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[OMG IP]

I hate going down the KSR highway if I don't have a solid "combination lacks all elements" argument.

But in a present case, I think I am going to use hindsight, too.

For example, my client has an application that states: a 3-pronged widget is beneficial for reasons X, Y, Z.

Independnet claim directed to a body with a 3 pronged widget.  Dependnet claim directed to a body with a second 3 pronged widget rotationally offset from the first one.

The Examiner asserts Ref A teaches 3 pronged widget, and Ref B teaches offset stuff, and concludes obvious to combine b/c reasons X, y, and Z.  HOWEVER, neither A nor B discusss X, Y, or Z.  Moreover, B teaches offset stuff because of reason Q.

Am I on the right track here?

as an addendum, what's even more irritating is that Ref B is expressly directed to a 4-pronged thingy....   

[Isaac]

I hate going down the KSR highway if I don't have a solid "combination lacks all elements" argument.

This logic is a bit off.  If you don't apply KSR, you're going to miss some opportunities to hold the examiner to the fact finding that KSR requires.  Also, KSR does allow a finding of obviousness even though not all of the elements can be found in the prior art, so even when an element is missing, you should at least pay some lip service to the KSR.

The Examiner asserts Ref A teaches 3 pronged widget, and Ref B teaches offset stuff, and concludes obvious to combine b/c reasons X, y, and Z.  HOWEVER, neither A nor B discusss X, Y, or Z.  Moreover, B teaches offset stuff because of reason Q.

Am I on the right track here?

Perhaps.  When the examiner uses reasons right out of the applicant's specification, we will suspect hindsight.  However, what you are really going to have to argue is that a PHOSITA would not have made the combination for those reasons absent reading your specification.  It is not enough to argue that the reasons are not mentioned in the references.

as an addendum, what's even more irritating is that Ref B is expressly directed to a 4-pronged thingy....   

All four-pronged thingies have three prongs

[khazzah]

I hate going down the KSR highway if I don't have a solid "combination lacks all elements" argument.

I think OMG is using "KSR highway" as shorthand for rationale-to-combine, so that OMG is really saying "I hate relying solely on arguments related to no-rationale-to-combine.

But in a present case, I think I am going to use hindsight, too.

I'll throw in my personal take on hindsight: it's not an argument, it's a conclusion. (See previous discussion here: http://www.intelproplaw.com/ip_forum/index.php/topic,14971.msg77424.html#msg77424)

The Examiner asserts Ref A teaches 3 pronged widget, and Ref B teaches offset stuff, and concludes obvious to combine b/c reasons X, y, and Z.  HOWEVER, neither A nor B discusss X, Y, or Z. 

KSR is clear that the rationale for combining does not have to come from the references themselves, so don't go down that road.

At the same time, the Examiner can't simply make up stuff. If he says that feature A improves fuel economy and you can't see how it's related to fuel economy, argue that he hasn't shown the feature provides the asserted benefit. I have a couple of posts on my blog about arguing about benefits, see http://allthingspros.blogspot.com/2010/11/bpai-obvious-reverse-benefit-different.html and http://allthingspros.blogspot.com/2010/10/takeaway-in-ex-parte-rykowksi-board.html

Moreover, B teaches offset stuff because of reason Q.

You make it sound like that's helpful to you. It's possible reason Q serves as a reason to combine in your case too, in which case that's bad for you.

as an addendum, what's even more irritating is that Ref B is expressly directed to a 4-pronged thingy....  

As Isaac pointed out, that doesn't help you at all in arguing does-not-teach.

It may or may not help you in arguing rationale-for-combining. Is there a reason why the feature provided by B works with 4-prong and not with 3-prong? If so, that's a reason not to combine. If not, then I say the 4-pronginess is irrelevant.

[OMG IP]

Thanks y'all.

Yeah, I missed including some helpul details in my OP by being brief, but I follow what you are both saying.  I have no problem arguing all day against obviousness -- the problem is that it is usually fruitless (given time, energy, and resources).  We very, very, very seldom desire to appeal, and I hate RCE's.  As an ex-examiner, I understand all too well the mindset and driver of the count/disposal process.

I digress....

As for 4 versus 3.  It's a matter of surface area.  Having 4 gives me more surface area coverage; more surface area coverage is beneficial, per the teaching.   Thus, removing surface area by going to 3 would seem to teach away (which I am also using as an argument to one degree or another), and lead me to believe the examiner is piecemealing by hindsight, especially given the fact that he/she is quoting my advantages/benefits and using against me.

In the end, the stronger argument (after amendments) will be lacks all elements.  We'll see how it plays out.  It was probably one of the more extensive responses I've written in the last year, and was working on it right up until Santa showed up...