T/F, Where a general method that could have been applied to make the claimed product was known and within the level of skill ordinary in the art, the claim may still be nonobvious if the problem which had suggested use of the method had been previously unknown.
True.
T/F, The rationale to modify or combine the prior art does not have to be expressly stated in the prior art; the rationale may be expressly or impliedly contained in the prior art or it may be reasoned from knowledge generally available to one of ordinary skill in the art.
True
T/F, Analysis supporting a rejection under 103 should be made explicit by the examiner, but does not require record evidence of an explicit teaching of a motivation to combine in the prior art.
True
T/F, When making an obviousness determination, patent examiners may properly rely on intangible realities such as common sense and ordinary ingenuity.
True
T/F, Simply stating a general principle without providing an explanation of its applicability to the facts of the case at hand is sufficient to establish a prima facie case of obviousness.
False.
If the prior art teaches away from the claimed combination and the combination yields more than predictable results, is that enough to make the invention non-obvious?
Yes
T/F, a claimed invention is likely to be obvious if it is a combination of known prior art elements that would reasonably have been expected to maintain their respective properties or functions after they have been combined.
True
T/F, when determining whether a reference in a different field of endeavor may be used to support a case of obviousness, it is necessary to consider the problem to be solved.
True
T/F, An inference that a claimed combination would not have been obvious is especially strong where the prior art’s teachings undermine the very reason being proffered as to why a person of ordinary skill would have combined the known teachings.
True
T/F, common sense may be used to support a legal conclusion of obviousness so long as it is explained with sufficient reasoning.
True
T/F, an obvious-to-try rationale may be proper when the possible options for solving a problem were known and finite.
True
T/F, although a reasonable expectation of success is needed to support a case of obviousness, absolute predictability is not required.
True
T/F, All evidence submitted by the applicant should be considered with equal weight, including evidence rebutting a prima facie case of obviousness.
False, not all evidence need be accorded the same weight, and office personnel must consider the appropriate weight to be accorded to each piece of evidence
T/F, An obviousness inquiry based on an obvious-to-try- rationale must always be undertaken in the context of the subject matter in question, “including the characteristics of the science or technology, its state of advance, the nature of the known choices, the specificity or generality of the prior art, and the predictability of results in the area of interest.”
True
How long do you have to enter the US national stage via PCT?
30 months from the EARLIEST PRIORITY DATE.
T/F, The mere existence of a large number of options does not in and of itself lead to a conclusion of nonobviousness.
True
T/F, Even when only a small number of possible choices exist, the obvious-to-try line of reasoning is not always appropriate.
True, obvious to try is inappropriate when, upon consideration of all of the evidence, the outcome would not have been reasonably predictable and the inventor would not have had a reasonable expectation of success.
T/F, A mere reason to combine in conjunction with the technical ability to combine does not generally lead to a conclusion that the claimed invention would have been obvious.
False, A combination of known elements would have been prima facie obvious if an ordinarily skilled artisan would have recognized the apparent reason to combine those elements. and would have known how to do so.
T/F, When constituent elements are being employed in accordance with their recognized functions, and would have predictably retained their respective functions when combined, the claimed invention is obvious.
True
T/F, in order to be eligible for entry into the PPH, you must have received a patent from a partnering PPH office.
False, you must have already received an indication of allowable subject matter in a related patent application from a partnering PPH office, but the indication of allowable subject matter can come before the patent actually issues.
T/F, to be eligible for entry into the PPH, the application with allowable subject matter and the application you file at the USPTO must share a common earliest priority date.
True
Can prosecution have started in a U.S. application prior to entry into the PPH?
No, substantive examination cannot have started in the US (a notice to file missing parts is not considered substantive examination and is fine, restriction is okay if the examiner has not begun working on the first action)
Are machine translations allowed for the PPH?
Yes, but if it is so bad that it is difficult to understand, the USPTO can require the applicant to submit a manual translation
Can a claim that is narrower than one allowed in the Office of Earlier Examination (OEE) be eligible for entry into the PPH?
Only if it is a dependent claim, which is dependent upon a claim that is of the same or similar scope as the claim indicated as allowable in the OOE. It is possible to amend the application to make the claims sufficiently correspond
