tag:blogger.com,1999:blog-6733236595417664807.post8816310007795850204..comments2024-03-05T06:00:22.338-05:00Comments on All Things Pros: BPAI reverses obviousness based on KSR rationale "combination of familiar elements"Karen G. Hazzahhttp://www.blogger.com/profile/14864564225463528630noreply@blogger.comBlogger4125tag:blogger.com,1999:blog-6733236595417664807.post-72574300413808079742011-11-16T15:14:19.631-05:002011-11-16T15:14:19.631-05:00In other words JD appreciates the board giving the...In other words JD appreciates the board giving the applicant one. Hooray! Oh wait, no, they did it the wrong way, still bad.Anonymousnoreply@blogger.comtag:blogger.com,1999:blog-6733236595417664807.post-43683687059238439042011-11-16T14:48:03.076-05:002011-11-16T14:48:03.076-05:00"Truly, not the best day for the board."..."Truly, not the best day for the board." <br /><br />Considering the b!tch slapping the Board has taken recently in In re Klein, In re Leithem, and In re Stepan Co., it's nice to see them get one correct.<br /><br />"Shouldn't he have just said, yeah, there are other motivations to combine as well as the one I provided, that's one too?<br /><br />I mean, I'm not saying this combo was obvious, or not, but just in terms of a simple prosecution procedure... it would seem like the more appropriate response when the applicant hands you a different motivation to combine."<br /><br />No wonder you're still a GS-9.Anonymousnoreply@blogger.comtag:blogger.com,1999:blog-6733236595417664807.post-797619590807323092011-11-16T14:25:31.911-05:002011-11-16T14:25:31.911-05:00"In response to Applicant's argument abou..."In response to Applicant's argument about Scott's curtain having antiseptic or deodorizing properties, the Examiner noted that the claims did not preclude a fabric strip with such properties. "<br /><br />Shouldn't he have just said, yeah, there are other motivations to combine as well as the one I provided, that's one too?<br /><br />I mean, I'm not saying this combo was obvious, or not, but just in terms of a simple prosecution procedure... it would seem like the more appropriate response when the applicant hands you a different motivation to combine. <br /><br />Reading the rest of the decision seems like a bit of a travesty on the board's part. Retarded sht followed by legally improper analysis followed by a little more tarded sht. Truly, not the best day for the board. <br /><br />What is perhaps more funny is to see the made up stuff in that MPEP section. What will they come up with next? Not that I venture far from TSM myself, but on the rare occasion that I do I will certainly not be constrained by any such ridiculous nonsense as that which they posted.Anonymousnoreply@blogger.comtag:blogger.com,1999:blog-6733236595417664807.post-62378774558075763742011-11-16T09:10:10.335-05:002011-11-16T09:10:10.335-05:00I'm glad to see the Board use 2143 type reason...I'm glad to see the Board use 2143 type reasoning to reverse the examiner here. I'm argued before in appeal briefs that "each element does NOT merely perform the same function."<br /><br />I just want to point out that the MPEP is not binding on the Board. And a failure of the Examiner to that finding ("each element merely performs the same function") would be in a sense a petitionable matter, if the Examiner is using MPEP 2143, not appealable. The BPAI or examiner could argue, for example, that KSR did not state that "each element merely performs the same function" is a per se rule, or that the corresponding rationale could never be modified or combined with other rationales. MPEP 2143 and the 2010 KSR Guidelines are emphatic that the seven rationales in MPEP 2143 are not "all-inclusive." "Merely performs the same function" can only be a factor in the obviousness analysis, albeit one that is insightful and helpful - as it was here. KSR itself sharply criticized the CAFC for narrowly focusing one particular problem that the inventor was trying to solve (meaning that multiple problems - and multiple functions - might be addressed in showing that a claimed invention was obvious).Anonymousnoreply@blogger.com