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.
"Appellant has not argued, much less shown, that the Examiner's proposed combination would be beyond the level of ordinary skill in the art."
ReplyDeleteOnce again, the BPAI selectively quotes KSR to imply that only those of extraordinary skill can create nonobvious inventions. :(
I don't think it's *quite* that simple.
ReplyDeleteThe way I read the quoted passage of Ex parte Nelson, the Board reviewed the record and found that the Examiner had used one of the KSR rationales (here, "ready for improvement") to make a prima facie case.
The Applicant had two options. One is to attack the prima facie case by attacking the factual findings underlying the rationale. (See, e.g., MPEP 2143.) Otherwise, the burden shifts to the Applicant to shown non-obviousness, ie, to show "why the proposed combination would be beyond the level of ordinary skill in the art."
Do you disagree that KSR supports such rationales? Or with how the ready-for-improvement rationale was applied in Nelson?
Luke, stay on target!
ReplyDelete"Stay on target"
"Stay on target"
Everytime I put a form paragraph about failing to address the combo (rare in my art) I always think of the guy that keeps telling the rebels to stay on target.
"Everytime I put a form paragraph about failing to address the combo (rare in my art) I always think of the guy that keeps telling the rebels to stay on target."
ReplyDeleteEvery time I see that form paragraph used, I look back at the rejection and I see the Examiner has only relied upon a single reference to teach X limitation. I then pull out my form paragraph about how the Examiner's cited case law is inappropriate and then remind the Examiner of the Graham factual inquiries, which includes properly characterizing the scope and content of the applied prior art.
If you say reference A teaches X and reference A does not teach X, don't rely upon your form paragraph to save you.
That isn't really a case of simply arguing the reference alone, that is a case of arguing the factual underpinnings of the characterization of the scope and content of the prior art.
ReplyDeleteI suppose I might be willing to accept that some examiners could mistake that for the other on occasion though, if you absolutely insist that it happens. Although, if it does happen there was likely some help on your part in getting them to misunderstand what you were arguing. I would be willing to bet that if you were a little more specific with your arguments you'd probably see a decline in your getting that FP.
>[When] I see the Examiner has only relied
ReplyDelete>upon a single reference to teach X
>limitation, I pull out my form paragraph
>about how the Examiner's cited case law is
>inappropriate
Fair enough. I don't do this *every* time I get the In re Keller "can't attack individually" form paragraph from the Examiner. But if he makes a big deal out of it, sometimes I do explain that I'm *addressing* the refs individually precisely because that's how he used them.
>and then remind the Examiner of the
>Graham factual inquiries, which includes
>properly characterizing the scope and
>content of the applied prior art.
OK. Let's assume the Examiner did rely on Ref A to teach element Y, so that he was wrong to toss out "can't attack individually" in response to your argument.
Even so, that doesn't seem like "not properly characterizing the prior art". Oh, sure, in some really broad sense, every thing done on both sides is characterizing the prior art. But this Graham factor boilerplate just seems too attenuated from the real issue to be helpful in persuading the Examiner/BPAI.
"The Applicant had two options. One is to attack the prima facie case by attacking the factual findings underlying the rationale. (See, e.g., MPEP 2143.) Otherwise, the burden shifts to the Applicant to shown non-obviousness, ie, to show "why the proposed combination would be beyond the level of ordinary skill in the art."
ReplyDeleteDo you disagree that KSR supports such rationales? Or with how the ready-for-improvement rationale was applied in Nelson?"
I agree that, technically, KSR works this way. I just believe that, the way the law is systemically applied, overdue emphasis is placed on the requirement for the inventor to be extraordinarily skilled.
The fact that extraordinary skill can rebut a prima facie case should not dilute the requirements and analysis for making that prima facie case. That is, perhaps, what has happened here (depending on how strong you think the prima facie case is). Otherwise, it is a very slippery slope, before you start implying that only geniuses and people of extraordinary skill can get patents.
But, clearly, that is not what we want. We don't want a policy framework that only rewards geniuses. Most of the people that get patents, and deserve patents, are mere mortals like you and me. Just because I'm a genius doesn't mean I can't get a patent or create something non-obvious.
KSR's implicit suggestion otherwise is very disturbing. So perhaps you are right that the law works this way, but I am simply disagreeing on policy grounds, or suggesting that the law is misapplied (or applied too aggressively).
If the prima facie case requirement was rigorously enforced, then I would be less concerned about undue emphasis placed on the requirement to be extraordinarily skilled. But, as we all know, this requirement is systemtically ignored.
I meant to write: "just because I'm not a genius." Wishful thinking.
ReplyDelete>I agree that, technically, KSR works this
ReplyDelete>way. I just believe that, the way the law is
>systemically applied, overdue emphasis is
>placed on the requirement for the inventor
>to be extraordinarily skilled.
Thanks for the cogent explanation.
>Just because I'm a genius doesn't mean I
>can't get a patent or create something
>non-obvious. KSR's implicit suggestion
>otherwise is very disturbing.
Agreed.
You referred earlier to selective quotes from KSR. I do think that the PTO has spliced together sentences from KSR to come up with the rationales.
I followed up with you about Nelson because I'm trying to separate practice -- what the PTO/BPAI does -- from policy -- what the law should be -- as much as possible. It's good to consider both, as long as you don't conflate them.
To recap, as a practical matter I see Nelson as a run of the mill application of the improved-results rationale. From a legal standpoint, I wonder if the rationale goes too far to be clearly supported by KSR. As a policy matter, all of these rationales are unfriendly to Applicants and patentees.
"As a policy matter, all of these rationales are unfriendly to Applicants and patentees. "
ReplyDeleteAs a policy matter, 103 is unfriendly to Applicants and patentees.