tag:blogger.com,1999:blog-6733236595417664807.post2609731968860959743..comments2024-03-05T06:00:22.338-05:00Comments on All Things Pros: Don't forget to address the combinationKaren G. Hazzahhttp://www.blogger.com/profile/14864564225463528630noreply@blogger.comBlogger7125tag:blogger.com,1999:blog-6733236595417664807.post-69164519385469283832011-08-29T18:48:06.567-04:002011-08-29T18:48:06.567-04:00>references does not teach all the elements of ...>references does not teach all the elements of <br />>the claim, then the obviousness rejection <br />>fails. <br /><br />The Patentably Defined blog has a) noted that the MPEP doesn't include the all elements test and b) addressed your question about how to handle that. <br /><br />See <br /><br />http://patentablydefined.com/2008/05/27/how-to-respond-to-§-103-obviousness-rejections-using-the-“all-elements-test”-in-view-of-recent-revisions-to-section-214303-of-the-manual-of-patent-examining-procedure-part-ii/<br /><br />and <br /><br />http://patentablydefined.com/2008/05/05/how-to-respond-to-%C2%A7-103-obviousness-rejections-using-the-%E2%80%9Call-elements-test%E2%80%9D-in-view-of-recent-revisions-to-section-214303-of-the-manual-of-patent-examining-procedure/<br /><br />But I don't think it's that simple. I think Fed Cir decisions such as PerfectWeb, MasterLock and Tokai show that the refs don't have to teach each element if a POSITA could use common sense to add an element which is completely missing or to modify an existing element.Karen G. Hazzahhttps://www.blogger.com/profile/14864564225463528630noreply@blogger.comtag:blogger.com,1999:blog-6733236595417664807.post-42350008466377030872011-08-02T10:24:58.959-04:002011-08-02T10:24:58.959-04:00Thank you for this very useful post. This is an ar...Thank you for this very useful post. This is an argument I often make. However, I have been struggling to find case law that supports the simple proposition that if the combination of references does not teach all the elements of the claim, then the obviousness rejection fails. There used to be language to this effect in the MPEP that I would cite to support this simple proposition. But since KSR, the language was dropped from the MPEP and I am left trying to find some solid case law to back it up.Anonymousnoreply@blogger.comtag:blogger.com,1999:blog-6733236595417664807.post-72991406891133042702010-04-14T13:31:03.104-04:002010-04-14T13:31:03.104-04:00Oh I see! You are *disagreeing* with the examiner...Oh I see! You are *disagreeing* with the examiner that reference 1 contains X. I understand now. Sorry, sometimes I need to know what is not being stated in order for me to understand what is. Thank you.Seannoreply@blogger.comtag:blogger.com,1999:blog-6733236595417664807.post-22118688638202557662010-04-09T16:23:31.458-04:002010-04-09T16:23:31.458-04:00>Ref 1 contains X and Ref 2 contains Y.
Is th...>Ref 1 contains X and Ref 2 contains Y. <br /><br />Is this a new hypo? Because my hypo was different. In my hypo, Ex. *alleged* 1=X and 2=Y but as Applicant, I disagreed about X. <br /><br />>if the examiner has already made a rejection <br />>based on single references how could you talk <br />>about combination because you are not <br />>addressing the examiner's rejection. <br /><br />Nah, I *don't* advocate arguing the combination when Ex. relies on individual refs. In such a case, it's acceptable to argue individual refs. <br /><br />The point of my original post was how to handle those rare cases where the Examiner really does rely on the combination to teach a particular element ("green widget").Karen G. Hazzahhttps://www.blogger.com/profile/14864564225463528630noreply@blogger.comtag:blogger.com,1999:blog-6733236595417664807.post-69913149746072567272010-04-09T14:09:20.999-04:002010-04-09T14:09:20.999-04:00Just found out about this blog. I do have a quest...Just found out about this blog. I do have a question regarding the simple argument you talk about. Your claim contains X and Y. Reference 1 contains X and reference 2 contains Y. Then why do you say in your argument that reference 1 doesn't contain X? I understand that you are talking about taking the combination attack route, so I understand that by combination your claim wouldn't be obvious, but if the examiner has already made a rejection based on single references, how could you talk about combination because you are not addressing the examiner's rejection. Sorry for the ramble, but I'm majorly confused. Thank you.<br /><br />SeanAnonymousnoreply@blogger.comtag:blogger.com,1999:blog-6733236595417664807.post-73112150711401686742009-08-25T08:50:03.261-04:002009-08-25T08:50:03.261-04:00Thanks for your comments. I'll try to clarify ...Thanks for your comments. I'll try to clarify my reasoning. <br /><br />>Further, isn't a green widget just a specific <br />>kind of widget rather than a combination?<br /><br />I guess it's both. It's a combination in the sense that the Examiner chose to parse my element into its components and to find the components in different references. <br /><br />Your list of 3 arguments points out -- rightly so -- that there are other options here. I agree that in my hypothetical, arguments #1 and #2 are also available: you could argue that the individual components of the combination are not present. <br /><br />In fact, arguing that individual components are not present is probably a stronger argument, when available. My post was focused on the need to sometimes argue the combination itself, i.e., if the components "widget" and "green" are in fact present, you need to address "green widget". <br /><br />>Also, what exactly is a combination? <br /><br />Great question, and one that causes me to think about this more. The kind of argument I'm thinking about here is along the lines of: "although Ref1 teaches a widget and Ref2 teaches a green wiki, putting them together does not actually result in a green widget because [wikis have nothing to do with widgets]." <br /><br />That sounds like what you refer to as "glue". I still view this as a does-not-teach argument rather than a motivation-to-combine argument. Because my basic position is that simply sticking two individual components (green and widget) next to each other does not in fact result in what I claimed, even though the Examiner characterized it that way. Simply calling it a green widget does not make it so.<br /><br />Now that you've brought this up, I can see how one would instead characterize "wikis have nothing to do with widgets" as a motivation-to-combine argument. <br /><br />Personally, I reserve the term motivation-to-combine-argument for the one I make when substituting a widget for a wiki DOES make sense. In that case, my factual starting point is that the combination does teach a green widget, so what I'm left with is the argument that a POSITA would not choose to make this particular combination. [Maybe something like "although substituting a widget for a wiki makes sense generically because they're the same class of object, this particular set of references teaches away from doing so."] <br /><br />A fine distinction, and one that's hard to explain, especially in a hypothetical context. I think the most important thing is that your response addresses the combination, regardless of how you characterize your argument.Karen G. Hazzahhttps://www.blogger.com/profile/14864564225463528630noreply@blogger.comtag:blogger.com,1999:blog-6733236595417664807.post-69808135498093456962009-08-24T12:31:48.041-04:002009-08-24T12:31:48.041-04:00Thank you for addressing this confusing issue! Gre...Thank you for addressing this confusing issue! Great job!! I have a few questions.<br /><br />With regard to your green widget example, are you saying that the possible arguments are?:<br />1) Reference 1 does not teach a widget;<br />2) Reference 2 does not teach green -- maybe argue Reference 2 teaches teal (ignoring my inappropriate addition/change of facts);<br />3) The combination of Reference 1 and 2 does not teach a green widget or combining green with a widget.<br /><br />Also, what exactly is a combination? Is it the glue that holds "green" and "widget" together or is it the "green widget" itself? ("Glue" perhaps being the reason for combining green and widget.)<br /><br />Further, isn't a green widget just a specific kind of widget rather than a combination? (Not critizing your example -- most adjectives further narrow a noun.) Plus, you discussed a green wiki, too... so my statement of the combination could be viewed as incorrect.Anonymousnoreply@blogger.com