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Topic: Arguing unobviousness (Read 5645 times) |
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Isaac
Senior Member
Posts: 3472
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Re: Arguing unobviousness
« Reply #10 on: Aug 23rd, 2007, 1:24pm » |
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on Aug 23rd, 2007, 1:03pm, Jimb0v wrote:I am in a similar circumstance. I'm up against a 103 rejection where the examiner is taking a portion of reference A completely unrelated to the general subject matter of reference A and combining it with reference B, which admittedly shows all of the elements of my claim except the element being leeched from reference A.
Originally I made a destruction of intended function argument saying that if you combined A and B, then you destroy B's function.
The examiner came back and said that I was making B the primary reference instead of reference A.
Does which one is the primary reference matter? |
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For the particular argument you are using, it does matter which one is the primary reference. The examiner's rejection does not rely on proper function of the secondary reference.
I would distinguish the "destroy the function of " argument from "teaching away" argument. Those are separate lines of reasoning.
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Isaac
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Jimb0v
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Re: Arguing unobviousness
« Reply #11 on: Aug 23rd, 2007, 1:45pm » |
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Wow. What a fast response.
Is there anywhere I can get a refresher on the differences between "teach away" and "destroy the intended function". They seem very similar to me.
Reference A teaches away from reference B.
Reference A when combined with reference B dsetroys the intended function of reference B.
Isn't that saying essentially the same thing?
Also, isn't there another agument that states that Reference A teaches away from the invention instead of from the reference itself?
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JimIvey
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Posts: 2584
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Re: Arguing unobviousness
« Reply #12 on: Aug 24th, 2007, 2:44pm » |
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No, it's not the same thing. Teaching generally refers to the explicit language of the reference.
A reference describing a boat and warning you to not drill a hole in the hull below the waterline teaches away from drilling a hole in the hull below the waterline.
A secondary reference teaches drilling holes through fiberglass; combining that reference with the boat reference such that a hole is hypothetically drilled through the hull below the waterline would seem to destroy the function of the boat, namely, floating.
Regards.
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James D. Ivey
Law Offices of James D. Ivey
http://www.iveylaw.com
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