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[silent_thinker]

Pros:

We had this for the main independent claim (and planning to interview the Examiner soon) after the
initial final-rejection/amendment

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Therefore, it would have been obvious to one of ordinary skill in the art at the time the invention was made, having the teachings of xyz1 and xyz2 in it's entirety, to modify the technique of xyz1 for wherein the computer includes a "some_gadget" for generating a "some output" to the user by adopting xyz2's teaching for generate the "some useful output" based on prior user selections. The motivation would have been to overcome the disadvantages of existing "field" systems.
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While our current disclosure/inv does not even remotely match and has  more than the quoted refs (xyz1/2); is not obvious.
Examiner is merely arguing (speculating); what would be the best way to handle such objections
(minimize the chances of delay due to lengthy process of appealing).

a) Can we ask for more than one interview if needed (before we respond)?
b) We gave several examples that  would be impossible to construct with xyz1/2;
would citing these in the interview help? [yes, this is the first interview w/ the examiner]

Thanks for all the pointers in advance!

[JimIvey]

While our current disclosure/inv does not even remotely match and has  more than the quoted refs (xyz1/2); is not obvious.

If you're saying that the combination still doesn't include all of the claim limitations, assuming arguendo that the references are properly combined under prevailing US patent law (always good to preserve that argument for later), that's your best argument.  However, I'd expect the examiner to just search for the missing element(s) and toss those references in with yet another motivation plucked from his posterior portions.  This is particularly common and frustrating in computer-implemented inventions.

Examiner is merely arguing (speculating); what would be the best way to handle such objections
(minimize the chances of delay due to lengthy process of appealing).

Well, the approach above is the best.

Second would be that the combination would not function in a way that infringes the claim.  Impossibility, which you mentioned.

Third would be attacking the motivation to combine.  Examiner's always snicker when they hear that.  They think that KSR has opened the way for a box of random, unconnected parts to form a water-tight obviousness rejection.  But don't be discouraged; they're wrong.

One of the things that I see all the time (pretty much without exception) is that the motivation to combine is not even alleged to (i) have been known by those of ordinary skill in the art (ii) at the time the invention was made.  The latter is the significant one.  Even people arguing against obviousness completely forget to raise that issue.  It's not enough that the motive for combination is known by the examiner at the time of examination (one would be motivated to make the combination because completes the obviousness argument and gets me my count).

I always infer Official Notice when there's no source of the motivation other than the examiner's vivid imagination and seasonably challenge it, requesting supporting documentation.

So, failure to allege, in and of itself, proves failure of a prima facie case for obviousness.  The rejection should just be withdrawn.  However, don't expect that.  The examiner can just add "at the time the invention was made" and make the next rejection final.  So, you'll have to address more than just the failure to even allege.

You'll have to address the failure to show.  I usually point out that the examiner also fails to show any evidence whatsoever that the ordinary artisan would have been so motivated at the time the invention was made.  I usually observe that the only source of such a motivation is in Applicant's Specification (with a quote and citation).  I don't say "hindsight" (that makes examiners laugh, too), but that's the crux of the argument.  The only motivation to combine on record just happens to be the one that the examiner had just read in our application.  Without some showing that the motivation didn't predate the application, the obviousness argument has failed to make a prima facie case.

I've been quite vocal (particularly around the time of KSR) that the Office's attempt to rid itself of the TSM test for obviousness was to attempt to rid itself of the only mechanism by which obviousness can be found without having to produce detailed factual findings regarding the level of ordinary skill in the relevant technology/ies.  If there is documented teaching, suggestion, or motivation to combine in the manner asserted by the examiner, the level or ordinary skill need only include literacy.  Without that, Graham requires detailed findings of fact regarding the level of ordinary skill in the art(s).  Yet, I've never ever seen anything remotely approaching that.

cont.

[JimIvey]

cont.

a) Can we ask for more than one interview if needed (before we respond)?

I honestly don't know.  I suspect you can ask all you want.  I have no idea whether the examiner is required to accommodate you.

b) We gave several examples that  would be impossible to construct with xyz1/2;
would citing these in the interview help? [yes, this is the first interview w/ the examiner]

Do you mean that you have several specific embodiments that would be impossible to make with the combined references?  No, that won't help.  If your claim covers just one obvious variation of known things, it's obvious. 

On the other hand, if you mean there are several specific reason that the combination would be inoperable, yes, that would help.  I believe the magic language is that the combination must have had a reasonable likelihood of success in the mind of the ordinary artisan at the time the invention was made.  And it's not just that the combination could successfully be made (i.e., with epoxy and super glue) but that the combination would function well enough to provide that benefits that motivated the combination.  For example, a folding bicycle would not be obvious in view of a combination of a non-folding bicycle and a hack saw and a welder, motivated by convenience in taking the bicycle on public transportation.

That raises another strategy I didn't mention.  What if the combination doesn't really provide the proffered motivation?  In the bicycle hypothetical, there is not motivation of convenience because hacking and re-welding is not convenient.  If you need to support that argument, point out time required for hacking and welding -- fact-based support.

Regards.

[JustAnotherExaminer]

You're arguing it wouldn't be obvious to present output to the user of a computing system?  Really?

Also, examiners can choose to deny interviews at any point during prosecution, though they likely won't.

[JimIvey]

You're arguing it wouldn't be obvious to present output to the user of a computing system?  Really?

It seems pretty clear from the original post that both cited references provide output, though presumably of a different type.  What I'm imagining is a combination of Google Maps and eHarmony to make a system for using routing logic to show you eligible singles that match your personality -- motivated by the disadvantage of having to ask you questions about your personality.  In effect, it's substituting output of one system with the output of another.

That's not necessarily non-obvious, but it's not necessarily obvious either.

Regards.

[labixiaoxin]

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