Don't forget to address the combination
Another reminder to address the combination
How to respond when the Examiner says "Can't attack the references individually"
In this post, I'll discuss one more instance where the BPAI chastised the Applicant for failing to address the combination.
The technology in Ex parte Nelson involved paving asphalt roads. The Examiner rejection claim 22 as obvious over a combination of three references.
22. A screed assembly comprising:
at least one screed section that includes a screed plate that
defines an upper surface and a lower surface; and
a screed heating arrangement that includes a thin sheet electric
heater bonded to the upper surface with an adhesive bonding material.
In the Appeal Brief, the Applicant discussed the deficiencies of each of the three references:
With regard to claim 22, the Williams et al. reference does not even include specific teachings as to any type of electrical heater being attached to the screed plate, or merely somehow attached to the paving machine in a position to radiate heat onto the screed plate, or some other method of heat transfer. Borrup fails to teach bonding a thin sheet electric heater to the upper surface of a screed plate, or any analogous machine, with an adhesive bonding material. Raymonds' bolted liquid tanks are flatly not disclosure of bonding thin film heaters to anything. Therefore, even when combined, the cited references do not teach all of the limitations of claim 22.According to the Board, the Applicant failed to consider how the Examiner had applied the references in combination. The Board elaborated on where the Applicant had gone wrong:
The Examiner's proposed combination starts with Williams' device, designed to address heat control problems associated with screed heaters. This device is ready for improvement because Williams does not describe specifically how the electric heater is connected to the screed. Raymond teaches that screed heaters can transfer heat by conduction, and Borrup teaches a particular, flexible heat conduction device attached via bonding. Thus, the proposed modification merely fills in the gaps in the teachings of Williams, specifying that the heater is a conductive heater that is bonded directly to the metal screed, as taught in Raymond and Borrup. The Examiner finds that one of ordinary skill in the art would have an expectation of success combining the identified teachings and would also avoid the known problems in the art such as damaged screeds and poor asphalt finish. Ans. 12. Appellant has not argued, much less shown, that the Examiner's proposed combination would be beyond the level of ordinary skill in the art.