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   Author  Topic: motivation to combine  (Read 1963 times)
Bob's Uncle
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motivation to combine
« on: Dec 29th, 2006, 12:38pm »
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Hello,
 
I'm looking at a 103 rejection that says (paraphrasing):
 
Claim is rejected under 103(a) as unpatentable over ref. A, in further view of ref. B. It would have been obvious to one OOSITA to combine ref. A with ref. B with the motivation of achieving {the unique end results of my invention}.
 
Isn't it a little fishy for the examiner to cite a unique advantage of my invention as the motivation to combine ref. A and B? Is that proper under MPEP? Doesn't he have to provide something more concrete, or at least declare an official notice that it's obvious? How do I argue against this motivation; it seem like trying to climb a perfectly sheer, glass wall.
 
thanks for insights,
 
Bob's Uncle
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Isaac
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Re: motivation to combine
« Reply #1 on: Dec 29th, 2006, 2:29pm »
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on Dec 29th, 2006, 12:38pm, Bob's Uncle wrote:
Isn't it a little fishy for the examiner to cite a unique advantage of my invention as the motivation to combine ref. A and B?

 
Yes it does seem fishy under current law.    The examiner is supposed to get motivation from the references, from the problem to be solved, in the knowledge generally available to one of ordinary skill, etc.   It might happen that the results you say are unique are a generally known scientific principle.   I have no idea whether or not this is the case.
 
If I had a better argument than attacking the motivation to combine, I'd use that first.   If  I had to  attack the motivation, I'd challenge the Examiner on where the motivation he cites came from, traversing any Official Notice if necessary, and postulating that the Examiner used my spec impermissibly.  
 
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Isaac
ChrisWhewell
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Re: motivation to combine
« Reply #2 on: Dec 29th, 2006, 3:19pm »
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on Dec 29th, 2006, 12:38pm, Bob's Uncle wrote:
Hello,
 
I'm looking at a 103 rejection that says (paraphrasing):
 
Claim is rejected under 103(a) as unpatentable over ref. A, in further view of ref. B. It would have been obvious to one OOSITA to combine ref. A with ref. B with the motivation of achieving {the unique end results of my invention}.
 
Isn't it a little fishy for the examiner to cite a unique advantage of my invention as the motivation to combine ref. A and B? Is that proper under MPEP? Doesn't he have to provide something more concrete, or at least declare an official notice that it's obvious? How do I argue against this motivation; it seem like trying to climb a perfectly sheer, glass wall.
 
thanks for insights,
 
Bob's Uncle

 
In re Sernaker may be of help.
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Chris Whewell, M.S.
uh no
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Re: motivation to combine
« Reply #3 on: Jan 12th, 2007, 1:00am »
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No the examiner does NOT have to find a motivation from the references. The motivation can be from anywhere as long as it's reasonable.
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Isaac
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Re: motivation to combine
« Reply #4 on: Jan 12th, 2007, 5:50am »
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on Jan 12th, 2007, 1:00am, uh no wrote:
No the examiner does NOT have to find a motivation from the references. The motivation can be from anywhere as long as it's reasonable.

 
Anywhere?  How about from the applicant's specification?
 
The motivation does not have to come from the references (e.g. general knowledge, from the problem to be solved, scientific principle), but "anywhere as long as it's reasonable" isn't correct under current law.
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Isaac
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