Design Choice

I remember some treatise (Chisum?) making the point that an Examiner can find almost any combination of elements at a low-level of granularity.  Thus, in an academic sense, each patent prosecution culminates with the Examiner making a rearrangement-of-parts, obviousness rejection under In re Japikse, 181 F.2d 1019, 86 USPQ 70 (CCPA 1950).  See also MPEP 2144.04 VI C.

In a hypothetical reply, the Applicant identifies the benefit of the claimed combination of elements.  Thus, the Applicant basically makes a reverse-economic argument.  Specifically, if the claimed combination of elements is obvious, and there is an identifiable benefit to that combination, why didn’t anyone use, patent, or market the combination?

This point is more than an ivory tower contemplation for at least two reasons.

First, the point demonstrates the “inventive step”-type arguments that foreign applicants believe are missing in US patent practice.  Admittedly, rejections premised on rearrangement-of-parts are fairly uncommon.  Still, Examiners often make rejections with little basis more than rearrangement of parts, and these rejections should be overcome by arguments directed to the advantage.  (Supervisory Examiners generally make this point to junior Examiners, though not overtly and seldom as succinctly.)

Second, because an Examiner could make such a rejection, Applicants (and, more accurately, their representatives) should focus their claim amendments at the point of novelty.  Certainly, effective amendments sometimes focus on the context surrounding the point of novelty, rather than solely on the point of novelty.  However, there is little point to an amendment clarifying the surrounding context, if that amendment is unrelated to the point of novelty. 

For example, it would be fruitless to limit a claim to an innovative phonebook application for a mobile phone to a particular memory interaction, unless that memory interaction directly relates to the benefit of the innovation.

By focusing their amendments at the point of novelty, Applicants can efficiently conclude prosecution with claims that are broader in other aspects.

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