The Intellectual Property Law Server

Welcome, Guest. Please Login or Register.
Jul 9th, 2020, 7:36am

Forums Forums Help Help Search Search Members Members Calendar Calendar Login Login Register Register
   Intellectual Property Forums
  
  
Patent Drafting/Interpretation
(Moderators: Forum Admin, JimIvey, JSonnabend)
   patent drafting post KSR
« Previous topic | Next topic »
Pages: 1 2 3  Reply Reply Send Topic Send Topic Print Print
   Author  Topic: patent drafting post KSR  (Read 1631 times)
JimIvey
Moderator
Senior Member
*****




  jamesdivey  
WWW

Posts: 2584
Re: patent drafting post KSR
« Reply #5 on: Jun 27th, 2007, 9:10pm »
Quote Quote Modify Modify

on Jun 27th, 2007, 3:19pm, Isaac wrote:
If element X is in the prior art, and would be seen by a skilled artisan (of unspecified ability and modeled by an examiner with perhaps with some prompting for the applicant's specification) to have a particular advantage if used in combination with ABC,  why would the examiner be precluded from saying so just because that advantage was in the specification?

She wouldn't be.  But I'm not going to put the motivation to combine right in my own background section, particular if the inventor believes there was no prior motivation and the combination was non-obvious.  The inventor may very well be wrong and the examiner would be free to point that out in the prior art.
 
Let me try to give a quick example of what I mean.
 
In the background, I admit X is known and it has a known problem.  Woe are all of us for this inadequacy.
 
In the spec, I observe that Y (a known thing) has a property such that combination of Y with X solves the problem.
 
Contrast that approach with the following:  In the background, admit X is known and is good for A for bad for B.  Also admit Y is known and is good for B.  However, X and Y are never combined.
 
Now, try to assert that the combination of X and Y is non-obvious in light of the admitted prior art.  Not as easy here, in my opinion.  The mere juxtaposition of X and Y in the background section could plausibly provide the motivation to combine for an obviousness rejection.
 
Well, I think it's better the way I do it and think I should at least get style points for the effort.
 
Regards.
« Last Edit: Jun 27th, 2007, 9:11pm by JimIvey » IP Logged

--
James D. Ivey
Law Offices of James D. Ivey
http://www.iveylaw.com
Isaac
Senior Member
****




   


Posts: 3472
Re: patent drafting post KSR
« Reply #6 on: Jun 28th, 2007, 7:02am »
Quote Quote Modify Modify

on Jun 27th, 2007, 9:10pm, JimIvey wrote:
In the spec, I observe that Y (a known thing) has a property such that combination of Y with X solves the problem.
 
Contrast that approach with the following:  In the background, admit X is known and is good for A for bad for B.  Also admit Y is known and is good for B.  However, X and Y are never combined.

 
I agree that the latter approach is not the way to go.    I certainly wasn't suggesting it over the first approach.  The examiner might even find a 102(a) rejection rather than a 103 rejection in that latter backgorund section.   Further you might as well punt on arguing that someone would not combine the two if you don't get the examiner find a secondary reference.
 
What I'm wondering though is whether it will be more difficult to challenge a "reason to combine" rather than a "teach, suggestion, or motivation" as being grabbed from the applicant's specification regardless of whether that reason is grabbed from the background or the detailed description.    If the examiner can simply say Y solves the problem described in the background section regardless of whether the applicant ever mentions Y or actually discusses how to use Y  in the background section, what would be the proper attack on the rejection?
 
I'm just thinking out loud here.   I'm not recommending an approach.
 
IP Logged

Isaac
TataBoxInhibitor
Full Member
***




   


Posts: 456
Re: patent drafting post KSR
« Reply #7 on: Jun 28th, 2007, 9:35am »
Quote Quote Modify Modify

on Jun 27th, 2007, 10:55am, JimIvey wrote:

I would just suggest being careful not to suggest your own solution, putting the requisite teaching/suggestion/motivation to combine outside references in your APA (admitted prior art) -- aka, the background.  
 
For example, if your invention is a fold-out corkscrew on an icechest, don't say in your background, "while can-openers have been mounted on icechests for years and fold-out corkscrews have been used in pocket knives for years, no one has yet found a way to combine the two to enable opening of wine bottles in social outtings."  Just mention that one often remembers to bring the wine but forget the corkscrew.  In other words, be careful not to lead the reader too close to your solution to the problem.
 
Regards.

 
Good suggestion.  I generally do not mention the invention in the background, or if I do, I do so on a very general level and dance around it. I keep it very "high level."  Which is what you are suggesting, "one oftern remembers to bring the wine but forget the corkscrew."
 
Regards,
 
IP Logged
JimIvey
Moderator
Senior Member
*****




  jamesdivey  
WWW

Posts: 2584
Re: patent drafting post KSR
« Reply #8 on: Jun 28th, 2007, 3:03pm »
Quote Quote Modify Modify

on Jun 28th, 2007, 7:02am, Isaac wrote:
What I'm wondering though is whether it will be more difficult to challenge a "reason to combine" rather than a "teach, suggestion, or motivation" as being grabbed from the applicant's specification regardless of whether that reason is grabbed from the background or the detailed description.    If the examiner can simply say Y solves the problem described in the background section regardless of whether the applicant ever mentions Y or actually discusses how to use Y  in the background section, what would be the proper attack on the rejection?

I think it does matter whether the TSM to combine comes from the background rather than the spec.  The background is admitted prior art; the spec is not.  If the examiner could cite our own spec as prior art, every application would fail for lack of novelty.  I submit that the TSM must come from outside applicant's spec.
 
As for citing X for A and Y for B, thus producing A+B with a combination of X+Y, that's easy.  Even the SCt in KSR in the FedCir smackdown said that's insufficient.  If Y is a known plug-in replacement for a component of X, saying so would probably make a prima facie case for obviousness.  However, saying so would be required.  If combining Y with X took some creativity, noting that X is good for A and Y is good for B without more is certainly not enough.
 
Regards.
IP Logged

--
James D. Ivey
Law Offices of James D. Ivey
http://www.iveylaw.com
Isaac
Senior Member
****




   


Posts: 3472
Re: patent drafting post KSR
« Reply #9 on: Jun 28th, 2007, 4:55pm »
Quote Quote Modify Modify

on Jun 28th, 2007, 3:03pm, JimIvey wrote:

I think it does matter whether the TSM to combine comes from the background rather than the spec.

 
I hear what you're saying Jim, but I'm a little more pessimistic about KSR v. Teleflex.
 
In my opinion, a "reason to combine" is a lot more slippery a concept than was TSM.   In my experience,  it was already extremely difficult to pin down an examiner on the source of the motivation to combine, and a large percenage of the time, that motivation didn't come from the references.
 
It is of course suspicious when the reason to combine appears to be lifted from the applicants specification, but my impression from wrestling around with KSR, is that avoiding hindsight now simply means having a trier of fact who is sensitive to the the hindsight issue as opposed to requiring the examiner to demonstrate  using references or citing a well known scientific principle that a proper motivation existed at the time of the invention.   My guess is that a lot more things are going to fit the bill as a "reason to combine".
 
 
IP Logged

Isaac
Pages: 1 2 3  Reply Reply Send Topic Send Topic Print Print

« Previous topic | Next topic »
Powered by YaBB 1 Gold - SP 1.3.2!
Forum software copyright © 2000-2004 Yet another Bulletin Board