The Intellectual Property Law Server

Welcome, Guest. Please Login or Register.
Dec 12th, 2019, 11:54pm

Forums Forums Help Help Search Search Members Members Calendar Calendar Login Login Register Register
   Intellectual Property Forums
  
  
Obviousness
(Moderators: Forum Admin, JimIvey, JSonnabend)
   Crazy 103 rejection?
« Previous topic | Next topic »
Pages: 1 2  Reply Reply Send Topic Send Topic Print Print
   Author  Topic: Crazy 103 rejection?  (Read 1616 times)
JimIvey
Moderator
Senior Member
*****




  jamesdivey  
WWW

Posts: 2584
Re: Crazy 103 rejection?
« Reply #5 on: May 7th, 2007, 8:53pm »
Quote Quote Modify Modify

I'm reminded of a scene from Monty Python's "The Holy Grail" ... "I'm not dead yet."
 
Check out Isaac's post about half way down this page.
 
TSM is loosened up a bit, but it's not yet explicitly dead.  Obviousness still requires more than merely identifying all the elements in the prior art at large, and I intend to press that in my applications.
 
"I can't take him.  He says he's not dead."
 
Regards.
IP Logged

--
James D. Ivey
Law Offices of James D. Ivey
http://www.iveylaw.com
TataBoxInhibitor
Full Member
***




   


Posts: 456
Re: Crazy 103 rejection?
« Reply #6 on: May 7th, 2007, 9:23pm »
Quote Quote Modify Modify

What role with this decision have with respect to 103 rejections before the decision using TSM and a prospective response afterwards?  Will the practitioner get another shot at argument?
IP Logged
JimIvey
Moderator
Senior Member
*****




  jamesdivey  
WWW

Posts: 2584
Re: Crazy 103 rejection?
« Reply #7 on: May 8th, 2007, 9:12am »
Quote Quote Modify Modify

I don't think that will be an issue at all for at least 2 reasons.
 
First, all of the office actions I've received in the last 3-6 months have  avoided the TSM test and instead cited Graham and tried to follow the elements of Graham.  As I've noted before, the office actions -- almost without exception -- skip determining the level of skill in the art.  So, it may be that the situation you describe just won't happen.  The Office has been pushing for dropping the TSM test.
 
Second, the TSM test was loosened in ways already loosened by the Court in ways the Office had been applied for years -- that the motivation doesn't have to be the same as the applicant's and that the elements of the prior art don't have to be designed to address the same problem as the applicant's.  I have yet to see the Office limit the TSM test in the way disallowed by the Court.
 
So, nothing ought to change.  However, I think there is some perception that the Court completely abandoned the TSM test, and some examiners may write obviousness rejections with such a perception.
 
Regards.
IP Logged

--
James D. Ivey
Law Offices of James D. Ivey
http://www.iveylaw.com
Pages: 1 2  Reply Reply Send Topic Send Topic Print Print

« Previous topic | Next topic »
Powered by YaBB 1 Gold - SP 1.3.2!
Forum software copyright 2000-2004 Yet another Bulletin Board