• Unexpected results more important
– Stress this in specification
– Describe how invention surpasses ordinary innovation
/ common sense
• Avoid discussing “the problem” in the
background
Emphasize in specification the new functionality
that is not achieved by prior art
• Capture new functionality in claims
– Avoid list of elements that may be considered old
individually
• Submit objective evidence of nonobviousness in
a declaration under 37 CFR §1.132 by an
inventor or other witness
– Show evidence of unexpected results, commercial
success, long-felt need, failure of others, copying by
others, licensing, and skepticism of experts.
Showing posts with label 103 Obviousness. Show all posts
Showing posts with label 103 Obviousness. Show all posts
Friday, April 17, 2009
103 strategies
Effective Response Tactics
• (1) Combining prior art elements according
to known methods to yield predictable
results
– One or more element not in prior art
– Combination not according to known methods
– Results not predictable
(2) Simple substitution of one known
element for another to obtain predictable
results
– One or more element not in prior art
– Substitution not “simple”
• Requires inventive activity; modification of other
elements
• Contrary to common sense
• Destroys intended purpose of one or both references
– Results not predictable
(3) Use of known technique to improve
similar devices
– Technique is not known
– Devices not similar
– Technique not applicable to this device
• Requires inventive activity; modification of other
elements
• Contrary to common sense
• Destroys intended purpose of reference
(6) Known work in one field of endeavor may
prompt variations of it for use in either the same
field or a different one based on design
incentives or other market forces if the variations
would have been predictable to one of ordinary
skill in the art
– Work not actually known
– No recognition of problem to prompt variation
– Application of known work to different field
contravenes common sense in context of proposed
combination / modification of prior art
– Variations not predictable
(7) Some teaching, suggestion, or motivation in
the prior art that would have led one of ordinary
skill to modify the prior art reference or to
combine prior art reference teachings to arrive at
the claimed invention (similar to old test)
– Modification / combination contravenes common
sense
– Modification / combination destroys intended purpose
of prior art
– No TSM shown in prior art, and examiner provides no
convincing line of reasoning to support
(4) Applying a known technique to a known
device ready for improvement to yield
predictable result
– Device is not known
• At least one element missing
– Technique is not known, or
– Application of known technique to this device
contravenes common sense
– Result not predictable
• (5) “Obvious to try”—choosing from a finite
number of identified, predictable solutions,
with a reasonable expectation of success
– Number of solutions not finite
– Solution not identified
– No reasonable expectation of success
• Solution contravenes common sense in the context
of the proposed combination/modification of prior
art
Prima facie obviousness still requires showing
apparent reason for combination
– Contest this if not shown by examiner
– Do not accept conclusory statements of obviousness
• Dispute all un-supported assertions by examiner
– Legal conclusions
• Existence of TSM
• Common sense
• Level of skill in the art
– Factual conclusions
• Finite number of known solutions
• Known work in field
• Predictability of results
• Rule 1.104(d)(2)
– Allows applicant to request affidavit from Examiner in support of
statements made based on personal knowledge
– Often forces Examiner to find additional prior art and issue new,
non-final office action
• (1) Combining prior art elements according
to known methods to yield predictable
results
– One or more element not in prior art
– Combination not according to known methods
– Results not predictable
(2) Simple substitution of one known
element for another to obtain predictable
results
– One or more element not in prior art
– Substitution not “simple”
• Requires inventive activity; modification of other
elements
• Contrary to common sense
• Destroys intended purpose of one or both references
– Results not predictable
(3) Use of known technique to improve
similar devices
– Technique is not known
– Devices not similar
– Technique not applicable to this device
• Requires inventive activity; modification of other
elements
• Contrary to common sense
• Destroys intended purpose of reference
(6) Known work in one field of endeavor may
prompt variations of it for use in either the same
field or a different one based on design
incentives or other market forces if the variations
would have been predictable to one of ordinary
skill in the art
– Work not actually known
– No recognition of problem to prompt variation
– Application of known work to different field
contravenes common sense in context of proposed
combination / modification of prior art
– Variations not predictable
(7) Some teaching, suggestion, or motivation in
the prior art that would have led one of ordinary
skill to modify the prior art reference or to
combine prior art reference teachings to arrive at
the claimed invention (similar to old test)
– Modification / combination contravenes common
sense
– Modification / combination destroys intended purpose
of prior art
– No TSM shown in prior art, and examiner provides no
convincing line of reasoning to support
(4) Applying a known technique to a known
device ready for improvement to yield
predictable result
– Device is not known
• At least one element missing
– Technique is not known, or
– Application of known technique to this device
contravenes common sense
– Result not predictable
• (5) “Obvious to try”—choosing from a finite
number of identified, predictable solutions,
with a reasonable expectation of success
– Number of solutions not finite
– Solution not identified
– No reasonable expectation of success
• Solution contravenes common sense in the context
of the proposed combination/modification of prior
art
Prima facie obviousness still requires showing
apparent reason for combination
– Contest this if not shown by examiner
– Do not accept conclusory statements of obviousness
• Dispute all un-supported assertions by examiner
– Legal conclusions
• Existence of TSM
• Common sense
• Level of skill in the art
– Factual conclusions
• Finite number of known solutions
• Known work in field
• Predictability of results
• Rule 1.104(d)(2)
– Allows applicant to request affidavit from Examiner in support of
statements made based on personal knowledge
– Often forces Examiner to find additional prior art and issue new,
non-final office action
Friday, March 13, 2009
Claim must be considered as a whole, refs
Flook, 437 U.S. at 594 ("Our approach to respondent's application is, however, not at all inconsistent with the view that a patent claim must be considered as a whole."); Diehr, 450 U.S. at 188 ("It is inappropriate to dissect the claims into old and new elements and then to ignore the presence of the old elements in the analysis.").
As such, if you claim a DVD (an example of a computer readable medium), when the "claim as a whole" is considered, the DVD is patentable subject matter because you cannot ignore that a DVD is neither a law of nature, natural phenomena, nor abstract idea.
"If the only difference between the alleged invention and the prior art is based on content or information, then the alleged invention isn't really tied to a particular machine."
If you ask one having ordinary skill in the art, they will say that a "general purpose computer" with the DVD (or other computer readable medium) encoded with the instructions for perform a method (i.e., the typical Beauregard language) is measurably different than an identical general purpose computer in which the DVD (or other computer readable medium) does not include the encoded instructions.
There may be a difference "based on content or information," as you allege, but that difference is measurable.
FYI your statement that "the alleged invention isn't really tied to a particular machine" ignores that Beauregard claims are product claims, not method claims. Just because you burn instructions on a DVD doesn't magically convert the DVD from a product into some "abstract method."
From MPEP 2141.02:
In determining the differences between the prior art and the claims, the question under 35 U.S.C. 103 is not whether the differences themselves would have been obvious, but whether the claimed invention as a whole would have been obvious. (underlining under "as a whole" omitted."
Under 35 USC 102, you have to establish that the prior art teaches ALL of the claimed limitations.
Thus, you have to look at the claimed invention AS A WHOLE, which includes ALL of the limitations. A blank DVD is not 102/103 art for the average Beauregard claim for those reasons.
The method steps merely describe the "functionality" imparted by the computer readable medium to the computer. As discussed in MPEP 2173.05(g):
"There is nothing inherently wrong with defining some part of an invention in functional terms. Functional language does not, in and of itself, render a claim improper."
Commenter at Patentlyo.com
As such, if you claim a DVD (an example of a computer readable medium), when the "claim as a whole" is considered, the DVD is patentable subject matter because you cannot ignore that a DVD is neither a law of nature, natural phenomena, nor abstract idea.
"If the only difference between the alleged invention and the prior art is based on content or information, then the alleged invention isn't really tied to a particular machine."
If you ask one having ordinary skill in the art, they will say that a "general purpose computer" with the DVD (or other computer readable medium) encoded with the instructions for perform a method (i.e., the typical Beauregard language) is measurably different than an identical general purpose computer in which the DVD (or other computer readable medium) does not include the encoded instructions.
There may be a difference "based on content or information," as you allege, but that difference is measurable.
FYI your statement that "the alleged invention isn't really tied to a particular machine" ignores that Beauregard claims are product claims, not method claims. Just because you burn instructions on a DVD doesn't magically convert the DVD from a product into some "abstract method."
From MPEP 2141.02:
In determining the differences between the prior art and the claims, the question under 35 U.S.C. 103 is not whether the differences themselves would have been obvious, but whether the claimed invention as a whole would have been obvious. (underlining under "as a whole" omitted."
Under 35 USC 102, you have to establish that the prior art teaches ALL of the claimed limitations.
Thus, you have to look at the claimed invention AS A WHOLE, which includes ALL of the limitations. A blank DVD is not 102/103 art for the average Beauregard claim for those reasons.
The method steps merely describe the "functionality" imparted by the computer readable medium to the computer. As discussed in MPEP 2173.05(g):
"There is nothing inherently wrong with defining some part of an invention in functional terms. Functional language does not, in and of itself, render a claim improper."
Commenter at Patentlyo.com
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.
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.
Tuesday, September 16, 2008
Conclusory Obviousness Statements
Second, regarding the Examiner’s obviousness argument, 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).
One conclusory statement made by the Examiner in support of the obviousness rejection is, “However, it would have been obvious to one of ordinary skill that Shoff-Schein would have been motivated to limit the number of times an icon is shown during a particular broadcast if the user did not respond the first time.” This conclusory statement is not supported by explicit analysis or "articulated reasoning with some rational underpinning." The statement merely concludes that one would be motivated to conceive the invention of claim 25. The Examiner’s subsequent two sentences at the bottom of page 6 of the Action do not provide explicit analysis as they are totally unrelated to the claim language (for example, see the emphasized language from claim 25 above), instead they are related to options available on a television guide display.
It appears that the Examiner is trying to establish a prima facie case of obviousness under one of the exemplary rationales illustrated in MPEP § 2143. Specifically, the Examiner appears to be relying on rationale (E) or (F). Rationale (E) requires the following findings, and “If any of these findings cannot be made, then this rationale cannot be used to support a conclusion that the claim would have been obvious to one of ordinary skill in the art.” MPEP § 2143(E):
(1) a finding that at the time of the invention, there had been a recognized problem or need in the art, which may include a design need or market pressure to solve a problem;
(2) a finding that there had been a finite number of identified, predictable potential solutions to the recognized need or problem;
(3) a finding that one of ordinary skill in the art could have pursued the known potential solutions with a reasonable expectation of success; and
(4) whatever additional findings based on the Graham factual inquiries may be necessary, in view of the facts of the case under consideration, to explain a conclusion of obviousness.
Under rationale (E), the Examiner has not established at least findings (1) and (2). Regarding finding (1), the Examiner has not provided any evidence that there was a recognized problem or need in the art, such as a need to not unduly disrupt the viewer by repeated display of an icon indicating auxiliary content. Applicants recognized this problem (Application, original claim 9 and page 16, lines 3-15). However, relying on Applicant’s recognition of this problem to satisfy (1) would be impermissible hindsight. As MPEP § 2142 states (emphasis added):
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.
Regarding finding (2), the Examiner has not provided any evidence that there were a finite number of identified solutions to the problem. First, there is no evidence that the prior art even recognized the problem (see previous paragraph). Second, even if the prior art did recognize the problem, the identified solutions were to display an icon throughout a program or fade it out after a set time period (Shoff at col. 9, lines 41-53), or to generally display an icon on a television screen (Schein at col. 20, lines 29-44). The Examiner has not pointed to any evidence describing the claimed solution as an identified, predictable potential solution in the prior art. For at least these reasons, the Examiner has failed to establish a prima facie case of obviousness under Rationale (E).
Rationale (F) requires the following findings, and “If any of these findings cannot be made, then this rationale cannot be used to support a conclusion that the claim would have been obvious to one of ordinary skill in the art.” MPEP § 2143(F):
(1) a finding that the scope and content of the prior art, whether in the same field of endeavor as that of the applicant's invention or a different field of endeavor, included a similar or analogous device (method, or product);
(2) a finding that there were design incentives or market forces which would have prompted adaptation of the known device (method, or product);
(3) a finding that the differences between the claimed invention and the prior art were encompassed in known variations or in a principle known in the prior art;
(4) a finding that one of ordinary skill in the art, in view of the identified design incentives or other market forces, could have implemented the claimed variation of the prior art, and the claimed variation would have been predictable to one of ordinary skill in the art; and
(5) whatever additional findings based on the Graham factual inquiries may be necessary, in view of the facts of the case under consideration, to explain a conclusion of obviousness.
Under rationale (F), the Examiner has not established at least findings (2) and (3). Regarding finding (2), the Examiner has not identified any design incentives or market forces which would have prompted adaptation to result in the invention of claim 25. In the Action, page 8, the Examiner concludes that design incentives or market forces exist, but does not provide any evidence of either. The Examiner merely points to Applicants identification of a problem and Applicants claimed solution (need to not unduly disrupt the viewer by repeated display of an icon indicating auxiliary content). The Examiner’s approach is not valid because it uses impermissible hindsight by relying on the Application.
Regarding finding (3), once again the Examiner has not provided any evidence of known variations or principles that would encompass differences between claim 25 and the prior art. The only options pointed to by the Examiner were to display an icon throughout a program or fade it out after a set time period (Shoff at col. 9, lines 41-53), or to generally display an icon on a television screen (Schein at col. 20, lines 29-44). For at least these reasons, the Examiner has failed to establish a prima facie case of obviousness under Rationale (F).
For at least the reasons discussed above, the Examiner has not established a prima facie case of obviousness with regards to claim 25. Because the Examiner has not established a prima facie case, Applicants are under no obligation to provide evidence of nonobviousness. As MPEP § 2142 states:
The examiner bears the initial burden of factually supporting any prima facie conclusion of obviousness. If the examiner does not produce a prima facie case, the applicant is under no obligation to submit evidence of nonobviousness.
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).
One conclusory statement made by the Examiner in support of the obviousness rejection is, “However, it would have been obvious to one of ordinary skill that Shoff-Schein would have been motivated to limit the number of times an icon is shown during a particular broadcast if the user did not respond the first time.” This conclusory statement is not supported by explicit analysis or "articulated reasoning with some rational underpinning." The statement merely concludes that one would be motivated to conceive the invention of claim 25. The Examiner’s subsequent two sentences at the bottom of page 6 of the Action do not provide explicit analysis as they are totally unrelated to the claim language (for example, see the emphasized language from claim 25 above), instead they are related to options available on a television guide display.
It appears that the Examiner is trying to establish a prima facie case of obviousness under one of the exemplary rationales illustrated in MPEP § 2143. Specifically, the Examiner appears to be relying on rationale (E) or (F). Rationale (E) requires the following findings, and “If any of these findings cannot be made, then this rationale cannot be used to support a conclusion that the claim would have been obvious to one of ordinary skill in the art.” MPEP § 2143(E):
(1) a finding that at the time of the invention, there had been a recognized problem or need in the art, which may include a design need or market pressure to solve a problem;
(2) a finding that there had been a finite number of identified, predictable potential solutions to the recognized need or problem;
(3) a finding that one of ordinary skill in the art could have pursued the known potential solutions with a reasonable expectation of success; and
(4) whatever additional findings based on the Graham factual inquiries may be necessary, in view of the facts of the case under consideration, to explain a conclusion of obviousness.
Under rationale (E), the Examiner has not established at least findings (1) and (2). Regarding finding (1), the Examiner has not provided any evidence that there was a recognized problem or need in the art, such as a need to not unduly disrupt the viewer by repeated display of an icon indicating auxiliary content. Applicants recognized this problem (Application, original claim 9 and page 16, lines 3-15). However, relying on Applicant’s recognition of this problem to satisfy (1) would be impermissible hindsight. As MPEP § 2142 states (emphasis added):
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.
Regarding finding (2), the Examiner has not provided any evidence that there were a finite number of identified solutions to the problem. First, there is no evidence that the prior art even recognized the problem (see previous paragraph). Second, even if the prior art did recognize the problem, the identified solutions were to display an icon throughout a program or fade it out after a set time period (Shoff at col. 9, lines 41-53), or to generally display an icon on a television screen (Schein at col. 20, lines 29-44). The Examiner has not pointed to any evidence describing the claimed solution as an identified, predictable potential solution in the prior art. For at least these reasons, the Examiner has failed to establish a prima facie case of obviousness under Rationale (E).
Rationale (F) requires the following findings, and “If any of these findings cannot be made, then this rationale cannot be used to support a conclusion that the claim would have been obvious to one of ordinary skill in the art.” MPEP § 2143(F):
(1) a finding that the scope and content of the prior art, whether in the same field of endeavor as that of the applicant's invention or a different field of endeavor, included a similar or analogous device (method, or product);
(2) a finding that there were design incentives or market forces which would have prompted adaptation of the known device (method, or product);
(3) a finding that the differences between the claimed invention and the prior art were encompassed in known variations or in a principle known in the prior art;
(4) a finding that one of ordinary skill in the art, in view of the identified design incentives or other market forces, could have implemented the claimed variation of the prior art, and the claimed variation would have been predictable to one of ordinary skill in the art; and
(5) whatever additional findings based on the Graham factual inquiries may be necessary, in view of the facts of the case under consideration, to explain a conclusion of obviousness.
Under rationale (F), the Examiner has not established at least findings (2) and (3). Regarding finding (2), the Examiner has not identified any design incentives or market forces which would have prompted adaptation to result in the invention of claim 25. In the Action, page 8, the Examiner concludes that design incentives or market forces exist, but does not provide any evidence of either. The Examiner merely points to Applicants identification of a problem and Applicants claimed solution (need to not unduly disrupt the viewer by repeated display of an icon indicating auxiliary content). The Examiner’s approach is not valid because it uses impermissible hindsight by relying on the Application.
Regarding finding (3), once again the Examiner has not provided any evidence of known variations or principles that would encompass differences between claim 25 and the prior art. The only options pointed to by the Examiner were to display an icon throughout a program or fade it out after a set time period (Shoff at col. 9, lines 41-53), or to generally display an icon on a television screen (Schein at col. 20, lines 29-44). For at least these reasons, the Examiner has failed to establish a prima facie case of obviousness under Rationale (F).
For at least the reasons discussed above, the Examiner has not established a prima facie case of obviousness with regards to claim 25. Because the Examiner has not established a prima facie case, Applicants are under no obligation to provide evidence of nonobviousness. As MPEP § 2142 states:
The examiner bears the initial burden of factually supporting any prima facie conclusion of obviousness. If the examiner does not produce a prima facie case, the applicant is under no obligation to submit evidence of nonobviousness.
Subscribe to:
Posts (Atom)