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Author Topic: Is an element that the specification describes as "conventional" obvious?  (Read 810 times)

Tiberius452

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Say a patent claims elements A B C & D of some widget. The specification of the patent calls elements A B & C conventional and ordinary parts of widgets of its type, but claims that element D is some new and inventive feature that makes the claimed widget better. Later during litigation, a piece of prior art is found to teach elements A B & D, but not element C. Is there some case law that indicates that element C would be obvious based on that portion of the specification?
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lazyexaminer

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You would still need to do the usual obviousness analysis, you need some reason to add D to ABC, or add C to ABD.

That is, just because ABC was known (assuming it was in fact admitted) and ABD were known doesn't mean ABCD was necessarily obvious. Maybe before the invention C and D were thought to be mutually exclusive or would not work well together.
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Tiberius452

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That makes sense, but assuming that there's no unexpected result of combining D with ABC would that statement in the specification be helpful for proving obviousness? Say the prior art has an element C* that produces a different desired outcome than C but they both work equally well with element D. Like a patent for a brown car with a spoiler and a prior art patent for a blue car with a spoiler.
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wildkrazyguy

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Element C would be (arguably, but probably) applicant admitted prior art, in which case element C is usable for an obviousness analysis even without additional reference.  This is especially true if it is in the background section. See ex parte shirley, p 17 section III and ex parte reinart (or just search google for applicant admitted prior art or admitted prior art and you will find a lot).

See Sjolund, 847 F.2d at 1576-77 (finding that the description of a “conventional crap trap,” as described in the background section
of U.S. Patent No. 4,221,071 (filed Jan. 29, 1979), was admitted prior art).
« Last Edit: 04-19-17 at 03:28 pm by wildkrazyguy »
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lazyexaminer

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I don't know how much the statement in the spec would help. You are basically saying, it would have been obvious to add C because C is conventionally part of a widget. That's something I guess, but not a lot. To me, assuming this is enough for an admission, the spec is just saying that you don't have to find a reference for ABC, that is known in the prior art. It's not really providing any reason to use C.

If I were formulating a rejection, assuming there is no explicit motivation, I would use one of the rationales set forth in MPEP 2143 I. It would seem like A, and maybe C and D, would apply, depending on what this actually is. Then I'd explain what the MPEP asks to explain.
(A) Combining prior art elements according to known methods to yield predictable results;
(C) Use of known technique to improve similar devices (methods, or products) in the same way;
(D) Applying a known technique to a known device (method, or product) ready for improvement to yield predictable results;

I understand this doesn't necessarily mean anything in litigation, but that is what I know.
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still_learnin

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Say a patent claims elements A B C & D of some widget. The specification of the patent calls elements A B & C conventional and ordinary parts of widgets of its type, but claims that element D is some new and inventive feature that makes the claimed widget better. Later during litigation, a piece of prior art is found to teach elements A B & D, but not element C. Is there some case law that indicates that element C would be obvious based on that portion of the specification?

I agree with the others: an admission that C is known is just that -- an admission that C is prior art. This doesn't get you all the way to obvious, since you still need a rationale for combining C with A, B, D.
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NJ Patent1

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My two cents;  it is obvious to use a "conventional" widget to perform its "conventional" function.  But this may be a litigation-centric view (supported by KSR I think)
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