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Author Topic: What if the examiner cites Encyclopedia Britannica as prior art reference?  (Read 200 times)

me262

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All elements in an application can be found in a review paper, but there is no teaching in the reference on how they work together.  It doesn't seem to make sense if, say, Encyclopedia Britannia can be used as a prior art reference.

Is an examiner obligated to connect the elements together? Mine just cited pages after pages. Do I suppose to invent the prior art for him? If not, what is the defence?

Mike
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NJ Patent1

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me262:  Yes, it's OK PROVIDED THAT the Examiner must be able to articulate a rational to combine / modify.  But per KSR, this can come from sources other than the "four corners" of the reference.  Can't give you a cite, but I'd argue that an encyclodedia is a compilation of individual contributions.  Even if I "win the battle" (just a skirmish in this case), I could easily "loose the war" so to speak.
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JimIvey

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Is an examiner obligated to connect the elements together?

Yes.  If a single reference teaches physical elements of a claim but fails to teach the recited inter-relationships between the physical elements, the examiner must show that the claimed inter-relationships were known or obvious at the time the invention was made -- just as if the elements came from different references.

Regards.
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James D. Ivey
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