Tuesday, September 1, 2009

Another reminder to address the combination

Recently I posted here about the need to actually address the combination of references when that's what the Examiner has relied on. The Board made this point again in a mechanical case, Ex parte Albert. (Appeal 2009-0001486; Application 10/616,018; Technology Center 3600.)

One claim was directed to "a plastic control plate of a hydraulic gearbox control device", the plate comprising "at least one channel running through the plastic control plate". The Applicant agreed that the pin-grid-array (the alleged "control plate") in the primary reference Chia was made of plastic. (Brief, p. 6.) But the Applicant argued that adding the secondary reference Lindberg to Chia did not result in a plastic plate with a channel because Lindberg taught that plate was metal rather than plastic. (Brief, p. 7.)

The Board chastised the Applicant for arguing that Lindberg did not teach a plastic plate:
However, the Examiner does not rely on Lindberg to describe a plastic control plate. See Ans. 3. Lindberg was used to describe a channel (Ans. 4), not a plastic plate. Appellants' argument is directed to Lindberg in isolation, rather than in combination with Chia, and thus is not persuasive. Nonobviousness cannot be established by attacking the references individually when the rejection is predicated upon a combination of prior art disclosures. See In re Merck & Co. Inc., 800 F.2d 1091, 1097 (Fed. Cir. 1986).
(Decision, pp. 10-11.)


  1. Great advice for new practitioners. Far easier to learn this lesson from a quick reading of your blog post than in wasting an OA response or losing an appeal.

  2. More info about this topic in my March follow up post http://allthingspros.blogspot.com/2010/03/how-to-respond-when-examiner-says.html.