The Intellectual Property Law Server

Welcome, Guest. Please Login or Register.
May 22nd, 2019, 11:21pm

Forums Forums Help Help Search Search Members Members Calendar Calendar Login Login Register Register
   Intellectual Property Forums
  
  
Obviousness
(Moderators: Forum Admin, JimIvey, JSonnabend)
   How assess obviousness?
« Previous topic | Next topic »
Pages: 1 2  Reply Reply Send Topic Send Topic Print Print
   Author  Topic: How assess obviousness?  (Read 2767 times)
helene_eur_att
Newbie
*




   


Posts: 20
How assess obviousness?
« on: Nov 6th, 2007, 11:13am »
Quote Quote Modify Modify

Dear all,
 
I have questions regarding rejections under 35 USC 103.
Your answers would be helpful.
 
1. The Examiner combines 4 documents to reject a claim under 35 USC 103. Is this acceptable? In Europe, the fact that more than one disclosure must be combined with the closest prior art in order to arrive at a combination of features is a sign of the presence of an inventive step. Is there any case law that can be used to say that combining more than 3 documents is a sign of non-obviousness?
 
2. When rejecting a claim under 35 USC 103, what are the duties of the Examiner?  
Notably I have read that in order to prove a prima facie case of obviousness, the Office needs to establish that: a) the combined references contain all of the elements of the instant claims; b) the skilled artisan had motivation to modify the teachnings of the prior art; and c) th modification would have had a reasonable likelihood of success in light of the prior art. MPEP 2143.  Is this always applied by the Examiners? and if not, is it possible to traverse the rejection saying that the above requirements have not been met?
Should the rejection of the Examiner always end with "the invention is prima facie obvious in view of ..."?
 
3. In practice, in order to assess obviousness in an objective and predictable manner, should the Examiner  apply a specific approach?  
 
4. What should I read concerning obviousness rejection, the basis that I should know? currently cited case law?
 
Thank you very much for your answers.
 
Helene_eur_att
IP Logged
MattB
Full Member
***




  mbycer   MBycer
Email

Posts: 127
Re: How assess obviousness?
« Reply #1 on: Nov 6th, 2007, 11:55am »
Quote Quote Modify Modify

Hello Helene,
 
I will take a shot at this one.
 
1. USPTO can combine as many relevant references so long as there is motivation to combine them.  There is no limit to the number of references under 103.  I'll look at case law when I get a chance.
 
2. I think you are on the right track with MPEP 2141+.  Yes, the Examiner should follow that book to the letter.
 
3. No, the Examiner has many approaches he may take. See 2141 per example.
 
4. KSR v. Teleflex is the most recent Supreme Court case and includes a nice reflection of 103 law to date.  Dennis Crouch has a nice patentlyo blog that addresses contemporary 103 issues.
 
Good luck!
IP Logged

Matthew L. Bycer
Registered Patent Attorney
http://www.bycer.com
http://www.cvglaw.com
Isaac
Senior Member
****




   


Posts: 3472
Re: How assess obviousness?
« Reply #2 on: Nov 6th, 2007, 12:20pm »
Quote Quote Modify Modify

on Nov 6th, 2007, 11:13am, helene_eur_att wrote:
4. What should I read concerning obviousness rejection, the basis that I should know? currently cited case law?

 
The PTO has recently published some guidance for applying the KSR v. Teleflex case decision when assessing obviousness.  
 
Largely, the MPEP relies on applying teaching, suggestion, and motivation (TSM) to assess obviousness, whereas after KSR, TSM is simply one of several paths to finding an invention obvious.  
 
I expect that much of MPEP 2141+ will be rewritten but for now, here is a link to the PTO's new guidance
 
http://www.uspto.gov/web/offices/com/sol/notices/72fr57526.pdf
« Last Edit: Nov 6th, 2007, 4:17pm by Isaac » IP Logged

Isaac
alconada
Newbie
*




   


Posts: 14
Re: How assess obviousness?
« Reply #3 on: Nov 7th, 2007, 2:20pm »
Quote Quote Modify Modify

Then, if the examiner raises an obviousness objection do I have to argue using each and every rationale of the guidelines and show  that the claim is inventive irrespective of which rationale it is used?
 
Thanks
IP Logged
Wiscagent
Full Member
***




   


Posts: 843
Re: How assess obviousness?
« Reply #4 on: Nov 7th, 2007, 3:50pm »
Quote Quote Modify Modify

"... do I have to argue using each and every rationale of the guidelines ..."
 
No.  You have to defeat the examiner's argument.
 
In some situations that may be as simple as pointing out that the reference is not suitable as prior art, wrong date perhaps.  In other situations your argument needs to be substantive and refute several of the points made by the examiner.
IP Logged

Richard Tanzer
Patent Agent
Pages: 1 2  Reply Reply Send Topic Send Topic Print Print

« Previous topic | Next topic »
Powered by YaBB 1 Gold - SP 1.3.2!
Forum software copyright 2000-2004 Yet another Bulletin Board