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(Message started by: ThePatentGuy on Nov 20th, 2006, 7:18am)

Title: Single-reference obviousness rejections
Post by ThePatentGuy on Nov 20th, 2006, 7:18am
Would some of you prosecuton whizzes give me your opinon on how to handle Section 103 rejections in which only one reference is cited?

In the present case the same reference is cited for Section 102 anticipation of most claims, but the reference does not disclose elements or limitations of other claims.  So the examiner simply changed to a Section 103 obviousness rejection using the same reference alone without combining with any other references.  The dreaded "obvious because I say it's obvious" rejection.

I don't believe there is any regulation that requires two or more references in a 103 rejection, but Donner certainly questions the tactic.  What it amounts to is a cheap 102 rejection unsubstantiated by the cited reference.

How do you handle these?


Title: Re: Single-reference obviousness rejections
Post by bjr on Nov 20th, 2006, 8:50am
It's certainly permissible for the Examiner to use one reference in a 103 rejection.  You stated that the reference does not disclose all of the limitations of the claims.  Without knowing the intricate details of your unique situtation, I would suggest that you argue that not all of the limitations are disclosed, explain why it would not be obvious to include those limitations in the cited reference, and highlight the benefits or advantages of those limitations that are disclosed in your specification.  Attack the cited reference.  

Title: Re: Single-reference obviousness rejections
Post by Isaac on Nov 20th, 2006, 9:12am

on 11/20/06 at 07:18:24, ThePatentGuy wrote:
Would some of you prosecuton whizzes give me your opinon on how to handle Section 103 rejections in which only one reference is cited?


I'll take a stab although I'm not a wiz.

There is nothing inherently wrong with such a rejection although statistically it might be true that most such rejections are suspect.  Assuming that the reference does show some (or all) of the elements of some claims, the Examiner is likely making a non reference argument concerning some remaining element.   For example the Examiner may using some principle such as "mere matter of design choice" or "official notice" to address a remaining element.

Attacking the 102 rejection is the best course.  However if the Examiner has taken official notice in order to address some dependent claim you would rather not address as of yet, you'll additionally also have to traverse the Official Notice now rather than later or risk the Examiner suggesting that you've admitted whatever is taken official notice of.

At least that's my take for now.  When the Supreme Court finishes with KSR vs. Teleflex which they are going to hear next week and may decide before the response/appeal to your next office action is due, all bets are off.


Title: Re: Single-reference obviousness rejections
Post by ThePatentGuy on Nov 26th, 2006, 9:56pm
Thanks for both for your help.  

As I understand it now.  Although Graham v. Deere, which led to the passage of Section 103, was an obvious to combine situation, not all Section 103 rejections are based on obvious to combine logic -- a single reference Section 103 rejection can't be combined with anything.  

I'm not sure whether KSR will throw any light on this or not. I thought the issue there was whether the PA must actually teach the combining of two references.  

Denis

Title: Re: Single-reference obviousness rejections
Post by Isaac on Nov 27th, 2006, 8:04am

on 11/26/06 at 21:56:02, ThePatentGuy wrote:
Thanks for both for your help.  

As I understand it now.  Although Graham v. Deere, which led to the passage of Section 103, was an obvious to combine situation, not all Section 103 rejections are based on obvious to combine logic -- a single reference Section 103 rejection can't be combined with anything.


Your recalling of history is a little off I think.  Graham v. Deere is an attempt to interpret existing statutory law (from 1952) which in turn was supposed to codify existing law.

I haven't seen the rejection of course, but I'm guessing that there was an acknowledgement (implicit or explicit) by the examiner that some aspect of the dependent claim was  beyond the teachings of the single reference.   Graham v. John Deere does not require that the material not shown in the reference be found in a second reference, but only that the extension beyond the teachings of the reference or references be obvious.  IMO, it's a mistake to assume that Graham v. John Deere is only about combining multiple references.

I think you are right that the decision in KSR v. Teleflex won't address whether rejections of this type are legitimate.  But the decision might affect how you will respond to 103 rejections.  


Title: Re: Single-reference obviousness rejections
Post by Wiscagent on Nov 27th, 2006, 10:09am
“... how to handle Section 103 rejections in which only one reference is cited?“

Presumably the office action states that “... it would have been obvious to one skilled in the art” to add a new element over the prior art.  

If the prior art discloses A+B+C and the application claims A+B+C+D, identify the potential disadvantages to adding element D.  Before the invention was made element D must have had some potential drawbacks.  What if the inventor used too much “D” or the wrong kind of “D” or added “D” in the wrong manner?

Highlighting the potential negatives associated with “D” helps to show that including “D” was an inventive step.

Title: Re: Single-reference obviousness rejections
Post by JimIvey on Dec 1st, 2006, 12:47pm
Sorry for my tardiness on this topic.  I've been out of the country for a couple weeks.

One of the things that's coming out in the comments here is that the examiner implicitly asserts some other prior art teaching for the difference between the prior art and the claimed invention.  I usually insist that they make the prior art teaching explicit -- assuming that the examiner has taken Official Notice and seasonably challenging the Official Notice and requesting supporting documentation.

Of course, sometimes "Official Notice" is proper.  For example, if the examiner asserted without documentary evidence that it's known to place an axle at the center of a wheel, challenging that would most likely be futile and perhaps counter-productive.  But, many times, I think examiners take shortcuts and say things like square vs. round is obvious without really proving it.

Sometimes, it seems that all an examiner must do to shift the burden of proof on to the applicant is to merely utter "it's obvious".

One other place I use the Official Notice approach is when the examiner combines references and provides no motivation to combine references for obviousness analysis other than making up some benefit of the combination.  Of course, I may learn when I catch up with my reading that the Supreme Court has removed that requirement.  If that's true, debating obviousness is going to get really complex and really expensive.

Regards.

Title: Re: Single-reference obviousness rejections
Post by Isaac on Dec 1st, 2006, 3:01pm

on 12/01/06 at 12:47:16, JimIvey wrote:
Of course, I may learn when I catch up with my reading that the Supreme Court has removed that requirement.  If that's true, debating obviousness is going to get really complex and really expensive.


Welcome back!

Scalia said a couple of days ago that teaching, suggestion and motivation is just "gobbledygook".   I was supposed to tell you before you started working on that OA on your desk. :)


Title: Re: Single-reference obviousness rejections
Post by JimIvey on Dec 4th, 2006, 1:31pm
Ah, so that's how you spell "gobbledygook".

I have two thoughts on Scalia's thoughts.

First, he's got to be the least rational of all Justices in recent history, perhaps in all history.

Second, I'll wait until the law actually changes before changing my practice.

Stepping back for a moment to the bigger picture, does anyone have any idea how practice would change if the TSM (teaching, suggestion, motivation) requirement is dropped?  So far, many of my obvious rejections seem to boil down to the examiner being unimpressed and declaring the invention "obvious" with little or no support for such a declaration.  

I'm betting that practice of presumptive obviousness will continue and it will be up to the Applicant to go through all the Graham elements to prove non-obviousness.  In other words, there will be a rebuttable presumption of obviousness as a practical matter.  In addition, since Graham sort of boils down to a totality-of-the-circumstances, I'll-know-it-when-I-see-it test, examiners will always prevail (being both opposition and arbiter) and all obvious rejections will ultimately be decided by the Board of Patent Appeals and Interferences, at least for those Applicants that don't run out of funds to prosecute.  Get ready to be reacquainted with the 10+-year appeals backlog....

Regards.

Title: Re: Single-reference obviousness rejections
Post by Guestman on Dec 4th, 2006, 5:22pm

Quote:
Stepping back for a moment to the bigger picture, does anyone have any idea how practice would change if the TSM (teaching, suggestion, motivation) requirement is dropped?


This will not happen.  Outside of an anticipation rejection under 35 USC 102 then properly made 35 USC 103 rejections are extremely valid.  If the prior art teaches or suggests the combination then no patent should be granted to the claims.  

The issue then is what to do when the prior art teaches the various elements, but not expressly their combination.

Title: Re: Single-reference obviousness rejections
Post by Isaac on Dec 5th, 2006, 8:13am

on 12/04/06 at 17:22:58, Guestman wrote:
This will not happen.  Outside of an anticipation rejection under 35 USC 102 then properly made 35 USC 103 rejections are extremely valid.  If the prior art teaches or suggests the combination then no patent should be granted to the claims.


I think the intent of the question was to explore what happens if a showing of TSM becomes unnecessary for a valid 103 rejection.   I don't believe any of us expect that previously valid rejections are going to become unacceptable.



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