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Author Topic: Rebutting Examiner's specific rationale vs Offering reason NOT to combine  (Read 9241 times)

DCIPAgent

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In a situation where examiner is simply alleging that method of doing something is obvious based on similar area of technology, e.g., method of converting data from sign language visuals to text is obvious because microphone in your phone also converts electrical signals into text. Both technologies are drastically different. Claims are pretty similar in terms of customizing/optimizing algorithms for converting sensor data to text but application claim specifically are for data received from sign langage visuals, calibration algorithms are different on how to convert are different but overall claim is little broad which I can't change. There is good argument for motivation and reasonable expectation of success here but can I also argue in terms of scope/content and comparison of claim with PA ?
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still_learnin

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In a situation where examiner is simply alleging that method of doing something is obvious based on similar area of technology, e.g., method of converting data from sign language visuals to text is obvious because microphone in your phone also converts electrical signals into text. Both technologies are drastically different.

Claims are pretty similar in terms of customizing/optimizing algorithms for converting sensor data to text but application claim specifically are for data received from sign langage visuals, calibration algorithms are different on how to convert are different but overall claim is little broad which I can't change.

There is good argument for motivation and reasonable expectation of success here but can I also argue in terms of scope/content and comparison of claim with PA ?

Just to clarify: you're saying you think the Examiner made a good case for the rationale to combine, and you're asking about strategies you can use to rebut the 103? And more specifically, you're asking if you can make a "combination of references don't teach" argument even though it's a 103 not a 102?

If not, please clarify what you're asking.

FWIW, I think your question is better suited as a new topic rather than a change of direction in this topic.
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The above is not legal advice, and my participation in discussions on this forum does not create an attorney-client relationship.

DCIPAgent

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Thanks for quick reply. Yes let me put as new topic.

Consider the following example. Invention is about converting gesture to text where the method of translation involves receiving signals, calibrating, optimizing, and translating to text. PA1: Consider SIRI, basically it receives electrical signals from microphone where it calibrates to user (different calibration technique than invention), optimizes to his voice and translates it to text. PA2: suggests similar calibration technique as invention but fails.

There can be argument made about motivation to combine/reasonable expectation of success.  Can I also argue in terms of scope/content and comparison of claim with PA1 because both are completely different technologies, speech is not same as gesture? I guess I wanted know if there are specific points to argue when examiner tries to claim that one type of translation method for one technology should work for translation in other technologies too.
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still_learnin

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Consider the following example. Invention is about converting gesture to text where the method of translation involves receiving signals, calibrating, optimizing, and translating to text. PA1: Consider SIRI, basically it receives electrical signals from microphone where it calibrates to user (different calibration technique than invention), optimizes to his voice and translates it to text. PA2: suggests similar calibration technique as invention but fails.

There can be argument made about motivation to combine/reasonable expectation of success.  Can I also argue in terms of scope/content and comparison of claim with PA1 because both are completely different technologies, speech is not same as gesture? I guess I wanted know if there are specific points to argue when examiner tries to claim that one type of translation method for one technology should work for translation in other technologies too.

Sounds like you want to attack PA1 on the grounds that PA1 and your claimed invention "are completely different technologies, speech is not the same as gesture." I think this would be a mistake. Because from what you've said about the rejection, the Examiner appears to be asserting that the combination teaches a particular algorithm for user-specific calibration of visual signals.

IOW, you shouldn't attack PA1 -- own its own, as a standalone reference -- because the Examiner isn't relying solely on PA1. You should attack the combination because that's what the Examiner is relying on.

However, you need to really understand what the Examiner is asserting before you decide what argument is appropriate.

If the Examiner has taken pieces of the references and combined then in a way results in your claimed invention, and he's provided a rational reason for combining them, then the Examiner has made a prima facie case. Then you determine whether the combination "fits" (technically) or "makes sense" (technically) or "works" (technically). If not, that's your argument to rebut the prima facie case. You may have alluded to the last when you said "PA2: suggests similar calibration technique as invention but fails."

But sometimes the Examiner has holes in his combination, so you don't need to reach the issue of whether it makes sense to combine them. That may be the case here.

In your characterization of the reference, it sounds like the Examiner is taking PA1's device that converts speech into text using one calibration technique, and modifying PA1 by plugging another calibration technique from PA2 (one appropriate for visual gestures) in place of PA1's technique (one appropriate for voice). If that's all he's asserting, his rejection sounds flawed. In the rejection laid out in my previous sentence, the combination converts speech to text. Where/how does the combination of PA1 and PA2 actually convert visual gestures to text, which is what you claim?

Note that if the Examiner has a hole in his combination, like my example above, and you point this out in your traversal, it's almost certain that the next rejection will add a third reference to plug up the hole. Here, I'd expect him to find a reference that teaches the basics of converting visual gestures to speech.

You should also be sure that the Examiner is actually giving patentable weight to all your claim limitations. If he's treating some of the claim limitations as "non-functional descriptive matter" or "intended use," then he's taking the position that the law says such limitations can be ignored and he doesn't have to find them in the references.

Like I said above, it's key for you to understand exactly what the Examiner is asserting in the rejection, i.e., what pieces of the references are being mapped to each of your claim elements. If you can't figure this out from this Office Action plus any previous ones, then you may want to schedule an Examiner Interview, with the goal of better understanding the rejection.
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The above is not legal advice, and my participation in discussions on this forum does not create an attorney-client relationship.

DCIPAgent

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Thanks for the reply. Yes examiner is very vague in his response. He doesnt provide TSM or reason to combine references or reason why speech mechanism would work for gesture. So, I definitely have a lot to argue here.

I do have a stupid question. If prior art claim has "optimization" of algorithm and application has "customization" of algorithm, where prior art really optimizes a code meaning makes it faster for processor to run vs. customization in claimed spec is where customized algorithm is generated to meet specific memory space. The claim of app says "customization" and but spec calls it "optimization" in many places of the application. Since you argue claim in light of spec, can I really argue optimization vs. Customization because they are two separate things?
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Peacefulness

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Thanks for the reply. Yes examiner is very vague in his response. He doesnt provide TSM or reason to combine references or reason why speech mechanism would work for gesture. So, I definitely have a lot to argue here.

I do have a stupid question. If prior art claim has "optimization" of algorithm and application has "customization" of algorithm, where prior art really optimizes a code meaning makes it faster for processor to run vs. customization in claimed spec is where customized algorithm is generated to meet specific memory space. The claim of app says "customization" and but spec calls it "optimization" in many places of the application. Since you argue claim in light of spec, can I really argue optimization vs. Customization because they are two separate things?
You can make any arguments you would like to make.  The question is whether your arguments are persuasive enough.  Do you want to spend your time and effort arguing over wording between optimization vs customization which are similar but can be taken as different or the same depending on which dictionary you use.  Or do you want to just concede that there is a good reason for the confusion and misunderstanding under broadest reasonable interpretation, and instead simply amend the claims to bring in the actual wording and usage from the specification so that you clearly distinguish your claims from the prior art that the examiner has found.  One choice will likely go around and around in circles, and the other will actually move the prosecution forward and maybe let you get that allowance.  What is your client's actual goal?  Of course the applicant has the responsibility for making the choice of which one they want to do.
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