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   Arguing unobviousness
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michael73
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Arguing unobviousness
« on: Aug 13th, 2007, 4:45am »
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Hi,
 
I am arguing unobviousness of my invention based on the following line of reasoning (like the "patent it yourself" book's sample response, which seems to fit my case pretty well):
 
1. Combination proposed by OA not taught, suggested or motivated by cited references
 
2. Proposed combination inoperable
 
3. Proposed combination does not show all the novel features of my invention
 
4. Novel features are unobvious because they produce new and unexpected results
 
Have a couple of questions, maybe someone can help me?
 
a) I am a little confused about point 4: I guess I argue unexpected results because when I argue novel features, I should also argue unobviousness (102+103 approach, says my book). So, I dont argue "even if prima facie case of obviousness is conceded, my invention is still unobvious because of unexpected results"?! would that be a further argument 5.? Or could I combine the two "4. ... And even if prima facie case were conceded, which it is not, it is still not obvious because..."??
 
b) When I talk about the unexpected results, I assume I do not supply the Examiner with a motivation why someone would try the combination, because if a result is unexpected then it cant motivate by definition?  
 
Thanks for your help!!
Michael
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michael73
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Re: Arguing unobviousness
« Reply #1 on: Aug 13th, 2007, 8:21am »
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Unobviousness is mind-twisting...
 
I am having second thoughts regarding my previous points 3. and a)...
 
Does it matter at all whether my claim limitation has novel features over the prior art combination? By rejecting it based on 103, doesnt the OA imply that I have passed 102?
 
confused... Michae  
 
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JimIvey
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Re: Arguing unobviousness
« Reply #2 on: Aug 14th, 2007, 9:02am »
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First, it's not clear to me that you understand that you can use any one of (1)-(4) -- you don't need all of them.  
 
Of those, 3 is the strongest in my opinion -- I try to use it whenever possible.  It usually plays out like this:
 
Claim 1: A+B+C
 
The Examiner cites Reference 1 as teaching A+B and cites Reference 2 as teaching C and says their combination is obvious.  I rebut that Reference 1 teaches B (examiner misread Reference 1 or took language out of context).  Since Reference 1 doesn't teach B and Reference 2 doesn't teach B, the combination of References 1 and 2 doesn't teach B, "assuming arguendo that such combination is properly motivated in the prior art" (preserving that argument for a later date).
 
Arguing that a single reference doesn't teach B is a 102 argument.  Arguing that none of the references of a combination teach B is a 103 argument.
 
Regards.
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James D. Ivey
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michael73
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Re: Arguing unobviousness
« Reply #3 on: Aug 14th, 2007, 4:05pm »
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Thanks Jim!
 
I do understand that I can use them individually. I assumed that it would be better to shoot as many arguments back to the examiner because next OA will be final?  
 
Regarding your A+B+C example, I assume omission counts as well? The prior art combination shows 5 elements, I can perform the function with "three and only three" as recited in my claim.
 
I think (hope) I understand now: Proving to the examiner that B is not shown in the combination, has nothing to do with novelty. But the examiner has to provide references showing A+B+C in order to reject based on 103!? Is that really a must for the examiner?
 
Thanks again.. Michael
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still_studying
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Re: Arguing unobviousness
« Reply #4 on: Aug 14th, 2007, 7:50pm »
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Michael, I saw your other post today regarding changing your claims.  I assume that that's the same Office action you are talking about here.
 
If arguing (3) requires you to limit your claims further, I'd suggest arguing (2), since by showing that the proposed combination doesn't function, you should at least get another chance out of the examiner.  You need to be careful not to argue yourself into a very narrow patent, which it looks like you're doing in the other thread.
 
Arguing (1) alone is iffy nowadays, since TSM got chewed up a bit by a recent Supreme Court case.  It's apparently still usable, but it's no longer the sole standard.  Better to use it in combination with another argument.
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