Obviousness: Process Argued & Claim to a Structure

[patag2001]

In my response, I used an argument based on a process.  The examiner rejected this response saying the argument is moot for the claim is to a structure.  In the rejection “A” in view “B”, the process of “A” makes a non-functional structure of "B".

In determining to build an argument, I looked at the commonly used argument of “references are not properly combinable if there intended function is destroyed”.  I studied this, and determined the function can only be destroyed if the process of A is used. 

There are really no good arguments to a structure.  The art is analogous.  There is no basis not to combine (only the process of A).

Is it worth moving to an RCE?

[JimIvey]

I'm not sure I'm following, but it sounds like the examiner has rejected your structure claim based on application of a process A to a structure B.  It also sounds like application of process A to structure B defeats the primary function served by B -- i.e., that application of a given process to a hammer will make the hammer no longer suitable for driving nails.

If I understand correctly, I think you have a good argument to overcome the rejection.  Application of process A to structure B must be obvious.  In other words, there must be some reason to apply process A to structure B -- something advantage that can be reasonably expected to come from the combination.  Destroying the reason a thing exists seems counterintuitive at best.  If the examiner has failed to provide any reason to apply process A to structure B other than it could be done, the examiner has failed to make a prima facie case for obviousness.

Regards.

[patag2001]

Thanks Jim!

Here is more detail.

Reference A is a metal device having a continuous ____ protruding outward from a XX body and along the entire length of the XX body.  A’s claim is to a structure and a process.

Reference B is a plastic device having a plurality of short discrete____ along a line protruding outward from a XX body.  B’s claim is to a structure.

The invention is a claim to a metal device having a plurality of short discrete ____ along a line protruding outward from XX body.  The claim of the invention is written to a structure.

The invention is rejected as obvious by reference A in view B.

The argument to the rejection focused on the method taught in reference A.

When B is made using A, the device cannot be removed from the mold.

Hence, the structure of the resulting device from A in view B includes a mold shrouding the created device and cannot be removed without destroying the mold and device cannot function within the mold.

The examiner rejects the argument, because the argument is directed toward the process of A.

I’m not clear how to proceed.

[JimIvey]

First, what A and B claim is irrelevant here.  The inquiry is whether some obvious combination of the specifications of A and B would infringe your claims.

If your argument is that B can't be made of metal in the particular way described in A, that might not be good enough. 

On the other hand, if your argument is that B can't be made of metal at all, or at least without the benefit of the teachings of your application, then you have a good argument. 

Somewhere in the middle is the argument that neither A nor B teach how one could possibly make B of metal, thus the record does not support a prima facie argument for obviousness (i.e., the record does not make a complete showing that the ordinary artisan could have made a metal B and that it was obvious to do so).

Regards.

[patag2001]

The metal/plastic distinction was necessary to overcome 102 in the previous action, and I narrowed my claim to a metal structure.

I thought the whole body of information of the prior art was fair game to argue.  In particular, the result of the combination does not function, because the process taught by reference A.

Paraphrasing the essence of the examiner’s response:

…the structure of the claims is taught by the combination, not the process of making……

Further, the examiner says:

“If an arrangement substantially identical to that of the claimed and disclosed invention won’t work as argued by Applicant, a potential 35 USC 112, 1st paragraph operability issue may have arisen as this would imply that the Applicant’s invention does not work as disclosed either.”

IF.....IF!!!  The details of understanding my argument requires visualization of 3D interlocking structure.  I'm not sure my response was fully communicated  and understood by the examiner, or is there a flaw in my thinking?

Thanks!

[khazzah]

The argument to the rejection focused on the method taught in reference A.

Paraphrasing the essence of the examiner’s response:
…the structure of the claims is taught by the combination, not the process of making……

I thought the whole body of information of the prior art was fair game to argue. 

Sure it is. But only when it's relevant. You're not claiming a method, so the teachings about the method are irrelevant.

Also, even if looking to the teachings about the method was relevant, perhaps you're not taking into account modifications that a POSITA would know how to make. You say the ref teaches that the plastic device can't be removed from the mold. Would a POSITA know how to modify the process so this wasn't a problem? If so, that's an indication of obviousness.

In other words, don't focus solely on "bodily incorporation" of a feature from Ref B into a device from Ref A. Obviousness analysis under KSR takes "account of the inferences and creative steps that a person of ordinary skill in the art would employ".

[JimIvey]

I thought the whole body of information of the prior art was fair game to argue.  In particular, the result of the combination does not function, because the process taught by reference A.

Karen's right here.  The entirety of the reference is fair game.  However, the examiner is free to use only part of the reference.

Whether A teaches a method of manufacture that could not possibly result in a metal B is irrelevant.  What's relevant is whether the ordinary artisan would have found it obvious to have used all or part of A and all or part of B to make something that would have infringed your claim at the time you made your invention.

Paraphrasing the essence of the examiner’s response:

…the structure of the claims is taught by the combination, not the process of making……

Further, the examiner says:

“If an arrangement substantially identical to that of the claimed and disclosed invention won’t work as argued by Applicant, a potential 35 USC 112, 1st paragraph operability issue may have arisen as this would imply that the Applicant’s invention does not work as disclosed either.”

What the examiner appears to be saying is that, if your argument is that there's no way to make B out of metal, then you're claiming something that you haven't properly enabled.

Whether the examiner is correct depends on your specification.  If a metal B could not have been made using techniques within the ordinary level of skill in the art(s) at the time your invention was made, then you will have had to teach the ordinary artisan how to make one.

The answer in overcoming that sort of rejection is to show that your specification made the impossible possible (at least for the ordinary artisan).

IF.....IF!!!  The details of understanding my argument requires visualization of 3D interlocking structure.  I'm not sure my response was fully communicated  and understood by the examiner, or is there a flaw in my thinking?

Hard to say at this point whether there's an error in your thinking.  If you think that the examiner is limited to the particular method of manufacture described in A, then, yes, there's a flaw in your thinking.  However, it's entirely fair that you require that the examiner show how a metal B could have been made using only ordinary skill prior to your invention.  If you think that how to make a metal B was no mystery (even though it could not be made with the process of A), then that challenge would be pointless.

If there really is some reason that a metal B could not have been made using only ordinary skill until you told the world how to do it, then your thinking may be sound and you'll just have to make that point.

If you think a little show-and-tell with the examiner to explain the 3D modeling complexities, an interview might be worth the effort.

Regards.

[patag2001]

Karen and Jim,

Your insight is helpful.

Thanks!!