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Author Topic: Prepping for KSR in the application  (Read 2683 times)

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Prepping for KSR in the application
« on: 08-01-11 at 08:03 pm »

If X and Y are concepts (not art), then is it wise to include in your initial application a reason of why X and Y are not obvious if "X in view of Y" are expected to come up in an OA?

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khazzah

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Re: Prepping for KSR in the application
« Reply #1 on: 08-01-11 at 08:49 pm »

If X and Y are concepts (not art), then is it wise to include in your initial application a reason of why X and Y are not obvious if "X in view of Y" are expected to come up in an OA?

If X and Y are not prior art, then I see absolutely no reason to explain why the combination of X and Y is not obvious. Since by definition ("not prior art") X and Y can't be used in an obviousness rejection.

Perhaps your point is more subtle. Perhaps you when you say "X and Y are not art" you mean something like:

  • I know that widgets are out there, though I don't have a specific reference in mind
  • I know that foobars are out there, though I don't have a specific reference in mind

If that's what you mean ... then I agree that it's important when drafting the app to have an understanding of any technical reasons why the combination of a widget and a blodget is not obvious.

Should you provide this explanation in the patent specification? Or should you wait until the issue comes up in prosecution or litigation, and offer an expert (1.132) declaration?

I dunno. I don't have a strong opinion about this choice.
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Karen Hazzah
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Re: Prepping for KSR in the application
« Reply #2 on: 08-01-11 at 09:15 pm »

And if X and Y are prior art?
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khazzah

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Re: Prepping for KSR in the application
« Reply #3 on: 08-02-11 at 06:41 am »

And if X and Y are prior art?

Sorry, looks like my last post wasn't clear.

If the widget and the blodget are "out there" but you don't have specific references in mind, then I consider them prior art. And my earlier statement applies:

Quote
it's important when drafting the app to have an understanding of any technical reasons why the combination of a widget and a blodget is not obvious.

Should you provide this explanation in the patent specification? Or should you wait until the issue comes up in prosecution or litigation, and offer an expert (1.132) declaration? I dunno. I don't have a strong opinion about this choice.

Maybe someone else will chime in as to whether it's a good idea to put reasons against combination, or non-obviousness arguments in general, in the Detailed Description (not the Background) of your application.
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Karen Hazzah
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Re: Prepping for KSR in the application
« Reply #4 on: 08-02-11 at 06:47 am »

Well one reason not to is so that you don't steer the examiner to it.
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NJ Patent1

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Re: Prepping for KSR in the application
« Reply #5 on: 08-02-11 at 06:48 am »

fb:  As always, the "devil is in the details" and the answer may well be, "it depends".  Having typed that, in my view the saying "anything you say can and will be used against you in a court of law" goes double when it comes to patent law (at least in US).  If you see a clear 103 issue, maybe you can head-off the rejection, maybe not.  But you can never take those words back.  My two cents - the less said in the background, the better.  
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Wiscagent

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Re: Prepping for KSR in the application
« Reply #6 on: 08-02-11 at 07:44 am »

One way to present X and Y would be to have a discussion, or experimental data that show that (i) X provides some characteristic; (ii) Y provides some other characteristic; but (iii) X + Y provides some synergistic benefit.

For example:  apples are good; pie crust is good; but put the apples in the pie crust and process it properly ... apple pie is excellent!

[[ I just heard on the radio that New York State is expecting a very good apple crop this season.   :D  ]]
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khazzah

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Re: Prepping for KSR in the application
« Reply #7 on: 08-02-11 at 08:18 am »

Well one reason not to is so that you don't steer the examiner to it.

I had that thought, too. But it didn't stand up to further scrutiny.

Certainly putting the problem you solved in the specification can result in the Examiner using that against you (rightly or wrongly) ... because the problem can serve as a reason to combine.

But how can steering the Examiner to reasons not to combine hurt you?
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Karen Hazzah
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Wiscagent

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Re: Prepping for KSR in the application
« Reply #8 on: 08-02-11 at 08:41 am »

I had that thought, too. But it didn't stand up to further scrutiny.

Certainly putting the problem you solved in the specification can result in the Examiner using that against you (rightly or wrongly) ... because the problem can serve as a reason to combine.

But how can steering the Examiner to reasons not to combine hurt you?
To build on my apple pie analogy, it would be important to provide some examples where baking apples with dough or bread results in a bread pudding - type dish.  That's okay.  But if you use a high fat content, properly prepared crust, the moisture from the apples doesn't turn the crust into mush.

So, following Karen's suggestion, I would include some examples or an explanation of why just mixing the ingredients in various random ways does not provide a tasty dish.  But just the right crust dough, prepared the right way provides a nice pie.  So it would not have been obvious to just mix X and Y (or use component X plus component Y) and expect to get a superior product.  So the X + Y combination is non-obvious.
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Re: Prepping for KSR in the application
« Reply #9 on: 08-02-11 at 09:49 am »

Quote
But how can steering the Examiner to reasons not to combine hurt you?

Because I would imagine he might not agree.

My understanding is that most of your time is spent on obviousness issues, so why introduce him to a new one that he may not have seen. After all, if you don't introduce him to it, he may or may not spot it. If he does spot it, then you can apply your reasoning at that time, which I guess means that all you lose is some months in prosecution. Whereas if you do introduce him to it, you may now have created a rejection that might never have have happened.

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JimIvey

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Re: Prepping for KSR in the application
« Reply #10 on: 08-02-11 at 11:50 am »

Let's see if I can summarize the question correctly.  I'm guessing that the question relates to a purportedly non-obvious combination of known things, X and Y.

In the background section, it seems some are inclined to describe both X and Y as known things.  I don't do that.  I try to determine which is dominant.  For example, is it Y that improves X or X that improves Y.  If it's a toss up, I just pick one (can't go wrong).

So, my background section describes only one, e.g., X.  If you describe both, you're walking the reader (and the examiner) right up to your solution.  You don't want the reader to be able to guess your invention after reading just the background section.  That hints at obviousness.

Consider this example.  USB drives are known.  Bottle openers are known.  People carry a lot of stuff in their pockets, including USB drives and bottle openers.  What is needed is a way to allow people to carry both a USB drive and a bottle opener without consuming excess space in the people's pockets.

What's my invention?  If you can guess, I've just laid the foundation for an obvious rejection -- all admitted prior art, including the motivation to combine.

On the other hand, if I just describe that bottle openers tend to be heavy and bulky and aren't convenient to carry in one's pocket because pockets tend to be fully of other stuff, the reader is left with much less of a hint at my solution.  To the extent I feel the need to "introduce" the non-analogous, yet known, technology that provides the solution, I do so in the detailed description -- being careful to preserve the characterization of the other technology as "non-analogous" and to highlight the non-obvious recognition that the solution taken from the non-analogous art works in this different context.

Of course, many examiners don't actually read the applications they examine, so it's hard to say how much that helps in the PTO.  However, attention to detail like that pleases clients and impresses litigators.

Regards.
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Re: Prepping for KSR in the application
« Reply #11 on: 08-02-11 at 12:48 pm »

I like the idea of just focusing on X, and leaving Y to be discovered by the examiner. If discovered and rejected, then the explanations can begin.
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JimIvey

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Re: Prepping for KSR in the application
« Reply #12 on: 08-02-11 at 03:06 pm »

I like the idea of just focusing on X, and leaving Y to be discovered by the examiner. If discovered and rejected, then the explanations can begin.

Just to be clear, I didn't mean to suggest being silent as to Y, only to deferring introduction until the detailed description.  And, don't forget that you're obligated to cite material information to the Patent Office, so the examiner should not be unaware of the existence of Y.

My point is that it's not wise to put various types of non-analogous art right next to one another in a collection of admitted prior art; it makes the combination look obvious when it really might not be obvious.

Regards.
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Re: Prepping for KSR in the application
« Reply #13 on: 09-20-11 at 02:40 pm »

Apparently my counsel agrees with this, as he removed my long explanation of why X + Y would not be obvious.
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