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(Message started by: wade on Jun 26th, 2007, 8:57am)

Title: "doesn't teach" and "doesn't teach
Post by wade on Jun 26th, 2007, 8:57am
Dear all
when responsing OA, we often use "doesn't teach" or "doesn't teach or suggest". for example, "applicant asserts that reference A doesn't teach Element B" or "applicant asserts that reference A doesn't teach or suggest Element B". My question is what's the difference between them?

Title: Re: "doesn't teach" and "doesn't te
Post by pentazole on Jun 26th, 2007, 9:30am
The standard for anticipation rejections is that every element of a claim has to be "taught" by the reference (unless shown to be inherent.)  So a reference has to explicitly provide every element of the claim within it.  

To anticipate a claim under 35 U.S.C. § 102, a single source must contain all of the elements of the claim.  Lewmar Marine Inc. v. Barient, Inc., 827 F.2d 744, 747, 3 U.S.P.Q.2d 1766, 1768 (Fed. Cir. 1987), cert. denied, 484 U.S. 1007 (1988).

Missing elements may not be supplied by the knowledge of one skilled in the art or the disclosure of another reference.  Titanium Metals Corp. v. Banner, 778 F.2d 775, 780, 227 U.S.P.Q. 773, 777 (Fed. Cir. 1985).

On the other hand, obviousness rejections do not require every element to be explicitly described in the reference.  Example, you patent a coating that has silica filler in it as reinforcement filler.  Someone tries to patent the same coating using alumina instead.  They won't be anticipated by you because you don't teach the use of alumina, but they will be obviated by you because you use silica as a reinforcement filler, which would suggest to someone skilled in the art to also use alumina since both silica and alumina can be used as reinforcement fillers imparting similar properties to a composition.
Thus answering a 103 rejection, if the reference does not teach every element of your claim is not enough for you to determine non-obviousness, the reference must not suggest it either.  Hence the response "does not teach nor suggest."

For an obviousness rejection to be proper, the Examiner must meet the burden of establishing that [...] the prior art relied upon, coupled with knowledge generally available in the art at the time of the invention, must contain some suggestion or incentive that would have motivated the skilled artisan to modify a reference or combined references; and that the proposed modification of the prior art must have had a reasonable expectation of success, determined from the vantage point of the skilled artisan at the time the invention was make.  In re Fine, 5 U.S.P.Q.2d 1596, 1598 (Fed. Cir. 1988); Amgen v. Chugai Pharmaceuticals Co., 927 U.S.P.Q.2d, 1016, 1023 (Fed. Cir. 1996).

Title: Re: "doesn't teach" and "doesn't te
Post by wade on Jun 26th, 2007, 9:52am
thank you , pentazole
and here "teach" is "disclose"? and "suggest" maybe consider "indirect disclose"?

Title: Re: "doesn't teach" and "doesn't te
Post by Isaac on Jun 26th, 2007, 11:24am

on 06/26/07 at 09:30:57, pentazole wrote:
The standard for anticipation rejections is that every element of a claim has to be "taught" by the reference (unless shown to be inherent.)  So a reference has to explicitly provide every element of the claim within it.


I wouldn't use teach or suggest in quite this way.   I think teach and suggest are both broader terms than "disclose".   Anticipation requires that a feature be disclosed explicitly or inherently in the reference.    On the other hand a reference that discloses one thing might teach or suggest something more to someone skilled in the art.  

But from the standpoint of responding to an office action, there is probably no problem with using "teach" interchangeably with "disclose" when addressing a 102 rejection.   If the reference doesn't teach something, it certainly doesn't disclose it either.

As a side note, there's probably no point in quoting cases for the motivation to combine requirement anymore.   That isn't good law...



Title: Re: "doesn't teach" and "doesn't te
Post by TataBoxInhibitor on Jun 26th, 2007, 11:56am
I do not use those terms in 102 responses, and I do not think an examiner has ever written an 102 action which included them, to me.

Title: Re: "doesn't teach" and "doesn't te
Post by JimIvey on Jun 26th, 2007, 3:28pm
My understanding is that "doesn't teach" means that the claim is novel whereas "doesn't teach or suggest" tries to stretch to cover non-obviousness as well -- expecting a response to an argument asserting novelty alone to come right back with an obviousness rejection made final.  However, I have no evidence that an examiner was hoping to come right back with an obviousness rejection on the same art and throught to herself, "Oh darn!  It says 'or suggests'!"  In other words, I'm not sure "or suggest" has real significance in the real world.  But I use it nonetheless...

Regards.

Title: Re: "doesn't teach" and "doesn't te
Post by pentazole on Jun 26th, 2007, 5:35pm
suggestion definitely has real significance, in determining 103 rejections of course... it's the whole basis of it  :-/



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