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   Arguing unobviousness
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JimIvey
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Re: Arguing unobviousness
« Reply #5 on: Aug 14th, 2007, 10:27pm »
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on Aug 14th, 2007, 4:05pm, michael73 wrote:
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?

Yes.  I forget the source of this addage (Learned Hand?), but it's worth committing to memory and contemplating in a Zen-like meditative state until it becomes a part of your very being:  "That which infringes if later, anticipates if earlier."
 
So, anticipation (102) analysis is effectively infringement analysis of prior art.  Find one piece of prior art that infringes a claim and that claim is toast.
 
Obviousness is a little tougher due to the multiple dimensions of possible combinations and variations that qualify as "obvious."  But, I'd try to put it like this: "if an obvious combination or variation of prior art refences infringes the claim, the claim is obvious."
 
Now, let's go back to the A+B+C example.  If the cited prior art only teaches A and C, and not B, the combination would not infringe the claim for lack of element B.  Therefore, no obviousness (at least not based on that combination of prior art references).
 
Regards.
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James D. Ivey
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michael73
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Re: Arguing unobviousness
« Reply #6 on: Aug 15th, 2007, 11:49am »
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Just woke up from the meditative state  Shocked hope my brain has memorized it.
 
as mentioned in my reply to the other claim drafting post: it seems okay to me to narrow the claim (and argue (3) as well) since the limitation is part of the essence of my invention.
 
just to make sure that I am not completely off here: do I actually respond to the OA with the above arguments 1-4?
 
my OA say "claims x,y,z rejected under 103 as being unpatentable over reference 1 in view of either reference 2 or 3. It would have been obvious to provide elements a-b to figure 1 in reference 1 to enhance {function} in view of the teaching in reference 1 or 2"
 
Is this equivalent to "hey, your claim reads on the combination of figure 1 and elements a-b taught in reference 1 or 2" and someone would be motivated to combine them because it "enhances" {function}?
 
patenthawk.com/blog/2007/08/ustpo_obviousness_guidelines.html seems to layout typical rationales for obviousness rejections under 103. I am confused which type of rationale my OA belongs to and whether I have to respond in different ways.
 
oh boy.
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JimIvey
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Re: Arguing unobviousness
« Reply #7 on: Aug 15th, 2007, 12:56pm »
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I would pick your strongest argument and use that alone.  Generally, give prosecution history estoppel, the less you say the better.
 
I still think your best argument is to find an element "c" in the claim (as is or as amended) and point out that none of references teaches or suggests "c".  Accordingly, any combination of references 1-3 does not teach or suggest "c" and the claim is allowable over that combination, assuming arguendo such combination is motivated in the prior art.
 
I hate those "because it's better" motivations to combine.  Duh!  Of course it's better -- we explained all that to you in the specification.  You must show that such motivation would be known by one of ordinary skill in the art.
 
And I got this bit from a colleague -- I like it:
 
To the extent the Examiner takes Official Notice that such motivation was known to one of ordinary skill in the art at the time the invention was made, Applicant hereby seasonably challenges such Official Notice and respectfully requests supporting documentation.
 
I've never once had supporting documentation provided.  I typically get a new rejection on some other combination with yet another "it's just better" motivation to combine and it's final.  My vague recollection of the trend is that these arguments don't get results in the pre-appeal brief conference, but get results in the BPAI.
 
Regards.
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michael73
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Re: Arguing unobviousness
« Reply #8 on: Aug 15th, 2007, 2:23pm »
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The issue is that the references do show all the features of my claim. However, you have to pick one group of elements from one reference, add it to the second reference and then eliminate some of the second reference's elements.
 
In other word, my claim reads on a subgroup of elements of ref 1 connected to a subgroup of elements of ref 2. The subgroup of elements of ref 1 provide the same function as the elements left away, just in a better way.
 
I thought I could help it by limiting my claim to explicitly exclude the possibility of the "eliminated elements" via an "x and only x elements" phrase. But I am starting to realize that this is nonsense.
 
I guess I can still argue about the implementation details left unanswered by the references... and of course unexpected results.
 
thanks again! Michael  
 
 
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Jimb0v
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Re: Arguing unobviousness
« Reply #9 on: Aug 23rd, 2007, 1:03pm »
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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?
 
I feel this is a werid situation.  If I say reference A shows elements A, B, C, D and Reference B shows elements E, F, G, H.  And assume my invention is ABCDE.
 
But here's the kicker, element F and A are diametrically opposed.  That is, element A and element F could never exist on the same device, and in fact element A and element F are the points of novelty of these two references.
 
Can I make a proper argument that reference B teaches away from reference A, even though the element the examiner is taking from reference B is for all practical purposes totally unrelated to the gist of these patents.  The feature being taken, is the equivalent of looking at a patent on a furnace and the examiner using a bolt shown in the patent on a different reference with shows a furance.
 
I may need to clean this up, I'm just so confused!
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