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   Author  Topic: Single-reference obviousness rejections  (Read 8194 times)
ThePatentGuy
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Single-reference obviousness rejections
« on: Nov 20th, 2006, 7:18am »
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Would some of you prosecuton whizzes give me your opinon on how to handle Section 103 rejections in which only one reference is cited?
 
In the present case the same reference is cited for Section 102 anticipation of most claims, but the reference does not disclose elements or limitations of other claims.  So the examiner simply changed to a Section 103 obviousness rejection using the same reference alone without combining with any other references.  The dreaded "obvious because I say it's obvious" rejection.
 
I don't believe there is any regulation that requires two or more references in a 103 rejection, but Donner certainly questions the tactic.  What it amounts to is a cheap 102 rejection unsubstantiated by the cited reference.  
 
How do you handle these?
 
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bjr
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Re: Single-reference obviousness rejections
« Reply #1 on: Nov 20th, 2006, 8:50am »
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It's certainly permissible for the Examiner to use one reference in a 103 rejection.  You stated that the reference does not disclose all of the limitations of the claims.  Without knowing the intricate details of your unique situtation, I would suggest that you argue that not all of the limitations are disclosed, explain why it would not be obvious to include those limitations in the cited reference, and highlight the benefits or advantages of those limitations that are disclosed in your specification.  Attack the cited reference.
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Isaac
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Re: Single-reference obviousness rejections
« Reply #2 on: Nov 20th, 2006, 9:12am »
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on Nov 20th, 2006, 7:18am, ThePatentGuy wrote:
Would some of you prosecuton whizzes give me your opinon on how to handle Section 103 rejections in which only one reference is cited?

 
I'll take a stab although I'm not a wiz.  
 
There is nothing inherently wrong with such a rejection although statistically it might be true that most such rejections are suspect.  Assuming that the reference does show some (or all) of the elements of some claims, the Examiner is likely making a non reference argument concerning some remaining element.   For example the Examiner may using some principle such as "mere matter of design choice" or "official notice" to address a remaining element.
 
Attacking the 102 rejection is the best course.  However if the Examiner has taken official notice in order to address some dependent claim you would rather not address as of yet, you'll additionally also have to traverse the Official Notice now rather than later or risk the Examiner suggesting that you've admitted whatever is taken official notice of.
 
At least that's my take for now.  When the Supreme Court finishes with KSR vs. Teleflex which they are going to hear next week and may decide before the response/appeal to your next office action is due, all bets are off.
 
« Last Edit: Nov 20th, 2006, 10:00am by Isaac » IP Logged

Isaac
ThePatentGuy
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Re: Single-reference obviousness rejections
« Reply #3 on: Nov 26th, 2006, 9:56pm »
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Thanks for both for your help.  
 
As I understand it now.  Although Graham v. Deere, which led to the passage of Section 103, was an obvious to combine situation, not all Section 103 rejections are based on obvious to combine logic -- a single reference Section 103 rejection can't be combined with anything.  
 
I'm not sure whether KSR will throw any light on this or not. I thought the issue there was whether the PA must actually teach the combining of two references.  
 
Denis
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Isaac
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Re: Single-reference obviousness rejections
« Reply #4 on: Nov 27th, 2006, 8:04am »
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on Nov 26th, 2006, 9:56pm, ThePatentGuy wrote:
Thanks for both for your help.  
 
As I understand it now.  Although Graham v. Deere, which led to the passage of Section 103, was an obvious to combine situation, not all Section 103 rejections are based on obvious to combine logic -- a single reference Section 103 rejection can't be combined with anything.

 
Your recalling of history is a little off I think.  Graham v. Deere is an attempt to interpret existing statutory law (from 1952) which in turn was supposed to codify existing law.  
 
I haven't seen the rejection of course, but I'm guessing that there was an acknowledgement (implicit or explicit) by the examiner that some aspect of the dependent claim was  beyond the teachings of the single reference.   Graham v. John Deere does not require that the material not shown in the reference be found in a second reference, but only that the extension beyond the teachings of the reference or references be obvious.  IMO, it's a mistake to assume that Graham v. John Deere is only about combining multiple references.  
 
I think you are right that the decision in KSR v. Teleflex won't address whether rejections of this type are legitimate.  But the decision might affect how you will respond to 103 rejections.  
 
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Isaac
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