Comments on: The Benefits Of Efficient Responses And Approaches For Efficiently Responding To Rejections Under 35 U.S.C. §103 http://patentablydefined.com/2007/11/20/the-benefits-of-efficient-responses-and-approaches-for-efficiently-responding-to-rejections-under-35-usc-%c2%a7103/ A practical patent prosecution blog published by Michael Kondoudis Mon, 23 Apr 2012 10:38:57 +0000 hourly 1 http://wordpress.org/?v=3.3.2 By: intrigued1 http://patentablydefined.com/2007/11/20/the-benefits-of-efficient-responses-and-approaches-for-efficiently-responding-to-rejections-under-35-usc-%c2%a7103/comment-page-1/#comment-1803 intrigued1 Mon, 17 Dec 2007 05:46:58 +0000 http://patentablydefined.com/?p=31#comment-1803 I have to agree with Babel Boy that your opinions and illustrations are most informative on the web. May I request that you also include some insightful examples on Efficient Responses and Approaches for Efficiently Responding to Rejections Under 35 U.S.C. §102 ? It seems like quite a challenge to respond to these types of rejections, especially when some of the Applicant's claims appear overlap the claims of Patent A, even though the patents are unrelated. Thanks! I have to agree with Babel Boy that your opinions and illustrations are most informative on the web.

May I request that you also include some insightful examples on Efficient Responses and Approaches for Efficiently Responding to Rejections Under 35 U.S.C. §102 ? It seems like quite a challenge to respond to these types of rejections, especially when some of the Applicant’s claims appear overlap the claims of Patent A, even though the patents are unrelated.

Thanks!

]]> By: Babel Boy http://patentablydefined.com/2007/11/20/the-benefits-of-efficient-responses-and-approaches-for-efficiently-responding-to-rejections-under-35-usc-%c2%a7103/comment-page-1/#comment-1596 Babel Boy Thu, 22 Nov 2007 17:11:20 +0000 http://patentablydefined.com/?p=31#comment-1596 Michael You give some of the most solid and thought-provoking opinions on the web. Thanks. I don't take issue with your minimalist responses to 103 rejections, but you obviously work with a higher class of examiner than I do. It is rare indeed that I ever have a rejection that is prima facie. Virtually always the examiner completely ignores one or more claimed elements or limitations altogether, or fails to make all the requisite assertions. Sometimes they don't even identify the reference they're using. Consequently, there are at least 2 levels of traverse. First asserting there is no prima facie case, and, second, arguing that, even if the case had been properly made, the references don't dislcose the elements or the combination is not obvious. I would love the luxury of writing simple traverses to procedurally clean rejections. Also, I would note that the whole blinkin' field, including the courts, has apparently lost track of what is or is not obvious in a 103 rejection. It is the combination and only the combination that should be analyzed for obviousness. 90% of my 103 rejections say "The claimed widget would be obvious to one skilled in the art in view of the widget of [reference]" This sort of idiocy is endemic -- it is a 102 rejection in the guise of a 103. It makes no difference whether individual elements and limitations are obvious. The legal issue is whether an identified combination of elements is obvious, whether the combination is complete in meeting all of the elements/limitations, and whether the process making the combination is proper. The complexity of these rejections argues against simple responses. I believe your minimalist strategy has merit only if the lawyer is comfortable saving the complex arguments for the appeal. Generally, I'm not. In this atmosphere of new and retroactive rules, who knows what the consequences of failing to raise all appeallable issues with the examiner could be? Michael
You give some of the most solid and thought-provoking opinions on the web. Thanks.

I don’t take issue with your minimalist responses to 103 rejections, but you obviously work with a higher class of examiner than I do. It is rare indeed that I ever have a rejection that is prima facie. Virtually always the examiner completely ignores one or more claimed elements or limitations altogether, or fails to make all the requisite assertions. Sometimes they don’t even identify the reference they’re using.

Consequently, there are at least 2 levels of traverse. First asserting there is no prima facie case, and, second, arguing that, even if the case had been properly made, the references don’t dislcose the elements or the combination is not obvious. I would love the luxury of writing simple traverses to procedurally clean rejections.

Also, I would note that the whole blinkin’ field, including the courts, has apparently lost track of what is or is not obvious in a 103 rejection. It is the combination and only the combination that should be analyzed for obviousness. 90% of my 103 rejections say “The claimed widget would be obvious to one skilled in the art in view of the widget of [reference]” This sort of idiocy is endemic — it is a 102 rejection in the guise of a 103.

It makes no difference whether individual elements and limitations are obvious. The legal issue is whether an identified combination of elements is obvious, whether the combination is complete in meeting all of the elements/limitations, and whether the process making the combination is proper. The complexity of these rejections argues against simple responses.

I believe your minimalist strategy has merit only if the lawyer is comfortable saving the complex arguments for the appeal. Generally, I’m not. In this atmosphere of new and retroactive rules, who knows what the consequences of failing to raise all appeallable issues with the examiner could be?

]]> By: mdv http://patentablydefined.com/2007/11/20/the-benefits-of-efficient-responses-and-approaches-for-efficiently-responding-to-rejections-under-35-usc-%c2%a7103/comment-page-1/#comment-1581 mdv Thu, 22 Nov 2007 01:47:46 +0000 http://patentablydefined.com/?p=31#comment-1581 The approach above seems to assume that the examiner has a good grasp of the law and the art and knows how to apply the law to the claims at issue. I have only had one examiner that thoroughly understood the art and the claims at issue and that occured in a reexamination where the examiner was clearly experienced. I seem to have to spend a considerable amount of time explaning the art and the subject invention because the examiners do not get it. They focus their searches on key words and throw together a rejection. Then again, the applications I deal with are highly multidisciplinary. I have yet to receive a proper obviousness rejection; all the ones I have received go directly against KSR's warning of making the analysis explicit and not conclusory. The approach above seems to assume that the examiner has a good grasp of the law and the art and knows how to apply the law to the claims at issue. I have only had one examiner that thoroughly understood the art and the claims at issue and that occured in a reexamination where the examiner was clearly experienced. I seem to have to spend a considerable amount of time explaning the art and the subject invention because the examiners do not get it. They focus their searches on key words and throw together a rejection. Then again, the applications I deal with are highly multidisciplinary. I have yet to receive a proper obviousness rejection; all the ones I have received go directly against KSR’s warning of making the analysis explicit and not conclusory.

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