Wednesday, September 17, 2008

Conclusory Obviousness Statements pt. 2

Claims 26-27.
The Action rejects claims 26 under 35 U.S.C § 103(a) as unpatentable over Friedman in view of Gupta.
Neither Friedman nor Gupta teaches or suggests the claim 26 language:
a process requesting the system level service add-in manager to enumerate at least one category of the media filters installed on the system;
the process, using an interface to the system level service add-in manager, selecting an enumerated media filter; and
the process invoking the selected media filter outside of the process so that an error within the filter will not cause the process to fail during operation;
wherein the selected media filter can receive its input from a different media filter A and provide its output directly to a different filter B as directed by the process, and wherein the selected media filter is not installed within the process.

The Action concedes that neither Friedman nor Gupta disclose the above features of claim 26. [Action, p. 11.] However, the Action states that it would be obvious to add them, with no suggestion or teaching required, to Friedman.
To render claim 26 unpatentable, however, the Office must do more than merely “consider” each and every feature for this claim. Instead, the asserted combination of the patents to Friedman and Gupta must also teach or suggest each and every claim feature. See In re Royka, 490 F.2d 981, 180 USPQ 580 (CCPA 1974) (emphasis added) (to establish prima facie obviousness of a claimed invention, all the claim features must be taught or suggested by the prior art). Rather, a proper obviousness determination requires that an Examiner make “a searching comparison of the claimed invention – including all its limitations – with the teaching of the prior art.” See In re Wada and Murphy, Appeal 2007-3733, citing In re Ochiai, 71 F.3d 1565, 1572 (Fed. Cir. 1995). “Thus, obviousness requires a suggestion of all limitations in a claim.” In re Wada, citing CFMT, Inc. v. Yieldup International Corp., 349 F.3d 1333 (Fed. Cir. 2003, emphasis added).
As the limitations of claim 26, above, are conceded by the Office to neither be taught nor suggested by either the primary or the secondary reference, a prima facie case has not been made against claim 26.
KSR International. Co. v. Teleflex, Inc., et al., 550 U.S.___(2007) requires that an Examiner provide “some articulated reasoning with some rationale underpinning to support the legal conclusion of obviousness.” [KSR Opinion at p. 14]. Further, an Examiner must “identify a reason that would have prompted a person of ordinary skill in the relevant field to combine the elements in the way the claimed new invention does.” [KSR Opinion at p. 15].
The Action has failed provide such articulated reasoning. In determining that it is obvious to add the undisclosed claim feature “a process requesting the system level service add-in manager to enumerate at least one category of the media filters installed on the system,” (emphasis added) the Action states: “It would have been obvious for one of skill in the art at the time the invention was made to implement Friedman’s installation so that the ID of the codecs would have a registry entry based on the well-known practice for incorporating codecs in the OS and registry with regard to Windows installing practices for future access verification or upgrade … to the corresponding Windows media applications.” [Action, page 11, internal cites omitted.] However, the claim language reads “…to enumerate at least one category…” The stated reasons for combination do not discuss categories at all and as such fail to provide “articulated reasoning with some rationale underpinning to support the legal conclusion of obviousness.” For at least this further reason, claim 26 is in condition for allowance.
Accordingly, favorable reconsideration and withdrawal of the rejection of independent claim 26 and its dependent claim 27 under 35 U.S.C. §103 is respectfully requested. Claim 27 also recites novel and nonobvious features allowable over the Friedman-Gupta combination.

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