Question: Able files a patent application in 1999 disclosing a barstool having a rectangular molded plastic seat portion supported by four adjacent vertical tubular steel legs connected to the underside of the seat portion. A set of four horizontal tubular steel support members connects adjacent tubular steel legs to brace the legs. The barstool further includes a plastic back member connected to the topside of the plastic seat portion. The application states that wood could be used in place of tubular steel for the legs and horizontal support members. No alternative to plastic is mentioned in the application for use in the seat portion, but it is well known in the art that plastic and wood are interchangeable. As originally filed, Baker's application included the following Claim 1: A barstool comprising: (i) a rectangular seat portion having four vertical edges, an underside and a topside; (ii) means for supporting said seat portion such that said underside is substantially horizontal; and (ii) a back member connected to one of the vertical edges of said seat portion, said back member being substantially perpendicular to the topside of said seat portion. The Examiner rejects the claim under 35 U.S.C. § 102 as being anticipated by a 1997 publication by Baker showing a three-legged wooden barstool with a rectangular seat, a back and arms. The Examiner cites, but does not apply against Claim 1, a 1996 patent to Charlie that discloses a four-legged wooden barstool with a round wooden seat. The Charlie patent states that in barstools the use of plastic and/or tubular steel is equivalent to the use of wood. Able responds to the rejection by amending his claim to require that the seat portion be formed of plastic, and by arguing that Baker does not disclose the recited "supporting means" because Baker utilizes only three legs, which is less stable than four legs. The examiner finds a 1980 Wilson patent that structurally equates three legged barstools to four-legged barstools. Which of the following is in accordance with proper PTO practices and procedures?
A. The anticipation rejection is withdrawn only because Baker does not disclose a plastic seat portion. An obviousness rejection is then made based on Baker in view of Charlie since Charlie suggests replacing a wood seat with a plastic seat. Able's argument concerning the recited "supporting means" of Claim 1 does not provide a basis for overcoming the anticipation rejection.
B. The anticipation rejection should be withdrawn because Baker does not disclose a plastic seat portion and because Baker does not disclose a four legged supporting means. An obviousness rejection is then made based on Baker in view of Charlie because Charlie suggests modifying Baker to utilize a plastic seat and four legs.
C. The anticipation rejection is maintained because one of ordinary skill in the art would understand that a plastic seat could readily replace a wood seat. Furthermore, Able's argument that the "supporting means" of Claim 1 is not disclosed because Baker utilizes only three legs is unsupported by any limitation in the Claim.
D. The anticipation rejection is withdrawn because Baker does not disclose a plastic seat. However, a rejection is made under 35 U.S.C. §112, paragraph 1 as being based upon an inadequate disclosure because the specification does not specify that the use of a plastic seat is critical to the invention.
(category: patent, Chinese translation: 专利)