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[dab2d]

I just got a response and states: it would have been obvious to modify X with Y "for simplicity." How can you argue against that... ever.

Isn't that what most inventions are (that obtain the same result)? They simplify the prior art.

Any suggestions on how to argue this.

I also got another one of the 103's where the motivations to combine is that one would merely want to combine. It would have been obvious to modify W (a chair) with Z (a Laser) to have a W with Z (a Chair with a Laser).

[klaviernista]

Unless it is clear on its face where the references support such arguments, I typically respond like a two year old.  More specifically, I ask the question, "why?"  "Why" would one of ordainry skill combine a chair with a laser?  "Why" do the references suggest that combiantion, instaed of some other combination that is more clearly suggested and which doesn;t fulfill the claims?  "Why?" would a POOSA combine A with B, when A teaches X, and B teaches -X (teaching away argument).  Etc.  In sum, I attack the credibility of the argument by leveraging counterarguments/counterpositions that highlight just how much of a leap of logic the examiner has taken.

The "why" response can be used to great effect in responding to a "for simplicity" argument as well.  Namely, "If it were obvious to POOSA to combine A and B "for simplicity," than why does none of the art relied on by the Examiner explicitly teach such the simpler design articulated by the Office?"  Engineers/persons of skill in this field are generally interested in simplifying their designs, i.e., finding the "lowest common denominator."  Why then does the prior art fail to teach or suggest the "simpler" design asserted by the Office, and instead teach a "more complex" design?"   [Insert argument articulating why the references cited chose their particular paths/configurations - often found in the text of the references themselves.]  In sum, one way to attack the "simplicity" argument is to argue that the references cited actually teach away from the examiner's position by, in fact, teaching a more complex design.



 

[JimIvey]

Any suggestions on how to argue this.

Sure. 

Did the examiner at least allege that the ordinary artisan would have known that the combination would simplify at the time the invention was made?

Even if alleged, what showing did the examiner make?  There must be some showing or at least Official Notice, right?

Would the combination actually be simpler?  Is the examiner correct that the combination would at least provide the proffered combination?

Is simplification an actual motivation in that particular technology? 

Is manner of the combination known?  In other words, would it have been known (or at least obvious) how to combine X and Y to achieve simplification at the time the invention was made?

Those are some of the questions I'd start with.  Everyone seems to forget the "at the time the invention was made" part.  It's important.

Regards.

[dab2d]

I will say that when I was an Examiner, I thought a lot of the criticisms of Patent Examiner's was unfounded. The people in my AU were pretty good and knowledgeable. However, in the past few weeks, my experience has left me flabbergasted.   

[ChrisWhewell]

I just got a response and states: it would have been obvious to modify X with Y "for simplicity." How can you argue against that... ever.

Isn't that what most inventions are (that obtain the same result)? They simplify the prior art.

Any suggestions on how to argue this.

I also got another one of the 103's where the motivations to combine is that one would merely want to combine. It would have been obvious to modify W (a chair) with Z (a Laser) to have a W with Z (a Chair with a Laser).

As a first step, I'd get agreement as to what "simplicity" means in the context used.  Is it a state of being ?   Is it equivalent to a process for simplification ?   I'd ask just what exactly "simple" means, in the exact context, as applied to a person of ordinary skill in the art (AFTER their skill level was resolved, as required).   I'd be inclined to argue that the word "simplicity" is vague and indefinite and that its use doesn't afford the Applicant an opportunity to answer towards advancement of prosecution, and request clarification.  i.e., unless there is case law that states what simplicity means, within the Graham analysis.   

But, I admit I only stumbled in, and apologize for the intrusion.

[ManOfManyBadIdeas]

In my limited understanding this is a typical case of examiner failing to present a prima facie case. I think to accomplish that the examiner not only has to present evidence (references) but also clearly laid out flawless arguments and explanations of how that evidence renders the invention obvious. Without much detail supplied such an argument is "it's obvious because it is", which I think everyone will agree is not much of an argument. Unless of course it IS obvious when looking at the references, in which case of course one doesn't need much of an argument. What's clearly missing is the description of HOW the references are to be combined. Sometimes that's obvious, but most of the time it's impossible to do so without picking a limited set of features from one reference. Sometimes from both. Each of these choices has to be supported by explicit teaching/motivation, or rational underpinning, that should not in any way resemble the underpinning laid out in the specification (otherwise it's hindsight). Theoretically one could simply respond to such OA with one paragraph saying that examiner hasn't presented a prima facie case, and ask the examiner to expand his argument. Which would be giving the examiner a slap in the face, which may not be entirely undeserved, but the undeserved part is impossible to judge without the unattainable knowledge of all of the circumstances, so perhaps it's best to avoid it. It would also mean having to continue prosecuting the application with the examiner who is pissed at you. It might be a better choice to instead make the examiner's job for him/her. Since the blanks are left unfilled, you have to identify them as such, and point out that without guidance from the examiner you are left to guess, and your best guess is to combine references in such and such way, and then argue against yourself. Given that much freedom I trust it you should have no problem beating yourself up so to speak, and showing that the application is to be allowed.

[ManOfManyBadIdeas]

As a first step, I'd get agreement as to what "simplicity" means in the context used.  Is it a state of being ?   Is it equivalent to a process for simplification ?   I'd ask just what exactly "simple" means, in the exact context, as applied to a person of ordinary skill in the art (AFTER their skill level was resolved, as required).   I'd be inclined to argue that the word "simplicity" is vague and indefinite and that its use doesn't afford the Applicant an opportunity to answer towards advancement of prosecution, and request clarification.  i.e., unless there is case law that states what simplicity means, within the Graham analysis.   

But, I admit I only stumbled in, and apologize for the intrusion.

I think it's a fair game to ask this question. But in the end, is it not just as unproductive towards the advancement of prosecution as the examiner's incomplete argument? Do you think it would be a better way to instead define what the examiner left undefined in a way that is favorable to you?

[ChrisWhewell]

I wouldn't attempt to define an un-defined word by another, unless I had a few dictionary's definitions for instances in which  the word in question was defined concretly, but if you look at some case law you find that dictionary definitions can sometimes be unworthy.  I don't intend to be unkind but have nothing further to add to my posting, which ought only be considered as food for thought, as that was my intent in posting it.  I'll add that its my preference in general when I'm unclear by what a person means in their words, for their own personal interpretation of the word, then work off of that, instead of forcing my own. 

[khazzah]

I just got a response and states: it would have been obvious to modify X with Y "for simplicity." How can you argue against that... ever.

I agree what others have said here. This conclusory reason to combine doesn't amount to a prima facie case, but it's probably counterproductive to say that and stop there. So you might instead try to force the Examiner to explain himself by asking some of the questions mentioned here.

I think ManOfManyBadIdeas expressed that tack pretty eloquently:

Since the blanks are left unfilled, you have to identify them as such, and point out that without guidance from the examiner you are left to guess, and your best guess is to combine references in such and such way, and then argue against yourself.

Some folks don't like putting this much in the record, but I find that the best chance of getting a better explanation is to say "Examiner appears to be saying X and here's why X is wrong."

[bald & chained]

The Examiner is clearly wrong, for all the reasons the others have stated above.  That said, I wonder about the likelihood of immediately winning this obviousness argument with the Examiner, no matter how well you argue your position.  In my experience (EE/CS arts), once examiners make a 103 combination, they internally feel that the combination is justified, even if they can't articulate it on paper.  So it's quite possible that you won't get far with this examiner as he is clearly a hack, leading to appeal and protracted prosecution.

Do you have any claim limitations you can argue that are clearly missing from both references in addition to arguing the motivation to combine ?  That argument will be more persuasive to the Examiner.

[dab2d]

The Examiner is clearly wrong, for all the reasons the others have stated above.  That said, I wonder about the likelihood of immediately winning this obviousness argument with the Examiner, no matter how well you argue your position.  In my experience (EE/CS arts), once examiners make a 103 combination, they internally feel that the combination is justified, even if they can't articulate it on paper.

This is kind of my thought as well. The problem is that the Examiner has made up his mind and has used a lacking motivation. Now the lines are set. I am going to have to do a phone interview and try and argue that the motivation is lacking.

Thanks for all of the suggestions. I really got the ball rolling on my end.