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[me262]

Hi,

  Here is the situation:

    Invention A disclosed a method for making an alcoholic beverage.

    (The beverage could not sell because it spoils quickly.)

    Invention B disclosed the same method for making the same alcoholic beverage plus a packaging element.

    The packaging element is developed many years after invention A.
   
    B is the first to suggest that the packaging element be applied to said beverage.

    The packaging element is widely used today. In hindsight, every engineer would say yeah, it is obvious!
   
    Is invention B anticipated by A?

M.E.

   

[JimIvey]

Well, the short answer is easy -- "No, it's not anticipated."

The more complex answer is whether the use of B with A is obvious.

Of course, everything is obvious in hindsight.  I'd say that, at this time, every single applicant should expect hindsight-based rejections for obvious.  They're all the rage at the PTO these days.

A was known, see reference 1.  B was known, see reference 2.  It would have been obvious at the time the invention was made to use B with A because B preserves A.

Huh?  That's it?  Show me where it was known to one of ordinary skill in the art at the time the invention was made, without use of our own disclosure, that B would preserve A.

You won't get an answer until you get an Examiner's Answer on Appeal.  Interestingly, I'm not seeing Examiner's Answers any more.  In response to my Appeal Briefs, I get either (i) a new non-final Office Action with nearly identical grounds for rejection or (ii) Notice of Allowability.  Don't know what to read into that.

Having said all that, you had better have some good reason why using a known method for preserving an alcoholic beverage would not be thought to work with a known, perishable alcoholic beverage.  Without that argument, you don't have much a chance to get through the PTO.

Regards.

[me262]

Thanks Jim,

"why using a known method for preserving an alcoholic beverage would not be thought to work with a known, perishable alcoholic beverage.  Without that argument, you don't have much a chance to get through the PTO."


The medicinal use of the beverage was not discovered until recently.

The method of preservation, although used on other things, was immature and expensive a few years ago.

As evidence, a few technical papers were written on applying this to vinegar, after B was filed. Vinegar is easier to work with.


M. E.

[Isaac]

A was known, see reference 1.  B was known, see reference 2.  It would have been obvious at the time the invention was made to use B with A because B preserves A.

That sounds like KSR as applied at the PTO.  The examiner is free to pull the reason to combine from just about anywhere except the applicant's claims.  (Okay a bit of an overstatement)  According to the Supreme Court, improper hindsight is avoided by simply being aware of the evil it causes.

You won't get an answer until you get an Examiner's Answer on Appeal.  Interestingly, I'm not seeing Examiner's Answers any more.  In response to my Appeal Briefs, I get either (i) a new non-final Office Action with nearly identical grounds for rejection or (ii) Notice of Allowability.  Don't know what to read into that.

I think those results are evidence that you are either a skillful prosecutor or are particularly good at getting clients who have actually invented.  My reading of post KSR Board decisions is that the BPAI is affirming rejections pretty much like the ones you describe.  

[JimIvey]

The method of preservation, although used on other things, was immature and expensive a few years ago.

Well, if the preservation technology matured without your help to be generally suitable for preserving your beverage A, you're not in a great position.  If you had some insight as to why B would be applicable to A that others overlooked, you're in a better situation.

Regards.

[JimIvey]

A was known, see reference 1.  B was known, see reference 2.  It would have been obvious at the time the invention was made to use B with A because B preserves A.

That sounds like KSR as applied at the PTO.  The examiner is free to pull the reason to combine from just about anywhere except the applicant's claims.  (Okay a bit of an overstatement)  According to the Supreme Court, improper hindsight is avoided by simply being aware of the evil it causes.

Yeah, I think that's an overstatement.  I know that's how the PTO is reading KSR, but it's not what KSR said.  KSR re-affirmed Graham.  One of the absolutely required detailed factual showings required to make a prima facie case of obviousness is the level of ordinary skill in the relevant art(s) at the time the invention was made.  Show me one single obviousness rejection in the last 20 years that included such a showing.  I've never seen one.

The TSM test was a short-cut.  If you can show a publication with a teaching, suggestion or motivation (TSM) to combine, then you've established that the TSM was available to one of ordinary skill in the relevant technology at that time.  Determining the level of ordinary skill was obviated so long as the ordinary artisan was considered literate.  And, I think that most applicants just effectively stipulate that an ordinary artisan is at least able to read.

Now, the PTO would like to drop the TSM test because it's a burden to show obviousness.  It's just a burden to examine patent applications -- the PTO seems to wish it could just not examine anything at all.

Well, guess what?  The TSM test is actually easier to apply than Graham itself!  But, the PTO wants Graham?  I give them Graham.  In every single obviousness rejection I see, I challenge the complete absence of any factual findings whatsoever on the level of ordinary skill in the art at the time the invention was made.

Hence, no Examiner's Answers.

You won't get an answer until you get an Examiner's Answer on Appeal.  Interestingly, I'm not seeing Examiner's Answers any more.  In response to my Appeal Briefs, I get either (i) a new non-final Office Action with nearly identical grounds for rejection or (ii) Notice of Allowability.  Don't know what to read into that.

I think those results are evidence that you are either a skillful prosecutor or are particularly good at getting clients who have actually invented.  My reading of post KSR Board decisions is that the BPAI is affirming rejections pretty much like the ones you describe. 

Well, most of the time, I'm blessed with the latter.  I'd like to think the former has something to do with it as well.

Mostly, I think it has to do with my strategy of making the PTO long for the return of TSM by holding their feet to the fire of KSM/Graham.  So far, it seems to be going well.  Although, by really pushing the issue, I may be setting myself up for a battle at the Fed. Cir. or SCt. as the PTO hopes to continue pulling motivations to combine out of their ... well, you know.

At the very least, my clients like my very aggressive strategy and style.

Regards.