Which of the following statements is or are in accord with the patent laws, rules and procedures as related in the MPEP? (1) In a 35 USC 103 obviousness analysis, the proper question is whether the differences between the prior art and the claims would have been obvious to one of ordinary skill in the art. (2) In a 35 USC 103 obviousness analysis, an inventor’s assertion the he has discovered the source or cause of an identified problem should never be considered. (3) A 35 USC 103 obviousness analysis requires consideration not just of what is literally recited in the claims, but also of any properties inherent in the claimed subject matter that are disclosed in the specification.
Explanation
Answer: C - The principle in Statement 3, that consideration of inherent properties is part of proper consideration of the invention as a whole, is recited in MPEP § 2141.02, under the heading “Disclosed Inherent Properties Are Part Of ‘As A Whole’ Inquiry,” and in In re Antonie, 559 F.2d 618, 620, 195 USPQ 6, 8 (CCPA 1977). (A) is incorrect, because the proper question is whether the invention as a whole, not just the differences, would have been obvious. See MPEP § 2141.02, under the heading “The Claimed Invention As A Whole Must Be Considered,” (citing Stratoflex, Inc. v. Aeroquip Corp., 713 F.2d 1530, 218 USPQ 871 (Fed. Cir. 1983). (B) is incorrect because an examiner should consider such assertions by an inventor as part of the “subject matter as a whole.” See MPEP § 2141.02 (citing In re Sponnoble, 405 F.2d 578, 585, 160 USPQ 237, 243 (CCPA 1969)). (D) and (E) are incorrect because they include incorrect Statements 1 and/or 2.
