Responding to an explicit denial using "All Element Tests"

The newly revised part of section 2143.03 of the patent examination proceeding is incomplete as references to all element tests have been deleted. Applicants who need to remind examiners of this exam should quote the decision of the Court of Appeals and the Board of Appeals (BPAI). Here's a way to do it.

Recent support

Decision of BPAI in January 2008 With Wada and Murphy The examiner rescinded § 103's rejection as it did not explain where and how the cited invention taught or suggested all features of the claimed invention. Of particular interest are the following BPAI provisions of the applicable law.

To judge whether the claim is obvious, the examiner must compare "claim comparison of claims claimed - Including all restrictions - With the teachings of the prior art. " Richard Otiei , 71 F.3 d 1565, 1572 (Fed. Cir. 1995) (emphasis added). Therefore, "obviousness requires suggestion of all restrictions on claims" CFMT, Inc. v. Yieldup Intern. Ltd. , 349 F.3 d 1333, 1342 (Fed. Cir. 2003) ( Quote In re Royka , 490 F.2 d 981, 985 (CCPA 1974)). Also, as the Supreme Court has recently made clear, I need some inference of joints It has some rational basis to support the legal conclusion of obviousness. " KSR Int v # v. Teleflex Corporation , 127 S. Ct. 1727, 1741 (2007) (cited document In re Kahn, 441 F.3 d 977, 988 (Fed. Cir 2006) (priority addition)).

Such authority is difficult for an examiner to reject.

Example using recent support

The following is an example of a brief description of the current state of "all element test" that can be used to advise the examiner that Office can not simply ignore claims function in obviousness judgment. For claimed assemblies of two patents against Smith and Jones, alleging that independent claim 1 was rejected under § 103, certain features are not specifically addressed by the office .

Due to either of these reasons, the aforementioned features of independent claim 1 are not reasonably present in the asserted combination.

The failure of the asserted combination to teach or suggest each feature of the claim is fatal to obviousness refusal under 35 USC § 103 despite the recent revision of the Patent Examination Procedure (MPEP) .

Section 2143.03 of MPEP requires "consideration" of all claims features in obviousness decisions. However, in order to make claim 1 unpatentable, the office must do more than just "think" of each feature of this claim. Instead, the asserted combination of patents against Smith and Jones, Each claim function . See In re Royka , 490 F.2 d 981, 180 USP Q 580 (CCPA 1974) (Add priority) (Establish Primaface The clarity of the claimed invention, the features of all claims must be taught or recommended by the prior art). In fact, since the Court of Appeals and the Intervention Committee recently confirmed, the appropriate obviousness decision requires that the examiner "compare and compare claims" Including all restrictions - With the teachings of the prior art. " See Wada and Murph y, Appeal 2007-3733, In the Oshiii , 71 F.3 d 1565, 1572 (Fed. Cir. 1995) (highlighting original text). In addition, since the Supreme Court has argued that obviousness is a matter of law, based on actual inquiries, the necessary existence of features of all claims is axioms. claim And prior art. Graham v. John Deere Corporation , 383 US 1,148 USPQ 459 (1966) (emphasis added). Indeed, applicant believes that MPEP's Article 904 provides the examiner with "invention Described and claimed Finally, the applicant points attention to MPEP § 2143, which supports the conclusion that clarity requires at least an indication of all features of the assertion. KSR Int v # v. Teleflex Corporation "Clear inference with reasonable grounds to support the legal conclusion of obviousness is necessary." KSR Int v # v. Teleflex Corporation , 127 S. Ct. 1727, 1741 (2007) In Khan , 441 F.3 d 977, 988 (Fed. Cir 2006).

In short, the obviousness is a well-resolved law requiring at least the suggestion of all the features of the claim. See Wada and Murphy , Quoted CFMT, Inc. v. Yieldup Intern. Ltd. , 349 F.3 d 1333, 1342 (Fed. Cir. 2003) and Ri Leika , 490 F.2 d 981, 985 (CCPA 1974)).