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   Arguing unobviousness - best line of reasoning?
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   Author  Topic: Arguing unobviousness - best line of reasoning?  (Read 5294 times)
michael73
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Arguing unobviousness - best line of reasoning?
« on: Jun 27th, 2007, 9:10am »
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Hi,
 
I got a 103(a) rejection based on my own previous application and another older reference. After having read many posts and consulting my "patent it yourself" book, I am still unsure about the best line of reasoning. I was thinking about:
 
1. The teachings of the prior art references are well known to the experts and practitioners. Yet they failed to come up with the solution, even though...
 
2. There is a strong, long-felt need for such a solution. Our solution is really a solution bc...
 
3. We already have a licensing agreement closed with a manufacturer.
 
4. New + unexpected results
 
5. Synergism etc
 
6. Teachings do not suggest our solution
 
---
 
Or are these (except 6) all secondary arguments, and I should really focus my discussion on 6?
 
How do you typically argue that teachings do not suggest the claimed subject matter? For example, in my case, the older references cannot suggest the solution bc my previous application (and many other devices in this field) did not yet exist... guess that doesnt count.
 
Thanks for the help!
Michael
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JimIvey
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Re: Arguing unobviousness - best line of reasoning
« Reply #1 on: Jun 27th, 2007, 10:43am »
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I would argue 6, then 4.  
 
As for what's a "suggestion", it's really hard to say.  My intuitive understanding is that a suggestion is a non-enabled teaching.  For example, "while the above system is described as being implemented in software executing in one or more computers, it should be appreciated that the above system can wholly or partly be implemented using digital logic circuitry implemented in hardware."  I suppose there can be more subtle "suggestions".  I think the "suggestion" would have to be within the skill of one of ordinary skill.  For example, merely suggesting time travel shouldn't make all mechanisms for time travel obvious.  Incidentally, I had a working prototype for time travel way back in 2045.
 
The bottom line is that you'd have to read the cited art and look for things that hint to your solution.  If you don't find any, they don't "suggest" your solution.
 
Regards.
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James D. Ivey
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Re: Arguing unobviousness - best line of reasoning
« Reply #2 on: Jun 27th, 2007, 12:45pm »
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Like JimIvey said, argue 6 first, then if that doesn't work, argue 4.  1-3 would fall under secondary considerations (4 does as well, but from what I have seen so far, it seems that unexpected results makes for a stronger argument than 1-3.  But most of my work is chemical, and hasn't reached commercial production.)  You can use 5 as part of your 6 argument.  If you have two components that when you combine not only give favorable results, but they also show a synergistic effect, then it's a strong argument for non-obviousness.
 
Your first step is to prove that the Examiner did not establish a prima facie case of obviousness, based on rebutting the Examiner's allegations.  So if the Examiner says this is obvious because, your first response should be no it's not obvious because, and then prove that his arguments are wrong.  If that doesn't work, and you become convinced that he may be right, and you can't change that fact using amendments, then try a showing of unexpected results.  There's guidelines and case law regarding what kind of data you need to show to make for a good case of unexpected results.  If you change the direction of your arguments, be careful not to use language that the examiner may interpret as you conceding something that you aren't.  Also even if you try to change arguments from non suggested to unexpected results, make sure to respond to the examiner's "response to arguments".  
 
If you feel you have a strong case for both arguments, you can combine them into one (6 and 4 that is.)  So argue 6 first, then have a transitional paragraph into 4 along the lines of:
 
Even if a prima facie case of obviousness were conceded, which it is not, it is respectfully submitted that applicant’s invention is not obvious because the particular combination of claimed elements results in unexpectedly beneficial properties.  An applicant can rebut a prima facie case of obviousness by presenting comparative test data showing that the claimed invention possesses unexpectedly improved properties or properties that the prior art does not have.  In re Dillon, 919 F.2d 688, 692-93, 16 U.S.P.Q.2d 1987, 1901 (Fed. Cir. 1990).
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michael73
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Re: Arguing unobviousness - best line of reasoning
« Reply #3 on: Jun 28th, 2007, 5:39am »
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Thanks! That was really helpful already! Still wondering how specific a suggestion must be for a combination to be obvious?
 
In our case, we have improved our previous robotic device by leaving some links and joints away, and adding some others (the result is an improvement in terms of performance). The examiner pulled out a reference which shows a crane that also includes the added links and joints, and says it is obvious that we can employ it as well.  
 
In the reference, it says that the crane can be used for robots. However, there is absolutely no word about
- cutting out the particular linkage and employ it in a robot
- how it should be connected
- which parts in our old device should be left away in order to arrive at a useful configuration
 
The latter two are in fact an art, which has kept hundreds of researchers busy worldwide for the past two decades. That is why I am absolutely convinced that it is not obvious. However, just dont know whether the examiner is willing to follow hat argument Undecided
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JimIvey
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Re: Arguing unobviousness - best line of reasoning
« Reply #4 on: Jun 28th, 2007, 11:01am »
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Well, you've made your argument.  That's pretty much what I would expect the argument to look like.
 
Whether the examiner will follow it: who knows?  Most examiners aren't willing (or able) to fully connect the dots in an obviousness rejection, in my opinion.  Without reviewing all the specifics of your case, I would suggest considering making your best argument and then appeal.  For some reason, some examiners are willing to admit they can't connect all the dots when looking at preparing an examiner's answer to your appeal brief.
 
One more observation:  sometimes it seems that, once you're shown an alternative configuration (in your crane, for example), the burden of proof shifts to you to show it would be inoperable (or at least problematic).  That's not the law as I understand it, but that seems to be the implicit expectations in the PTO examining corps.  I would suggest really flushing out, in as much detail as possible, what problems would be expected in making the combination asserted by the examiner.  At the very least, point out the significant implementation details that are left unanswered by the examiner, including why they're significant (e.g., can't be operable realistically without some answers not found in the art cited).
 
Oh, and one little technique I use.  The examiner usually somewhere takes a shortcut in obviousness reasoning.  For example, they'll cite a motivation to combine but not establish or even assert that it was known to one of ordinary skill at the time the invention was made.  It's assumed.  In those situations, I write something to the effect of: "To the extent the Examiner takes Official Notice that such motivation was known to one of ordinary skill in the art at the time the invention was made, Applicant hereby seasonably challenges such Official Notice and respectfully requests supporting documentation."  Observe that challenging Office Notice must be seasonal -- so make the challenge early and often or forever hold your peace.
 
Regards.
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