Earlier this week we posted another Patent Bar Review Question of the Week. Have you figured out the answer yet? As you may recall, this week’s question was question number 49 on the April 2001 morning exam session. In this post, we’ll give you the original question, the USPTO’s Model Answer, and detailed commentary and analysis from Patent Resources Group’s Academic Director Paul Gardner. This added information will help you further understand and prepare for questions that may be asked on a future Patent Bar exam.
Question of the Week No. 5 (Q and A No. 49 from April 2001 Exam, Morning Session):
QUESTION: In regard to disclosure of a utility in a nonprovisional utility patent application filed in the Office in April 2001, which of the following is not in accord with proper USPTO practice and procedure?
(A) For each claimed invention an applicant need only provide one credible assertion of specific and substantial utility to satisfy the utility requirement.
(B) A patent examiner can properly support a rejection based on lack of utility by providing documentary evidence regardless of the publication date to show a factual basis for the prima facie showing of no specific and substantial credible utility.
(C) Using a complex claimed invention as landfill is an example of a specific and substantial utility for the claimed invention.
(D) An invention has a well-established utility if a person of ordinary skill in the art would immediately appreciate why the invention is useful based on the characteristics of the invention, and the utility is specific, substantial, and credible.
(E) Where the asserted specific and substantial utility is not credible, a prima facie showing of no specific and substantial utility must establish that it is more likely than not that a person skilled in the art would not consider credible any specific and substantial utility asserted by the applicant for the claimed invention.
Patent Office’s “Model Answer”
2. ANSWER: (C) is the most correct answer. See, “Utility Examination Guidelines,” 66 Fed. Reg. 1092, 1098, left column (Jan. 5, 2001), “A claimed invention must have a specific and substantial utility. This requirement excludes ‘throw-away,’ ‘insubstantial,’ or ‘nonspecific’ utilities, such as the use of a complex invention as landfill, as a way of satisfying the utility requirement of 35 USC 101.”
(A) is not the most correct answer. See, “Utility Examination Guidelines,” 66 Fed. Reg. 1092, 1097, middle column (Jan. 5, 2001), “An applicant need only provide one credible assertion of specific utility for each claimed invention to satisfy the utility requirement.”
(B) is not the most correct answer. See, “Utility Examination Guidelines,” 66 Fed. Reg. 1092, 1098, middle column (Jan. 5, 2001), “Any rejection based on lack of utility should include a detailed explanation why the claimed invention has no specific and substantial credible utility. Whenever possible, the examiner should provide documentary evidence regardless of publication date (e.g., scientific or technical journals, excerpts from treatises or books, or U.S. or foreign patents) to support a factual basis for the prima facie showing of no specific and substantial credible utility.”
(D) is not the most correct answer. See, “Utility Examination Guidelines,” 66 Fed. Reg. 1092, 1098, left column (Jan. 5, 2001), wherein it states, “An invention has a well-established utility (1) if a person of ordinary skill in the art would immediately appreciate why the invention is useful based on the characteristics of the invention (e.g., properties or applications of a produce or process), and (2) the utility is specific, substantial, and credible.”
(E) is not the most correct answer. See, “Utility Examination Guidelines,” 66 Fed. Reg. 1092, 1098 right column (Jan. 5, 2001), which states what is recited in (E).
Paul Gardner’s Commentary:
The “Utility Examination Guidelines” referred to in the Patent Office’s Model Answer as appearing in the Federal Register, have now been incorporated into Sections 2107-2107.03 of the MPEP. One seeking a more or less comprehensive overview of the Patent Office’s utility requirements would do well to read those relatively few (about 10) MPEP pages. They are somewhat repetitive in parts, but they are substantively quite complete.
While answer option (C) is clearly the “most correct” answer of the five choices offered it does not present a clear example of a disclosure that fails to meet the utility requirement. The deficiency in the answer option is that it does not provide enough information about the nature of the invention. Simply calling it a “complex invention” does not make its use in a landfill a “throw away” use. For example, if the invention were the gas permeable medium described in U.S. Pat. No. 3,941,556 as one used “for controlling gas migration in a landfill,” it’s disclosure would certainly not be wanting in the utility required by Sections 101.
Nevertheless, because answer options (A), (B), (D), and (E) are clearly correct statements of the law, i.e., they are “in accord with proper USPTO practice and procedure,” answer option (C) is the only conceivably correct choice.
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This post was edited by Julie Cook.