Rejection based on identical structure and capable of performing the function

[Retarius]

I recently received a 103 rejection, stating "a comparison of the claimed invention with said prior art reference reveals both devices are apparently stucturally identical and capable of performing the recited function". The supporting case law cited was KSR v. Teleflex: "If a technique has been used to improve one device, and a PHOSITA would recognize that it would improve similar devices in the same way, using the technique is obvious unless its actual application is beyond that person's skill".

Although the invention is different than this, I think the below analogy is mostly accurate for the analysis here, with one notable exception. One thing to keep in mind is that a car using an older engine is well-known and common today. In the actual art, the new combination is unheard of and thats why it was filed as an application in the first place.

Think of the invention as a car that incorporates as a claim element an engine that was removed from a fully functional older car.  The cited art reference only teaches a car that includes "an engine", without regard to where the engine came from.

Now the specification of the application clearly describes why one would want to use an engine from a working older car: The older engine may not be made anymore and is desirable to use now, or the other parts of the new car (body, suspension, etc) are superior in various ways to the other parts of the old car, or new new car can simply do things that the older car can't do.

So my questions about this rejection are:

1. Is the rejection as I have described it valid?
2. Is it necessary that the claim be modified to include rationale such as the engine is no longer available as a new engine? Or is it just necessary to point out that the specification provides teachings to support why an older engine is required?
3. Is there any available case law that may help my argument?

[Tobmapsatonmi]

1. Is the rejection as I have described it valid?
2. Is it necessary that the claim be modified to include rationale such as the engine is no longer available as a new engine? Or is it just necessary to point out that the specification provides teachings to support why an older engine is required?
3. Is there any available case law that may help my argument?

1.  To the extent I understand your hypo, I think it is valid, except I also wonder why it wasn't a 102 rejection, if "the claimed invention with said prior art reference reveals both devices are apparently stucturally identical and capable of performing the recited function".

2.  I don't think this will help unless you've got something in your claim specific to this.  Is the claim and the prior art really identical?  Or in your hypo claim, do you specifically set out that the engine must be X years older than the main body of the auto?  In this second case, then, I can understand why it's a 103 (not 102 as asked above).  Also, while we're working on the car claims, I can't see how you can include claim language to the "rationale such as the engine is no longer available as a new engine". 

If your hypo is truly generally analogous to your actual claims, I think you're sunk (but would be happy to be corrected by another commenter), because people have been jacking old serviceable parts into newer things that need a part for centuries. 

[Retarius]

Thnx for the response, Tobmapsatonmi. At least from the Examiner's POV, the reason it was a 103 instead of a 102 was because the primary reference didn't disclose all of the limitations. There was a different limitation, not related to the "engine", that clearly wasn't taught in the primary, but was taught in another ref.

There are other limitations I can attack as not taught by the cited art, but if I am able to refute the "engine" limitations that might be the strongest argument.

[JimIvey]

Think of the invention as a car that incorporates as a claim element an engine that was removed from a fully functional older car.  The cited art reference only teaches a car that includes "an engine", without regard to where the engine came from.

I think this is your problem.  I think the examiner is completely ignoring that the engine "was removed from a fully functional older car."  My guess is that the examiner thinks the limitation is completely meaningless, as if you recited that the engine "was named 'Jeff' by its owner."

I don't think that's completely kosher.  But I also don't think it's worth fighting.  I'm sure the examiner could find examples of people removing engines from older cars and putting them in (slightly?) newer cars.

What I think you should do is focus on what advantage you achieve by using an engine from an older car.  Is it really important that the engine be removed from a fully functional car?  What if the donor car was in an accident or even was just missing a few parts so that it didn't function properly?  What does the engine from the older car bring you that you couldn't get from the engine that was already in the car?

If it's just that older engines are cheaper, you have problems.  If it's that the older engine fits better, pairs with the newer transmission better, something about the lack of a catalytic converter does something for your particular application (other than pollute more or any other things removing a catalytic converter would be known to do), or some other technical advantage over the newer engine, then you have something. 

Then, find a way to put the technical advantage of the older engine in your particular application into the claim(s).  And, I'd remove the "that was removed from a fully functional older car" language, assuming it was just a proxy for the true technological importance of the older engine.

Regards.

[Retarius]

Jim,

Many thanks for the detailed and helpful reply! The example I gave of an "engine" is only helpful in a limited sense. In the actual art area I am dealing with, imagine that the process of removing an older engine from the older car almost always destroys the older engine. My client has a trade secret process to reliably preserve the older engine when removed. This is also why there is no art on engine removal (expense is the other issue), and why the examiner couldn't find art that teaches removing an older engine from an older car; it doesn't exist.

Also imagine that the engine provides 99.999% of the functionality for the older car, such that if the engine is good the older car is fully functional. That said, I could simply indicate that the engine is good without regard for the fully functional older car.

>What does the engine from the older car bring you that you couldn't get from the engine that was already in the car?
Think of it this way: All "engines" have slightly different functionality, and customers need the unique functionality that is only present in specific older "engines". Also assume the older "engine" is no longer made, or it is far too expensive to tool up and produce a new version of the  older "engine". Also, the new "car" can go places the older car simply can't go, hence the need to have the older functionality in the newer car.

It isn't an issue of cheaper at all; its an issue of having the older engine functionality in a car that can go different places. I wouldn't say the older engine has technical advantages over newer engines. It is functionally an apple while newer engines are oranges, limes, or lemons (not figurative!).

It sounds from your comments that I may have better success by adding something like "the older engine is not currently available in the newer car"?

[JimIvey]

Okay, let's see if I understand.

Your client has a trade secret method of retrieving the engine from an old car without destroying the engine, and that hasn't been done before.  I thinking of something like an eye transplant.  Taking the eye out severs the optic nerve and destroys the eye.

But the client doesn't want to patent the trade secret method because he wants to keep that secret.  Of course, if someone else comes along and develops his same method (independent invention by another) and they patent the idea, he won't be able to continue using his method.  In addition, if he's been using this method in the ordinary course of business for more than a year, there's a good chance that patents aren't available to him (or anyone) for this method.

What he wants to do instead is patent the use of the thing he extracts.  Since there's never been a viable extracted thing before, any use of it should be novel.

That's tricky.  I think the examiner might be right.  Given a viable engine extracted from an older car, what do you think most people would do with it?  My guess would be to install the engine in a car that needs a viable engine of that type.  If the viable extracted thing is meant to be a direct replacement for a known thing, then there's a strong argument that using the extracted thing as a direct replacement for that thing is obvious.

Maybe the thing not taught in the first reference is used in your situation to stabilize, help, improve the newly implanted thing.  If so, you might have an argument that you're not using that thing for it's usual purpose.  Though the KSR decision wanders a bit, I think there are basically two types of obviousness under KSR: (i) combinations of known things that all function as expected and (ii) known solutions to known problems.  If your extra thing is not performing its typical function and is not solving a known problem with a known solution, you might have something.

Regards.

[Tobmapsatonmi]

I now see a different, additional issue, although perhaps it's only a function of the particular hypo and hopefully not present in the real case.

But - if you claim a thing that is made by a trade secret process, and you want to keep the process secret, then arguably you fail to enable what you claim.

[Retarius]

Jim - since a little more involved I'll comment individually to each of the things you brought up:

>Okay, let's see if I understand.

>Your client has a trade secret method of retrieving the engine from an old car without destroying the engine, and that hasn't been done >before.  I thinking of something like an eye transplant.  Taking the eye out severs the optic nerve and destroys the eye.
Yes, thats the right way to think of it

>But the client doesn't want to patent the trade secret method because he wants to keep that secret.  Of course, if someone else comes along >and develops his same method (independent invention by another) and they patent the idea, he won't be able to continue using his method.  >In addition, if he's been using this method in the ordinary course of business for more than a year, there's a good chance that patents aren't >available to him (or anyone) for this method.
Understood, and correct.

>What he wants to do instead is patent the use of the thing he extracts.  Since there's never been a viable extracted thing before, any use of >it should be novel.
Correct.

>That's tricky.  I think the examiner might be right.  Given a viable engine extracted from an older car, what do you think most people would >do with it?  My guess would be to install the engine in a car that needs a viable engine of that type.  If the viable extracted thing is meant to >be a direct replacement for a known thing, then there's a strong argument that using the extracted thing as a direct replacement for that >thing is obvious.
Now, if extracting a viable engine from an older car is novel, why wouldn't that be a novel claim limitation to for example a method for building a new car?
Note that the older engine is NOT a direct replacement for engines that are currently available. It has needed features that newer engines don't have, and the older engines are in general, not available by themselves to build into newer cars.

>Maybe the thing not taught in the first reference is used in your situation to stabilize, help, improve the newly implanted thing.  If so, you >might have an argument that you're not using that thing for it's usual purpose.  Though the KSR decision wanders a bit, I think there are >basically two types of obviousness under KSR: (i) combinations of known things that all function as expected and (ii) known solutions to >known problems.  If your extra thing is not performing its typical function and is not solving a known problem with a known solution, you >might have something.
Yes, the older engine in the new car can do things that the older engine in the older car clearly can't do. Perhaps adding some language around describing the older car in order to differentiate from the newer car would be sufficient to provide understanding of a new solution to a known problem?

[JimIvey]

>That's tricky.  I think the examiner might be right.  Given a viable engine extracted from an older car, what do you think most people would >do with it?  My guess would be to install the engine in a car that needs a viable engine of that type.  If the viable extracted thing is meant to >be a direct replacement for a known thing, then there's a strong argument that using the extracted thing as a direct replacement for that >thing is obvious.
Now, if extracting a viable engine from an older car is novel, why wouldn't that be a novel claim limitation to for example a method for building a new car?
Note that the older engine is NOT a direct replacement for engines that are currently available. It has needed features that newer engines don't have, and the older engines are in general, not available by themselves to build into newer cars.

>Maybe the thing not taught in the first reference is used in your situation to stabilize, help, improve the newly implanted thing.  If so, you >might have an argument that you're not using that thing for it's usual purpose.  Though the KSR decision wanders a bit, I think there are >basically two types of obviousness under KSR: (i) combinations of known things that all function as expected and (ii) known solutions to >known problems.  If your extra thing is not performing its typical function and is not solving a known problem with a known solution, you >might have something.
Yes, the older engine in the new car can do things that the older engine in the older car clearly can't do. Perhaps adding some language around describing the older car in order to differentiate from the newer car would be sufficient to provide understanding of a new solution to a known problem?

Something to remember is that trade secrets and patents are inherently incompatible.  Your client has to choose.

Tobma touched on this.  If the extracting of the thing is part of the invention, you have to teach others how to do it and you have to disclose your best mode.  But your client doesn't want to do that.  So, your application has to act as if the extracted thing is a given -- it just exists.

Once it exists, your claim has to recite a non-obvious use for it.  If a viable car engine just exists, what more obvious use of it is there other than just putting it into a car, even if it needs some modification?

Let's take a step back and look at the real issue.  The invention is a method of extraction.  The client wants to keep that as a trade secret and patent it at the same time.  So, the tack is to patent what is arguably an obvious use (probably the only use) of the extracted thing.  That's a farce.  You can't protect a thing with both trade secret and a patent.  You just can't.

Well, maybe you can, but you're going to run into problems you normally wouldn't if you were using patents as intended.  And, it looks like you have.  But I don't have much experience in using patents for purposes for which patents are not intended, so I can't really help.

Regards.