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[TataBox]

It seems to me that if an invention is not found literally in the prior art and there are no statutory issues, you must balance the possible 103 objection from the examiner after filing.

I understand that we can say POSITA and secondary considerations, but I think the hardest part, if representing an inventor with next to nothing in the bank, is when to go forward and when not to.  

Does anyone have any thoughts on this?   I assume I am missing plenty of factors in this equation, can anyone fill them in?  What do you think about?

[Isaac]

In my opinion, not considering the possibility of a 103 rejection based on the art found during a search would be very poor service to a client.   In some cases such behavior might incur attorney liability.

If the anticipated strategy is to use secondary considerations, then one should expect the strategy to be expensive.   For clients where money is an object, the discussion of the possible expenses should take place before filing.  I've certainly advised clients not to pursue filing based on an anticipated 103 rejection.

Generally a client will not even know if a reasonable secondary considerations argument can be made at the time of filing.  Many of the considerations take time to develop.

But not all 103 rejections can be reasonably anticipated before filing.  For that matter not all 102(b) rejections can be identified prior to filing.  

If you can enable the client to make an informed decision,  then you've done what needs to be done based on your experience and the available facts, you've done what's supposed to be done.

Some decisions have to be based on a clients desire and ability to accept risk.  Clients with no money who have a sure thing might be able to locate financing or be willing to go into debt.  Doing so might even make sense for a cash challenged inventor.