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(Message started by: michael73 on Aug 13th, 2007, 4:45am)

Title: Arguing unobviousness
Post by michael73 on Aug 13th, 2007, 4:45am
Hi,

I am arguing unobviousness of my invention based on the following line of reasoning (like the "patent it yourself" book's sample response, which seems to fit my case pretty well):

1. Combination proposed by OA not taught, suggested or motivated by cited references

2. Proposed combination inoperable

3. Proposed combination does not show all the novel features of my invention

4. Novel features are unobvious because they produce new and unexpected results

Have a couple of questions, maybe someone can help me?

a) I am a little confused about point 4: I guess I argue unexpected results because when I argue novel features, I should also argue unobviousness (102+103 approach, says my book). So, I dont argue "even if prima facie case of obviousness is conceded, my invention is still unobvious because of unexpected results"?! would that be a further argument 5.? Or could I combine the two "4. ... And even if prima facie case were conceded, which it is not, it is still not obvious because..."??

b) When I talk about the unexpected results, I assume I do not supply the Examiner with a motivation why someone would try the combination, because if a result is unexpected then it cant motivate by definition?

Thanks for your help!!
Michael

Title: Re: Arguing unobviousness
Post by michael73 on Aug 13th, 2007, 8:21am
Unobviousness is mind-twisting...

I am having second thoughts regarding my previous points 3. and a)...

Does it matter at all whether my claim limitation has novel features over the prior art combination? By rejecting it based on 103, doesnt the OA imply that I have passed 102?

confused... Michae


Title: Re: Arguing unobviousness
Post by JimIvey on Aug 14th, 2007, 9:02am
First, it's not clear to me that you understand that you can use any one of (1)-(4) -- you don't need all of them.  

Of those, 3 is the strongest in my opinion -- I try to use it whenever possible.  It usually plays out like this:

Claim 1: A+B+C

The Examiner cites Reference 1 as teaching A+B and cites Reference 2 as teaching C and says their combination is obvious.  I rebut that Reference 1 teaches B (examiner misread Reference 1 or took language out of context).  Since Reference 1 doesn't teach B and Reference 2 doesn't teach B, the combination of References 1 and 2 doesn't teach B, "assuming arguendo that such combination is properly motivated in the prior art" (preserving that argument for a later date).

Arguing that a single reference doesn't teach B is a 102 argument.  Arguing that none of the references of a combination teach B is a 103 argument.

Regards.

Title: Re: Arguing unobviousness
Post by michael73 on Aug 14th, 2007, 4:05pm
Thanks Jim!

I do understand that I can use them individually. I assumed that it would be better to shoot as many arguments back to the examiner because next OA will be final?

Regarding your A+B+C example, I assume omission counts as well? The prior art combination shows 5 elements, I can perform the function with "three and only three" as recited in my claim.

I think (hope) I understand now: Proving to the examiner that B is not shown in the combination, has nothing to do with novelty. 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?

Thanks again.. Michael

Title: Re: Arguing unobviousness
Post by still_studying on Aug 14th, 2007, 7:50pm
Michael, I saw your other post today regarding changing your claims.  I assume that that's the same Office action you are talking about here.

If arguing (3) requires you to limit your claims further, I'd suggest arguing (2), since by showing that the proposed combination doesn't function, you should at least get another chance out of the examiner.  You need to be careful not to argue yourself into a very narrow patent, which it looks like you're doing in the other thread.

Arguing (1) alone is iffy nowadays, since TSM got chewed up a bit by a recent Supreme Court case.  It's apparently still usable, but it's no longer the sole standard.  Better to use it in combination with another argument.

Title: Re: Arguing unobviousness
Post by JimIvey on Aug 14th, 2007, 10:27pm

on 08/14/07 at 16:05:26, 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.

Title: Re: Arguing unobviousness
Post by michael73 on Aug 15th, 2007, 11:49am
Just woke up from the meditative state  :o 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.

Title: Re: Arguing unobviousness
Post by JimIvey on Aug 15th, 2007, 12:56pm
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.

Title: Re: Arguing unobviousness
Post by michael73 on Aug 15th, 2007, 2:23pm
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



Title: Re: Arguing unobviousness
Post by Jimb0v on Aug 23rd, 2007, 1:03pm
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!

Title: Re: Arguing unobviousness
Post by Isaac on Aug 23rd, 2007, 1:24pm

on 08/23/07 at 13:03:40, Jimb0v wrote:
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?


For the particular argument you are using, it does matter which one is the primary reference.   The examiner's rejection does not rely on proper function of the secondary reference.

I would distinguish the "destroy the function of " argument from "teaching away" argument.   Those are separate lines of reasoning.


Title: Re: Arguing unobviousness
Post by Jimb0v on Aug 23rd, 2007, 1:45pm
Wow.  What a fast response.

Is there anywhere I can get a refresher on the differences between "teach away" and "destroy the intended function".   They seem very similar to me.

Reference A teaches away from reference B.
Reference A when combined with reference B dsetroys the intended function of reference B.

Isn't that saying essentially the same thing?

Also, isn't there another agument that states that Reference A teaches away from the invention instead of from the reference itself?



Title: Re: Arguing unobviousness
Post by JimIvey on Aug 24th, 2007, 2:44pm
No, it's not the same thing.  Teaching generally refers to the explicit language of the reference.

A reference describing a boat and warning you to not drill a hole in the hull below the waterline teaches away from drilling a hole in the hull below the waterline.

A secondary reference teaches drilling holes through fiberglass; combining that reference with the boat reference such that a hole is hypothetically drilled through the hull below the waterline would seem to destroy the function of the boat, namely, floating.

Regards.



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