An attempt at some humor.

I hate single-reference 103 rejections…

About David

Professor of Law, Mercer University School of Law. Formerly Of Counsel, Taylor English Duma, LLP and in 2012-13, judicial clerk to Chief Judge Rader.

9 thoughts on “An attempt at some humor.

  1. 8


    Ned’s point is the opposite from what you imply (no need to say ‘Sorry,’ as you are actually agreeing with Ned).

  2. 7

    Sorry Ned. If that were the rule, you could probably take it to an extreme and say the alphabet anticipated everything.

  3. 6

    David, see, Rule 1.04(d)(2):

    “When a rejection in an application is based on facts within the personal knowledge of an employee of the Office, the data shall be as specific as possible, and the reference must be supported, when called for by the applicant, by the affidavit of such employee, and such affidavit shall be subject to contradiction or explanation by the affidavits of the applicant and other persons.”

  4. 5

    I had a discussion one time with a patent attorney who insisted that a text, that cited in different chapters different elements of a claim, anticipated….

    There are a lot of folks who plainly do not understand patent law who have a license to practice.

  5. 4

    The issue I have trouble with, to be more precise, is not where 103 is based upon multiple disclosures in the same prior patent, but where the examiner relies on a single disclosure, but then says “well, common sense says this change was obvious.” That, more precisely, is what bugs me. Now, granted, I think we have too many patents, but I also don’t think leaving it to the subjective whim of an examiner is the fix. There is a way to “force” the examiner to state personal knowledge, if that’s the basis for his rejection, but I don’t know how often that happens.

  6. 3

    Good post, PTU. Thanks. A brilliantly succinct and clear example to illustrate the difference between novelty and obviousness.

    Since US “written description” and EPO’s “added matter” both turn on what the document in view discloses (rather than what it makes obvious) this explains EPO strictness on all three of novelty, new matter and entitlement to Paris Convention priority. Sorry to say here in this particular thread though, that strictness is not funny at all.

  7. 1

    Then you apparently don’t understand some of the situations where these are useful.

    For instance, a single reference discloses two distinct embodiments. One embodiment has most of the claimed features, but only the other embodiment has the remaining feature. The examiner cannot cite this reference as anticipating the claim, since no single embodiment discloses every limitation. But they can show that the modification of the first embodiment with the additional teaching from the second embodiment would have been obvious.

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