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Obviousness
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   Arguing unobviousness
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   Author  Topic: Arguing unobviousness  (Read 3876 times)
Isaac
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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?

 
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
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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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
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