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I have a 103 rejection based on one prior patent and In Re Einstein (a mere reversal of the essential working parts of a previously patented device does not constitute invention).

However, the "reversal of the essential working parts" actually involves duplicating two parts, taking the mirror image of them, and then replacing or enhancing two existing parts with the duplicate mirror images.

This doesn't seem like a "mere reversal" to me. Mirroring, given that it leads to an unexpected result in particular seems different to a reversal, which as I understand it from the case law is basically swapping parts (e.g. male and female connectors).

How can I argue this with the Examiner?

  • I’m going to defer to one of actual attorneys, but if there is some unexpected or unintuitive advantage that is often persuasive. – Eric Shain Mar 19 at 16:52
  • Thanks. I think there is an unexpected advantage. – Keir Finlow-Bates Mar 19 at 17:44
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    One strong argument against a 103 rejection is that the change required to a prior art item makes the prior art item no longer suitable for its original intended purpose. If it breaks the fundamental principle of operation of the prior art it is hard to argue that the change is obvious. – George White Mar 20 at 0:25
  • I'd just argue technically just as you did here. Well, obviously with more explanation, but genereally showing how just swapping parts wouldn't lead to the example and why the person skilled in the art wouldn't just swap those parts can lead to good results. – DonQuiKong Mar 20 at 14:35
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Respond with a citation to Ex Parte Brunson (Appeal 2009-012413 in U.S. application serial no. 11/387,179), which stands for the proposition that a per se rule (in this case "reversal of the essential working parts" is obvious) cannot substitute for a fact-specific analysis.

In Ex Parte Brunson, the Board reversed an Examiner's rejection of claims where the Examiner merely relied on the general rule of the "reversal of parts".

Relevant quote:

[w]hen determining whether a claim is obvious, an Examiner must make “a searching comparison of the claimed invention - including all its limitations - with the teachings of the prior art.” In re Ochiai, 71 F.3d 1565, 1572 (Fed. Cir. 1995). Reliance on per se rules of obviousness that eliminate the need for fact-specific analysis of claims and prior art is legally incorrect. Id. “Rejections on obviousness grounds cannot be sustained by mere conclusory statements; instead, there must be some articulated reasoning with some rational underpinning to support the legal conclusion of obviousness.” In re Kahn, 441 F.3d 977, 988 (Fed. Cir. 2006), cited with approval in KSR Int’l Co. v. Teleflex Inc., 550 U.S. 398, 417-18 (2007).

The Examiner in your case is also making the impermissible inference of obviousness based on this same per se rule. A proper rejection under 103 needs a fact-specific analysis as directed by Ex Parte Brunson.

Just to be on the safe side, I would also traverse an implicit "official notice" by the Examiner.

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I would suggest you to refer Graham v. John Deere Co., 383 U.S. 1 (1966) and is also related to use of combination of old mechanical element and this case laid the foundation for non-Obviousness requirement factors listed below for your reference

1.the scope and content of the prior art;

2.the differences between the claimed invention and the prior art; and

3.the level of ordinary skill in the art.

In addition to above factors the case opened “secondary considerations” factors which could serve as evidence of nonobviousness. They include:

4.commercial success;

5.long felt but unsolved needs; and

6.failure of others.

Citing this case argue that the above requirements are not satisfied by the prior art cited and there was no motivation in prior art to modify the invention.

  • Secondary considerations will rarely be relevant during examination and increasingly seem to not carry much weight in court anymore. – George White Mar 20 at 22:20
  • Yeah that's true I have not seen any case recently where a court has accepted secondary consideration. – RishiM_IPR Mar 21 at 1:05
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This may apply in your case. One strong argument against a 103 rejection is that the change required to a prior art item makes the prior art item no longer suitable for its original intended purpose. If it breaks the fundamental principle of operation of the prior art it is hard to argue that the change is obvious.

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