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Author Topic: Rebutting Examiner's specific rationale vs Offering reason NOT to combine  (Read 5410 times)

khazzah

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In an 103 rejection, the Examiner asserts a Rationale-to-Combine. It's what I call a "generic" rationale (ala "more efficient"). I have technical reasons why a POSITA wouldn't make the combination. Basically explaining several differences and modifications that would be required to arrive at the claimed feature.

Let's assume the Examiner's asserted Rationale makes sense on its face. Do I need to specifically rebut the Examiner's asserted Rationale? Or can I instead make my argument "here's why a POISTA would not combine", and leave it at that?

My current thinking is that I'm *not* rebutting the Examiner's Prima Facie case -- and again, theproffered Rationale seems to makes sense on its face. I *am* presenting a non-obviousness argument, albeit one that orthogonal to the Examiner's position. 

I often think of obviousness as weights on a balance, with the Examiner's position on one side and the Applicant's on the other. If that's right, seems like my why-not-combine could win -- despite the fact that I didn't directly address the Examiner's position.

What do you guys think?

Maybe I'm overthinking this because I read too many PTAB decisions that criticize the Applicant for stuff like not showing error in the Examiner's position, not addressing the Examiner's factual findings, etc. etc.
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patent_type_real

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Seems to me that you intend to provide a viable argument rebutting a finding of obviousness.  I don't think you have to explicitly rebut exactly what the examiner said.  That would be a he-said, she-said fist-pounding match that you're not gonna win at the examiner level.  The examiner made a prima facie obviousness case.  You have to rebut the prima facie case of obviousness, not necessarily exactly what the examiner said. 

For instance, the Examiner said one would make the combination because it is more efficient.  You rebut by pointing out that making the asserted combination would make the original thingie not suitable for its intended purpose or that others tried to do so, but failed because your way is novel and non-obvious (you know, those pesky Graham factors).  Those weigh more than the efficiency argument.

For example, "even if" the combination is more efficient, one would not make the asserted combination because everybody knows you don't wear white after Labor Day, so there is no articulated reasoning (KSR; MPEP 2143.01.IV) to make that combination.

I concur that you are rebutting the obviousness finding by presenting factors why it is not obvious, not just saying that the examiner is out to lunch.  But if the weight of the Examiner Rationale on that balance is greater than the weight of your non-obviousness argument/factors/position, uh-oh.
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JimIvey

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KSR established two ways to show obviousness: (i) a collection of known parts that perform as expected to achieve only predictable results and (ii) applying known solutions to known problems.  I always frame my not-obvious-to-combine arguments in that framework.

Efficiency sounds like a known solution to a known problem, but the solution is not considered out of context.  If the Titanic's boiler room was too hot, a known problem, you wouldn't apply the known solution of opening holes in the walls (hull) to allow the breeze through.  You'd argue that the known solution of opening holes to solve the known problem of excessive in-door heat is known to not be applicable in the context of ship hulls, particularly below the water line.

When you face something as vague as "efficiency" as the motivation to combine, there are a number of things you can do.  One is to challenge that the proffered combination does, in fact, improve efficiency and that such was known at the time of invention/filing -- seasonably challenge the implicit Official Notice.  The other is to directly traverse that the combination increases efficiency.  Note that it's not enough for the examiner to say that this or that step would be more efficient if the entire method suffers efficiency.  For example, consider that a step of a sort method could be more efficient by a modification that would render the sort method as a whole inoperative.  Is it more efficient as modified?  No, now it doesn't sort at all.

Perhaps a better example: we all know that bearings have some friction, albeit hopefully low friction.  We could increase efficiency of the bearings by eliminating all friction by welding the bearing such that they don't rotate at all -- no friction!  So, now the car with wheels that don't rotate won't suffer from friction in the bearings and should be more efficient, right?  Okay, maybe that's really increasing the friction to infinite friction.  Consider eliminating tires to reduce rolling resistance.  I kinda do that in warm weather -- increase my air pressure to nearly as much as the tires can take (44psi) rather than the pressure recommended by Honda (34psi).  I get like 32mpg in car rated for just 29mpg but, if it rains or the road gets wet, I'm just slip-sliding away.... moreso the nearer my destination.

So, to answer your question more directly, I think arguments as to why an ordinary artisan wouldn't combine is, in effect, the same thing as rebutting the proffered motivation to combine.  I guess one way to think of it is that inoperability is an extreme form of inefficiency.

Perhaps your question is more about whether it makes sense to always seasonably challenge the implicit Official Notice that the proffered motivation to combine (i) is true and (ii) was known at the time of invention/filing.  I would treat it like any other ON.  I concede if it's pretty clearly true and challenge if it's not readily known to be true.  But I would always include the other arguments as well.

Regards.
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Robert K S

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Do I need to specifically rebut the Examiner's asserted Rationale? Or can I instead make my argument "here's why a POISTA would not combine"

As a general rule it's good to always put every valid argument in the applicant's favor on the record as early as possible, but presuming there's some reason to choose between arguments, I would favor rebutting the specific rejection rationale set forth by the examiner, since only that is going to be valuable on appeal.  The examiner or Board might raise other arguments later, which might be more effectively addressed by your alternative argument, but due process would suggest that any such new arguments would constitute new grounds for rejection entitling the applicant to rebut them with argument or evidence at some later point.
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khazzah

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Do I need to specifically rebut the Examiner's asserted Rationale? Or can I instead make my argument "here's why a POISTA would not combine"

As a general rule it's good to always put every valid argument in the applicant's favor on the record as early as possible, but presuming there's some reason to choose between arguments, I would favor rebutting the specific rejection rationale set forth by the examiner, since only that is going to be valuable on appeal

Robert, can you clarify? By "only", do you mean that on appeal I must show error in the rejection, and can only do so by rebutting the Examiner's specific rationale? Because I tend to agree with what the others have said: the rejection is 103 using a particular combination, and the error I'm fighting is that my claims are NOT obvious in view of the cited combination.
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patent_type_real

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It might be counterproductive or a losing prospect if one were to argue that improved efficiency is not a desired outcome, especially if improved efficiency is included in the spec as a result of or feature of the invention.  Asserting that one would not consider improved efficiency as a motivation could influence the Board or the PAB panel to discount/ignore other arguments.

If you gotta preserve the argument against improved efficiency as a rationale, consider including language like "the office action does not establish a basis that improved efficiency is sufficient rationale in this art to make the asserted combination.  But even if improved efficiency would motivate one of ordinary skill in the art to pursue improvements, one would not make the asserted combination because [it teaches away, no articulated reasoning, had already been unsuccessfully tried, makes the thing of the primary reference unsuitable for its intended purpose, whatever]."

See MPEP 2144.I and II and present "argument" (even if a cursory sentence to preserve the issue) that the basis for such rationale was not established in the OA.
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ipupWEALLpFORip

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another idea: what if you (informally) frame the rebutting/counter-argumentation in the EPO problem-solution approach. i sometimes do this when the reason to combine is arguably rational, but not realistic modification, similar to Jim's titanic example.
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khazzah

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If you gotta preserve the argument against improved efficiency as a rationale, consider including language like "the office action does not establish a basis that improved efficiency is sufficient rationale in this art to make the asserted combination.  But even if improved efficiency would motivate one of ordinary skill in the art to pursue improvements, one would not make the asserted combination because [it teaches away, no articulated reasoning, had already been unsuccessfully tried, makes the thing of the primary reference unsuitable for its intended purpose, whatever]."

So ... couch the Efficiency-is-not-a-Rational-Motivation argument as "the Examiner hasn't met his burden" rather than as an argument on the merits?

And also preface the stronger argument with "even assuming efficiency IS a proper Rationale" ? Definitely. I'm a huge fan of arguendo. (Though I use the plain English equivalent.) 

It might be counterproductive or a losing prospect if one were to argue that improved efficiency is not a desired outcome, especially if improved efficiency is included in the spec as a result of or feature of the invention. 

I think I agree with you in part.

Realistically, I'm probably not going to argue that increased efficiency is not an advantage. Because, generally speaking, increased efficiency is an advantage, is recognized by a POSITA as such, and has been recognized as such since the invention of the wheel. Same is true with the other generic rationales (my term) like stronger, lighter, faster.

But the analysis shouldn't end there. And I find that rejections based on these generic rationales are often weak in other ways. For example, maybe the Examiner didn't tie the generic advantage to the claimed feature. If so, I can fight this weak spot in the Examiner's Rationale-to-Combine. 

It might be counterproductive or a losing prospect if one were to argue that improved efficiency is not a desired outcome, especially if improved efficiency is included in the spec as a result of or feature of the invention. 

Depends on the fact, right? Did a POSITA at the time of invention know about the increased efficiency? If so, then you're right, that's not a credible argument. OTOH, if POSITA didn't know then using Applicant's own discovery of increased efficiency as a Rationale to Combine is the very definition of hindsight.

Asserting that one would not consider improved efficiency as a motivation could influence the Board or the PTAB panel to discount/ignore other arguments.

Not quire sure what this is about.

Attorneys often disagree about how many, and what kind of, arguments to make. So perhaps you're making a general statement that presenting argument #1 might cause the decision maker to pay less attention to argument #2.

But perhaps you're saying, more specifically, that arguing "efficiency-is-not-a-Rational-Motivation" could detract from other arguments because it's not a credible argument, so making it causes you to lose credibility with the decision maker.   

Agree that making non-credible arguments weakens your overall position. But as noted above,  "efficiency-is-not-a-Rational-Motivation" can be credible if you attack the link between the generic Rationale and the claimed feature.
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khazzah

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KSR established two ways to show obviousness: (i) a collection of known parts that perform as expected to achieve only predictable results and (ii) applying known solutions to known problems.  I always frame my not-obvious-to-combine arguments in that framework.

Jim, thanks for providing your framework.

When you face something as vague as "efficiency" as the motivation to combine, there are a number of things you can do.  One is to challenge that the proffered combination does, in fact, improve efficiency and that such was known at the time of invention/filing -- seasonably challenge the implicit Official Notice. 

You're right, this sort of rejection *does* use something quite like Official Notice.

The rejection implicitly relies on two premises -- the purported advantage is in fact an advantage, and was known as such at the relevant time. Yet Examiners don't feel provide explanation (much less evidence) on these points, presumably because they are subject to "instant and unquestionable demonstration as being well-known" (from Official Notice doctrine).

I would treat it like any other ON.  I concede if it's pretty clearly true and challenge if it's not readily known to be true. 

Me too.

The other is to directly traverse that the combination increases efficiency.

Right. I often do this when the facts lend themselves. Your examples were helpful.

So, to answer your question more directly, I think arguments as to why an ordinary artisan wouldn't combine is, in effect, the same thing as rebutting the proffered motivation to combine. 

I think you've convinced me of this, now that I've had a chance to absorb the discussion.

My original post posited reasons NOT to combine that were UNrelated to the Examiner's proferred Motivation. But I think I was looking at it from the wrong angle.

You gave an example of increasing gas mileage by reducing the tire's rolling resistance. And you said that while this mod does increase "efficiency," it also worsens the car's handling in wet weather. That's clearly a valid 103 argument: showing disadvantages that result from the Examiner's combination. 

But does it rebut the Examiner's proferred Motivation? My original thought was No, since I'm not arguing about efficiency. But now I'm not so sure ... talking about disadvantages that result from the Examiner's combination does address efficiency -- not efficiency per se, but efficiency as a reason to combine

But perhaps I'm getting hung up on semantics, or I'm focusing too much on argument classification. The underlying strategy that we're discussing is still sound.
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Karen Hazzah
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ThomasPaine

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"Let's assume the Examiner's asserted Rationale makes sense on its face. Do I need to specifically rebut the Examiner's asserted Rationale?"

I don't think you need to "specifically rebut" it.  Whatever that means.  If it truly makes sense, you look weak arguing that it doesn't.

"Or can I instead make my argument 'here's why a POISTA would not combine', and leave it at that?"

You can present/argue reasons why it would not have been obvious.  But I still think you need to address the reason the examiner provided that it would have been obvious.  Something like this:  "While not conceding the articulated reasoning for the modification/combination provided by the Examiner, Applicant respectfully submits that it would not have been obvious to modify/combine because..." and then provide your arguments/reasons.  Keep in mind that you're going to need evidence, or otherwise your arguments are going to be dismissed as mere attorney argument.

MPEP 2142 states:  The ultimate determination of patentability is based on the entire record, by a preponderance of evidence, with due consideration to the persuasiveness of any arguments and any secondary evidence. (citing In re Oetiker, 977 F.2d 1443, 24 USPQ2d 1443 (Fed. Cir. 1992).)

So if the examiner has provided evidence that establishes, by a preponderance, that there existed a reason why one of ordinary skill would have modified/combined the prior art to arrive at the claimed invention, and all you do is provide arguments why one of ordinary skill in the art would not modify/combine, then you're going to lose.  Simply because the weight of the evidence is on the examiner's side.

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JimIvey

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You gave an example of increasing gas mileage by reducing the tire's rolling resistance. And you said that while this mod does increase "efficiency," it also worsens the car's handling in wet weather. That's clearly a valid 103 argument: showing disadvantages that result from the Examiner's combination. 

But does it rebut the Examiner's proferred Motivation? My original thought was No, since I'm not arguing about efficiency. But now I'm not so sure ... talking about disadvantages that result from the Examiner's combination does address efficiency -- not efficiency per se, but efficiency as a reason to combine

I think you can make a good argument that the ordinary artisan would not marginally improve efficiency at the cost of a significant reduction in safety.  However, is that enough?  What if your claimed invention claims, as non-obvious, improving efficiency at the cost of safety in precisely the way asserted by the examiner?  I think you lose.

What you need is some other reason that you've increased air pressure in your tires, a reason that's not found in the cited art.  Maybe your invention senses the overall loaded weight of the vehicle and increases air pressure for heavy loads.  So, your claimed invention strikes a particularly good balance between efficiency and safety.  In other words, in the context of your claim, increasing tire air pressure does not suffer from the loss of safety you would find in the prior art.

This kind of argument can sometimes lead to you understanding a better way to get the claim allowed.  People know how to weigh vehicles.  What if your claim reads on some guy with a big rig at one of those road side truck scales, upon learning that his rig is really, really heavy, increasing his tire pressure beyond that recommended by the truck's manufacturer?  Such would be extremely difficult for the examiner to prove is known through prior art publications, but you're still highly unlikely to get the claim allowed.

To get that claim allowed, you're probably going to have to find something about your invention that is fundamentally different from a trucker noticing a heavy load and increasing air pressure in the tires in response.  Maybe your car has an onboard tank of pressurized air to fill the tires.  Maybe your car can adjust tire pressure while the wheels are turning.  Maybe the increase in tire pressure is performed without human intervention.  Maybe each tire is adjusted based on its own load independently of the other tires.  In other words, you may have to revisit the Tao of your invention.

Regards.
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Robert K S

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Robert, can you clarify? By "only", do you mean that on appeal I must show error in the rejection, and can only do so by rebutting the Examiner's specific rationale?

That's what I meant, yes.  If I understand your original "Sophie's choice" correctly, it's between attacking the examiner's rationale head-on and attacking obliquely with a different argument.  The Board commits error all the time in affirming inadequate or specious rejections.  You don't want to be in a position where you're before the CAFC and the solicitor is in a position to point out, "Examiner said X, Appellant hasn't specifically shown why X is wrong, game over."  I still don't understand why you feel you need to make this choice, but I suppose you must have your reasons.  Me, I would present both arguments, and then some.
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khazzah

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Robert, can you clarify? By "only", do you mean that on appeal I must show error in the rejection, and can only do so by rebutting the Examiner's specific rationale?

That's what I meant, yes.  If I understand your original "Sophie's choice" correctly, it's between attacking the examiner's rationale head-on and attacking obliquely with a different argument. 
[/quote]

Thanks for clarifying.

The Board commits error all the time in affirming inadequate or specious rejections.  You don't want to be in a position where you're before the CAFC and the solicitor is in a position to point out, "Examiner said X, Appellant hasn't specifically shown why X is wrong, game over." 

Gotcha.

I still don't understand why you feel you need to make this choice, but I suppose you must have your reasons.  Me, I would present both arguments, and then some.

I'm just trying to fully understand what my options are. Certainly there are factual scenarios where the Examiner's rationale does make sense and I don't have a great angle to attack it. If that's the end of it, then I don't argue Rationale-to-Combine. But maybe there are other reasons why, overall, a POSITA wouldn't make the combination. Just wanted to see what others thought about handling this.
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Warren Barquist

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I'm not sure what the current state of the law is with 103, but if my application is being examined under AIA's 103, Please answer me this:  The Examiner did not give ANY rationale in his 103 rejections of my claims.  He just said "...it would have been obvious to combine..."

Should I simply respond by saying the Office failed to provide a rationale?  Or do I need to say more?
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still_learnin

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I'm not sure what the current state of the law is with 103, but if my application is being examined under AIA's 103,
AIA doesn't change the basic framework of 103.

Please answer me this:  The Examiner did not give ANY rationale in his 103 rejections of my claims.  He just said "...it would have been obvious to combine..."

Usually there is a clause after the "would have been obvious", something like "in order to make the widget faster." But sometimes not. Read the entire rejection -- including Remarks section, which may appear separately from the rejection itself -- to make sure you've extracted every nugget of information that the Examiner has provided.

Should I simply respond by saying the Office failed to provide a rationale?  Or do I need to say more?

I would make it more explicit.

Here's why I say that. A great many Applicants say something along the lines of "the Examiner failed to provide an articulated rationale with rational reasoning," yet when I read the file, I do see a rationale provided by the Examiner. Maybe not a strong one, but something. I think many Applicants just paste in case cites and quotes without thinking.

If you review the Office Action again and are still convinced there is no rationale whatsoever, I'd write an argument saying "no rationale whatsoever."

Perhaps a good candidate for an Examiner Interview ... "help me out here, I just don't see that you gave any rationale to combine whatsoever, please show me what I'm missing."
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