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   Arguing unobviousness - best line of reasoning?		 « Previous topic | Next topic »
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   Author  Topic: Arguing unobviousness - best line of reasoning?  (Read 7014 times)
pentazole
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Posts: 197
Re: Arguing unobviousness - best line of reasoning
« Reply #10 on: Jul 5th, 2007, 11:30am »		 Quote Quote Modify Modify
You don't want to start explaining things beyond the disclosure of your patent.  Giving explanations of the steps it would take for someone to go from the cited ref to yours is setting yourself up for another obviousness rejection and perhaps even admission.  You really have to be careful what wording you use when you try to "explain" anything, and see how it can be used against by the opposite side.  I don't limit my arguments to the disclosure per se, but I do limit explanations to the disclosure.  Does that make sense?
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michael73
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Posts: 28
Re: Arguing unobviousness - best line of reasoning
« Reply #11 on: Jul 5th, 2007, 12:35pm »		 Quote Quote Modify Modify
guess it does. just needs some time to settle...
 
lets see whether I got it:
 
in order to argue unobviousness, I would demonstrate to the examiner that the teachings of his references are not sufficient to reach my claimed mechanism. I would never "develop my mechanism" back or relate it to the references.
 
so, sth like:
My invention is not obvious from ref A in view of B because
- Ref B does not teach or suggest to cut out sub-structure B' from its disclosed mechanism
- Assuming it does (which it does not), ref B does not teach or suggest to employ B' in ref A
- Assuming it does, ref B does not teach or suggest how to connect B' with A
- Assuming it does, the result is an inoperable mechanism which does not have the limitations of my claimed mechanism
- To make this thing operable again, you need to remove certain elements. There are hundreds of possibilities to make it operable again, but ref B does not teach what to remove and how
- Therefore, it is not obvious...
 
this way, I guess I can completely avoid talking about my invention. is that it? thanks again....
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