) Ascertaining the differences between the prior art and the claims in issue.
(D) Resolving the level of ordinary skill in the pertinent art.
(E) Evaluating evidence of secondary considerations.

ANSWER: The most correct answer is (B). 35 U.S.C. § 103; Graham v. John Deere Co., 383 U.S. 1, 148 USPQ 459 (1966); MPEP § 2141. Resolving any issue of indefiniteness in favor of clarity is not among the factual inquiries enunciated in Graham. The four factual inquiries are set forth in answers (A), (C), (D), and (E).

The Obvious vs. Anticipation Misquote –

Test takers report that the “obviousness/anticipation” misquote is a product by process question. One of the answers states that a case for “anticipation” is easier to show when product by process claims are used as compared to traditional claims. The MPEP clearly has a quotation from a federal circuit case that says “obviousness” is easier to show when using product by process claims. But, then on the next page, the MPEP makes reference to another case where both anticipation and obviousness are easier to prove in product by process claims because only the product (and not the process) is examined for anticipation/obviousness.

The test taker picked the answer that states that a case for “anticipation” is easier to show, even though it was an obvious misquote from the MPEP. The other viable answer said product by process claims can ONLY be used when traditional claiming techniques are inappropriate (a gross overstatement).

Another test taker agreed that the MPEP states that anticipation and obviousness are both easier to show when you use a product by process claim. However, this test taker is in the opinion that a direct misquote from the MPEP is never right. The other choices were…product by process can only be used in chemical cases (wrong) and you should use product by process only when the process is novel (wrong). So by process of elimination, this test taker chose product by process should ONLY be used when traditional claiming techniques are inappropriate is correct as the best answer.

Sweet-Smelling Paint – Obviousness and Multiple Reference Rejections.

Test takers report a question involving a claim for sweet smelling paint with six colors, fragrance, and skim milk. This claim is rejected as obvious over eight prior references (one for each of six colors individually, one for fragrance, and one for skim milk). The agent rebuts on the basis of too many references. Answer – there is no fixed limit.

MPEP 2145 – ARGUING ABOUT THE NUMBER OF REFERENCES COMBINED
Reliance on a large number of references in a rejection does not, without more, weigh against the obviousness of the claimed invention. In re Gorman, 933 F.2d 982, 18 USPQ2d 1885 (Fed. Cir. 1991) (Court affirmed a rejection of a detailed claim to a candy sucker shaped like a thumb on a stick based on thirteen prior art references.).

Other “Obviousness” Questions from Past Exams –

Which of the following does not constitute probative evidence of commercial success to support a contention of non-obviousness?
a) In a utility case, gross sales figures accompanied by evidence as to market share.
b) In a utility case, gross sales figures accompanied by evidence as to the time period during which the product was sold.
c) In a utility case, gross sales figures accompanied by evidence as to what sales would normally be expected in the market.
d) In a utility case, gross sales figures accompanied by evidence of brand name recognition.
e) In a design case, evidence of commercial success clearly attributable to the design, and not to improve performance of the device.

716.03(b) Commercial Success Derived From Claimed Invention

Other “Obviousness” Topics Covered on the Prometric Exam –

• Traversing obviousness and 102(e)
• 102(d)/172 obviousness rejections
• A biotechnology question that really deals with obviousness/anticipation; Nucleotide and chemical claims with regard to anticipation,
• Prima Facie Obviousness – 2144.05 III. REBUTTAL OF PRIMA FACIE CASE OF OBVIOUSNESS – A prima facie case of obviousness may also be rebutted by showing that the art, in any material respect, teaches away from the claimed invention.
• A past exam question (?) involving a chemical formula is obvious with 34.9% compared to 35% in prior art or 34.9% and 65.1% (obviousness)
• Obviousness Type Double Patenting – as for the obviousness-type double-patenting rejection, of course that is possible, but that’s what terminal disclaimers are for. Almost all continuing and divisional applications filed on the applicant’s initiative are subject to a terminal disclaimer, as they should be. It is not something to make a big deal out of, or even rightfully call an “issue.” Certainly, it should not stop you from executing your client’s wishes and dealing with a hostile inventor.