We hope you enjoyed last week’s Patent Bar Review Question of the Week! Go here for the full question and analysis.
Each week we’ll be featuring a Patent Bar question from past USPTO exams, and inviting you to select the most correct answer. At the end of the week we will be posting the USPTO’s “Model Answer,” along with further , analysis from Patent Resources Group’s Academic Director, Paul Gardner.
This week’s question of the week:
Question of the Week No. 2 (Q and A 22 from April 2003 Exam, Morning Session):
On January 2, 2001, a registered practitioner filed a patent application with the USPTO for inventor Beck. The application includes a specification and a single claim to the invention which reads as follows:
1. Mixture Y made by the process Q1.
In the specification, Mr. Beck discloses that mixture Y has a melting point of 150° F. On June 2, 2001, the practitioner received an Office action from the primary examiner rejecting the claim. The claim is rejected under 35 USC §102/103 as being clearly anticipated by or obvious over Patent A. The examiner states “Patent A teaches mixture Y but made by a different process Q2.” Beck believes he is entitled to a patent to mixture Y. In accordance with USPTO rules and procedures set forth in the MPEP, which of the following would be the best reply to the rejection of his claim?(A) An argument that the claimed product has an unexpectedly low melting point of 150° F, supported by an affidavit showing that the mixture Y made by process Q2 exhibits a melting point of 300° F.
(B) An argument that the processes used by applicant and patent A are different, supported by a third-party declaration stating only that the processes are different.
(C) An argument that the claimed product has an unexpectedly low melting point of 150° F, supported by a third-party declaration stating only that the products are different.
(D) An argument that the processes used by applicant and patent A are different, supported by an affidavit showing that the mixture Y made by process Q2 exhibits a melting point of 300° F.
(E) An argument that the claimed product has an unexpectedly low melting point of 150° F because the claimed mixture Y has a melting point of 150° F and the mixture Y of patent A has a melting point of 300° F.
The USPTO’s answer and Paul Gardner’s analysis will be posted later this week.
For more information on preparing for the Patent Bar, please see Patent Resources Group’s Patent Bar Review Course homepage, where you can get information on upcoming dates and locations for the course, including Boston in June, New York in July, San Francisco in November, and Dallas in December. Those unable to attend can even take the review courses via extensive home study DVD course materials. No matter how you take the course, you’ll receive thousands of dollars of study material and software, an exceptional value.
This post was edited by Chris Jagalla.
[...] Earlier this week we posited our second Patent Bar Review Question of the Week. Now that we’ve had time to rack our brains, here’s the question (to remind you) followed by the US Patent Office’s “Model Answer” as well as detailed commentary and analysis from from Patent Resources Group’s Academic Director Paul Gardner. Question of the Week No. 2 (Q and A 22 from April 2003 Exam, Morning Session): [...]