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   Examiner Using Prior Art As Tool Box
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Posts: 19
Examiner Using Prior Art As Tool Box
« on: Apr 22nd, 2007, 5:05pm »
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Any advice on how to shut down an Examiner's arguments on obviousness when he repeatedly uses the prior art as a "tool box" to re-construct an applicant's invention buy just picking and choosing elements from various references?   The frustrating part is that this can go on forever and almost any invention can be declared obvious in this way.   The motivation to combine is still confusing to me.  It seems that under MPEP 2143.01 it clearly states that "The mere fact that the references can be combined or modified does not render the resultant combination obvious unless the prior art also suggests the desirability of the combination."    As others have stated on this forum, the motivation to combine need not come from the prior art references.    Any help on sorting this out is appreciated.  Thanks.
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Bill Richards
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Re: Examiner Using Prior Art As Tool Box
« Reply #1 on: Apr 22nd, 2007, 9:24pm »
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Stay tuned for the SCt's decision in KSR v. Teleflex due any time now.  The obviousness test involving teaching, suggestion, motivation (TSM) is  being reviewed even as we speak.  Until the SCt granted cert in this case, the CAFC had consistently held that there must be some TSM to combine prior art references [to avoid hindsight (using the application as a blueprint)] to produce the instant invention.  Depending upon the decision, the TSM test may be relegated to the trash pile or at least modified and used as a factor to consider (my guess/hope).  This is a very complex issue right now.  If you can, I'd advise waiting until the SCt decision is issued.  Even the CAFC has "softened" its position on this and has said that "common sense" may be considered as a factor.
« Last Edit: Apr 22nd, 2007, 9:26pm by Bill Richards » IP Logged

William B. Richards, P.E.
The Richards Law Firm
Patents, Trademarks, and Copyrights
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