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(Message started by: Bob's Uncle on Dec 29th, 2006, 12:38pm)

Title: motivation to combine
Post by Bob's Uncle on Dec 29th, 2006, 12:38pm
Hello,

I'm looking at a 103 rejection that says (paraphrasing):

Claim is rejected under 103(a) as unpatentable over ref. A, in further view of ref. B. It would have been obvious to one OOSITA to combine ref. A with ref. B with the motivation of achieving {the unique end results of my invention}.

Isn't it a little fishy for the examiner to cite a unique advantage of my invention as the motivation to combine ref. A and B? Is that proper under MPEP? Doesn't he have to provide something more concrete, or at least declare an official notice that it's obvious? How do I argue against this motivation; it seem like trying to climb a perfectly sheer, glass wall.

thanks for insights,

Bob's Uncle

Title: Re: motivation to combine
Post by Isaac on Dec 29th, 2006, 2:29pm

on 12/29/06 at 12:38:28, Bob's Uncle wrote:
Isn't it a little fishy for the examiner to cite a unique advantage of my invention as the motivation to combine ref. A and B?


Yes it does seem fishy under current law.    The examiner is supposed to get motivation from the references, from the problem to be solved, in the knowledge generally available to one of ordinary skill, etc.   It might happen that the results you say are unique are a generally known scientific principle.   I have no idea whether or not this is the case.

If I had a better argument than attacking the motivation to combine, I'd use that first.   If  I had to  attack the motivation, I'd challenge the Examiner on where the motivation he cites came from, traversing any Official Notice if necessary, and postulating that the Examiner used my spec impermissibly.


Title: Re: motivation to combine
Post by ChrisWhewell on Dec 29th, 2006, 3:19pm

on 12/29/06 at 12:38:28, Bob's Uncle wrote:
Hello,

I'm looking at a 103 rejection that says (paraphrasing):

Claim is rejected under 103(a) as unpatentable over ref. A, in further view of ref. B. It would have been obvious to one OOSITA to combine ref. A with ref. B with the motivation of achieving {the unique end results of my invention}.

Isn't it a little fishy for the examiner to cite a unique advantage of my invention as the motivation to combine ref. A and B? Is that proper under MPEP? Doesn't he have to provide something more concrete, or at least declare an official notice that it's obvious? How do I argue against this motivation; it seem like trying to climb a perfectly sheer, glass wall.

thanks for insights,

Bob's Uncle


In re Sernaker may be of help.

Title: Re: motivation to combine
Post by uh no on Jan 12th, 2007, 1:00am
No the examiner does NOT have to find a motivation from the references. The motivation can be from anywhere as long as it's reasonable.

Title: Re: motivation to combine
Post by Isaac on Jan 12th, 2007, 5:50am

on 01/12/07 at 01:00:20, uh no wrote:
No the examiner does NOT have to find a motivation from the references. The motivation can be from anywhere as long as it's reasonable.


Anywhere?  How about from the applicant's specification?

The motivation does not have to come from the references (e.g. general knowledge, from the problem to be solved, scientific principle), but "anywhere as long as it's reasonable" isn't correct under current law.

Title: Re: motivation to combine
Post by whatman on Feb 15th, 2007, 8:37pm
Unless, motivation is clearly established as at the date of the invention, the examiner's position could be looked at as using
"hindsight" which would be impermissible

Title: Re: motivation to combine
Post by Bill Richards on Mar 17th, 2007, 5:50am
The "teaching, suggestion, motivation" test used by the CAFC is currently being considered by the SCt.  A decision is expected soon.

Title: Re: motivation to combine
Post by ram on May 22nd, 2007, 7:49am
Hi I have a 103 rejection.

My invention is regarding duplicate checking of MAC address.

Cited reference A talks about duplicate checking of IPV6 address (network address)

Cited reference B talks about, in general...generation of MAC address..


Is it possible to argue that we cannot combine A and B because A talks about MAC address which is different from IP address taught by B?

Title: Re: motivation to combine
Post by JimIvey on May 22nd, 2007, 8:14am
Sure, it's possible to argue anything.  However, it's unlikely that merely pointing out that IP addresses aren't MAC addresses is probably not enough.  You would do better to show why something applicable to an IP address is not applicable to a MAC address -- or at least why one of ordinary skill would believe that before seeing your application.

Regards.



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