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In the Question 7 introduction we set up a question from the October 2003 afternoon exam session about office actions. 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. 7 (Q and A No. 26 from October 2003 Exam, Afternoon Session):
Which of the following best describes a situation for which a reply to the examiner’s Office action including both an affidavit filed under 37 CFR 1.131 and an affidavit filed under 37 CFR 1.132 may be in accord with the patent laws, rules and procedures as related in the MPEP?
(A) In a timely reply to a non-final Office action, where the examiner’s sole rejection of appellant’s claims is based on an alleged violation of the enablement requirement of 35 USC 112.
(B) In a timely reply to non-final Office action, where the examiner’s sole rejection of appellant’s claims is a rejection under 35 USC 103(a) employing a non-patent document that was published less than one year prior to the filing date of appellant’s patent application.
(C) In a timely reply to a non-final Office action, where the examiner’s sole rejection of appellant’s claims is a rejection under 35 USC 103(a) employing a non-commonly owned U.S. patent as prior art under 35 USC 102 (e) that claims the same invention as applicant.
(D) In a timely reply to an examiner’s answer presenting the affidavits for the first time, where in the examiner’s first Office action and final rejection, the examiner maintains the same rejection under 35 USC 103(a) of all of appellant’s claims based in part on a non-patent document that was published less than one year prior to the filing date of appellant’s patent application.
(E) In a timely reply to a final Office action presenting the affidavits for the first time, where in the examiner’s first Office action, the examiner’s sole rejection of appellant’s claims is a rejection under 35 USC 103(a) employing a non-patent document that was published less than one year prior to the filing date of appellant’s patent application.
Patent Office’s “Model Answer”
26. (B) is the most correct answer. MPEP § 715, under the heading “Situations Where 37 CFR 1.131 Affidavits or Declarations Can Be Used,” provides that an affidavit under 37 CFR § 1.131 may be used to antedate a reference that qualifies as prior art under 35 U.S.C. § 102(a) but not 35 U.S.C. § 102(b). Also, MPEP § 716 provides that objective evidence traversing a rejection may be presented in a timely submitted affidavit under 37 CFR § 1.132.
As for (A), an affidavit under 37 CFR § 1.131 would not serve any useful purpose in those situations. See MPEP § 715.
Regarding (C), an affidavit under 37 CFR § 1.131 would be inappropriate. See MPEP § 715, under the heading “Situations Where 37 CXFR 1.131 Affidavits or Declarations Are Inappropriate.”
As for (D) and (E), a reply including affidavits under 37 CFR § 1.131 and 37 CFR § 1.132 normally would be considered untimely under the circumstances set forth in those answers. See 37 CFR §§ 1.116, 1.192(a) and 1.195. Also, see MPEP §§ 715.09 and 716.01. Consequently, (B) is the most correct answer.
Paul Gardner’s Commentary
Answer options (A) through (C) and (E) are potentially confusing because of a sloppy error in referring to “appellant’s claims” when there is no appellant. (An appellant is a party appealing some ruling, such as an examiner’s rejection of claims.) What those answer options should have referred to was “applicant’s” claims. It was simply a sloppy error by the writer of the question. In contrast, the party in option (D) was properly referred to as an “appellant” because the proceeding was an appeal before the Board of Patent Appeals and Interferences (BPAI). That it was an appeal is reflected by reference to the “examiner’s answer,” which is the term given to an examiner’s brief filed in response to an applicant-appellant’s opening brief in an appeal of a rejection to the BPAI.
Treating options (A) through (C) and (E) as referring to “applicant’s claims,” the only answer option that sets forth a scenario where either a Rule 1.131 or Rule 1.132 affidavit would be appropriate is option (B). A Rule 1.131 affidavit presenting evidence showing a date of invention prior to the effect date of the non-patent reference underlying the obviousness rejection would be appropriate to swear behind or antedate the reference and thereby remove the rejection. A Rule 1.132 affidavit would be appropriate to present evidence (e.g., commercial success or unexpected results) to support an argument of non-obviousness.
Option (A) is not correct because a Rule 1.131 affidavit of prior invention would not overcome a lack of enablement rejection.
Option (C) is not correct because a Rule 1.131 affidavit of prior invention cannot be used to overcome a U.S. Patent claiming the same invention. Only an interference proceeding may be used to show entitlement to a patent over an issued patent claiming the same invention.
Option (D) is not correct because such an affidavit presented during an appeal is untimely, i.e., too late under the circumstances of option (D), because the examiner’s rejection was the same as the one made in the first Office action and the applicant could have presented the affidavit in response to that action. If the applicant-appellant wishes to swear behind the reference during an appeal proceeding, he or she should dismiss the appeal and file a Request for Continued Examination.
Similarly, option (E) is not correct because an affidavit presented after the final Office action would be untimely because the examiner’s rejection was the same as the one made in the first Office action and the applicant could have presented the affidavit in response to that action. If the applicant wishes to swear behind the reference after the final action, he or she should file a Request for Continued Examination in order to have it considered.
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This post was edited by Chris Jagalla.
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