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The Benefits of Establishing a Prima Facie Case under 35 U.S.C. § 103 USPTO Refresher Training.

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Presentation on theme: "The Benefits of Establishing a Prima Facie Case under 35 U.S.C. § 103 USPTO Refresher Training."— Presentation transcript:

1 The Benefits of Establishing a Prima Facie Case under 35 U.S.C. § 103 USPTO Refresher Training

2 0802/23/2011Refresher- 35 USC 103 Training2 Objectives You will be reviewing the following topics: I. An Overview of Rejections Under 35 U.S.C. § 103 II. The State of Rejections Under 35 U.S.C. § 103 III. Benefits of Establishing an Effective Rejection under 35 U.S.C. § 103

3 I. An Overview of Rejections 35 U.S.C. § 103

4 0802/23/2011Refresher- 35 USC 103 Training4 35 U.S.C. § 103 Conditions for Patentability: Non-obvious Subject Matter (a)A patent may not be obtained though the invention is not identically disclosed or described as set forth in section 102 of this title, if the differences between the subject matter sought to be patented and the prior art are such that the subject matter as a whole would have been obvious at the time the invention was made to a person having ordinary skill in the art to which said subject matter pertains. Patentability shall not be negatived by the manner in which the invention was made.

5 0802/23/2011Refresher- 35 USC 103 Training5 35 U.S.C. § 103 Factors to be considered when analyzing prior art under 35 U.S.C. § 103 were articulated by the Supreme Court in a 1966 decision, Graham v. John Deere Co., 383 U.S. 1, 148 USPQ 459 (1966).

6 0802/23/2011Refresher- 35 USC 103 Training6 Graham v. John Deere Inquiries 1.What is the scope and content of the prior art? 2.What are the differences between the prior art and the claimed invention? 3.What is the level of ordinary skill in the pertinent art at the time the invention was made? 4.Does any objective evidence of nonobviousness exist?

7 0802/23/2011Refresher- 35 USC 103 Training7 Inquiry One: Determining the Scope and Content of the Prior Art Determining the scope and content of the prior art requires an understanding of what is actually disclosed by the reference as well as an understanding of the technology underlying the subject matter of the reference.

8 0802/23/2011Refresher- 35 USC 103 Training8 Inquiry Two: Determining the Differences between the Prior Art and the Claimed Invention Before a determination of how the claimed invention differs from the prior art can be made, there must be a clear understanding of both the claimed invention as well as of the invention disclosed by the reference. Such an understanding must be made of the claimed invention as a whole.

9 0802/23/2011Refresher- 35 USC 103 Training9 Inquiry Three: Resolving the Level of Ordinary Skill in the Art at the Time of the Invention One of ordinary skill in the art is a hypothetical person presumed to have understood the scientific and engineering principles applicable to the pertinent art when the invention was made. Specifying a particular level of skill is not necessary where the prior art itself reflects an appropriate level. Ascertaining level of ordinary skill is necessary to maintain objectivity.

10 0802/23/2011Refresher- 35 USC 103 Training10 Factors to Consider in Determining the Level of Ordinary Skill Include: (1) The educational level of the inventor; (2) Type of problems encountered in the art; (3) Prior art solutions to those problems; (4) Rapidity with which innovations are made; (5) Sophistication of the technology; and (6) Educational level of active workers in the field.

11 0802/23/2011Refresher- 35 USC 103 Training11 Making a 35 U.S.C. § 103 Rejection Once these factors have been considered, any rejection made must address findings of fact as to the disclosures in the references used together with a rationale for combining or modifying the references.

12 0802/23/2011Refresher- 35 USC 103 Training12 Making a 35 U.S.C. § 103 Rejection (cont.) A key to supporting any rejection under 35 U.S.C. § 103 is the clear articulation of the appropriate findings of fact and reasons why the claimed invention would have been obvious.

13 0802/23/2011Refresher- 35 USC 103 Training13 Articulate the Appropriate Findings of Fact As a review: The finding of facts relate to what one of ordinary skill in the art would have known at the time the invention was made. The source of findings of fact may be patents, non-patent literature, applicant’s admission of prior art, general knowledge of those in the art, or common sense.

14 II. The State of Rejections Under 35 U.S.C. § 103 View Points of the Examiner and the Applicant

15 0802/23/2011Refresher- 35 USC 103 Training15 What Applicant Would like to See Included in a More Detailed Office Action –Claim elements mapped to specific disclosures in the prior art. –All elements addressed. –The technology underlying both the claimed invention and that of the prior art understood. –Determination of what is actually disclosed by the prior art. –Response to technical arguments made in Applicant’s reply to art rejections. –Early identification of patentable subject matter –A detailed explanation provided by the Examiner regarding the combination used in the rejection. –Reasonable rationales to combine provided.

16 0802/23/2011Refresher- 35 USC 103 Training16 Some Examiner’s Reasoning for Why a More Detailed Office Action is not Beneficial It takes more time to write. It will cause more arguments from Applicants. The Applicant should be able to read the reference and determine what’s disclosed. More detail can be added to the rejection in a later Office Action.

17 0802/23/2011Refresher- 35 USC 103 Training17 Reconciling Both Points of View Providing a more detailed rejection in the FAOM –Will pay off in time saved responding to Applicant’s reply; and –Will advance prosecution so that it will be easier and quicker to reach a final disposition. Additional arguments from Applicant generated by a more detailed rejection –Can usually be responded to based on information in the rejection itself, if the Office Action is complete, –Can be more easily responded to with well reasoned and pertinent technical arguments. –May provide the basis for finding allowable subject matter.

18 0802/23/2011Refresher- 35 USC 103 Training18 More Reconciliation Points of View While the Applicant is required to read the reference, the more open to interpretation disclosures in the reference are: –the more room there is to misunderstand how the reference is applied in the rejection; and –the more arguments that can be generated by Applicant. More detail can be included in a later action –But this will result in more rework for little credit; –And will delay reaching final disposition.

19 III. The Benefits of Establishing a Prima Facie Case under 35 U.S.C. § 103 Mapping Claim Elements to Specific Disclosures in the Prior Art

20 0802/23/2011Refresher- 35 USC 103 Training20 Rationale to Combine: Inquiries in Graham v. John Deere Must be Addressed to Determine Obviousness In a recent decision, the Supreme Court affirmed that the framework set forth in Graham v. John Deere continues to define the inquiries that should be addressed in determining obviousness under 35 U.S.C. 103. KSR Int’l Co. v. Teleflex Inc. 550 U.S. 398, 82 USPQ2d 1385, 127 S. Ct. 1727 (KSR).

21 0802/23/2011Refresher- 35 USC 103 Training21 Establishing a Prima Facie Case of Obviousness Rationale to Combine The key to supporting any rejection under 35 U.S.C. § 103 is the clear articulation of the rationale or reason(s) why the claimed invention would have been obvious. Mere conclusory statements are not adequate to support a 35 U.S.C. § 103 rejection. “(T)here must be some articulated reasoning with some rational underpinning to support the legal conclusion of obviousness.” In re Kahn, 78 USPQ2d 1329, 1336 (Fed. Cir. 2006); 441 F.3d 977, 988.

22 0802/23/2011Refresher- 35 USC 103 Training22 Rationale for Combining Prior Art The rationale may come expressly from the documentary prior art: An explicit statement providing a reason to combine may come from anywhere in the references used. Often, the background or summary of invention in the references being relied upon provides a sound reason for the combination. The rationale may come from a reference that is relied upon solely for providing the reason to combine.

23 0802/23/2011Refresher- 35 USC 103 Training23 Rationale for Combining Prior Art (cont.) The rationale may be implicitly contained in the prior art. Rationale may also come from knowledge available to those of ordinary skill in the art. “Common sense teaches, however, that familiar items may have obvious uses beyond their primary purposes, and in many cases a person of ordinary skill will be able to fit the teachings of multiple patents together like pieces of a puzzle.” KSR Int’l Co. v. Teleflex Inc., 550 U.S. 398, 420; 82 USPQ2d 1385, 1390; 127 S. Ct. 1727, 1742 (KSR).

24 0802/23/2011Refresher- 35 USC 103 Training24 Guidelines for applying some of the rationales presented in the KSR decision are summarized in the following slides. Examiners should note that this is not an exhaustive list of rationales which may be used when establishing a prima facie case of obviousness under 35 U.S.C. § 103. Explaining Rationales to Combine

25 0802/23/2011Refresher- 35 USC 103 Training25 KSR Rationales to Combine Rationale A. Combining prior art elements according to known methods to yield predictable results. Rationale B. Simple substitution of one known, equivalent element for another to obtain predictable results Rationale C. Use of known technique to improve similar devices (methods, or products) in the same way Rationale D. Applying a known technique to a known device (method, or product) ready for improvement to yield predictable results. Rationale E. “Obvious to try” – choosing from a finite number of predictable solutions. Rationale F. 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. Rationale G. Teaching, Suggestion, or Motivation (TSM) Test

26 0802/23/2011Refresher- 35 USC 103 Training26 KSR Rationales to Combine Also see Examination Guidelines Update: Developments in the Obviousness Inquiry after KSR v. Teleflex ( Red Reg. citation: 75 Fed. Reg. 53643 Sept. 1, 2010) available at http://edocket.access.gpo.gov/2010/pdf/2010- 21646.pdf http://edocket.access.gpo.gov/2010/pdf/2010- 21646.pdf

27 0802/23/2011Refresher- 35 USC 103 Training27 The Steps of Setting up a 35 USC 103 Rejection What does the prior teach? Describe what each teaches separately. (What does Reference A teach? What does Reference B teach?) What is/are the difference(s) in the claim over the applied reference(s)? ( The difference between the instant claims and the prior art is that Reference A does not teach...) What is the modification of the applied reference(s) to arrive at the claimed subject matter; and Why would the modification have been obvious to one of ordinary skill in the art at the time the invention was made?

28 0802/23/2011Refresher- 35 USC 103 Training28 Presume the following claims and characters are a part of an application being examined. Remember, the more one-on-one correspondence provided, the easier it is for you to show where all the limitations are taught and for Applicant to respond. Example

29 0802/23/2011Refresher- 35 USC 103 Training29 The Claimed Invention Claim 1. A multi-purpose clip comprising the combination of: a one-piece body member of depending tear-drop configuration having an upper terminus shaped to replicate one of a plurality of configurations selected from cartoon characters or historical characters; and an inner set, continuous, curvilinear slot congruent to the shape of said depending body member thereby forming a depending tongue portion; wherein the material of construction of said clip being such that said tongue portion may be displaced from the plane of the surrounding depending body member to thereby form a recess in a releasable friction fit relationship.

30 0802/23/2011Refresher- 35 USC 103 Training30 Figures of Application Corresponding to Claim 1

31 0802/23/2011Refresher- 35 USC 103 Training31 Prior Art Reference A discloses a multipurpose clip which can be used as a tag or bookmark (col. 2, lines 41-42) comprising a one- piece body member element 10 of Fig. 3 of a depending tear- drop shape having an upper terminus or end point. The one- piece body member can be made of cardboard or plastic (col. 1, lines 36-39). Fig. 3 also shows an inner set, continuous, curvilinear slot 13 congruent to the shape of the depending body member element 10 forming a tongue portion 14. The clip has at its upper end apertures 11 and 12 connected by slot 13 (col. 1, lines 43-45). In one embodiment, the tongue 14 of badge (body member element) 10 is placed behind the page of book 30 while the body member element 10 is placed in front of the page (col. 2, lines 41-45). The tongue 14 of the clip is made of material that may be displaced from the plane of the surrounding depending body member to form a recess in a releasable friction fit relationship (see col. 1, lines 5-11).

32 0802/23/2011Refresher- 35 USC 103 Training32 Prior Art (cont.) Reference A

33 0802/23/2011Refresher- 35 USC 103 Training33 Prior Art (cont.): Reference B discloses a bookmark comprising a body member that has a body portion 5 and an handle part 8 that is capable of being inserted between the inner edges of the pages 12 and the back of the binding of the book 11, and flexible members 6 and 7 where the body portion can be in any form and appearance (lines 4-10, 11-15, and 25-27) including the silhouette of a well known character or another representation of persons, animals, birds, flowers, or various tokens emblems, advertisements, etc. according to the desire of the manufacturer (lines 56-61). The body portion may be made of any suitable material including rigid or pliable material such as: metal, fabricated material, wood, celluloid, etc. (lines 39-41).

34 0802/23/2011Refresher- 35 USC 103 Training34 Prior Art (cont.): Reference B

35 0802/23/2011Refresher- 35 USC 103 Training35 Rejection 1 (cont.) Let’s determine if these references are analogous art. Reference A’s article is labeled as a clip and Reference B’s article is labeled as a bookmark. Would one of ordinary skill on the art consider these articles to be Analogous Art? Yes, Reference A states that the article can be used as a bookmark. (col. 2, lines 41-42) Furthermore, even if use as a bookmark was not specifically mentioned a clip could inherently act as a bookmark to mark a page.

36 0802/23/2011Refresher- 35 USC 103 Training36 Rejection 1 Claim 1 is rejected as being unpatentable under 35 U.S.C. § 103(a) over Reference A in view of Reference B. Reference A teaches a multi-purpose clip comprising the combination of: a one-piece body member of depending tear-drop configuration having an upper terminus, see Figures 1-7; an inner set, continuous, curvilinear slot congruent to the shape of said depending body member thereby forming a depending tongue portion, wherein the material of construction of said clip being such that tongue-like portion may be displaced from the plane of the surrounding depending body member to thereby form a recess in a releasable friction fit relationship, see column 1, lines 5-11.

37 0802/23/2011Refresher- 35 USC 103 Training37 Rejection 1 (cont.) Reference A differs from Claim 1 in that it fails to disclose an upper terminus shaped to replicate one of a plurality of configurations selected from cartoon characters or historical characters. However, Reference B discloses an upper terminus (indicator portion or handle portion) shaped to replicate a well known character, see lines 65-69.

38 0802/23/2011Refresher- 35 USC 103 Training38 Rejection 1 (cont.) Therefore, it would have been obvious to one of ordinary skill in the art (POSITA) to have an upper terminus shaped to replicate one of a plurality of configurations selected from cartoon or historical characters because the handle portion may be of any suitable form at the option of the owner.

39 0802/23/2011Refresher- 35 USC 103 Training39 Rejection 1 (cont.) Has a prima facie case of obviousness been set forth in the rejection? Let’s discuss this:

40 0802/23/2011Refresher- 35 USC 103 Training40 Mapping Claim Elements to Specific Disclosures in the Prior Art Remember: A finding of facts to support a rejection under 35 U.S.C. § 103 may be found in both the written text and figures. If it is clear how specific elements disclosed in figures or text meet specific claim elements, then a simple referral to figures and text is sufficient. However, if it is not clear how the elements of the reference would meet the claimed limitations then some explanation will be required.

41 0802/23/2011Refresher- 35 USC 103 Training41 Mapping Claim Elements to Specific Disclosures in the Prior Art If we look back at the rejection, you should notice that there are a number of limitations that have not been specifically addressed or mapped. What about the motivational statement? Is that proper?

42 0802/23/2011Refresher- 35 USC 103 Training42 Minimal Mapping between the Claim Limitations and the Prior Art So, the rejection made in the Example 1 is not considered to be acceptable since there is no prima facie case of obviousness as the obviousness statement is merely conclusory. There are column and lines and figures mentioned, but they are not “mapped” to the prior art. Also, have all claimed limitations been addressed? The Applicant would most likely have many questions/arguments when reading this rejection. For instance:

43 0802/23/2011Refresher- 35 USC 103 Training43 Minimal Mapping between the Claim Limitations and the Prior Art (cont.) Some of the questions/arguments may result from: –The rejection not showing or addressing: Where the “multipurpose” clip is taught; there is a question as to whether is it really taught by the reference and/or whether the Examiner is just copying the instant claim. However, it is taught at col. 2, lines 41-42 in Reference A; How the claim language of “one of a plurality of configurations selected from cartoon characters or historical characters” is taught. The limitation is taught by Reference B at lines 56-61;

44 0802/23/2011Refresher- 35 USC 103 Training44 Minimal Mapping between the Claim Limitations and the Prior Art (cont.) Some of the questions/arguments may result from (cont.): –The rejection not showing or addressing: Where the “inner set, continuous, curvilinear slot congruent to the shape of said depending body member thereby forming a depending tongue portion” is taught; again, there is a question as to whether is it really taught by the reference and is the Examiner just copying the instant claim. Again, the limitation is taught at- Fig. 3, elements 10, 13 and 14 of Reference A; and Which specific figure teaches the closest embodiment to the instant claim- Fig. 3 of Reference A.

45 0802/23/2011Refresher- 35 USC 103 Training45 Rejection 2 Claim 1 is rejected as being unpatentable under 35 U.S.C. § 103(a) over Reference A in view of Reference B. Reference A discloses a multipurpose clip comprising: a one piece body member 10 of a depending tear- drop configuration having an upper terminus or end point, see Fig. 3; Fig. 3 also shows an inner set, continuous, curvilinear slot 13 congruent to the shape of the depending body member 10 forming a tongue portion 14. Also see col. 2, lines 41-45, which discloses that in one embodiment, the tongue 14 of tag 10 is placed behind the page of book 30 while the body clip 10 is placed in front of the page.

46 0802/23/2011Refresher- 35 USC 103 Training46 Rejection 2 (cont.) The examiner asserts that in order for the page to be placed between tab 14 and body 10, the material of construction of clip 10 must be such that tongue 14 may be displaced from the plane of the surrounding depending body member to thereby form a recess in a releasable friction fit relationship. Reference A differs from Claim 1 in that it fails to disclose an upper terminus shaped to replicate one of a plurality of configurations selected from cartoon characters or historical characters. However, Reference B discloses an upper terminus 8 (indicator portion or handle portion) shaped to replicate a well known character, see lines 65-69.

47 0802/23/2011Refresher- 35 USC 103 Training47 Rejection 2 (cont.) Therefore, it would have been obvious to POSITA to have an upper terminus shaped to replicate one of a plurality of configurations selected from cartoon or historical characters because the handle portion may be of any suitable form at the option of the owner.

48 0802/23/2011Refresher- 35 USC 103 Training48 Minimal One-on-One Correspondence between the Claim Limitations and the Prior Art This rejection is a little better than Example 1, with a little more limitation “mapping”. However, have all the claim limitations not addressed in Rejection 1 been addressed in Rejection 2? Also, has a prima facie case of obviousness been set forth? Let’s look at Rejection 2 more closely:

49 0802/23/2011Refresher- 35 USC 103 Training49 Minimal One-on-One Correspondence between the Claim Limitations and the Prior Art Notice that in Rejection 2: –The preamble language of a “multipurpose clip”- “Claim 1: A multi-purpose clip comprising the combination of...” still has not been addressed; –How the preamble language of “one of a plurality of configurations selected from cartoon characters or historical characters” is taught, but no real explanation of how Reference A is modified is discussed. The limitation is taught by Reference B at lines 56- 61.

50 0802/23/2011Refresher- 35 USC 103 Training50 Minimal One-on-One Correspondence between the Claim Limitations and the Prior Art Notice that in Rejection 2 (cont.): –Where the “inner set, continuous, curvilinear slot congruent to the shape of said depending body member thereby forming a depending tongue portion” is taught in Reference A has been set forth, thereby eliminating any questions as to whether it is really taught by the reference and/or whether the Examiner is just copying the instant claim. Again, the limitation is taught at Fig. 3, elements 10, 13 and 14; and –The specific figure in Reference A that teaches the closest embodiment to the instant claim has been listed- Fig. 3.

51 0802/23/2011Refresher- 35 USC 103 Training51 Applicant’s Reply to Rejection 2 So, since the Office action has not addressed all the claim limitations then a prima facie case of obviousness has not been proven. The burden has not been shifted and the Applicant will most likely argue that the Office action does not show or teach these limitations and request issuance of the patent. Again, the motivational statement is merely conclusory, and therefore, there is still no prima facie case of obviousness set forth. For instance, one argument Applicant will most likely present is:

52 0802/23/2011Refresher- 35 USC 103 Training52 Applicant’s Reply to Rejection 2 (cont.)...that the combination of Reference A in view of Reference B fails to set forth a prima facie case of obviousness as the combination does not disclose each and every element of the claimed invention. Particularly, it fails to disclose that the clip of Reference A is multipurpose. Applicant argues that each badge disclosed by Reference A appears to have only a single purpose disclosed.

53 0802/23/2011Refresher- 35 USC 103 Training53 Examiner’s Response to Applicant’s Arguments to Rejection 2 Instead of explicitly stating where in Reference A the multipurpose limitation is taught, the Examiner provides the following: ¶ 7.37.10 Unpersuasive Argument: Limitation(s) in Preamble In response to applicant’s arguments, the recitation of a “multipurpose clip” has not been given patentable weight because the recitation occurs in the preamble. A preamble is generally not accorded any patentable weight where it merely recites the purpose of a process or the intended use of a structure, and where the body of the claim does not depend on the preamble for completeness but, instead, the process steps or structural limitations are able to stand alone. See In re Hirao, 535 F.2d 67, 190 USPQ 15 (CCPA 1976) and Kropa v. Robie, 187 F.2d 150, 152, 88 USPQ 478, 481 (CCPA 1951)

54 0802/23/2011Refresher- 35 USC 103 Training54 Understanding the Underlying Technology of both the Claimed Invention and Prior Art Remember, it is important to understand the technology underlying both the claimed invention and the prior art in order to: (1) determine if disclosures in the references meet the limitations recited in the claim and (2) fully respond to any technical arguments presented by Applicant by referring to the references for support.

55 0802/23/2011Refresher- 35 USC 103 Training55 What the Examiner Should Have Done in the First Action on the Merits (FAOM) It is best to address all claim elements in the FAOM. The following text could have been included as part of the original rejection to address the “multipurpose” limitation: Reference A discloses that clip 10 has a “multiplicity of uses”, see col. 1, lines 1-5. In addition to being a badge, clip 10 may be used as a bookmark, see col. 2, lines 41-45.

56 0802/23/2011Refresher- 35 USC 103 Training56 What the Examiner Should Have Done in the First Action on the Merits (FAOM) (cont.) If the rejection of Claim 1 in the FAOM had addressed the limitation of a “multipurpose clip”, then Applicant’s arguments, might not have been made, or the examiner would have only had to refer to where the limitation was taught in the Office Action.

57 0802/23/2011Refresher- 35 USC 103 Training57 What the Examiner Should Have Done in the First Action on the Merits (FAOM) (cont.) Again, notice that Rejection 2 does not specifically address how the applied references teach the claim language of a “one of a plurality of configurations selected from cartoon characters or historical characters”. Claim 1: A multi-purpose clip comprising the combination of: a one-piece body member of depending tear-drop configuration having an upper terminus shaped to replicate one of a plurality of configurations selected from cartoon characters or historical characters...

58 0802/23/2011Refresher- 35 USC 103 Training58 Applicant’s Reply to Rejection 2 (cont.) An additional argument set forth by Applicant is that: because the upper terminus of Reference A is a flat line, it would not have been possible to shape the line in such a manner that one of a plurality of configurations selected from cartoon characters or historical characters would have been produced.

59 0802/23/2011Refresher- 35 USC 103 Training59 Applicant’s Reply to Rejection 2 (cont.) Applicant further argues that Reference B discloses an upper terminus (body portion) in the shape of a well known character, and that while well known characters may include historical characters, the phrase also covers current characters which are simply well known but are not historical. Thus, the cited combination fails to present a prima facie case of obviousness as the upper terminus cannot be shaped to produce a historical or cartoon character.

60 0802/23/2011Refresher- 35 USC 103 Training60 Examiner’s Response to Applicant’s Arguments to Rejection 2 (cont.) Instead of explicitly stating how Reference A would have been modified to show how “one of a plurality of configurations selected from cartoon characters or historical characters” is taught, the Examiner provides the following: ¶ 7.37.13 Unpersuasive Argument: Arguing Against References Individually –In response to applicant’s arguments against the references individually, one cannot show nonobviousness by attacking references individually where the rejections are based on combinations of references. See In re Keller, 642 F.2d 413, 208 USPQ 871 (CCPA 1981); In re Merck & Co., 800 F.2d 1091, 231 USPQ 375 (Fed. Cir. 1986)

61 0802/23/2011Refresher- 35 USC 103 Training61 Examiner’s Response to Applicant’s Arguments to Rejection 2 (cont.) The examiner further responded that as noted in MPEP 2144.04(I), matters relating to ornamentation only, which have no function, cannot be relied upon to patentably distinguish the claimed invention from the prior art. Think about: Is this response complete enough? If not, what should the Examiner have set forth?

62 0802/23/2011Refresher- 35 USC 103 Training62 Better to Base the Rejection on What is Actually Disclosed by the Reference Again, if the examiner had a clear understanding of what Reference B actually discloses, the rejection in the FAOM could have been changed to argue the obviousness of modifying Reference A to specifically state that a historical character is a common type of a well known character instead of referring the reader to the disclosure of just a well known character. This, most likely, would have avoided Applicant’s argument.

63 0802/23/2011Refresher- 35 USC 103 Training63 What the Examiner Should Have Done in the First Action on the Merits (FAOM) (cont.) The examiner should have relied on the facts in the applied prior art instead of taking the “easy way out” of just using form paragraphs without explanation and could have set forth something like the following in the rejection in the FAOM: The examiner notes that the material disclosed by Reference A to form clip 10 is plastic, see col. 1, lines 36-42. One of ordinary skill in the art at the time of the would appreciate that plastics, once melted, can be shaped into any desired pattern. The indicator or handle portion 8 of Reference B may be of any suitable form such as a silhouette of a well known character or may take the form of or representation of persons, animals, birds or flowers, or various tokens, emblems, advertisements and the like at the option of the owner.

64 0802/23/2011Refresher- 35 USC 103 Training64 What the Examiner Should Have Done in the First Action on the Merits (FAOM) (cont.) Therefore, it would have been obvious to POSITA at the time the invention was made to shape the upper terminus in any suitable form or shape such as a flat line as disclosed by Reference A or the shape of a well known character as disclosed in Reference B because Reference B teaches that the various shapes are functional equivalents, does not make a distinction between any of the shapes, and states that the body portion can be in any form and appearance, see lines 4-10, 11-15, and 25-27, according to the desire of the manufacturer, see lines 56-61.

65 0802/23/2011Refresher- 35 USC 103 Training65 What the Examiner Should Have Done in the First Action on the Merits (FAOM) (cont.) The examiner further asserts that: Substitution of a historical character for the well known character disclosed in Reference B amounts to little more than simple substitution of one known equivalent element for another. The result of this substitution would have been the predictable display of a historical character as the shape of the upper terminus of modified clip 10 of Reference A instead of a well known character.

66 0802/23/2011Refresher- 35 USC 103 Training66 Providing a Detailed Explanation of the Combination Used in the Rejection If the rejection of Claim 1 had included a more detailed explanation of the combination, then Applicant’s arguments: might not have been made, or the examiner would only have to refer to the Office Action for details of a technical response.

67 0802/23/2011Refresher- 35 USC 103 Training67 An Example of a First Action on the Merits of the Clip Example So after all this analysis, what should a FAOM of the Clip Example look like? This is just one example.

68 0802/23/2011Refresher- 35 USC 103 Training68 What the Overall Rejection Should Look Like Claim 1 is rejected as being unpatentable under 35 U.S.C. § 103(a) over Reference A in view of Reference B. Reference A discloses a multipurpose clip comprising: a one piece body member 10 of a depending tear- drop configuration having an upper terminus or end point, see Fig. 3. Fig. 3 also shows an inner set, continuous, curvilinear slot 13 congruent to the shape of the depending body member 10 forming a tongue portion 14. Reference A further discloses that in one embodiment, the tongue 14 of badge 10 is placed behind the page of book 30 while the body clip 10 is placed in front of the page, see col. 2, lines 41-45.

69 0802/23/2011Refresher- 35 USC 103 Training69 What the Overall Rejection Should Look Like (cont.) The examiner asserts that in order for the page to be placed between tab 14 and body 10, the material of construction of clip 10 must be such that tongue 14 may be displaced from the plane of the surrounding depending body member to thereby form a recess in a releasable friction fit relationship. Reference A also discloses that clip 10 has a “multiplicity of uses”, see col. 1, lines 1-5. In addition to being a badge, clip 10 may be used as a bookmark, see col. 2, lines 41-45. The examiner notes that the material disclosed by Reference A further discloses that the clip 10 is formed of plastic, see col. 1, lines 36-42. Once melted, plastics can be shaped into any desired pattern.

70 0802/23/2011Refresher- 35 USC 103 Training70 What the Overall Rejection Should Look Like (cont.) Reference A differs from Claim 1 in that it fails to disclose an upper terminus shaped to replicate one of a plurality of configurations selected from cartoon characters or historical characters. However, Reference B discloses an upper terminus 8 (indicator portion or handle portion) shaped to replicate a well known character, see lines 65-69. Reference B also discloses that the indicator or handle portion 8 may be of any suitable form such as a silhouette of a well known character or may take the form of or representation of persons, animals, birds or flowers, or various tokens, emblems, advertisements and the like at the option of the owner, see lines 39-41.

71 0802/23/2011Refresher- 35 USC 103 Training71 What the Overall Rejection Should Look Like (cont.) Reference A and Reference B appear to be analogous art as Reference A states that the article can be used as a bookmark, see col. 2, lines 41-42. Furthermore, even if Reference A did not explicitly state that the article could be used as a bookmark, a clip could inherently act as a bookmark to mark a page.

72 0802/23/2011Refresher- 35 USC 103 Training72 What the Overall Rejection Should Look Like (cont.) Substitution of a historical character for the well known character disclosed in Reference B appears to be a simple substitution of one known equivalent element for another. The result of this substitution would have been the predictable display of a historical character as the shape of the upper terminus of modified clip 10 of Reference A instead of a well known character. In addition, matters relating to ornamentation only, which have no function, cannot be relied upon to patentably distinguish the claimed invention from the prior art.

73 0802/23/2011Refresher- 35 USC 103 Training73 What the Overall Rejection Should Look Like (cont.) Furthermore, Reference A teaches that the clip 10 is formed from plastic, see col. 1, lines 36-42. Once melted, plastics can be shaped in any desired form or shape.

74 0802/23/2011Refresher- 35 USC 103 Training74 What the Overall Rejection Should Look Like (cont.) Therefore, it would have been obvious to a person of ordinary skill in the art at the time the invention was made to shape the upper plastic terminus of Reference A in any suitable form or shape including cartoon or historical characters because Reference B teaches a silhouette of well known or historical characters as well as other forms including: other persons, animals, birds, flowers, various tokens, emblems, advertisements and the like could have been made and would have been at the option of the owner.

75 02/23/2011Refresher- 35 USC 103 Training75 What the Overall Rejection Should Look Like (cont.) Furthermore, it would have been well known to one of skill in the art that plastic can be formed into any desired form or shape making the likelihood of success of forming the bookmark of Reference A into any desired form or shape, including cartoon and historical characters, very high.

76 0802/23/2011Refresher- 35 USC 103 Training76 Summary You should now be more familiar with: –The Overview of Rejections Under 35 U.S.C. § 103 –The State of Rejections Under 35 U.S.C. § 103 –Benefits of Establishing an Effective Rejection under 35 U.S.C. § 103

77 0802/23/2011Refresher- 35 USC 103 Training77 Questions?


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