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Topic: How assess obviousness? (Read 4097 times) |
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Isaac
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Posts: 3472
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Re: How assess obviousness?
« Reply #5 on: Nov 8th, 2007, 8:09am » |
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on Nov 7th, 2007, 3:50pm, Wiscagent wrote:| No. You have to defeat the examiner's argument. |
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That's literally true, but I'd be a bit careful.
Assuming that you are arguing about the teachings of the references and not about reference dates, I'd suggest that you have to defeat the examiner's arguments and fairly close analogs to the examiner's argument that involve the same references. The examiner probably isn't going to withdraw the rejection if a few words of "clarification" are needed. If he can just provide a KSR friendly "reason to combine" instead of a teaching, suggest or motivation to combine, at best you'lll just get a modified rejection, and at worst the examiner will maintain the original rejection and make the rejection final.
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| « Last Edit: Nov 8th, 2007, 8:09am by Isaac » |
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Isaac
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Wiscagent
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Re: How assess obviousness?
« Reply #6 on: Nov 8th, 2007, 11:25am » |
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Isaac, I agree with you. It also true that the response to a particular rejection depends on the nature of that rejection. And the response can range from a paragraph or two to several pages along with supporting documents.
I mentioned an improper date for a reference as an example for which it MIGHT be appropriate to just point out the wrong date. Of course even if that particular reference does not apply, it still might be appropriate to respond to the basic issue brought forth by the examiner, because it is likely that the examiner will just go back and find another, similar reference.
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Richard Tanzer
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helene_eur_att
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Re: How assess obviousness?
« Reply #7 on: Nov 9th, 2007, 12:06pm » |
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So I understand that the 3 steps of the prima facie obviousness have to be applied to every single application. Correct?
Is this approach used every time?
What if not? Should the attorney required its use (if favourable for his/her client)?
Is the Examiner bound to this approach?
Thank you all!
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Isaac
Senior Member
Posts: 3472
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Re: How assess obviousness?
« Reply #8 on: Nov 9th, 2007, 6:08pm » |
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on Nov 9th, 2007, 12:06pm, helene_eur_att wrote:| So I understand that the 3 steps of the prima facie obviousness have to be applied to every single application. Correct? |
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If you mean steps (a), (b), and (c) as listed in your original question as the prima facie case, then, no those things don't have to be applied in each case.
The examiner is supposed to conduct the factual inquiry outlined in the Graham v. Deere and then reach a conclusion related to obviousness. It's pretty difficult to generalize any more than that about what the examiner must do other than pointing you toward what the PTOs guidance says.
You are correct that the (a), (b), and (c) approach you outline is objective, but unfortunately Justice Scalia says that approach was goobledygook. The law allows a far more subjective analysis in reaching the conclusion of obviousness.
If it's any consolation, I don't understand inventive step determination as applied in Europe nearly as well as you understand the US approach to obviousness.
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| « Last Edit: Nov 9th, 2007, 9:27pm by Isaac » |
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Isaac
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biopico
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Re: How assess obviousness?
« Reply #9 on: Nov 9th, 2007, 9:56pm » |
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on Nov 9th, 2007, 6:08pm, Isaac wrote:
You are correct that the (a), (b), and (c) approach you outline is objective, but unfortunately Justice Scalia says that approach was goobledygook. The law allows a far more subjective analysis in reaching the conclusion of obviousness.
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gobbledygook or gobbledegook or gobbledegoo
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