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   Crazy 103 rejection?
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   Author  Topic: Crazy 103 rejection?  (Read 1615 times)
Monica S.
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Crazy 103 rejection?
« on: May 7th, 2007, 9:58am »
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I have this 103 rejection, where in my previous response I said a POSITA would not be motivated to make Applicant's invention because a, b, c, and e.   The Examiner writes back and says that "it is not that the POSITA would make obvious your invention, but AN invention consistent with your invention."
 
I was under the impression that MY limitations were to be met by a POSITA with motivation.   What does the word "consistent" mean?  How is this different?   In the MPEP the limitations must be present by suggestion, motivation, or teaching.    
 
I do not find the Examiner's language in the MPEP, does anyone know what she is talking about?
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Isaac
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Re: Crazy 103 rejection?
« Reply #1 on: May 7th, 2007, 10:14am »
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I'm jusg guessing, but "consistent with" probably means that your claims read on whatever thingy it is the examiner has found references and motivation to make.  
 
If the examiner is right, and if your position is that such a thingy isn't your invention, then perhaps your claims need amending.
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Isaac
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Re: Crazy 103 rejection?
« Reply #2 on: May 7th, 2007, 11:18am »
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on May 7th, 2007, 9:58am, Monica S. wrote:
I have this 103 rejection, where in my previous response I said a POSITA would not be motivated to make Applicant's invention because a, b, c, and e. The Examiner writes back and says that "it is not that the POSITA would make obvious your invention, but AN invention consistent with your invention."
 
I do not find the Examiner's language in the MPEP, does anyone know what she is talking about?

 
What you have wrote and what the Examiner has stated is the same thing.  I think the Examiner may have misread your response and believed you didnt understand 103.
 
The references must be considered as a whole and must suggest the desirability and thus the obviousness of making the combination.   Which to me means your claimed language, not "consistent with"your language.   The word "consistent" bothers me because it sounds of equivalent, even though I know it is not.  
 
I myself have never seen this in an obvious rejection or anywhere in the MPEP.
 
 
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JSonnabend
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Re: Crazy 103 rejection?
« Reply #3 on: May 7th, 2007, 6:42pm »
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Quote:
The references must be considered as a whole and must suggest the desirability and thus the obviousness of making the combination.

Really?  Not any more, at least not in my reading of Teleflex.
 
- Jeff
« Last Edit: May 7th, 2007, 6:43pm by JSonnabend » IP Logged

SonnabendLaw
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Re: Crazy 103 rejection?
« Reply #4 on: May 7th, 2007, 6:55pm »
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You are absolutely correct.  That is now, old law.
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