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362 | Patent it YOURSELF Part I—General Arguments Against Obviousness (continued) 20. Competitive Recognition: The invention has been copied by an infringer; moreover, the infringer has made laudatory statements about it, or has admitted it is unobvious. 21. Contrarian Invention: The invention is contrary to the teachings of the prior art—that is, the invention goes against the grain of what the prior art teaches. 22. Strained Interpretation: The examiner has made a strained interpretation of the reference that could be made only by hindsight. 23. Paper Patent: The reference is a “paper patent”—that is, it was never implemented or commercialized and therefore should be construed narrowly. (Don’t use if reference completely anticipates your invention.) 24. New Principle of Operation: The invention utilizes a new principle of operation. Applicant has blazed a trail, rather than followed one. 25. Inability of Competitors: Competitors were unable to copy the invention until they were able to learn its details through a publication or reverse engineering a commercial model; this indicates unobviousness. 26. Nonanalogous Art: The reference is from so different a field that it would not have commended itself to an inventor’s attention when considering the invention as a whole. MPEP 2141.01. 27. No Convincing Reasoning: The examiner has not presented a convincing line of reasoning as to why the claimed subject matter as a whole, including its differences over the prior art, would have been obvious. 28. Reference Is Nonanalogous Art or Isn’t Pertinent to the Problem Applicant Has Solved: If a cited reference is nonanalogous or is directed to a different problem, this weighs against its use in a rejection. MPEP 707.07(f) 7.37.05. Part II—Arguments Also Used When Combination of References Applied 29. Unsuggested Combination: The prior-art references do not contain any suggestion (express or implied) that they be combined, or that they be combined in the manner suggested. In 2007 the U.S. Supreme Court held that that an invention should not be held obvious over several prior-art references unless there is a suggestion, motivation, or teaching that the references can or should be combined. MPEP 2143. 30. References Are Individually Complete: Each reference is complete and functional in itself, so there would be no reason to use parts from or add or substitute parts to any reference. 31. References Take Different Approaches: The references take mutually exclusive paths and reach different solutions to a similar problem. Since they teach away from each other, it would not be logical to combine them. 32. References Teach Away: The references themselves teach away (expressly or by implication) from the suggested combination. 33. Reference Is From Different Field: One reference is from a very different technical field than that of the invention— that is, it’s “nonanalogous art.” MPEP 707.07(f) 34. Impossible to Combine: Those skilled in the art would find it physically impossible to combine the references in the manner suggested. 35. Inoperative Combination: If they could be combined, the refer ences would produce an inoperative combination. 36. Modifications Necessary: It would be necessary to make modifications, not taught in the prior art, in order to combine the references in the manner suggested. 37. Mutually Exclusive Paths: The references can’t be legally combined because they take mutually exclusive paths to reach different solutions to a problem, and, therefore, by implication each teaches away from combining itself with the other. 38. Claimed Features Lacking: Even if combined, the references would not meet the claims. 39. Synergism: The whole (that is—the result achieved by the invention) is greater than the sum of its parts (that is—the respective results of the individual references). 40. Multiplicity of Steps Required: The combination suggested requires a series of separate, awkward combinative steps that are too involved to be considered obvious. 41. Multiplicity of References: The fact that a large number of references (over three) must be combined to meet the invention is evidence of unobviousness. 42. Intended Function Destroyed: The references are not legally combinable since doing so will destroy the intended function(s) of at least one of the references. Fig. 13D—Arguments Against Obviousness Rejections (Part II)
ChaPter 13 | GETTING the Pto to DELIVER | 363 8. If References Are Cited in Combination Against Your Broadest Claim If two or more references have been cited in combination against your broadest claim, refer to Fig. 13D (Part II) to see whether the examiner has a point. Tip You should especially consider reasons 29 to 33— that is, ask yourself whether it is proper to combine these references in the manner that the examiner has done. Also note that when you use any of the reasons of Fig. 13D, you should not merely state the applicable reason, but also supporting facts that pertain to your invention. 9. Does the Combination Disclose Subject Matter of Your Broadest Claim? Assuming that the references are combined (whether or not they can be), ask yourself if the combination discloses the subject matter of your claim (Reason 37). If not, are the distinctions in your claim patentable under Section 103 (Reasons 1–28 and 39–41)? Also ask yourself whether there are any other errors in the examiner’s logic or reasoning. 10. If Your Claims Are Rejected Under Section 112 of the Patent Laws If your claim has been rejected under Section 112—a very common occurrence, even for patent attorneys—the examiner feels that the language of your claim is not clear or proper. For example, a very common rejection is for failure to supply an antecedent for a “said xxxx” phrase. This is easy to fix. Either positively recite the missing antecedent earlier in the claim or in a referent claim which the claim depends from, or rewrite the phrase to eliminate the “said.” If you accept an examiner’s rejection that the claim has vague or unclear language, you’ll have to substitute a more specific recitation. Try not to limit your invention too much. For example, if you recite that a sheet is “flexible” and the examiner objects to this word as too vague, try substituting a recitation such as, “flexible enough so that it can be repeatedly folded and opened without tearing.” You may benefit by calling the examiner to seek suggestions or approval for new proposed language. If the examiner makes any other type of Section 112 rejection, try to work out alternative language that will obviate this rejection. Alternatively, you can ask the examiner to write clear claims for you. (See Section F2i, below.) 11. What to Do If You Disagree With the Examiner If you believe your broadest claim is patentable over the prior art and that there is a serious flaw in the examiner’s logic, it is theoretically permissible to “stand pat”—that is, leave the claim as it is and argue its patentability in your response. It can be desirable to do this to emphasize the rightness of your position if the examiner is very wrong. If you do file a reply to an OA without changing the specification or claims, your reply is technically not an “amendment,” so call it a “response.” In most situations, I advise you not to stand pat, since it’s difficult psychologically for the examiner to back down. In other words, it’s easier to get the examiner to change directions slightly than to make an about turn. Thus, to save the examiner’s ego, it’s best to try to make some amendment to the claim, even if it’s insignificant. “Treat all persons you deal with as if they had a sign around their neck reading, ‘Make Me Feel Important.’” —Mary Kay Ash 12. Making Amendments Without Narrowing Scope of Claim It’s usually possible to make amendments to a claim that don’t narrow its scope. For example, you can recite that a member, which of necessity must be elongated, is elongated. By doing this, you have amended the claim without narrowing your scope of coverage. Also, in the electronic field, you can state that a circuit is energized by a direct-current source. For almost any claim you can add a “where by” clause to the claim stating the function of the mechanism of the claim, and you can add a longer preamble stating in more detail (but not in narrower language) the environment of your invention. The important thing is to add some words to the claim(s), even if you already believe they distinguish over the prior art under Sections 102 and 103, in order to show that you’re meeting the examiner part way. 13. Amending Your Claim When You Agree With the Examiner If you believe your broadest claim isn’t patentable as written, and you agree with all or part of the examiner’s rejection, you’ll have to narrow the claim by adding physical or structural limitations, or by narrowing the limitations already present, in the manner outlined in Chapter 9, or by canceling the broadest claim(s) and making a dependent claim the new independent claim.
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N O LO ® “The best roll-up-your-
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Products & Services Books & Softwar
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15th edition Patent It Yourself You
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Acknowledgments My deep thanks go t
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2 3 4 The Science and Magic of Inve
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8 9 E. Make and Sell Your Invention
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13 14 J. The Patent Laws of Other C
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Your Legal Companion A. You Don’t
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Nondisclosure Agreement 1. Parties.
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Invention Disclosure Sheet of Inven
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Form 3-4: Application Data Sheet—
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Positive and Negative Factors Evalu
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Bestsellers The Small Business Star
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Keep Up to Date 1 Go to Nolo.com/ne
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About the Author David Pressman is
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