Inventive examiner ?

[ProSeGuy]

Hi,

On a recent final office action the examiner equated (103 obvious) a prior art microwave popcorn popper with my dependent claim of a simple push-up style food serving container described in my specification (similar to US 1933596) . The popper has a central tube where raw popcorn is microwave heated at the tube bottom and once popped, the popcorn automatically moves up to the tube where it encounters pivoting plates that need to be pushed open to exit the tube into the main container.
The examiner states ...since the corn kernels are pushed up through the tube into the container, said container includes a "push-up" style serving means".

Seems like quite a stretch. Thanks for your thoughts.

[mersenne]

103 rejections of independent claims are always at least a bit of a stretch.  They're also infrequently done exactly correctly -- it's a lot of work, and the temptation is great (on both sides) to just put the references next to each other, squint a little bit, and say "it would be obvious" (or, for the inventor, "those parts don't fit together exactly.")

You really have to sharpen your mental knife to deal with these: go through the elements and cross off everything that's "close enough" that you'd feel stupid saying it's different.  Then, for what's left, look carefully at your exact claim words, and the prior-art references, and ask yourself how the words could possibly map onto the prior art.  (Note: you're not looking at what you intended the words to mean -- you're looking at what they could possibly mean!)

If you can map them on without feeling stupid for explaining it that way, you probably need to amend your claims.  If it requires an explanation that makes the explainer look stupid, then make the argument (against a NFOA), or force the examiner to present the stupid argument to the Board (via appeal).

If it's uncertain either way, then you break out the even-sharper knives and try arguing about (in order of my preference, anyway):

• Combination renders one or both references inoperative
• Combination changes principle of operations
• Combination lacks motivation
• Combination from distant and unrelated fields of art

(Once you get past (2), I think your chances are pretty poor, and it may be time to reevaluate the value of a potential patent vs. the cost of obtaining it.)

[Robert K S]

Semantics, but... while there may be other reasons for (3) that do not include (1) and (2), I believe (1) and (2) are both considered reasons for (3), i.e., a person skilled in the art will not be motivated to make the combination when it will render a device of a reference inoperative or will change the reference's principle of operation.  See, e.g., Plas-Pak Indus. v. Sulzer Mixpac AG, 600 F. App'x 755, 758-59 (Fed. Cir. 2015) (nonprecedential); In re Mouttet, 686 F.3d 1322, 1332 (Fed. Cir. 2012); In re Ratti, 270 F.2d 810, 813 (C.C.P.A. 1959); In re Gordon, 733 F.2d 900, 902 (Fed. Cir. 1984); DePuy Spine, Inc. v. Medtronic Sofamor Danek, Inc., 567 F.3d 1314, 1326 (Fed. Cir. 2009).

[Tobmapsatonmi]

I think the OP's specific question (correct me if wrong) is the following:

The prior art popper does not have any physical mechanism or means for pushing the product. Instead, expansion of the kernels provides the motive force.

Is it proper for the examiner to equate this to OP's claim which apparently requires an actual mechanism/means to push the product up?

[mersenne]

You're right (as usual), Robert.  My "no motivation" in #3 is the way I think about it when the references (under BRI) show the features, and could combined (mechanically, operationally, etc.) but the Examiner's motivation is the typical "it would be better" -- there's no teaching or suggestion in any of the prior art that there is a problem to be solved.  I don't like making that argument -- it hasn't often been persuasive for me -- and it feels more like a technicality that would color subsequent enforcement activities.

I didn't notice that OP's situation is a dependent claim...I spend much less effort on 103s against those, unless I'm planning to roll the dependent up and use it to establish patentability.  If the independent claim is patentable, then I don't care about the dependent-claim 103s.  And if I need the dependent claim to get around references, I'll roll it up into the independent.  I guess the main place I'd argue extensively about a dependent is if I had some possibly-persuasive arguments about the independent, but also wanted to signal that the inventor would be willing to take an objection to the dependent (without also guaranteeing a final OA by actually amending to roll up the dependent).

It's all a game of little advantages: how to get as much useful work as possible out of the examiner before you have to pay the next set of filing fees!

On the actual dependent claim (which we don't have, but which Tobmapsatonmi suggests requires a mechanism), I think if the claim requires a thing, and the prior art uses some feature, characteristic or effect of the material under processing to accomplish a similar result, that's a difference that should be claimable.  But it would require a careful and sharp-witted analysis of the actual claim language (including the broadest reasonable interpretation thereof).

[ProSeGuy]

Thanks mersenne, Robert K S and Tobmapsatonmi for your extensive thoughts. I'm hoping to have an interview with the examiner early next week and since having my independent claim rejected as well, was looking to possibly combine the dependent claim. The argument about a thing veruses a feature, characteristic or effect is helpful. Motivation seems also a big factor. Thanks again.