|
|
Author |
Topic: How assess obviousness? (Read 3920 times) |
|
helene_eur_att
Newbie
Posts: 20
|
 |
How assess obviousness?
« on: Nov 6th, 2007, 11:13am » |
 Quote  Modify
|
Dear all,
I have questions regarding rejections under 35 USC 103.
Your answers would be helpful.
1. The Examiner combines 4 documents to reject a claim under 35 USC 103. Is this acceptable? In Europe, the fact that more than one disclosure must be combined with the closest prior art in order to arrive at a combination of features is a sign of the presence of an inventive step. Is there any case law that can be used to say that combining more than 3 documents is a sign of non-obviousness?
2. When rejecting a claim under 35 USC 103, what are the duties of the Examiner?
Notably I have read that in order to prove a prima facie case of obviousness, the Office needs to establish that: a) the combined references contain all of the elements of the instant claims; b) the skilled artisan had motivation to modify the teachnings of the prior art; and c) th modification would have had a reasonable likelihood of success in light of the prior art. MPEP § 2143. Is this always applied by the Examiners? and if not, is it possible to traverse the rejection saying that the above requirements have not been met?
Should the rejection of the Examiner always end with "the invention is prima facie obvious in view of ..."?
3. In practice, in order to assess obviousness in an objective and predictable manner, should the Examiner apply a specific approach?
4. What should I read concerning obviousness rejection, the basis that I should know? currently cited case law?
Thank you very much for your answers.
Helene_eur_att
|
|
 IP Logged |
|
|
|
MattB
Full Member
  
Posts: 127
|
|
Re: How assess obviousness?
« Reply #1 on: Nov 6th, 2007, 11:55am » |
Quote Modify
|
Hello Helene,
I will take a shot at this one.
1. USPTO can combine as many relevant references so long as there is motivation to combine them. There is no limit to the number of references under 103. I'll look at case law when I get a chance.
2. I think you are on the right track with MPEP 2141+. Yes, the Examiner should follow that book to the letter.
3. No, the Examiner has many approaches he may take. See 2141 per example.
4. KSR v. Teleflex is the most recent Supreme Court case and includes a nice reflection of 103 law to date. Dennis Crouch has a nice patentlyo blog that addresses contemporary 103 issues.
Good luck!
|
|
IP Logged |
Matthew L. Bycer
Registered Patent Attorney
http://www.bycer.com
http://www.cvglaw.com
|
|
|
Isaac
Senior Member
Posts: 3472
|
|
Re: How assess obviousness?
« Reply #2 on: Nov 6th, 2007, 12:20pm » |
Quote Modify
|
on Nov 6th, 2007, 11:13am, helene_eur_att wrote:4. What should I read concerning obviousness rejection, the basis that I should know? currently cited case law?
|
|
The PTO has recently published some guidance for applying the KSR v. Teleflex case decision when assessing obviousness.
Largely, the MPEP relies on applying teaching, suggestion, and motivation (TSM) to assess obviousness, whereas after KSR, TSM is simply one of several paths to finding an invention obvious.
I expect that much of MPEP 2141+ will be rewritten but for now, here is a link to the PTO's new guidance
http://www.uspto.gov/web/offices/com/sol/notices/72fr57526.pdf
|
| « Last Edit: Nov 6th, 2007, 4:17pm by Isaac » |
IP Logged |
Isaac
|
|
|
alconada
Newbie
Posts: 14
|
|
Re: How assess obviousness?
« Reply #3 on: Nov 7th, 2007, 2:20pm » |
Quote Modify
|
Then, if the examiner raises an obviousness objection do I have to argue using each and every rationale of the guidelines and show that the claim is inventive irrespective of which rationale it is used?
Thanks
|
|
IP Logged |
|
|
|
Wiscagent
Full Member
Posts: 843
|
|
Re: How assess obviousness?
« Reply #4 on: Nov 7th, 2007, 3:50pm » |
Quote Modify
|
"... do I have to argue using each and every rationale of the guidelines ..."
No. You have to defeat the examiner's argument.
In some situations that may be as simple as pointing out that the reference is not suitable as prior art, wrong date perhaps. In other situations your argument needs to be substantive and refute several of the points made by the examiner.
|
|
IP Logged |
Richard Tanzer
Patent Agent
|
|
|
|
|
Forums
Help
Search
Members
Calendar
Login
Register
Reply
Send Topic
Print