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Author Topic: Obviousness: Argument to Process  (Read 380 times)

patag2001

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Obviousness: Argument to Process
« on: 10-09-10 at 03:47 pm »

In the second office action, the examiner says my structure is rejected as obvious because of A in view of B.

Reference A clearly describes the method of making their structure.

In response to the above rejection, the argument describes how the process of A in view of B cannot make my invention, because the created device or result of A in view of B cannot be removed from the mold.

Examiner says argument to a process is moot, because the claim is to a structure.

Any thoughts  from the experts on this?

Many Thanks!
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ManOfManyBadIdeas

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Re: Obviousness: Argument to Process
« Reply #1 on: 10-09-10 at 08:15 pm »

Obviously I am not an expert, but I'll say what I think anyway. On the surface, the examiner is
right. Since you are patenting the structure, it's the most important what features of the
structure references A and B teach, not whether they teach a suitable way to produce such
a structure. However, if A describes a method of production that isn't suitable for creating
the combination structure, I think the proper argument would be that A teaches away from
making such a combination (argument against motivation to combine). Since you are not
patenting a way to manufacture the structure, I am assuming that it's obvious. If that
assumption is correct, the examiner has to weigh the cons and pros: how easy it is to pick
a manufacturing method different from A for combination structure A+B
for a POSITA in the field of invention of reference A (since it's the basis of the combination
structure)? It would be nice if other obvious manufacturing options do not exist for a POSITA in
either of fields A or B.
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Man of Many Bad Ideas (and a few good ones)

Disclaimer: Any post made by me is only an opinion, not an advice. Considering that opinion keep in mind Disclaimer 2.
Disclaimer 2: I am not a lawyer.
 



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