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(Message started by: helene_eur_att on Nov 6th, 2007, 11:13am)

Title: How assess obviousness?
Post by helene_eur_att on Nov 6th, 2007, 11:13am
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

Title: Re: How assess obviousness?
Post by MattB on Nov 6th, 2007, 11:55am
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!

Title: Re: How assess obviousness?
Post by Isaac on Nov 6th, 2007, 12:20pm

on 11/06/07 at 11:13:20, 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

Title: Re: How assess obviousness?
Post by alconada on Nov 7th, 2007, 2:20pm
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

Title: Re: How assess obviousness?
Post by Wiscagent on Nov 7th, 2007, 3:50pm
"... 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.

Title: Re: How assess obviousness?
Post by Isaac on Nov 8th, 2007, 8:09am

on 11/07/07 at 15:50:36, Wiscagent wrote:
No.  You have to defeat the examiner's argument.


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.


Title: Re: How assess obviousness?
Post by Wiscagent on Nov 8th, 2007, 11:25am
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.

Title: Re: How assess obviousness?
Post by helene_eur_att on Nov 9th, 2007, 12:06pm
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!

Title: Re: How assess obviousness?
Post by Isaac on Nov 9th, 2007, 6:08pm

on 11/09/07 at 12:06:43, 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?


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.


Title: Re: How assess obviousness?
Post by biopico on Nov 9th, 2007, 9:56pm

on 11/09/07 at 18:08:25, 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.


gobbledygook or gobbledegook or gobbledegoo



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