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[dab2d]

I have a rejection where the Ex modifies a disposable element with many different addtions which would make it not cost effectively disposable. Now I like to use the MPEP section that states "If proposed modification would render the prior art invention being modified unsatisfactory for its intended purpose, then there is no suggestion or motivation to make the proposed modification." However how do you prove what is disposable and what is not.

Would it be an increase in cost in manufacturing? Is there even an argument to be made.   

[JimIvey]

I'm confused on two points.

First, you say the examiner has modified a claim term.  Do you mean the examiner has proposed an amendment to the claims?  Or that the examiner is interpreting "disposable" to mean "non-disposable"?

Second, the "suggestion or motivation to make the proposed modification" sounds like obviousness analysis. 

Perhaps the examiner is arguing that something non-disposable in the prior art is really "technically" disposable.  Like the foundation of a single family home is "disposable" in that you can demolish the house and the foundation and then "dispose of" the foundation.

Perhaps you can clarify....

Regards.

[dab2d]

I am sorry for my description.

The examiner proposed a modification of a disposable item to arrive at the claimed invention. The disposable item is clearly meant to be disposable and inexpensive (a very simple singular planar plastic element). However the proposed modification would increase manufacturing cost and make it extremely wasteful to be disposable (multiple parts that move relative to each other, connections and three dimensional). 

Thus, would the modification render the prior art invention being modified unsatisfactory for its intended purpose.

A large part of this may hinge on what is "disposable". I am assuming it is a relative term. I am thinking arguments based upon how much an increase in Manufacturing cost the modifications would make. 

[khazzah]

The examiner proposed a modification of a disposable item to arrive at the claimed invention. The disposable item is clearly meant to be disposable and inexpensive (a very simple singular planar plastic element). However the proposed modification would increase manufacturing cost and make it extremely wasteful to be disposable (multiple parts that move relative to each other, connections and three dimensional). 

Thus, would the modification render the prior art invention being modified unsatisfactory for its intended purpose.

Don't have an answer to you specific question, but do have a comment on the non-obviousness argument "the Examiner's modification makes it more expensive." From what I've seen, that's usually a losing argument. As explained in a BPAI decision:

However, this argument is not persuasive because as noted by the Examiner (Ans. 6), the fact that a combination would not be made by businessmen for economic reasons is not dispositive of whether the combination would be made by one of ordinary skill in the art. See Orthopedic Equipment Company, Inc. et al. v. United States, 702 F.2d 1005, 1013 (1983) (“the fact that the two disclosed apparatus would not be combined by businessmen for economic reasons is not the same as saying that it could not be done because skilled persons in the art felt that there was  some technological incompatibility that prevented their combination. Only the latter fact is telling on the issue of nonobviousness”).
Ex parte COMPLETE PRODUCTION SERVICES, BPAI Appeal 2008-5051

A large part of this may hinge on what is "disposable". I am assuming it is a relative term. I am thinking arguments based upon how much an increase in Manufacturing cost the modifications would make.

FWIW, the Applicant in the decision I mentioned above tried exactly that and lost.

Now, I'm not saying that the argument POSITA-would-not-combine-due-to-cost will always lose. And in fact, your unsatisfactory-for-intended-purpose may do the trick. That is, if you can show that the Examiner's modification results in costs so high that the combination doesn't work for the intended purpose, then that may well become a winning reason not to combine.

[JimIvey]

Yeah, I agree with Karen -- regardless of whether cost is important, the PTO sees cost as irrelevant from a technical perspective.  For example, if the examiner asserted that it was obvious to make car wheel air nozzle caps out of 24kt gold, you'd do better to argue that gold is too soft rather than too expensive.

However, usually things are made disposable for a reason.   For example, suppose the disposable thing is the plastic tape over ink jet nozzles on a cartridge.  Ink jet cartridges have two states -- a shipping state in which you want to protect nozzles from dirt and damage and to prevent ink from drying, and a use state in which preventing the ink from exiting the nozzle during printing would defeat the whole utility of the ink jet cartridge.

Now, suppose the examiner argues that it would be obvious to modify a prior art ink jet cartridge by replacing the plastic tape with a windshield wiper and that my claim would cover that.  The windshield wiper would serve neither purpose of the plastic tape -- it wouldn't protect the nozzle during shipping and would interfere with the proper coupling of the cartridge with the cartridge socket in the printer.

So, I'd suggest looking into the technical reasons a disposable part is used in the prior art and look to see whether substitution of a complex mechanical apparatus defeats any of those reasons.

Regards.

[khazzah]

So, I'd suggest looking into the technical reasons a disposable part is used in the prior art and look to see whether substitution of a complex mechanical apparatus defeats any of those reasons.

JimIvey hit the nail on the head, and put it better than I did. Always focus on *technical* distinctions, reasons, etc.

[2ndcareer]

I agree.

what is "disposable" part is very subjective engineering judgment.  And there is always "recycling" if the cost is too high.  For example, Printer Cartridges are ridiculously expensive in comparison to the printers, and people recycle them for that reason, but I would still say that cartridges are "disposable" parts.  "Recycling" is a "disposal" method.  "Disposable" doesn't necessarily mean that one would throw it into trash.  and even trash are recycled sometimes.

Broadest reasonable interpretation of "disposable" would be that the part is used for limited number of times before it must be "disposed", ie. dumped, recycled, retooled, repurposed, melted down, remolded, re-primed, etc.

Additionally, motivation to combine/modify references cited by the examiner does not have to the same motivation as in the application under examination.  It just has to be some motivation.

[dab2d]

What if the reference states it needs to be a single use/disposable item to solve a certain problem like cross contamination. It is the fact that it is "disposable" and "cost effective" allows it to solve this problem. Otherwise, the stated problem/intended purpose of the reference cannot be met...

Would that arise to the level of a technical aspect

[Wiscagent]

IF you were drafting a new application, I would suggest a couple of things re "disposable".

First, define the term "disposable".  As some of the responses to your note suggest, the definintion of "disposable" is not clear cut, and if you are going to use the word in the the any of the claims, make sure you limit any ambiguity by providing a good definition.

Second, condsider what technical aspects of the invention render it disposable rather than durable.  Why is a disposable fork "disposable", but a regular, non-disposable fork is not "disposable"?  I'm sure you could come up with several reasons, but at least some of the claims would avoid the word "disposable" and embed some of those reasons.  So the claims might include something like this:
    A fork comprising [ ... ] wherein the melting point of the fork material is less than 150 deg C.   or 
    A fork comprising [ ... ] wherein the bending modulus is less than xxx.

The original posting realates to a filed application, but perhaps the claims can be amended to include some of those suggestions.

[2ndcareer]

"Cost effective" is also subjective, and you need to have some more specific definitions in the specification to narrow the claims.

"Cost effective" depends on how much you can charge for the device.  And in some markets, having a sliver of profit margin would be considered "cost effective".

So the question comes down to, practically, how much would customers pay for that feature?  And that's way too subjective to define in a patent application.  1 person might say, well, that "disposable part" is too expensive, no way I will pay $20 for it.  But some other person might say, well, that "disposable part" is good for the environment, so I'm willing to pay $100 for it.

So, again, as stated before by some one else, "cost effective" is not something that one can make a good argument for.  I believe, that's because there is no single engineering or "scientific" standard for deciding what is "cost effective".  Cheaper doesn't make it better or "cost effective".

"Cost effective" is a relative and subjective result.

And again, Examiner doesn't need to have the same "cost effective" strategy as your invention to make argument for motivation.

The point of motivation to combine is not whether something is the BEST way to do things, but rather whether something is "Obvious".  An Examiner's combination of references may not be the MOST "cost effective", but he can argue that it is "cost effective" enough, or that it serves some other purpose such as disposable parts allowing "minimal downtime".

His motivation can be completely different or even contradictory to your motivation.

[2ndcareer]

What if the reference states it needs to be a single use/disposable item to solve a certain problem like cross contamination. It is the fact that it is "disposable" and "cost effective" allows it to solve this problem. Otherwise, the stated problem/intended purpose of the reference cannot be met...

Would that arise to the level of a technical aspect

Unless the reference says it needs to be "cost effective", "disposable" doesn't necessarily imply "cost effective".  Single use merely means single use, doesn't relate to anything about "cost".

I think if you go down the argument of "cost effective" motivation in reference, it's very stretched.

Again, "disposable" may mean that the part will get recycled, melted down, remolded, reprimed.  And the cost associated with the disposal process is rarely mentioned, unless you are dealing with a recycling process patent.

[dab2d]

Just to clarify, the application is not meant to be disposable. However the primary reference used in the 103 is meant to be disposable to solve a specific problem of dangerous cross contamination in a high volume environment. The users use this tool constantly all day when dispersing chemicals in a low margin retail industry. 

The reference states "by virtue of of the disposable aspect.... it can be used once and discarded"


The user must use this product hundreds of times a day. Thus would have to use 100s of the disposable items/reference a day.

If the manufacturing cost were to rise 100%-400% (how about 1000%), and one of skill in the art would not use it (declaration) because of the cost, has it destroyed the intended purpose of the reference?   


Just thought of a possible analogy... Medical latex gloves... would it be obvious to modify them and make out of some space age material that is 5 times more expensive while still to be used in a medical environment. At a certain point, cost must be a factor.

As an examiner, I used economic arguments in making motivation statements... if that was a possible motivation, then multiplying the cost should also be the opposite of motivation (unmotivation?). 

[NJ Patent1]

IMO disposable simply means what it says; capable of being disposed of (whether cost effective or not), and that the need to avoid cross-contamination is a market need and that disposing of an article is an obvious way of meeting that market need or demand.  For reasons stated or suggested by others, IMO the fact that a proffered modification of an element in view of prior art would make something stupidly uneconomical does not equate to altering the function or principal of operation of the thing.  It may render something economically stupid, but not incapable of performing its intended (technical) function.

Wiscagent has an approach.  A potential "glitch" I see in that approach is that a material (compsition of matter) and its properties are inseperable and that seelection of a material of construction is usually pf obvious as an engineering choice.  Of course, if there is a technical reason why the mp or modulus must be in particular range or, better, if use of a material having these properties results in an unexpectedly superior product the pf argument can be overcome.  But IMO  "cheap" is not necessarily "superior" in the context of patentability.   

IM (twisted?)O,  making something "disposable" is akin to combining several mechanical elements into one to reduce manufacturing costs, or to making something smaller or portable.  Pf obvious if such is w/in capabilities of a PHOSITA?  This can be overcome if, as others have noted, there is some technical feature tied to the property of size, portability, etc.