Patent Bar Past Exam Question: Coated Nylon Rope

A patent application filed in the PTO 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 PTO 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.

Official Answer:

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.

Supplemental Answer:

In re Nilssen teaches that references do not have to explicitly suggestion combining teachings. According to Ex parte Clapp, the examiner must present a convincing line of reasoning supporting rejection. See MPEP 2144.

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