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   QUESTION ON COMBINING REFERENCES
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patag2001
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QUESTION ON COMBINING REFERENCES
« on: Jul 17th, 2007, 10:32am »
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I received an obviousness rejection in which the examiner has combined references N and Z.  The Z reference includes a critical feature when added to the N reference reads on the invention.  However, other features of Z generally destroy the function of the invention on combining with N.  When combining references, must all of the features of the references (i.e., Z and N) be included?  
 
If so, a likely argument against the obviousness rejection would be combining references destroy the intended function of the invention.  However, if only one critical feature of Z is combined with N, there may be little wiggle room in arguing the obviousness rejection.
 
Thanks!
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JimIvey
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Re: QUESTION ON COMBINING REFERENCES
« Reply #1 on: Jul 17th, 2007, 1:41pm »
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Let me offer up a hypothetical situation to see if I understand your question.
 
PSRUs (propeller speed reduction units) have been used in airplanes for some time to marry high-RPM engines with props happier at slower RPMs.  Suppose your idea is to use a PSRU with an otherwise direct-drive boat engine-prop combo.  Assume that hasn't been done before (don't know if it has).
 
Would you be inclined to indicate that combining a boat and an airplane (particularly where the engine meets the prop) would neither fly nor float?  That would not be a particularly strong argument.  A much better argument would be that taking a PSRU out of an airplane and fitting between a boat engine and a boat prop would be inoperative or at least undesireable in prior art thinking.  
 
I hope that answers the question.
 
Regards.
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James D. Ivey
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Re: QUESTION ON COMBINING REFERENCES
« Reply #2 on: Jul 17th, 2007, 4:53pm »
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I handled one that sounds like this a while ago, but unfortunately the client abandoned the application due to other issues, so I don't know if the response would have been successful.
 
In my case, an integrated multifunction device with an automated cutoff for other functions when a prioritized function became active, the examiner used a simple external power cutoff added to a vaguely-similar prior art device.  My response pointed out that while the effect of the combination would in fact work to shut off power to the parts of the device that were supposed to be shut down, it would also shut off power to the part that was supposed to continue to be in use.  As a result, the examiner's proposed combination made the device useless.
 
If you can find similar reasoning, and if it would not be possible to work around it given the nature of the references (especially reference 'Z'), I'd guess that (assuming the examiner is reasonable) you can overcome the rejection.
 
If the portion of 'Z' that the examiner refers to is separable from 'Z', and if it remains usable and would work once separated from the rest of 'Z', I'd guess that you would not be able to overcome the rejection.
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JimIvey
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Re: QUESTION ON COMBINING REFERENCES
« Reply #3 on: Jul 17th, 2007, 10:28pm »
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Reading my eCatalogs, I discovered a new favorite example of combining known things:
http://tinyurl.com/299y5w
 
No more corkscrews in the icechest!
 
Regards.
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James D. Ivey
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pentazole
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Re: QUESTION ON COMBINING REFERENCES
« Reply #4 on: Jul 18th, 2007, 2:53pm »
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on Jul 17th, 2007, 10:32am, patag2001 wrote:
I received an obviousness rejection in which the examiner has combined references N and Z.  The Z reference includes a critical feature when added to the N reference reads on the invention.  However, other features of Z generally destroy the function of the invention on combining with N.  When combining references, must all of the features of the references (i.e., Z and N) be included?  
 
If so, a likely argument against the obviousness rejection would be combining references destroy the intended function of the invention.  However, if only one critical feature of Z is combined with N, there may be little wiggle room in arguing the obviousness rejection.
 
Thanks!

 
N is cited against you.  Z is cited as a combination with N to fill in the blanks.  The proper (and strong) use of the "destroy the function of the invention" is if Z would destroy the function of N, and not the function of YOUR invention.  let's say you claim A+B+C.  N claims A+B as a composition that makes babies eat their broccoli, but their spec says never to use C because it will make babies cry, Z claims A+C makes babies not cry as much, then you have a very strong argument saying that even though N and Z make for a healthy baby, N and Z can't be combined because Z has C in it, and N teaches you that C is bad and thus you would be destroying the invention of N.
 
From your question, what I'm understanding is that you want to say that A+Z destroy *your* invention.  If this "destroy" argument is more like "teach away" from your invention, then that would be a great argument as well.  Teaching away arguments are very valuable.
« Last Edit: Jul 18th, 2007, 2:57pm by pentazole » IP Logged
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