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Author Topic: Function in Ref A must benefit from Ref B?  (Read 1973 times)

dbmax

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Function in Ref A must benefit from Ref B?
« on: 02-26-11 at 02:13 pm »

Is there any case citation that states generally that in order to show obviousness (or at least motivation), the examiner must identify some function in the first reference that could benefit from incorporation of elements of the second reference?

IMHO this should be a requirement for a prima facie case.

(I could extrapolate Ratti, but I'm looking for something a bit more on point)

Thanks

db

« Last Edit: 02-26-11 at 10:29 pm by dbmax »
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khazzah

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Re: Function in Ref A must benefit from Ref B?
« Reply #1 on: 02-27-11 at 09:34 am »

Is there any case citation that states generally that in order to show obviousness (or at least motivation), the examiner must identify some function in the first reference that could benefit from incorporation of elements of the second reference?

My reading of the MPEP says an improved function is not required:

Quote
MPEP 21430.01
In Ruiz v. A.B. Chance Co., 357 F.3d 1270, 69 USPQ2d 1686 (Fed. Cir. 2004), the patent claimed underpinning a slumping building foundation using a screw anchor attached to the foundation by a metal bracket. One prior art reference taught a screw anchor with a concrete bracket, and a second prior art reference disclosed a pier anchor with a metal bracket. The court found motivation to combine the references to arrive at the claimed invention in the "nature of the problem to be solved" because each reference was directed "to precisely the same problem of underpinning slumping foundations." Id. at 1276, 69 USPQ2d at 1690.

The case snippet suggests that as long as both refs address the same problem, combination is proper.

Note that I haven't read Ruiz to see if it really stands for this proposition. Nor have I thought about how/whether pre-KSR Ruiz fits with KSR.
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Karen Hazzah
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dbmax

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Re: Function in Ref A must benefit from Ref B?
« Reply #2 on: 02-27-11 at 03:36 pm »

Thanks K,

I had seen the reference to Ruiz in the MPEP, but had not followed up on it.

As it turns out, that case points to a prior proceeding where the the CAFC had remanded Ruiz with instructions to perform a (pre KSR) Graham analysis. (Ruiz, 234 F.3d at 660)

Following up on that case I found  Dystar 464 F.3d 1356, which, although finding obviousness, provides a wealth of insight into recent rulings on the subject of motivation and suggestion. (Apparently in a vain attempt to school SCOTUS on TSM considerations prior to its KSR ruling)

The suggestion to combine may be found internally or externally with regard to the references. I'm still looking for that elusive magic bullet (like Ratti) that better defines the requirement for internal suggestion.

db

PS: I find it unfortunate that the court refers imprecisely to the "problem to be solved" where "function" might give better direction.
« Last Edit: 02-27-11 at 07:34 pm by dbmax »
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