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Author Topic: Motivation to Combine When Modification Would Work Against Claimed Invention  (Read 620 times)


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Dear Colleaugues,

Examiner asserts that “because the modification would work against the intended use of the instant apparatus does not render the rejection improper if all the structural limitations are taught with clear motivation to make the modification.”

Is this logic not flawed?
If the combination of references work against the claimed invention, how can the structural limitation be taught with clear motivation to make the modification? ???
Is it just me?
I would welcome any input from our experienced members.

Thank you in advance.


Robert K S

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You could point the examiner to cases like Ex parte Zhou, No. 2014-002977 (P.T.A.B. May 24, 2016), Ex parte Hope, No. 2014-005129 (P.T.A.B. Apr. 11, 2016), Ex parte Hager, No. 2014-000978 (P.T.A.B. Mar. 29, 2016), Ex parte Clark, No. 2014-003043 (P.T.A.B. Feb. 29, 2016), Ex parte Coleman, No. 2014-004530 (P.T.A.B. May 18, 2016), Ex parte Brieitenbach, No. 2013-005344 (P.T.A.B. Jan. 15, 2016), etc.

Without knowing further details, it sounds like the examiner lacks a basic grasp of obviousness law.  This is more serious than a disagreement over what the claims mean or what the art teaches.  In cases like this it can often be helpful to request an interview with the examiner and the examiner's supervisor.
This post is made in the context of professional discussion of general patent law issues and nothing contained herein may be construed as legal advice.


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Here is what I think the Examiner is saying (maybe giving him too much credit, but see if this helps).

The fact that the proposed combination/modification would work against YOUR INVENTION is irrelevant.  All that matters is your claims.  As long as the prior art provides some motivation to combine the references to arrive at the CLAIMS, it doesn't matter what YOUR INVENTION as described in the specification is.

What you need to do:
(1) find a flaw in the combination of references provided by the Examiner.  This is done independent of your claims or specification.  Just find a flaw in the reasoning for combining the prior art.
(2) amend your claims to recite some feature or features directed to the inventive feature that you think the prior art teaches against.  Then you can argue the rejection BASED ON THE CLAIMS rather than what you or your client "thinks" the invention is.
This comment: does not represent the opinion or position of the PTO or any law firm; is not legal advice; and represents only a few quick thoughts from the author, not a well-researched treatise.  Seek out the advice of a competent patent attorney for answers to specific questions you may have.


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I think the key is the phrase "intended use". The examiner's  combination may be worthless for your intended use, but the intended use of apparatus claims don't get much weight at the office.


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Robert's cases are referring to the combination defeating the intended purpose of the references. That is of course not permitted but that is not the issue presented in the original post, which is the combination defeating the intended purpose of the claims under review.

It is true the examiner may not know what he is doing, but this seems more complicated to me than merely a lack of basic grasp of obviousness law.

Is the purpose of the claimed invention actually claimed? Is it claimed in such a way that it requires patentable weight, as Bob suggests?

To what extent does your stated purpose of the claimed invention (especially an unclaimed one) matter in an obviousness analysis?

For example, I cannot use your spec, i.e. hindsight, to provide doesn't matter that the inventors told me how great the combination is. So does it matter if the inventors told me the combination would not be so great? Even if the art itself points me to a good motivation? What if everyone in the art always does this, but only the inventor is the outlier who said "no don't do that it would defeat my purpose." I think all of these things would be factors that would need to be weighed.

The point of this exercise is to determine if the claimed invention would have been obvious to a PHOSITA (not just the inventor) at the time of the invention (but not using the invention as a roadmap). So I think this isn't a black and white thing and will depend on all the evidence and how strong the teachings are on all sides.
I'm not your examiner, I'm not your lawyer, and I'm speaking only for myself, not for the USPTO.


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