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   Single-reference obviousness rejections
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   Author  Topic: Single-reference obviousness rejections  (Read 8191 times)
Wiscagent
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Re: Single-reference obviousness rejections
« Reply #5 on: Nov 27th, 2006, 10:09am »
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“... how to handle Section 103 rejections in which only one reference is cited?“
 
Presumably the office action states that “... it would have been obvious to one skilled in the art” to add a new element over the prior art.  
 
If the prior art discloses A+B+C and the application claims A+B+C+D, identify the potential disadvantages to adding element D.  Before the invention was made element D must have had some potential drawbacks.  What if the inventor used too much “D” or the wrong kind of “D” or added “D” in the wrong manner?
 
Highlighting the potential negatives associated with “D” helps to show that including “D” was an inventive step.
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Richard Tanzer
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JimIvey
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  jamesdivey  
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Re: Single-reference obviousness rejections
« Reply #6 on: Dec 1st, 2006, 12:47pm »
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Sorry for my tardiness on this topic.  I've been out of the country for a couple weeks.
 
One of the things that's coming out in the comments here is that the examiner implicitly asserts some other prior art teaching for the difference between the prior art and the claimed invention.  I usually insist that they make the prior art teaching explicit -- assuming that the examiner has taken Official Notice and seasonably challenging the Official Notice and requesting supporting documentation.
 
Of course, sometimes "Official Notice" is proper.  For example, if the examiner asserted without documentary evidence that it's known to place an axle at the center of a wheel, challenging that would most likely be futile and perhaps counter-productive.  But, many times, I think examiners take shortcuts and say things like square vs. round is obvious without really proving it.
 
Sometimes, it seems that all an examiner must do to shift the burden of proof on to the applicant is to merely utter "it's obvious".
 
One other place I use the Official Notice approach is when the examiner combines references and provides no motivation to combine references for obviousness analysis other than making up some benefit of the combination.  Of course, I may learn when I catch up with my reading that the Supreme Court has removed that requirement.  If that's true, debating obviousness is going to get really complex and really expensive.
 
Regards.
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James D. Ivey
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Isaac
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Re: Single-reference obviousness rejections
« Reply #7 on: Dec 1st, 2006, 3:01pm »
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on Dec 1st, 2006, 12:47pm, JimIvey wrote:
Of course, I may learn when I catch up with my reading that the Supreme Court has removed that requirement.  If that's true, debating obviousness is going to get really complex and really expensive.

 
Welcome back!
 
Scalia said a couple of days ago that teaching, suggestion and motivation is just "gobbledygook".   I was supposed to tell you before you started working on that OA on your desk. Smiley
 
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Isaac
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Re: Single-reference obviousness rejections
« Reply #8 on: Dec 4th, 2006, 1:31pm »
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Ah, so that's how you spell "gobbledygook".
 
I have two thoughts on Scalia's thoughts.
 
First, he's got to be the least rational of all Justices in recent history, perhaps in all history.
 
Second, I'll wait until the law actually changes before changing my practice.
 
Stepping back for a moment to the bigger picture, does anyone have any idea how practice would change if the TSM (teaching, suggestion, motivation) requirement is dropped?  So far, many of my obvious rejections seem to boil down to the examiner being unimpressed and declaring the invention "obvious" with little or no support for such a declaration.  
 
I'm betting that practice of presumptive obviousness will continue and it will be up to the Applicant to go through all the Graham elements to prove non-obviousness.  In other words, there will be a rebuttable presumption of obviousness as a practical matter.  In addition, since Graham sort of boils down to a totality-of-the-circumstances, I'll-know-it-when-I-see-it test, examiners will always prevail (being both opposition and arbiter) and all obvious rejections will ultimately be decided by the Board of Patent Appeals and Interferences, at least for those Applicants that don't run out of funds to prosecute.  Get ready to be reacquainted with the 10+-year appeals backlog....
 
Regards.
« Last Edit: Dec 4th, 2006, 1:33pm by JimIvey » IP Logged

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James D. Ivey
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Re: Single-reference obviousness rejections
« Reply #9 on: Dec 4th, 2006, 5:22pm »
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Quote:
Stepping back for a moment to the bigger picture, does anyone have any idea how practice would change if the TSM (teaching, suggestion, motivation) requirement is dropped?

 
This will not happen.  Outside of an anticipation rejection under 35 USC 102 then properly made 35 USC 103 rejections are extremely valid.  If the prior art teaches or suggests the combination then no patent should be granted to the claims.  
 
The issue then is what to do when the prior art teaches the various elements, but not expressly their combination.
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