Earlier this year I submitted a utility patent application at the USPTO in respect of a manual cutting device for which I recently received the first Office Action. The report of the examiner includes claim rejections under 35 U.S.C. 103 on the basis of 'obviousness' supported in the usual way by inclusions of prior art. The examiner has cited three historical patents (A, B & C) ,the main thrust of his argument states it would be obvious to one of ordinary skill in the art to combine some elements of B & C in order to achieve the principle inventive step of the apparatus subject to my own application. However, having carefully studied the specification, claims and drawings of citation B it is completely obvious that the apparatus to which it refers under all circumstances would be totally dysfunctional (It couldn't possibly work). Before responding to the 'Office Action' I would like to know if the USPTO has particular protocols a patent applicant should adhere to under such circumstances, the last thing I wish to do to worsen my argument by undermining the relevant examiner. Can you please advise. Many thanks Robert Czech Republic
2 Answers
Is the idea of combining inventions elements B & C is obvious enough? That is in practice do people use those features (either from patented "inventions" or similar devices) to achieve what you are patenting? (Having in mind that all combinations of features will require some adjustments.)
You can argue that no one would think to combine B and C because B flat doesn't work. A difficulty in that approach is that anything claimed in an issued U.S. patent is presumed to be "enabled", and therefore work to at least some degree. Even if you get past that, any reference is "good for what it teaches". That means even though B, as a whole, doesn't work, some sub-part of it described in the patent might combine with C to produce your invention. A good response to an obviousness rejection is often a difficult exercise,
