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   about the meanings of "obvious" in 103
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   Author  Topic: about the meanings of "obvious" in 103  (Read 734 times)
caoxiong81
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about the meanings of "obvious" in 103
« on: Mar 17th, 2007, 2:44am »
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When I read a book of <<patent prosecution>> wirtten by Irah H. Donner, I puzzled by the word of "obvious".  The book recites that "after it is determined that the reference are available to the inventor and may be combined, the determination of whether the proposed combination renders the claims invention ovbious is then considered".
I think it means that the obviousness of the claimed invention is judged based on the proposed combination.    
However, Mpep recites "all claim limitations must be taught or suggested" in 2143.  If so, the proposed combination should have disclosed the claimed invention,  and what's the obviousness between the claimed invention and the combination?  Need the combination disclose all limitations of the claim in 103?
Contrasting to the <<patent prosecution>>, I think the word of "obvious" of 103 is about if it is obvious to combine or modify the refereces.  
Or both of the action of combination/ modification and the claimed invention corresponding to the combination should be judged on the question of "obvious".  
What 's your opinion?
« Last Edit: Mar 17th, 2007, 2:46am by caoxiong81 » IP Logged
Isaac
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Re: about the meanings of "obvious" in 1
« Reply #1 on: Mar 17th, 2007, 7:21pm »
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on Mar 17th, 2007, 2:44am, caoxiong81 wrote:
However, Mpep recites "all claim limitations must be taught or suggested" in 2143.  If so, the proposed combination should have disclosed the claimed invention,  and what's the obviousness between the claimed invention and the combination?

 
The "proposed combination" is a construct of the examiner or other judge of obviousness.   It is assembled from the prior art in a mental exercise.   The proposed combination includes the pieces from the prior art, the understanding a PHOSITA would glean from them, and the teaching and suggestion that serves as the glue to hold the pieces together.
 
Viewed that way, if we can assemble a proposed combination that and agree that the pieces are fairly assembled and do actually teach the invention, then analysis of the proposed combination can tell us whether an invention is obvious over the prior art.
 
I don't have the Donner book in front of me, but I'm guessing that his point is that an attack on an assertion of obviousness can be directed at various steps.
 
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Isaac
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