First Action Final after RCE

[steelie]

Sometimes I feel like steelie is a satire account, but I don't know his Alice-centered world.

I don't see many RCEs either. Either appeal or we come to some agreement. I will get to one RCE from time to time but I can't remember the last time I had a second in a case.

I'll continue this discussion since the OP is in the computer arts.

In pure software/business methods, we have very low allowance rates.

What makes it hard for attorneys in the software arts, is that nearly all software prior art is combinable.

Imagine that. All prior art in the entire field is available to be combined into a rejection. 

Mostly, every claimed limitation can be found and pieced together, like a programmer would do to when combining different pieces of code. So, commonly, allowability comes down to whether a 4 or 5+ combination of references would be non-obvious.

However, to get to the ultimate 4-5+ combination end result, is not a straight line. I don't always find the best art, the attorney doesn't always make the best amendments. Often, there is plenty of substitute prior art to swap in to replace weaker references along the way as the attorney clarifies the claim language. Plus, there's Alice.

So, it's a long slog through RCE-ville. 

[ThomasPaine]

"All prior art in the entire field is available to be combined into a rejection."

That's true in every art.  If it's from the field of endeavor or reasonably pertinent, it's "available to be combined." 

"Mostly, every claimed limitation can be found and pieced together..."

That's also true in every art. 

"So, commonly, allowability comes down to whether a 4 or 5+ combination of references would be non-obvious."

I guess I'm glad that you have some limits on how far you're willing to go to conclude something is obvious, but from reading your posts I don't think you really have a grasp on the concept.

Of course, when all you're taught is how to reject, I guess every claim looks like a nail to your obvious hammer.

[steelie]

"All prior art in the entire field is available to be combined into a rejection."

That's true in every art.  If it's from the field of endeavor or reasonably pertinent, it's "available to be combined." 

"Mostly, every claimed limitation can be found and pieced together..."

That's also true in every art. 

"So, commonly, allowability comes down to whether a 4 or 5+ combination of references would be non-obvious."

I guess I'm glad that you have some limits on how far you're willing to go to conclude something is obvious, but from reading your posts I don't think you really have a grasp on the concept.

Of course, when all you're taught is how to reject, I guess every claim looks like a nail to your obvious hammer.

Maybe I wasn't clear enough.

In the software arts, attorneys don't make "combination doesn't make sense" or "combination doesn't work" or "combination teaches away" or "combination breaks the purpose", because they know computer programmers can piece together code like this.

Combining pieces of code always makes sense (adds features), always works, can always be done, never breaks the purpose ...

So, mostly, the only attorney argument I ever see is whether a limitation is taught or not.

I suspect many other AUs have to deal with the 103 arguments of combinability.

[midwestengineer]

Combining pieces of code always makes sense (adds features), always works, can always be done, never breaks the purpose ...

None of these statements are true.

Adding a feature for the purpose of getting a feature is a circular argument that is routinely shot down by the PTAB.

The modification does not always work/cannot always be done because one has to resolve the level of ordinary skill in the art to make the determination.

Modifications proposed by Examiners commonly render one of the pieces of art unsatisfactory for its intended use/impermissible change operation.

All of these arguments are common, winning 103 arguments in the computing arts.

[steelie]

Combining pieces of code always makes sense (adds features), always works, can always be done, never breaks the purpose ...

None of these statements are true.

Adding a feature for the purpose of getting a feature is a circular argument that is routinely shot down by the PTAB.

The modification does not always work/cannot always be done because one has to resolve the level of ordinary skill in the art to make the determination.

Modifications proposed by Examiners commonly render one of the pieces of art unsatisfactory for its intended use/impermissible change operation.

All of these arguments are common, winning 103 arguments in the computing arts.

These seem like arguments you use in some other art.

1. No attorney is going to argue that one of ordinary skill in the art can't combine separate software features.

2. Mostly, examiners combine software prior art as complimentary features,  so software combinations wouldn't "render one of the pieces unsatisfactory".

3. I didn't understand your first point, however, clearly, examiners do combine features.They do so based on a motivation statement, not circular reasoning.

[smgsmc]

3. I didn't understand your first point, however, clearly, examiners do combine features.They do so based on a motivation statement, not circular reasoning.

Waaaay too many times, the motivation statement is:  "The motivation to combine A and B is to attain a combination of A and B."

[steelie]

3. I didn't understand your first point, however, clearly, examiners do combine features.They do so based on a motivation statement, not circular reasoning.

Waaaay too many times, the motivation statement is:  "The motivation to combine A and B is to attain a combination of A and B."

Yeah, that's the nature of searching for something, and then retroactively trying to figure out some motivation to combine it in.

I simply use the applicant's motivation.

A is combined with B ... "so the user can see the information they downloaded" (the same reason applicant is claiming the feature)

The only attorney argument I ever see about this is , rarely, an attorney will argue *conclusory motivation*.

However, I have never been reversed by PTAB based on an attorney's motivation arguments.

[fewyearsin]

Yeah, that's the nature of searching for something, and then retroactively trying to figure out some motivation to combine it in.

I simply use the applicant's motivation.

A is combined with B ... "so the user can see the information they downloaded" (the same reason applicant is claiming the feature)

The only attorney argument I ever see about this is , rarely, an attorney will argue *conclusory motivation*.

However, I have never been reversed by PTAB based on an attorney's motivation arguments.

Umm, I hope you're joking.

This is pretty much the definition of "hindsight."  You are combining for the reason that Applicant has already told you about.  The only reason you know about that motivation is because of Applicant.

If there is one motivation I try to avoid, it is the same motivation that Applicant used, UNLESS I have another reference that teaches the motivation prior to Applicant.

Applicants regularly argue against my motivation as being hindsight when it is the same as theirs, but as I noted, IF I used their own motivation, I cited to a prior reference as my source.

[Robert K S]

I simply use the applicant's motivation.

In spite of your confidence, you must be aware that another name for relying on the content of the applicant's own specification to provide the reasoning used to support rejecting the application is "hindsight".

Edit: just as fewyearsin says.  My hitting "post" got delayed by an examiner interview.

[steelie]

Yeah, that's the nature of searching for something, and then retroactively trying to figure out some motivation to combine it in.

I simply use the applicant's motivation.

A is combined with B ... "so the user can see the information they downloaded" (the same reason applicant is claiming the feature)

The only attorney argument I ever see about this is , rarely, an attorney will argue *conclusory motivation*.

However, I have never been reversed by PTAB based on an attorney's motivation arguments.

Umm, I hope you're joking.

This is pretty much the definition of "hindsight."  You are combining for the reason that Applicant has already told you about.  The only reason you know about that motivation is because of Applicant.

If there is one motivation I try to avoid, it is the same motivation that Applicant used, UNLESS I have another reference that teaches the motivation prior to Applicant.

Applicants regularly argue against my motivation as being hindsight when it is the same as theirs, but as I noted, IF I used their own motivation, I cited to a prior reference as my source.

You're right, it's hindsight reasoning.

However, there's nothing wrong with it.

MPEP 2145
A.Impermissible Hindsight
Applicants may argue that the examiner's conclusion of obviousness is based on improper hindsight reasoning. However, "[a]ny judgment on obviousness is in a sense necessarily a reconstruction based on hindsight reasoning, but so long as it takes into account only knowledge which was within the level of ordinary skill in the art at the time the claimed invention was made and does not include knowledge gleaned only from applicant's disclosure, such a reconstruction is proper

[steelie]

I simply use the applicant's motivation.

In spite of your confidence, you must be aware that another name for relying on the content of the applicant's own specification to provide the reasoning used to support rejecting the application is "hindsight".

Edit: just as fewyearsin says.  My hitting "post" got delayed by an examiner interview.

In the software area, the applicant's specification rarely, if ever specifies *why* they have specific features.

So, there's no "gleaning motivation from the specification that can be argued to influence conclusions of obviousness"  , rather you can just figure out yourself, because it's obvious why they have such a feature.

For example, a "download button". The spec won't say why that exists, but it's pretty clear "to download programs".

I have *never* seen an attorney make a "hindsight reasoning* argument.

[fewyearsin]

Yes, Steelie, that was my point - you need to show that you have evidence OTHER THAN THE APPLICATION YOU ARE EXAMINING that provides the needed motivation.  Usually that is the case, but you can't just say so without any support. 

[steelie]

Yes, Steelie, that was my point - you need to show that you have evidence OTHER THAN THE APPLICATION YOU ARE EXAMINING that provides the needed motivation.  Usually that is the case, but you can't just say so without any support.  (well, you can, and obviously do, but it is wrong and frustrating to Applicants)

Most art will be using feature X for the same reason the applicant is using feature X. So, about 98% of the time, the motivation is explicitly stated in the new art and it's the same motivation as the applicant's motivation.

For example, a mail program. The applicant is using it to read email. I find prior art of a "mail program", and sure enough, the prior art says "to read email".

[mbison]

We file a lot of RCEs without first filing AF responses, mainly because we are dealing with fixed fee budgets where we get paid nothing extra to do both.  I usually just throw in a few new specific dependents to avoid any chance of a first action final.