Q) Obviousness

by patentbar on September 4, 2008 · 20 comments

Can an examiner make an obviousness rejection where prior art cites chemical amounts of 34.9% and the applicant’s range starts at 35%?

MPEP 2144.05 “A prima facie case of obviousness exists where the claimed ranges and the prior art ranges do not overlap but are close enough that one skilled in the art would have expected them to have the same properties.”

1 sambo September 12, 2009 at 10:54 am

Got this question yesterday, but it was based of old exam with prior art range of 35-55 and applicant claimed 34.9-55.1 and unless they can show that this range has different properties it IS obvious because it is so close,

2 S June 5, 2010 at 7:06 am

I got this.

Obvious.

3 toomuch23 October 29, 2010 at 10:44 am

Old exam question: April 2003 am #44

4 Overworkked April 28, 2011 at 3:06 pm

Variant on this question on 4/27/2011 E8R8

5 Becker May 17, 2011 at 3:25 pm

I got this question 5/16/2011.

6 Sarah May 18, 2011 at 4:36 pm

Got this question today 5/18/11.

Easy point.

7 ohsoobvious May 25, 2011 at 2:58 pm

had this on 5/18/11 too

8 Axo July 1, 2011 at 10:09 am

Got it 6/28/11.

9 Ken October 9, 2011 at 8:03 am

Got this or very similar question on 10/8.

I also got at least 10 very general obviousness questions. Know this topic like the back of your hand.

10 Remanded January 20, 2012 at 7:47 pm

Saw this question 20 January 2012.

11 Alfredo January 24, 2012 at 12:30 pm

Got a variant on this 1/23/12
Prior art had 2 components with a range from 30-34.9% and 60.1-65% or something like that. Applicant claims component with 35% and 60%.

No promises answer were in this order
1. Examiner can reject on 102 only
2. Examiner can reject on 103 only
3. Examiner can reject on 102 and 103
4.?
5.?

I went with “103 only” because 35 and 60 weren’t strictly anticipated but close enough so PHOSITA would expect no change in properties (KSR) to make it obvious.

Passed.

12 maalva January 24, 2012 at 12:47 pm

thanks Alfredo, any other advise you have?? I take mine soon.

13 MT February 23, 2012 at 10:42 pm

Did not pass by 3%…under the MPEP 2131.03 III, it is only 103. However, in the current practice by the examiner, 102 is applied more broadly. Recent case, Clearvalue Inc. et al v. Pearl River Polymers, Inc., seems to support this. I suppose this questions lacks one fundamental issue that there is any unexpected result obtained after 34.9%. Otherwise the question should give credits to all answered ones.

14 zan April 17, 2012 at 8:16 pm

Is it 103 only?

15 AGM June 18, 2012 at 8:37 pm: MPEP 2031.03 III: PRIOR ART WHICH TEACHES A VALUE OR RANGE THAT IS VERY CLOSE TO, BUT DOES NOT OVERLAP OR TOUCH, THE CLAIMED RANGE DOES NOT ANTICIPATE THE CLAIMED RANGE

“[A]nticipation under § 102 can be found only when the reference discloses exactly what is claimed and that where there are differences between the reference disclosure and the claim, the rejection must be based on § 103 which takes differences into account.”

therefore it cannot be a 102 rejection and the answer is only 103.

16 RT May 11, 2012 at 12:36 pm