tag:blogger.com,1999:blog-6733236595417664807.post8069076528807203844..comments2024-03-05T06:00:22.338-05:00Comments on All Things Pros: BPAI finds adding a fourth parameter doesn't change basic principles of operation of referenceKaren G. Hazzahhttp://www.blogger.com/profile/14864564225463528630noreply@blogger.comBlogger4125tag:blogger.com,1999:blog-6733236595417664807.post-13623657330413128502011-05-23T10:49:07.796-04:002011-05-23T10:49:07.796-04:00>Used properly, traversal of the
>Examiner&...>Used properly, traversal of the <br />>Examiner's skill level determination <br />>(or lack therof) can undermine the <br />>Examiner's obviounessness reasoning. <br /><br />I guess I see how this applies in theory. Something like: <br /><br />Examiner assumes that level of skill is reflected in the references. But the level is really higher/lower. [Provide evidence.] Since the level of skill is higher/lower, what appears obvious to the Examiner really isn't. The Examiner's conclusion of obviousness is necessarily biased by hindsight. <br /><br />But even that seems vague and unconvincing to me. I'm just having trouble seeing how this sort of analysis applies in the real world. Maybe you just gotta have good facts. <br /><br />Something likeKaren G. Hazzahhttps://www.blogger.com/profile/14864564225463528630noreply@blogger.comtag:blogger.com,1999:blog-6733236595417664807.post-79435604466139705672011-05-20T20:02:56.852-04:002011-05-20T20:02:56.852-04:00The determination of skill level is supposed to pr...The determination of skill level is supposed to provide objectivity to the obviousness analysis..a prism or lens through which one views the prior art to reduce the influence of hindsight. Used properly, traversal of the Examiner's skill level determination (or lack therof) can undermine the Examiner's obviounessness reasoning.Anonymousnoreply@blogger.comtag:blogger.com,1999:blog-6733236595417664807.post-58761198023447511102011-05-19T23:43:31.817-04:002011-05-19T23:43:31.817-04:00>[Failure of Examiner to determine level of ski...>[Failure of Examiner to determine level of skill] <br />>would have provided the argument that POSITA<br />>would not have combined the teachings of the <br />>references for whatever reasons the <br />>Applicant could set forth. <br /><br />I don't see that arguing about the level of skill is necessary, or that it gets you where you need to go. <br /><br />If the references themselves support reasons why the POSITA wouldn't have made the combination (here, added an additional parameter to the controller), then you can probably make this point as attorney argument.<br /><br />If you need to go deeper than what is in the references themselves in order to provide technical reasons against the combination, then you can introduce evidence in the form of additional references or an expert declaration. <br /><br />How does arguing about level of the skill help here?Karen G. Hazzahhttps://www.blogger.com/profile/14864564225463528630noreply@blogger.comtag:blogger.com,1999:blog-6733236595417664807.post-65088882919917927992011-05-18T14:34:20.043-04:002011-05-18T14:34:20.043-04:00This was a situation where the Applicant could hav...This was a situation where the Applicant could have used the Examiner's failure to explicitly determine the level of skill to challenge the obviousness rejection because at the very least, it would have provided the argument that one of ordinary skill would not have combined the teachings of the references for whatever reasons the Applicant could set forth.Anonymousnoreply@blogger.com