Recent test takers report that question #16 from the October 2003 (PM) test is in the patent bar exam database.
ANSWER: (C) is the most correct answer. The principle in Statement 3, that consideration of inherent properties is part of proper consideration of the invention as a whole, is recited in MPEP § 2141.02, under the heading “Disclosed Inherent Properties Are Part Of ‘As A Whole’ Inquiry,” and in In re Antonie, 559 F.2d 618, 620, 195 USPQ 6, 8 (CCPA 1977). (A) is incorrect, because the proper question is whether the invention as a whole, not just the differences, would have been obvious. See MPEP § 2141.02, under the heading “The Claimed Invention As A Whole Must Be Considered,” (citing Stratoflex, Inc. v. Aeroquip Corp., 713 F.2d 1530, 218 USPQ 871 (Fed. Cir. 1983). (B) is incorrect because an examiner should consider such assertions by an inventor as part of the “subject matter as a whole.” See MPEP § 2141.02 (citing In re Sponnoble, 405 F.2d 578, 585, 160 USPQ 237, 243 (CCPA 1969)). (D) and (E) are incorrect because they include incorrect Statements 1 and/or 2.
I think A is tricky. Yes, you should look at the invention as a WHOLE, but the correct comparison IS between the prior art and the claims.
very tricky
an invention as a whole is obvious if it is obvious for a skilled artisan to modify the prior art to remedy the difference to arrive at the invention.
Maybe I’m not understanding properly, but in E8R8 we have 706.02(n):
“7.23 Graham v. Deere, Test for Obviousness
The factual inquiries set forth in Graham v. John Deere Co., 383 U.S. 1, 148 USPQ 459 (1966), that are applied for establishing a background for determining obviousness under 35 U.S.C. 103(a) are summarized as follows:
1.Determining the scope and contents of the prior art.
2.Ascertaining the differences between the prior art and the claims at issue……….”
Shouldn’t statement 1 be right, or am I not getting the subtleties?
The DAR test is to determine whether “the invention as a whole would have been obvious.” Kinda sub issues.
I think this was in tricky too. I picked statements A and C. Doesn’t seem like this question has cropped up again. Anyone see it?
Got this one 3/17/12
I got a variant of this one today, 4/17/12.
There were a LOT of obviousness questions on my exam, at least 3-4 involving KSR (explicitly and impliedly). Know the current role of t/s/m, review the interim guidelines for KSR and the 6 (actually 7) factors.
Got a variant of this 04/19/12
When is the KSR decision applicable? Does it only apply to applications filed during or after 2007? Or obviousness rejections during or after 2007? Something else?
PatentGrrl,
The KSR related questions I got during the exam were straightforward in determining if you needed to use the KSR rationale or not. I remember one question that stated that the examiner used the obvious to try rationale and it listed the correct answers verbatim and asked you to select the EXCEPT answer.
Thanks, Churning Away. It just dawned on me that I haven’t had to watch for new material when going through the old exams, so I may not recognize it when I see it and still apply the old rules.
On a side note, I wish this site had a place to post AIA questions. I have some AIA questions from sample tests that have no good place to ask on this site.
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I have come across a 103 question for which I do not understand the stated correct answer:
Examiner has rejected an application as obvious under KSR (obvious to try). Examiner should do any of the following “except”:
1) Tell applicant he picked from set of finite numbers
2) Obvious to one of ordinary skill in art
3) TSM
4) Clearly articulate reason for obvious
5) Another Obvious to try.
Correct answer is listed as 4) but no explanation given
MPEP 1207.02 states for a 103 rejection examiner must state & point out where each limitation of rejected claim can be found.
Would this not make 4) a correct response?