Obviousness
From Patentbarquestions
Q) 103 Prior Art (10.03.5a)
5. In accordance with the patent laws, rules and procedures as related in the MPEP, which of the following
does not constitute prior art upon which a primary examiner could properly rely upon in making an
obviousness rejection under 35 USC 103?
(A) A U.S. patent in the applicant’s field of endeavor which was issued two years before the filing date
of applicant’s patent application.
(B) A non-patent printed publication in a field unrelated to the applicant’s field of endeavor but relevant
to the particular problem with which the inventor-applicant was concerned, which was published the day after
the filing date of applicant’s application.
(C) A printed publication published more than 1 year before the filing date of applicant’s patent application,
which publication comes from a field outside the applicant’s field of endeavor but concerns the same problem with
which the applicant-inventor was concerned.
(D) A printed publication in the applicant’s field of endeavor published 3 years before the filing date of
applicant’s patent application.
(E) A U.S. patent which issued more than 1 year before the filing date of applicant’s patent application,
which the Office placed in a different class than the applicant’s patent application, but which concerns
the same problem with which the applicant-inventor was concerned, and which shows the same structure and
function as in the applicant’s patent application.
5. ANSWER: (B) is the most correct answer. MPEP § 2141.01. Quoting from Panduit Corp. v. Dennison Mfg. Co.,
810 F.2d 1561, 1568, 1 USPQ2d 1593, 1597 (Fed. Cir.), cert. denied, 481 U.S. 1052 (1987), MPEP 2141.01, under the
heading “Prior Art Available Under 35 U.S.C. 102 Is Available Under 35 U.S.C. 103,” states “‘[b]efore answering
Graham’s ‘content’ inquiry, it must be known whether a patent or publication is in the prior art under 35 U.S.C.
§ 102.’ Subject matter that is prior art under 35 U.S.C. § 102 can be used to support a rejection under section 103.
Ex parte Andresen, 212 USPQ 100, 102 (Bd. Pat. App. & Inter. 1981) (‘it appears to us that the commentator [of
35 U.S.C.A.] and the [congressional] committee viewed section 103 as including all of the various bars to a patent
as set forth in section 102.’).” Because the printed publication in (B) was not published until after the filing
date of the patent application, it does not constitute prior art. (A) is incorrect because the patent pre-dates the
application, therefore qualifying as prior art, and comes from the same field as the application, therefore qualifying
as analogous. (C) is incorrect because the printed publication pre-dates the application, therefore qualifying as
prior art, and concerns the same particular problem sought to be solved in the patent application, therefore qualifying
as analogous. (D) is incorrect because the printed publication pre-dates the application, therefore qualifying as prior
art, and comes from the same field as the application, therefore qualifying as analogous. (E) is incorrect because the
patent issued before the application, therefore qualifying as prior art, and concerns the same particular problem sought
to be solved in the patent application, therefore qualifying as analogous. The USPTO classification in a different class
does not render the patent nonanalogous. See MPEP § 2141.01(a) (“While Patent Office classification of references . . .
are some evidence of ‘nonanalogy’ or ‘analogy’ respectively, the court has found ‘the similarities and differences in
structure and function of the inventions to carry far greater weight.’”).
Q) Nylon Rope and Tent Fabric (10.02.43p)
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
Q) Obviousness
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.”
Q) Mr. Brick (4.02.24a)
24. Mr. Brick, the inventor, files an application with the USPTO on January 2, 2001
containing a single claim for his invention: a new bouncing ball called “Y”. Brick
receives a first Office action dated June 4, 2001 from the primary examiner handling
Brick’s application. The examiner rejected Brick’s claim only under 35 U.S.C. § 103 on
the grounds that Reference X teaches a bounc ing ball called “Q,” and that although “Y”
and “Q” are not the same, it would have been obvious to one of ordinary skill to make
changes to the “Q” ball in order to obtain a ball just like Brick’s “Y” ball.
On August 2, 2001, Brick responds by stating that his new “Y” ball bounces
unexpectedly higher than the “Q” ball described in Reference X. Brick includes a
declaration, signed by Mrs. Kane, that includes extensive data comparing the bouncing
results for the “Y” and “Q” balls and showing that the “Y” ball bounces unexpectedly
higher than the “Q” ball. Brick argues that the rejection under 35 U.S.C. § 103 should be
withdrawn because he has proven that, in view of the unexpectedly higher bounce of the
“Y” ball as compared to the “Q” ball, it would not have been obvious to one of ordinary
skill in the art to make changes to the “Q” ball to obtain Brick’s “Y” ball.
On October 2, 2001, Brick receives a final rejection from the examiner. The rejection
states, in its entirety: “The response has been reviewed but has not been found persuasive
as to error in the rejection. The claim is finally rejected under 35 U.S.C. § 103 for the
reasons given in the first Office action.” Brick believes he is entitled to a patent to his
new bouncing ball “Y.” How should Brick proceed?
(A) Brick should give up because the declaration did not persuade the examiner
of the merits of Brick’s invention.
(B) Brick should timely file a Request for Reconsideration asking the examiner to reconsider
the rejection on the basis of the Kane declaration and, as a precaution against the Request
for Reconsideration being unsuccessful, also timely file a Notice of Appeal.
(C) Brick should respond by submitting a request for reconsideration presenting
an argument that Reference X does no t provide an enabling disclosure for a new ball
with the unexpectedly higher bounce of his “Y” ball.
(D) Brick should respond by submitting a request for reconsideration presenting an argument
that Reference X does not provide a written description for a new ball with the unexpectedly
higher bounce of his “Y” ball.
(E) Brick should respond by submitting a request for reconsideration presenting an argument
the declaration data proves that the “Q” ball and the “Y” are not identical.
24. ANSWER: (B) is the correct answer. It is inappropriate and injudicious to disregard any
admissible evidence in any judicial proceeding. Stratoflex, Inc. v. Aeroquip Corp., 713 F.2d
1530, 218 USPQ 871 (Fed. Cir. 1983). The examiner has not analyzed the data in the declaration
nor provided an explanation as to why the declaration did not overcome the rejection.
Furthermore, the rejection has not been reviewed anew in light of the declaration. The examiner
should have reweighed the entire merits of the prima facie case of obviousness in light of the
data. In re Hedges, 783 F.2d 1038, 1039, 228 USPQ 685, 686 (Fed. Cir. 1986). Accordingly,
Block should ask that the rejection be reconsidered and file a Notice of Appeal to safeguard his
interest for a review of the rejection by the Board of Patent Appeals and Interferences if the
rejection is not reconsidered. 37 C.F.R. § 1.116. (A) is wrong because there is no evidence that
the examiner made any review of the declaration. (C) is wrong because whether or not Reference
X provides an enabling disclosure for Block’s invention is immaterial to the question of
obviousness. If there were to be a question of enabling disclosure for Reference X, it would be
with respect to the “Q” ball relied upon by the examiner, not applicant’s “Y” ball. (D) is wrong
because whether or not Reference X provides a written description for Block’s invention is
immaterial to the question of obviousness raised by the examiner. (E) is wrong because the issue
is one of obviousness under 35 U.S.C. § 103, not identity under 35 U.S.C. § 102. Given that the
examiner has rejected the claim under 35 U.S.C. § 103 and not under § 102, the examiner has
already conceded that the “Q” and “Y” balls are not the same.
Q) Obviousness (10.01.30a)
30. Which of the following is most likely to be considered in a proper obviousness determination?
(A) Evidence demonstrating the manner in which the invention was made.
(B) Evidence that a combination of prior art teachings, although technically compatible,
would not be made by businessmen for economic reasons.
(C) Evidence demonstrating the level of ordinary skill in the art.
(D) Evidence that one of ordinary skill in the art, after reading Kat’s application,
would readily be able to make and use Kat’s invention without undue experimentation.
(E) Evidence that the distance finder described in the July 2000 golf magazine has enjoyed great commercial success.
30. ANSWER: The most correct answer is (C). The level of ordinary skill in the art is one of
the factors that must be considered in any obviousness determination. Graham v. John Deere,
383 U.S. 1, 148 USPQ 459 (1966). (A) is not the best answer because 35 U.S.C. § 103
specifically states that patentability shall not be negated by the manner in which the invention
was made. (B) is not the best answer because economic unfeasibility is not a basis for a
determination of nonobviousness. See MPEP § 2145 VII. (D) is directed to the issue of
enablement, not obviousness. (E) is wrong because the commercial success of the prior art
distance finder is not relevant (although commercial success of Kat’s invention would be
relevant).
Q) Obviousness (4.00.32a)
32. Nonobviousness of a claimed invention may be demonstrated by:
(A) producing evidence that all the beneficial results are expected based on the
teachings of the prior art references.
(B) producing evidence of the absence of a property the claimed invention would be
expected to possess based on the teachings of the prior art.
(C) producing evidence showing that unexpected results occur over less than the
entire claimed range.
(D) producing evidence showing that the unexpected properties of a claimed invention
have a significance less than equal to the expected properties.
(E) (A), (B), (C) and (D).
32. ANSWER: (B). See Ex parte Mead Johnson & Co., 227 USPQ 78 (Bd. Pat. App. & Int.
1985); MPEP 716.02(a) page 700-155 (Absence of Expected Property is Evidence of
Nonobviousness). (A) is incorrect. “Expected beneficial results are evidence of obviousness of
the claimed invention.” In re Gershon, 372 F.2d 535, 538, 152 USPQ 602, 604 (CCPA 1967),
MPEP 716.02(c). (C) is incorrect. Unexpected results must be commensurate in scope with the
claimed invention. In re Clemens, 622 F.2d 1029, 1036, 206 USPQ 298, 296 (CCPA 1980);
MPEP 716.02(d). (D) is incorrect. Evidence not showing that the unexpected properties of a
claimed invention have a significance equal to or greater than the expected properties may be
insufficient to rebut the evidence of obviousness. In re Nolan, 553 F.2d 1261, 1267, 193 USPQ
641, 645 (CCPA 1977); MPEP 716.02(c). (E) is incorrect because (A), (C) and (D) are incorrect.
Q) Product by Process (4.00.6a)
6. Which of the following statements is true regarding a product-by-process claim?
(A) Product-by-process claims cannot vary in scope from each other.
(B) Product-by-process claims may only be used in chemical cases.
(C) A lesser burden of proof may be required to make out a case of prima facie
obviousness for product-by-process claims than is required to make out a prima
facie case of obviousness when the product is claimed in the conventional fashion.
(D) It is proper to use product-by-process claims only when the process is patentable.
(E) It is proper to use product-by-process claims only when the product is incapable
of description in the conventional fashion.
6. ANSWER: (C). MPEP § 2113, page 2100-51, citing In re Fessman, 489 F.2d 742, 744,
180 USPQ 324, 326 (CCPA 1974). (A) and (E) are incorrect because “[t]he fact that it is
necessary for an applicant to describe his product in product-by-process terms does not prevent
him from presenting claims of varying scope.” MPEP § 2173.05(p), item (I). (D) is incorrect
even if it is not necessary to describe the product in product-by-process form. (D) is incorrect
because “determination of patentability is based on the product itself. The patentability of a
product does not depend on its method of production. If the product in the product-by-process
claim is the same as or obvious from a product of the prior art, the claim is unpatentable even
thought the prior art was made by a different process.” MPEP § 2113, [p.2100-51]. (B) is
incorrect. “A claim to a device, apparatus, claim, or composition of matter may contain a
reference to the process in which it is intended to be used…so long as it is clear that the claim is
directed to the product and not the process.” MPEP § 2173.05(p), item (I) [p.2100-174].
