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[dab2d]

This is not the first time I got this rejection, but typically it is for a dependent claim that does not matter unless the Independent one is allowed.

However I now have it against an independent claim.

How close do these materials have to be?

Can you argue that somehow that the suitability had to be known? It is a cutting edge material whose properties and available structures are still being discovered.

How well known does the material structure have to be.... what if the material was the subject of an application having a filing date about 3 years before the application was filed (published maybe 2)

Are there any arguments that are to be made?

[dab2d]

After looking at my problem from another angle, I have another question.

What is a material?

Say that the prior art is cotton, but the invention calls for nylon that is woven in a particular manner that allows it function at a greater level than the cotton. Additionally, nylon would not work if it was purely substituted for the cotton. 

Is the "material" selected the nylon, or the nylon woven in a particular manner? Even if the woven nylon is known, is it a material?

Basically does "material" include the composition and structure.

Has anyone ever tried to make this distinction?

[Wiscagent]

How well known does the material structure have to be.... what if the material was the subject of an application having a filing date about 3 years before the application was filed (published maybe 2)

If the examiner can cite even one publication that teaches an element of a claim, then the element was known.  It doesn't matter how well known.  So long as the publication was available to the public before the priority date of the application, the publication is prior art.  But that doesn't necessarily mean that the prior art is applicable to the claim.

[Wiscagent]

Say that the prior art is cotton, but the invention calls for nylon that is woven in a particular manner that allows it function at a greater level than the cotton. Additionally, nylon would not work if it was purely substituted for the cotton. 

Is the "material" selected the nylon, or the nylon woven in a particular manner? Even if the woven nylon is known, is it a material?

Basically does "material" include the composition and structure.

"The invention calls for nylon."  But specifically, what is claimed?  The critical comparison is between what is claimed and what the prior art discloses.

If the claim calls for nylon, does the specification indicate that there is something special about nylon in particular?  If the spec makes that point, then it is more difficult for the examiner to argue that based on the prior art disclosure of cotton, nylon would have been obvious.  For many applications cotton, nylon, hemp, and polyester are interchangeable.  For other applications those materials are definitely not interchangeable. You need to argue that there is something special about nylon for your invention, not an obvious substitution.

[dab2d]

The invention calls for nylon."  But specifically, what is claimed?  The critical comparison is between what is claimed and what the prior art discloses.

It it claims the woven nylon. Nylon without the structure of the special weaving would not work in place of the cotton. But the woven nylon is known, but not for this purpose.

I am trying to get out of a selection of a known material rejection. Do you consider a material to include composition and structure or just composition, in combating the known material 103 motovation. 

 

[ManOfManyBadIdeas]

The invention calls for nylon."  But specifically, what is claimed?  The critical comparison is between what is claimed and what the prior art discloses.

It it claims the woven nylon. Nylon without the structure of the special weaving would not work in place of the cotton. But the woven nylon is known, but not for this purpose.

I am trying to get out of a selection of a known material rejection. Do you consider a material to include composition and structure or just composition, in combating the known material 103 motovation.

I would say that both the structure and the composition matter, at least as long as they affect the properties of the material. Material with different properties = different material. But you seem to be suggesting that the material (both the composition and the structure) is known, just not applied in the art. Honestly I do not know how nonobvious is picking this different material, but if the only reason is that the practitioners in the art are not aware of the material/its properties then I think it's hopeless.

[dab2d]

That is my fear... I am trying to make the best of a bad situation. Thanks for your help

[ManOfManyBadIdeas]

I shouldn't say it's totally hopeless, but one just have to look for any possible reason that would cause a POSITA to overlook this material. For example, the property that makes the material useful in the claim is not considered to be one of the primary, marketed properties of the material. Or the material doesn't fit with other materials that are utilized in the role (the claimed material is a film, used instead of cloth materials).

[khazzah]

The selection of a known material based on its suitability for its intended use

Are there any arguments that are to be made?

Did the Examiner perform any fact finding or analysis, or did he merely cite case law?

I've seen a number of BPAI decisions which smacked the Examiner down for using a per se obviousness rule. See, e.g.,

The Examiner position is that Tsai ’564 renders claim 36 obvious because one of ordinary skill in the art would have placed the air blower of Tsai ’564 at any desired location by a rearrangement of parts according to In re Japikse, 181 F.2d 1019 (CCPA 1950). ... Further, when determining whether a claim is obvious, an Examiner must make “a searching comparison of the claimed invention – including all its limitations – with the teachings of the prior art.” In re Ochiai, 71 F.3d 1565, 1572 (Fed. Cir. 1995). Reliance solely on a per se rule of obviousness is improper. Id.
http://des.uspto.gov/Foia/ReterivePdf?system=BPAI&flNm=fd2010006848-12-13-2010-1

The Examiner also takes the position that modifying the length of the platform portion “would have been an obvious matter of design choice … since such a modification would have involved a mere change in the size of the component.” ... We note that the jurisprudence when used in this manner amounts to a per se rule of unpatentability. Reliance on per se rules of obviousness is legally incorrect and is inconsistent with section 103, which, according to Graham v. John Deere Co., 383 U.S. 1, 17-18 (1966) and its progeny, entitles an applicant to issuance of an otherwise proper patent unless the PTO establishes that the invention as claimed in the application is obvious over cited prior art, based on the specific comparison of that prior art with claim limitations. In re Ochiai, 71 F.3d 1565, 1572 (Fed. Cir. 1995).
http://des.uspto.gov/Foia/ReterivePdf?system=BPAI&flNm=fd2009009311-12-07-2010-1

I don't think this sort of argument will persuade most Examiners, and I probably wouldn't appeal to the Board if this was my only argument ... but I'd definitely make this one of my arguments.

[dab2d]

Thanks kh and mmbi.

I really think that I am going to have to go to secondary considerations on this one.

When this invention came out, there were articles published everywhere, including international magazines like the Financial times. One respected scientific journal called it the research highlight of the year in this field.   

Does anyone have experience in trying to make those arguments.