Patently-O Bits and Bytes No. 100

  • PTO Director: Commerce Secretary Locke has been confirmed as Commerce Secretary. Congratulations. With patent attorney blinders - the next step is to solidify the PTO leadership positions. Leading candidates include Todd Dickinson and David Kappos (IBM). Dickinson is an old-guard Clinton supporter. Kappos was an Obama donor.
  • Drop in Filing?: I recently relayed an apparent quote from the PTO General Counsel James Toupin reporting a 16% decrease in new patent filings. Toupin and the PTO have since rejected that number as a large overstatement and have indicated that they will provide better numbers shortly. The bottom line is still true - the PTO is experiencing a cash-shortfall and is cutting its own budget wherever it can.
  • Fee Increases: Dramatically shifting its position, the IPO has announced that it opposes "any significant increase in USPTO patent fees in the near term."
  • IP Primer: The Dickstein Shapiro firm has released a new version of its IP Primer (free, but you have to give a name).
  • Patent Reform 2009: The Senate Judiciary Committee holds the ball on patent reform and is set to meet again to discuss mark-ups on March 31, 2009. Lobbying will be heavy during the next week to define the center "consensus" ground. Quinn; IPWatch.

49 thoughts on “Patently-O Bits and Bytes No. 100

  1. “Generally speaking it is our policy to provide some rational if you go on and on about it. But yes, it is likely that we can just state that it is and you have to show otherwise, or at least that’s how my boss has put it before.”

    Somebody tell Commissioner Gordon to illuminate the Bat-Signal for JD! JD, where are you when we need you?

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  2. “The product only exits on paper and it it mere speculation as to whether the missing element is inherent. ”

    That is true and it is a problem. It is however a problem that must be balanced against the counter problem. So that in cases like Kubin everyone with any skill in that art knows that the property would be inherent. There is no question about it, it is merely an applicant trying to be an as. Or more likely, their attorney. (Except in Kubin she appears to be more clueless than malicious) I doubt the CAFC would stand for such foolishness. Only when there can be some doubt as to the feature being inherent would I say they would back you. That is my take on it.

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  3. “I have been struggling with the burden of proof. It appears the Office can simply state “its inherent” and then the applicant has the burden to show otherwise. Such is clearly the view of hte court in In re Best (see below)”

    Generally speaking it is our policy to provide some rational if you go on and on about it. But yes, it is likely that we can just state that it is and you have to show otherwise, or at least that’s how my boss has put it before. There was a case that I had that attempted to claim the makeup of some particles. The particles however appeared to be routinely used. The applicant of course was using their specific makeup to a specific effect on another article. I decided after awhile that there was reasonable doubt as to the inherency so I didn’t make them. But, I probably should have. Not to worry, if they try to enforce their patent against an entire industry they’ll get smacked down with some lab results from one of the industry members. I got them to tighten up the claim some anyway with some art.

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  4. Thanks all for the good discussion on a combination 103 rejection where the final claim limitation is not shown, but rejected as inherent.

    6 framed the issue best (which I might paraphrase in my next appeal brief) “The point of the exersize is whether or not it is proper to use inherent features from a proplerly made combination in determining what was the scope and content of the prior art. In other words, the content of the prior art doesn’t inherently feature the limitation, but an obvious combination of two peices etc of art does feature that limitation inherently, so it is proper to rely on that inherency for a rejection?”

    I have been struggling with the burden of proof. It appears the Office can simply state “its inherent” and then the applicant has the burden to show otherwise. Such is clearly the view of hte court in In re Best (see below)

    “Whether the rejection is based on “inherency” under 35 USC 102, on “prima facie obviousness” under 35 USC 103, jointly or alternatively, 4 the burden of proof is the same, and its fairness is evidenced by the PTO’s inability to manufacture products or to obtain and compare prior art products. See In re Brown, 59 CCPA 1036, 459 F.2d 531, 173 USPQ 685 (1972).

    However, in a combination rejection, how is an applicant supposed to make the prior art product when it doesn’t exist in the prior art but for the selected combination of elements by the Examiner. As I see it, the applicant would be making his invention, which would always would lead to the point that the missing feature is inherent.

    I guess my argument is that in a combination rejection, there is no prior art product that the applicant can compare to. The product only exits on paper and it it mere speculation as to whether the missing element is inherent. How can a ficticious “paper” product have an inherent feature?

    Also as pointed out in an earlier post, MPEP 2112 can be instructive to this point. However, the cases cited in this section only involve factual situations where the rejection was based on a single prior art refernece. Thus, those cases are distinguishable on their facts.

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  5. “It’s our position that … if there is a claim limitation that is going to be looked at under a theory of inherency there has to be recognition of that inherent aspect in the prior art for that to be something that can be counted against the claim in the obviousness determination”

    Kubin set out to determine the human DNA sequence encoding a particular human protein.

    Kubin determined the sequence, which Kubin knew existed with 100% certainty.

    Lo and behold, the sequence determined by Kubin encodes the protein, exactly as everyone knew it would.

    There is nothing unexpected about such an invention.

    What’s unexpected is that you would then attempt to claim an incredible number of sequences that encode proteins that never exist and will never be synthesized. And that you would spend a lot of money on this.

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  6. Man, that’s a great argument. I just listened to the first part, now I’m here.

    “It’s our position that … if there is a claim limitation that is going to be looked at under a theory of inherency there has to be recognition of that inherent aspect in the prior art for that to be something that can be counted against the claim in the obviousness determination”

    Judge that I can’t ID:

    “Wwwwhy?” (insert Rofls here) “if it’s inherent isn’t that enough? Why does it have to be recognized in the prior art to be inherent?”

    “if inherenty properties were not to be looked at at all then unexpected results could never be an issue in the obvious determination and the SC has said that is important to look at”

    I love how she goes on to characterize her inherent claim limitation as an unexpected result. And that is A OK with me. But they need to understand that an unexpected result does not mean that the claim limitation was not shown. What it means is that there is something that weighs against obviousness. And that can be outweighed by other evidence.

    In short, people need to stop arguing that the inherent features aren’t shown, and need to start arguing unexpected results. But the law is apparently unsettled enough for people to continue to bamboozle examiners who aren’t on the reject reject reject train and don’t want to spend hours of their life thinking about this ridiculous sht.

    Rader tore that poor girl a new one. Kubin should have hired a guy.

    Thanks for pointing out the decision, but come on guys, its good manners to post links.

    link to oralarguments.cafc.uscourts.gov

    You might have to “save as” that link.

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  7. 6 -

    Yes, I do not mean to imply it is truly about nothing, but nothing to help in my case.

    As to inherency in obviousness rejections – I think it is essentially applied in the same way but there is an interesting discussion between counsel and Judge Rader at about 48 minutes into the Kubin oral argument (available online) of this exact issue. I have made a mental note to go back and listen to it again as the first time it didn’t convince me there was any difference in the application of inherency to obviousness rejections, but I am not sure I got all the nuances of the argument on one quick listening.

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  8. “NO! She claims not to need all the elements in any reference – that is what she means by anticipation has nothing to do with obviousness.”

    Oh lol, well, there’s a good chance she’s wrong then. Talk to the spe/primary. Until you hit the ksr common sense etc you’re all good to go.

    Maybe if you’d have been here to keep us on track me then we wouldn’t have gone down that road. Still, the discussion isn’t about nothing, it is about a situation that arises all the time.

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  9. “however, 2112.01 appears to state that inherency of material properties, regardless of when they became known, applies to both 102 and 103 rejections.”

    What I was saying, peeps.

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  10. It is absolutley HILARIOUS to me that lots of folks went off on a tagent, with no facts, based on my early post in this thread and were COMPLETELY wrong on the reason for the quote. This Examiner is clueless folks, she does not think she needs to anticipate all the claimed elements (either expressly or inherently). Nice talk about nothing though guys!

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  11. “Well at least she was half right. Anticipation does have nothing to do with obviousness. As to the part she was mistaken on I believe you know what she meant. She meant that she did not need to show all elements in one reference for her 103. At least that is the way it appears likely to have happened from here. ”

    NO! She claims not to need all the elements in any reference – that is what she means by anticipation has nothing to do with obviousness.

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  12. After a quick search of the MPEP, it appears that 2112 and 2112.01 are relevant here. MPEP 2112, sections I and II, basically state that something old does not become patentable based on the discovery of a newly discovered (inherent) property. In addition MPEP 2112.01, section I, states that a prima facie case of anticipation or obviousness has been made once the examiner has shown that the prior product is structurally the same as the claimed product. The 2112 sections do not make clear whether inherency would apply to both 102 and 103 rejections; however, 2112.01 appears to state that inherency of material properties, regardless of when they became known, applies to both 102 and 103 rejections.

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  13. That’s correct MM, no wherein.

    Though I’m now looking at a claim that involves this very topic and does have a wherein. It is still getting the 103 hammer. And I don’t even think I’m going to specify that the limitation is inherently met. Why? Because if, for example we have:

    A method of dipping an object into a chemical wherein dipping it in the chemical causes the object to rust wherein the chemical is water.

    All the whereins are in different deps of course.

    If I have a method of dipping an object into HCl and for whatever reason it is obvious to switch out the HCl (which in our example doesn’t cause rusting) with water then the method step of dipping is obvious, effects be dam.

    I should hasten to add that this might be a bad example as I cannot think of a situation where switching out HCl for water would be motivated. But roll with me here.

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  14. “That especially hits home as I’m looking at a claim with “for” in it right now and the entire claim is one line long without the additional language after for”

    You mean there’s no “wherein”?

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  15. That especially hits home as I’m looking at a claim with “for” in it right now and the entire claim is one line long without the additional language after for. And that one line is the basis of a huge chunk of prior art.

    In this particular case though I’m playing along with meeting the intended use limitations because I have them in the prior art.

    So that brings up a question I consider sometimes, should I tell applicants that limitatins that are already met by the prior art aren’t even contributing to the patentability of their claim even if they were to get around that reference?

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  16. As to missing elements in a combination of prior art, let’s not forget the amazing number of times the Sup. Ct. used the words “common sense” [by one of ordinary skill in the art] in connection with applying 103 in their now-controlling KSR decision. [Specifically, in that case, mounting the sensor for the adjustible foot-pedal in a [logical] non-moving position of the apparatus where the connecting wires would not have to undesirably flex all the time.]
    Some people argue that this is an example of the KSR revival of “obvious to try.” But “using common sense” by one trained in the applicable art for that claim limitation [electrical sensor mounting, not just auto foot-pedal designers] seems to me what the KRS Court kept banging away on.
    If you don’t like that “one[s][plural] of ordinary skill in the art” 103 test, remember that in the real world new products with plural components often ARE designed by inter-disciplinary teams.

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  17. “If any counsel working for me fell for “claim language is an admission of inherency”

    If it really bugs, then let’s just assume that the specification contains a statement that the invention relies on “the discovery that the administration of a mixture of onion juice and orange juice prevents herpes, as demonstrated by the data herein”.

    It’s a prima facie case. Is the Examiner supposed to ASSUME when she makes her obviousness rejection that your specification is filled with lies?

    Is that how Examiners are supposed to treat your specification? I mean, I can understand why some people might think that but let’s just say it would be an atypical position for someone nitpicking at one of my comments to take.

    Independent of my hypothetical, I am always interested in the legal effects of statements (including claims) that are purported to be descriptions of the inventor’s invention. In at least one circumstance, the Supreme Court has ruled that such statements (e.g., claims) have profound effects on the claim scope (e.g., the docrine of equivalents) when the claims are altered. Thus, what you claim is important and meaningful, even if (or especially if) your claim is a pile of crap.

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  18. If any counsel working for me fell for “claim language is an admission of inherency” and that such was recognized by one of skill in the art prior to the date of invention, I would fire him.
    No prima facie case.

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  19. I’m not even sure that Proof’s comment rises to the level of an ad hominem. Non-sequitur maybe? Something about patent prosecutors. They cling to tired things, mostly out of fear. Not sure why that is but it is likely related to their well-earned reputation as office rats with poorly developed social skills.

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  20. “But you can’t argue that there wasn’t a reasonable expectation of success that the combination suggested by the art wouldn’t work because it’s inherent.”

    Exhibit #13201 as to why moonpie does not prosecute patent applications or if moonpie does prosecute patent applications, he has never received adequate supervision.

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  21. “the Examiner has to present evidence to support the factual determination that a person skilled in the art would have had a reasonable expectation of success in producing the limitation from the combination at the time of the invention.”

    Um, yes, *except* if the limitation is inherent, then it does not matter whether the skilled artisan would have “expected it” at the time of the invention or not.

    Hypo claim: A method of preventing herpes in a human comprising administering a mixture of orange juice and onion juice to said human.

    Prior art reference A shows that orange juice prevents scurvy. Prior art reference B teaches that consumption of onions help prevent heartburn arising rom acidic foods and liquids. The Examiner argues that one would have been motivated to combine onion juice and orange juice to reduce heartburn in patients treated with scurvy. The prevention of herpes is an inherent property, as admitted by Applicants’ presentation of the fricking claim.

    That’s a prima facie case.

    You can amend the claim (probably a good idea in this instance because its ridiculously broad and who knows what other art is out there) or you can argue the facts (e.g., teaching away, unexpected results).

    But you can’t argue that there wasn’t a reasonable expectation of success that the combination suggested by the art wouldn’t work because it’s inherent. Again, claim amendments would help here.

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  22. “she gets to make the law.”

    She only gets to make law that begs to be overturned by convincing argument though. Her law isn’t statutory and unassailable.

    I don’t think that either one of you understand the question in any case. You’re answering “has a prima facie case been made” by saying no it has not been if the examiner hasn’t put forth evidence as to the inherent feature being a result of the combination. No. 1 we had a variation of that same conversation just the other day and determined that nobody in their right mind will argue that an assertion of the presence of a blatantly inherent feature (such as the water resistance of a balloon on a rocking chair) hasn’t been sufficiently factually supported by the evidence put forth where the examiner has merely alleged that the balloon in question is water resistant. And No. 2, that isn’t even the real issue in this dicussion. We’re presuming, as a matter of fact, that the inherent feature is undisputably present, and that it is blatantly present to anyone who graduated highschool. And further we’re trying to get to the question of whether or not this manner of presenting the 103 is the proper way, assuming that all else is factually true. We are not discussing whether or not the example rejection above is “full” in as much as it needs to be based on the particular limitations at hand.

    If you could then answer that topic I’m sure we’d all be grateful.

    “That’s why you see people who really know what they are doing structuring their anticipation and obviousness arguments as no prima facie case arguments. They are picking a game that is not rigged. Skipping the legal argument and jumping to the factual argument usually waives the legal argument. ”

    BTW, that’s why you see people who really know what they’re doing, but don’t know how to prosecute well and efficiently, with final after final on their desk. Because they’re rtarded to go that route when they know they’ll lose the war.

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  23. Malcolm,

    Judge Newman did author the opinions in both Zurko and Lee. As she wears the black robe, however, she gets to make the law. I am not one to characterize a law created by a sitting Judge as a “Fallacy” or discredit it as such. Rather, I apply the law to protect the interests and legal rights of my clients, such as their right and interest in securing a patent on their inventions.

    The question is not whether a limitation is the inherent result of combining two elements from the prior art as a matter of scientific fact. (The presence of every limitation within an invention is matter of scientific fact.) The question to be answered in an obviousness inquiry utilizing the Graham Factors as presented in KSR is whether a person skilled in the art would have predicted or appreciated at the time of the invention that the combination of the elements would have resulted in the limitation. For the Examiner to answer this question in the affirmative requisite findings supported by evidence identified and made of record have to be made. In other words, the Examiner has to present evidence to support the factual determination that a person skilled in the art would have had a reasonable expectation of success in producing the limitation from the combination at the time of the invention.

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  24. Zak is correct.
    You are confusing the difference between what would survive a factual inquiry (anticipation is a question of fact) and a legal inquiry (prima facie case is a legal inquiry).
    If one argues the facts, the BPAI and Fed Cir will look to the record for ANY support. Applicant is likely to lose unless the applicant has been VERY careful to prevent waiver, to call out any misrepresentations, etc. (I am ignoring expert declarations and similar things for purposes of this discussion).
    On the other hand, Zak is arguing no prima facie case. Since this is a question of law, the question is whether the examiner has met the legal standard to shift the burden (PTO argued for Zurko, and now has to live with it). So, if one argues as Zak did, you never get to the factual part, if the examiner has not met the legal requirements for a finding – construe the claims, provide objective evidence in the record for each element being present in the art, etc.

    BTW – That’s why you see people who really know what they are doing structuring their anticipation and obviousness arguments as no prima facie case arguments. They are picking a game that is not rigged. Skipping the legal argument and jumping to the factual argument usually waives the legal argument.

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  25. “Basically, the Examiner cannot just say “it is obvious to combine reference A and B and the combination would inherently produce limitation 5.” Rather, to establish a prima facie case of obviousness the Examiner has to identify and make of record evidence supporting the underlying factual determination that a person skilled in the art would have predicted at the time of the invention that combining reference A and B would produce limitation 5.”

    Um Zak, you missed the point of the exercise, I’m pretty sure he is assuming that rational A either was applied or is blatant on its face. In either case, the case will have been made for practical purposes though you might fight on your grounds to win the battle and ultimately lose the war.

    The point of the exersize is whether or not it is proper to use inherent features from a proplerly made combination in determining what was the scope and content of the prior art. In other words, the content of the prior art doesn’t inherently feature the limitation, but an obvious combination of two peices etc of art does feature that limitation inherently, so it is proper to rely on that inherency for a rejection?

    And also, what MM said. Though I haven’t found any specific law to support this specific take, there certainly isn’t any to dispute it either.

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  26. “Rather, to establish a prima facie case of obviousness the Examiner has to identify and make of record evidence supporting the underlying factual determination that a person skilled in the art would have predicted at the time of the invention that combining reference A and B would produce limitation 5.”

    I believe this is incorrect. You are stating what I refer to as Newman’s Fallacy.

    The law is that if it is obvious to combine A and B (for whatever reason), and A + B inherently produces limitation 5, the evidence showing the inherency does NOT need to be recognized as of the filing date. Inherent limitations are inherent as a matter of scientific fact. As long as the motivation to combine is legit, and there is a reasonable expectation of success for the purpose that the Examiner has provided, the inherent limitation is irrelevant.

    Logically, it can not be any other way. But judges do make mistakes, especially when lawyers zealously encourage them to do so.

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  27. In-house,

    No, your hypothetical rejection does not present sufficient factual findings to warrant a factual determination that limitation 5 was within the scope and content of the prior art at the time of the invention necessarily to establish a prima facie case of obviousness.

    To establish a prima facie obviousness rejection the Examiner has to make a factual determination as to the scope and content of the prior art. See In re Zurko, 258 F.3d 1379, 1383-1384 (Fed. Cir. 2001). In Zurko the court held that with respect to core factual findings in a determination of patentability, such as the scope and content of the prior art with respect to an obviousness rejection, the Examiner “must point to some concrete evidence in the record in support of [the] findings.” Id at 1386. Similarly, the court held in In re Lee, 277 F.3d 1338, 1343 (Fed. Cir. 2002), that an inquiry to a question of fact drawing on the Graham Factors (one of which being the scope and content of the prior art) “must be thorough and searching” and “based on objective evidence of record.” It follows then that the Examiner can only establish a prima facie case of obviousness by identifying and making of record evidence supporting the factual determination that limitation 5 was within the scope and content of the prior art.

    The Examiner could do this by identifying and making of record evidence showing: 1) the combination of reference A and B to produce limitation 5 was the application of known technique within the prior art that is applicable to reference A or B (rational D); 2) that reference A and B are similar or analogous to the claimed invention and the combination of reference A and B to produce limitation 5 is the application of a principle known within the prior art (rationale E); or 3) reference A performs function X, reference B performs function Y, limitation 5 provides function X+Y and no additional function Z, and that reference A and B could have been combined utilizing known methods within the prior art (rationale A).

    Basically, the Examiner cannot just say “it is obvious to combine reference A and B and the combination would inherently produce limitation 5.” Rather, to establish a prima facie case of obviousness the Examiner has to identify and make of record evidence supporting the underlying factual determination that a person skilled in the art would have predicted at the time of the invention that combining reference A and B would produce limitation 5.

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  28. Q. Todd, Kappos, or David Boundy would all be outstanding PTO directors.

    These are all sharp, sophisticated, competent folks.

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  29. Sorry, my reply not to Mr Noonan but, rather, to Inhouse.

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  30. Mr Noonan, i can imagine your frustration but I can imagine cases where the Exr thinks he’s done enough. Suppose the claim recites

    A door panel for a car, i) made of AA1167 aluminum ii) hot-rolled according to regime W iii) paint baked under regime X, with a gauge thickness of Y and iv) mechanical performance characteristics Z,

    I’m the Exr and assert that (prima facie of course) the alloy is the usual one, the thickness is nothing unusual and that it is obvious to combine ALCOA’s rolling regime W with Novelis’s paint bake process X and, if you do, you will (prima facie) get the claimed mechanical performance. For making such an objection, I would expect an Applicant to be grateful, not hostile.

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  31. “So, in the above “hyprothetical” rejection, are all the limitions of the claimed invention within the scope and content of the prior art at the time of the invention sufficient to establish a prima facie case of obviousness?”

    A good question, but I do use those types of rejections and they are never contested on grounds related to, shall we say, the alleged inherent feature not having been shown.

    It really depends on which way you view the obviousness determination. There are at least two ways of viewing it that are relevant in this situation. Either 1. TSM combinations that are valid create a whole new embodiment which is taken to be prior art (and thus will have inherent features) or 2. Combinations do not create new embodiments and are merely an amalgamation of the features shown in the various references drawn upon.

    The way I’ve been taught by at least one primary is we go with 1. But I have spent considerable time wrestling with the question myself. It would be an interesting appeal and one I would be happy to take up myself. Perhaps someone knows of some relevant cases already? I do remember some MPEP topics touch nearly if not entirely on the subject. But I haven’t gone back to find them and I don’t recall them being all that well supported.

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  32. “Swing and a miss.

    “anticipation is the epitome of obviousness.” Connell v. Sears Roebuck & Co., 722 F.2d 1542, 1548, 220 USPQ 193, 198 (Fed. Cir. 1983) (quoting In re Fracalossi, 681 F.2d 792, 794, 215 USPQ 569, 571 (CCPA 1982)) also In re Kalm, 378 F.2d 959, 962 (CCPA 1967)”

    A wild newbie appears! What do you do?

    1. Tell them that they don’t know what they’re talking about as the inquiries into anticipation and obviousness are 100% unrelated regardless of a soundbyte. A soundbyte which, btw is used out of context, and many people don’t put much weight in anyway, see the recent decision where a claim was anticipated yet may have been non-obvious.

    2. Let him wallow in his own filth until he rises above relying on soundbytes and learns to read in context.

    2

    You have defeated a wild newbie! 100GP 100XP

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  33. “For example, the element could be missing from each reference individually but results from the combination.”

    Bullsh!t

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  34. Although I agree with most of the comments, reality is that I still get 103 rejections which read like this: Claim 1 recites limitations 1-5. The rejeciton reads: ref. A shows claim limitations 1, 2, and 4; ref. B shows limitation 3; it is obvious to combine ref. A and B and the combination would inherently produce limitation 5.

    So, in the above “hyprothetical” rejection, are all the limitions of the claimed invention within the scope and content of the prior art at the time of the invention sufficient to establish a prima facie case of obviousness?

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  35. Regarding whether all the elements must be shown to establish a proper 103 rejection:

    Prior to KSR v. Teleflex MPEP 1243 read: “the prior art reference (or references when combined) must teach or suggest all the claim limitations.” MPEP 8th Ed. Rev 5. This obviously required the Examiner to make a factual finding that all elements of the claimed invention were at the time of the invention within the scope and content of the prior art to establish a prima facie case of obviousness. Generally this was done by the Examiner citing prior art that contained each element of the invention and identifying the occurrence of each element within the prior art cited.

    After KSR MPEP 1243 was amended to recite the seven rationales, and their necessary underlying factual findings, put forth by the Supreme Court in KSR that can be used to establish a prima facie case of obviousness. Each of the rationales requires that the Examiner identify and make of record evidence that supports a finding that all elements of the claimed invention were at the time of the invention within the scope and content of the prior art. Depending on the rationale utilized by the Examiner, this evidence can be a showing that the elements were: 1) elements of known inventions (rationale A & G); 2) known equivalents (rationale B); 3) known improvements (rationale C); 4) application of known technique (rationale D); 5) one of a finite number of known solutions (rationale E); or 6) application of a known principle (rationale F).

    So yes, even after KSR the Examiner must still making a showing that all the elements of the claimed invention were within the scope and content of the prior art at the time of the invention to establish a prima facie case of obviousness.

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  36. 6: “Anticipation does have nothing to do with obviousness”

    Swing and a miss.

    “anticipation is the epitome of obviousness.” Connell v. Sears Roebuck & Co., 722 F.2d 1542, 1548, 220 USPQ 193, 198 (Fed. Cir. 1983) (quoting In re Fracalossi, 681 F.2d 792, 794, 215 USPQ 569, 571 (CCPA 1982)) also In re Kalm, 378 F.2d 959, 962 (CCPA 1967)

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  37. “Patently-O Bits and Bytes No. 100″

    Seeing as no one else has noted this milestone yet…keep up the good work, DC.

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  38. In some cases, an element is inherent, e.g., steel is electrically conductive, but less so than copper.

    No need for an Examiner to show either of those two facts for an obviousness rejection.

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  39. “The quality still sucks though, one examiner told me today that anticipation has nothing to do with obviousness and she does not need to show all the elements in her 103 rejection. ”

    Well at least she was half right. Anticipation does have nothing to do with obviousness. As to the part she was mistaken on I believe you know what she meant. She meant that she did not need to show all elements in one reference for her 103. At least that is the way it appears likely to have happened from here.

    Heck, she might even be 100% right, with KSR who even knows if you have to have show all elements in all of the references anymore? To be fair, the statute does not say anything about elements…

    “For example, the element could be missing from each reference individually but results from the combination. Such rejections are typically weak but could be valid with proper motivation to combine. ”

    These kind happen all the time in my art. Because the applicant is choosing to claim specifically something that results from such a combination (many times their own IDS shows the references combined in these instances). 103 gets dropped down.

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  40. careful there me. Anticipation is different than obviousness. Before you thrash up to appeal, MPEP 2143.03 requires a “consideration” of every element. You don’t necessarily need to show every element for a 103. I still see bioler plate amendment language that cites to this section for the proposition that every element must be disclosed in the prior art. An element could be missing but obvious. For example, the element could be missing from each reference individually but results from the combination. Such rejections are typically weak but could be valid with proper motivation to combine.

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  41. Sorry, above it should be “raise” money, not “save”…

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  42. I have noticed a quicker turnaround on office actions, which is also a way to save money. The quality still sucks though, one examiner told me today that anticipation has nothing to do with obviousness and she does not need to show all the elements in her 103 rejection. Whew, glad she knows the law changed, because I was unaware that the 1952 Patent Act was no longer in force!

    This is gonna be a fun appeal to write…

    Reply
  43. I have noticed an uptick in unathorized deposit account charges of late. One way to try and raise money, I guess.

    Reply
  44. Who currently controls the escrow account at Commerce?

    Reply
  45. With over a million applications in backlog and all of those filing fees escrowed in the department of Commerce, how can they be having a “cash shortfall”? All they have to do is increase their efficiency in examination and they can tap into that escrowed money as quickly as needed.

    Reply
  46. Dickinson is a known quantity, that would be nice after the unknown quantity we just had.

    Reply

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