Tuesday, October 7, 2008

Arguing against combinations--MPEP Aug 08 language

Horiguchi cannot be combined with Korn.
The Action asserts that Korn’s teaching can be combined with Horiguchi’s teaching. The motivation given is that “one would have been motivated to do so to handle primary (parent) thread (parent) and other (child) threads when parallel executing as suggested by Korn (e.g., col. 3: 47- col. 4:14.) Applicants respectfully disagree. To combine references, there must be some expectation of some advantage. MPEP 2144.IV. However, “the proposed modification cannot render the prior art unsatisfactory for its intended purpose.” MPEP 2143.01.V. Also, The proposed medication cannot change the principle of operation of a reference. MPEP 2143.01.V1.
Further, the MPEP requires explicit analysis, and not conclusory statements. As MPEP § 2142 states: The key to supporting any rejection under 35 U.S.C. 103 is the clear articulation of the reason(s) why the claimed invention would have been obvious. The Supreme Court in KSR International Co. v. Teleflex Inc., 550 U.S. ___, ___, 82 USPQ2d 1385, 1396 (2007) noted that the analysis supporting a rejection under 35 U.S.C. 103 should be made explicit. The Federal Circuit has stated that "rejections on obviousness cannot be sustained with mere conclusory statements; instead, there must be some articulated reasoning with some rational underpinning to support the legal conclusion of obviousness." In re Kahn, 441 F.3d 977, 988, 78 USPQ2d 1329, 1336 (Fed. Cir. 2006). See also KSR, 550 U.S. at ___ , 82 USPQ2d at 1396 (quoting Federal Circuit statement with approval).
The two references that the Action purports to combine are so different that combination makes no sense at all, and so would certainly render Horiguchi unsatisfactory for its intended purpose, if combined with Korn, and would also change the principle of operation of Horiguchi, to say the least.
Horiguchi is concerned with “processing an asynchronous interrupt of a processing entity.” [Horiguchi, Abstract.] The processing runs strictly on a single (multi-threaded) operating system. By contrast, Korn is concerned with porting processes that run on single-thread operating systems to those that run on multi-threaded operating systems. [Korn, abstract.] As Horiguchi has nothing to do with porting one operating system portion to another, it is nonsensical to place a feature for porting an operating system portion into a patent that does no such thing. Further, as to the suggested improvement, it is unclear, to say the least, why “handing primary (parent) threads and other (child) threads” (the improvement suggested by the Action, pp. 5-6) would produce any sort of improvement to Horiguchi. Horiguchi does not even discuss parent or children threads, let alone any sort of parent-child relationships. Shoehorning in a parent-child thread relationship into a patent that has no such constructs, nor any use for such constructs would do nothing but require additional constructs with no apparent purpose, making Horiguchi unsatisfactory for its intended purpose, as it would either not work, or at a very best case scenario, be unnecessarily complicated for no perceived benefit. As there is no improvement suggested, nor any improvement even envisioned, the statement, on its face, is conclusory, as is not allowed.
To reach a proper determination under 35 U.S.C. 103, the examiner must step backward in time and into the shoes worn by the hypothetical "person of ordinary skill in the art" when the invention was unknown and just before it was made. In view of all factual information, the examiner must then make a determination whether the claimed invention "as a whole" would have been obvious at that time to that person. Knowledge of applicant's disclosure must be put aside in reaching this determination, yet kept in mind in order to determine the "differences," conduct the search and evaluate the "subject matter as a whole" of the invention. The tendency to resort to "hindsight" based upon applicant’s disclosure is often difficult to avoid due to the very nature of the examination process. However, impermissible hindsight must be avoided and the legal conclusion must be reached on the basis of the facts gleaned from the prior art.
As only a conclusory statement was provided to combine Horiguchi with Korn, it appears that impermissible hindsight was used to make the determination that these two references could be combined, and as Horiguchi cannot be combined with Korn because the Korn techniques to port one type of operating system to another have nothing to with Horiguchi’s techniques to process asynchronous interrupts, Applicants respectfully submit that the Examiner has failed to establish a prima facie case of obviousness on the basis of these two references.


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