The Benefits of Establishing a Prima Facie Case under 35 U.S.C.

1
The Benefits of Establishing a Prima Facie Case
under 35 U.S.C. 103
USPTO Refresher Training
2
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

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I. An Overview of Rejections 35 U.S.C. 103
4
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
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
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
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
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
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
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
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
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
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, applicants admission of
  prior art, general knowledge of those in the art,
  or common sense.

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II. The State of Rejections Under 35 U.S.C. 103

• View Points of the Examiner and the Applicant

15
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
  Applicants 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
Some Examiners 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 whats disclosed.
• More detail can be added to the rejection in a
  later Office Action.

17
Reconciling Both Points of View

• Providing a more detailed rejection in the FAOM
• Will pay off in time saved responding to
  Applicants 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
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.

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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

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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 Intl Co. v. Teleflex
  Inc. 550 U.S. 398, 82 USPQ2d 1385, 127 S. Ct.
  1727 (KSR).

21
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
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.

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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 Intl Co. v. Teleflex Inc., 550 U.S.
  398, 420 82 USPQ2d 1385, 1390 127 S. Ct. 1727,
  1742 (KSR).

24
Explaining Rationales to Combine

• 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.

25
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
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

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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?

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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
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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
Figures of Application Corresponding to Claim 1
31
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
Prior Art (cont.)
Reference A
33
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
Prior Art (cont.)
Reference B
35
Rejection 1 (cont.)

• Lets determine if these references are analogous
  art.
• Reference As article is labeled as a clip and
  Reference Bs 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
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
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
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
Rejection 1 (cont.)

• Has a prima facie case of obviousness been set
  forth in the rejection?
• Lets discuss this

40
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
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
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
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
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
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
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
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
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?
• Lets look at Rejection 2 more closely

49
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
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
Applicants 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
Applicants 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
Examiners Response to Applicants 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 applicants 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
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
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
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 Applicants 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
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
Applicants 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
Applicants 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
Examiners Response to Applicants 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 applicants 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
Examiners Response to Applicants 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
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 Applicants argument.

63
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
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
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
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
  Applicants 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
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
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
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
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
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
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
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
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
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
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

• Questions?