The Intellectual Property Law Server

Welcome, Guest. Please Login or Register.
May 20th, 2019, 1:14pm

Forums Forums Help Help Search Search Members Members Calendar Calendar Login Login Register Register
   Intellectual Property Forums
  
  
Obviousness
(Moderators: Forum Admin, JimIvey, JSonnabend)
   Arguing unobviousness - best line of reasoning?
« Previous topic | Next topic »
Pages: 1 2 3  Reply Reply Send Topic Send Topic Print Print
   Author  Topic: Arguing unobviousness - best line of reasoning?  (Read 5190 times)
pentazole
Full Member
***




   


Posts: 197
Re: Arguing unobviousness - best line of reasoning
« Reply #5 on: Jun 28th, 2007, 11:29am »
Quote Quote Modify Modify

I just want to add that even though the elements you list may be novel over the prior art, perhaps the way you constructed your main claim doesn't reflect these limitations, and in its broadest sense may be obvious over what's out there.
 
For instance, if your claim recites a robotic device, where you removed some links and joints, and added new ones.
 
The art:  a crane, where you removed some links and joins and added new ones.
 
Sure, you know that the links and joints that you added are completely different from and serve and totally different function than those of teh crane, but the way the claim is written does not convey that.  You may want to start specifying certain elements of what you removed and what you added.
 
If that's the case, be careful not to narrow your claim more than what protection you have the right to have.  The only reason I bring this up is because we have a client that LOVES claiming extremely broadly, so since we want to keep them happy, we claim broadly for them, then we add what we think as the invention in independent claims, and almost always end up amending the main claim by incorporating these limitations back into it during prosecution.
« Last Edit: Jun 28th, 2007, 11:30am by pentazole » IP Logged
michael73
Newbie
*




   


Posts: 28
Re: Arguing unobviousness - best line of reasoning
« Reply #6 on: Jun 29th, 2007, 6:53am »
Quote Quote Modify Modify

Many thanks to all of you! This has made things tremendously clearer in my head.  
 
Thanks again!  
Michael
IP Logged
michael73
Newbie
*




   


Posts: 28
Re: Arguing unobviousness - best line of reasoning
« Reply #7 on: Jul 5th, 2007, 3:06am »
Quote Quote Modify Modify

Hi,
 
may I ask once more for your help?
 
I decided to start my argument like this: Applicants disagree that it is obvious because the references do not (nether combined nor individually) teach to modify A in view of B to reach the claimed subject matter. In addition there is no motivation to modify, neither in the references, nor in general (prior art teaches away).  
 
- I guess that is how you would start and then reason why they dont teach? Would it be smart, to list the required steps to come from A to the claimed subject matter and show that the steps are not being taught in the references? Or would this make the invention look like a simple mechanical exercise?
 
- Still not sure about the motivation argument (and how strong that is): I assume this cannot just be the general motivation to achieve useful robot mechanisms, but must be a concrete hint why modifying A in view of B is a good idea. Is that correct?
 
Thanks again for your support!
Best regards, Michael
IP Logged
pentazole
Full Member
***




   


Posts: 197
Re: Arguing unobviousness - best line of reasoning
« Reply #8 on: Jul 5th, 2007, 8:52am »
Quote Quote Modify Modify

on Jul 5th, 2007, 3:06am, michael73 wrote:

 
- I guess that is how you would start and then reason why they dont teach? Would it be smart, to list the required steps to come from A to the claimed subject matter and show that the steps are not being taught in the references? Or would this make the invention look like a simple mechanical exercise?
 

 
You don't want to do that.  Limit your argument to what's been said in your specification and in the reference's specification with citations.
IP Logged
michael73
Newbie
*




   


Posts: 28
Re: Arguing unobviousness - best line of reasoning
« Reply #9 on: Jul 5th, 2007, 10:42am »
Quote Quote Modify Modify

I was afraid you would say that... Guess I understand that it is not smart to show the steps how to arrive at my invention.
Quote:
You don't want to do that.  Limit your argument to what's been said in your specification and in the reference's specification with citations.

The thing is that the specifications do not talk about combining each other to reach my claimed subject matter (which, I guess, is good for me because I can use it in my argument). But if limited to citations, I could merely say that the references do not talk about making the combination.
 
But then I would expect the examiner to come back to me and say that it is still obvious, because you take elements X-Y from reference A, and elements Y-Z from reference B, combine them and there you are.  
 
Which I would consider hindsight. Because there is no obvious reason to do it like that. In fact, there are hundreds of other possible and useful combinations leading to structures different from my claimed subject matter.  
 
That is why my idea was to give him examples of these alternatives, and show him that the references do not teach which way to go. Is that possible?  
 
Tricky business that is... thanks by the way, for the patience...
IP Logged
Pages: 1 2 3  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