進步性的答辯方向（二）

進步性的答辯方向（二）

此連結（the patent prospector）中亦列出了將來能夠用來進行進步性答辯的方向。

1、請求項源自不可預期的效果。當指出先前技藝方式無法產生相似的效果時，這是最佳的使用時機。

2、先前技藝所使用之被展現的特性，相異於所請求之發明所達成的特性。此可視為不可預期之效果的變化。

3、所舉出之先前技藝，對所請求之發明提供相反教示。當先前技術所採用之技術方向，係達成相異的結果；使用相異的手段或相異的程序時，這是最佳的使用時機。

4、所舉出之先前技藝的組合，產生相異的效果，因此不會產生所請求的發明。

5、當證據顯示，所舉出之先前技藝的組合係以某種方式相異於所請求的發明時，可以爭論，所請求的發明並非一種組合。

6、審查員適用了後見之明的偏見，因為所請求之發明其所欲解決的問題，係利用先前技術以相異的文脈來看待，並且從該（先前技術的）文脈來看，此解決方案不會被視為顯而易知的。替代地（Alternately），於先前技藝的架構中，所述之組合不會被認為是一種合理可預想的成功組合。當相反教示的爭論不能被證實時，這比較是一種微妙的變化型。

7、組合是源自相差很大的技術領域，而先前技藝的應用實質上相異於所請求發明，因此，此組合僅能由後見之明所思及。

8、所舉出之先前技藝係組合不同的程序，此些程序發生於不同的文脈，使用不同的機制，處於不同的階段，及/或具有不同的效果。

9、所請求之元件其一的功能相異於所舉出之先前技藝。

10、於先前技藝具有無限的組合可能，且一種特殊的，先前未被知道的洞察結果，導出所請求的發明。

11、審查員並未提供理由或分析為何參考文獻會被組合。唉，這對審查員是一種愚弄，他會以捏造的理由反擊，而攻擊這不切實際的理由希望渺茫，不過，承受所有你能承受的打擊。

12、所組合的參考文獻未教示請求項所有的限制條件。

13、所提案之組合或修改，會破壞參考文獻的功能，或使其無法滿足它的使用目的（參考MPEP 2143.01）。

14、所請求之範圍的重要性；加上產生該效果的證據（參考MPEP 2144.05）。

15、二次考量，如商業的成功（祝好運）、滿足長期的需求、其他人的失敗、被其他人複製。

16、不將參考文獻加以組合係為常識，因此所請求之發明非顯而易知。換言之，將參考文獻加以組合為非常識。有一點像在反駁整體的置換可能性。

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From that flow possible arguments to counter obviousness. There are but a few primary thrusts, with variations that apply to different claimed subject matter.

1) The claims derive from unpredictable results. Best used when pointing out how the prior art approach failed to yield similar results.

2) The prior art use exhibited different properties than that achieved by the claimed invention; a variation of unpredictable results.

3) The cited prior art teaches away from the claimed invention. Best used when the prior art takes a vector that achieves different results, uses different means or different process.

4) The cited prior art combination yielded different results, so would not yield the claimed invention. 

5) The claimed invention is not a combination, as evidence by the cited combination prior art being different in some way from the claimed invention.

6) Hindsight bias was applied by the examiner because the problem solved by the claimed invention was viewed in a different context by the cited prior art; from that (prior art) context, the solution would thus not have been obvious. Alternately, in the framework of prior art application, the cited combination would not have been considered to have a reasonable expectation of success. This a more subtle variant when the teaching away argument cannot be substantiated.

7) The combination results from such disparate technology arts, where prior art application was substantially different than claimed, that the combination could only be conceived in hindsight.

8) The cited prior art combines different processes occurring in different contexts, using different mechanisms, at different stages, and/or with different results.

9) One of the claimed elements functions differently than in the cited prior art.

10) There were an infinite number of combinations possible in the prior art, and a particular previously unrealized insight led to the claimed invention.

11) The examiner did not provide a reason or analysis of why references would be combined. Alas, this is mostly a taunt for the examiner to come back with a cooked-up rationale. Attacking the rationale as unrealistic may be a long shot, but take all the shots you can get.

I've been trying to come up with a list of possible attacks on prima facie obviousness, since the KSR decision came down. Your list is helpful, but pitiful (unfortunately, this is what we're left with).

I would add the following:

1. Combined references fail to teach all claim limitations--we've still got this one, lest we forget.

MPEP 2143.01

2. The proposed combination or modification would destroy the functioning of the reference, or make it unsatisfactory for its intended purpose.

MPEP 2144.05

3. Criticality of claimed ranges + evidence to that effect.

Secondary Factors

1. Commercial success (good luck)

2. Satisfaction of long felt need

3. Failure of others

4. Copying by others

IMO, KSR sort of revived the secondary considerations as a point of attack. By citing them favorably, I think the SCOTUS may force the PTO to pay more than lip service when denying patentability over these. However, obviously, more than argument will be necessary to establish their validity.

Hawk anb BierBelly,

Love your posts, here and otherwise.

If my memory serves, and it doesn't always anymore due to my advancing years, there was a Fed. Cir. decision, maybe a little after KSR, and non-precedential, in which the court found the invention non-obvious because it would have been common sense NOT to combine the references, or in other words, that it would have been uncommon sense to combine the references.

I think the case involved a situation where reference A had an element for performing a particular function and the court said there was nothing, including common sense, that would provide one of ordinary skill in the art with a reason to swap that element with another, different element from reference B for performing the same function. Kind of cutting against that whole "interchangeability" reasoning for combining.

I'll keep your lists in mind, but what I've found since KSR is that it's just easier to make a technical argument. Explain why the proposed modification or combination just wouldn't be done, wouldn't make sense, wouldn't be beneficial.