Overcome Obviousness: Claim Narrowing

[patag2001]

Is the following argument strong enough to overcome a 103 rejection of A in view of B.

A teaches S shapes not arranged to Q and made of W.

B teaches Y and Z shapes arranged to Q and made of P.

My claim is narrowed to remove X and Z shapes and only include G shapes arranged to Q and made of W.

Reference A and B either alone or in combination do not teach G shapes.

Hence, A in view of B is overcome.

Will the examiner be within bounds to come back and say a POSITA would know to use G shapes and reject the amendment?

Many Thanks!

[JimIvey]

Will the examiner be within bounds to come back and say a POSITA would know to use G shapes and reject the amendment?

First, just a semantic matter.  The examiner won't reject your amendment (unless it's procedurally deficient in some way), but the examiner can reject your claims as amended.

As for what the examiner will say, it's impossible to say here.  If the ordinary artisan would know to use the G shapes, the examiner will probably say so -- perhaps even if not.

What-will-happen questions are just too fact-specific to answer here out of context.

Regards.

[khazzah]

Reference A and B either alone or in combination do not teach G shapes. Hence, A in view of B is overcome.

Will the examiner be within bounds to come back and say a POSITA would know to use G shapes and reject the amendment?

Are you asking if the Examiner needs to find a *reference* that teaches G shapes, or can he just allege "a POSITA knows about G shapes"?

The Examiner is allowed, in some cases, to allege "a POSITA knows" without providing a reference. This is the doctrine of Official Notice. It's discussed in the MPEP.

[ManOfManyBadIdeas]

I do not think the fact that feature G was part of the claim, and was not objected to
by the examiner, will in any way hinder the examiner in objecting to it at any point later
during the prosecution, whether the claim is amended or not.

[patag2001]

Is this a reasonable argument for the examiner under the doctrine of official notice? 

Even though the G shape is different from the disclosed shapes X and Y of references A and B, the applicant has not convinced the examiner that the G shape provides any clear advantage over the X and Y shapes. 

Further, any applicant could continue to add new shapes without any clear utility or advantage.  Hence, without any proof (e.g., crush strength) to the advantage of the G shape, the application is rejected.

[khazzah]

Is this a reasonable argument for the examiner under the doctrine of official notice? 

Even though the G shape is different from the disclosed shapes X and Y of references A and B, the applicant has not convinced the examiner that the G shape provides any clear advantage over the X and Y shapes. 

A commonly known shape would be appropriate for Official Notice -- that's what O.N. is for, things that are commonly known. I'd say that O.N. is not appropriate for a weird shape, precisely because that weird shape wouldn't be commonly known.

Does the Examiner even need Official Notice? This sounds like to me one of those "single reference 103" rejections where the Examiner doesn't use a reference -- or Official Notice -- to missing element, and instead uses a rationale or a benefit like "design choice" or "common sense" to fill in the gap.