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103 rejection, single-reference plus common knowledge
Posted by Anonymous . updated on 2/26/2009
In a non-final office action, the examiner cites one reference in a 103 rejection and uses "common knowledge" to supply a missing element/limitation. The element is an integrated spring for biasing a member, and I have spec support for reciting additional structure if I need to later.
MPEP 2144.03 discusses the use of common knowledge, and makes it clear that reliance on common knowledge applies in very limited circumstances. To paraphrase an argument I have roughed out:
1) Applicant challenges the assertion...[this avoids an implicit admission that the "fact" is prior art]
2) It is never appropriate to rely solely on "common knowledge" in the art without evidentiary support in the record, as the principal evidence upon which a rejection was based...
3) While it may be appropriate to take official notice as fact that springs exists or that springs can be used to bias an object generally, common knowledge cannot be used to assume the obviousness of including this element. To the contrary, most patentable inventions comprise elements that are known in the art.
Any ideas for strenthening my argument? I can see using common knowledge to explicitly supply a limitation that is already implicitly present in a claimed structure For example, if I recite a rubber material, the fact that the rubber material is elastic would be common knowledge and affirmatively reciting that the rubber material is elastic would not add patentable weight. But, it just seems improper to use common knowledge to supply a missing element/limitation that is not implicit. Of course, I don't want to be making up law.
Answers (4)
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mk1023
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Sounds like a poorly articulated official notice. Is this feature potentially novel or are we talking about something that's used elsewhere for the same purpose? If the latter you should definitely concentrate on other arguments on the merits because an examiner that would make an improper official notice wouldn't have any qualms about finding a way to disagree with your arguments and then going final with a new reference. For the sake of the record I would emphasize 3) because examiners frequently put forth a weak motivation (I have this problem) when using official notice.
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IPLoya
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The feature, standing alone, is not novel (a spring for biasing something to a certain position). However, the arg I make above is that most patentable inventions are comprised of known elements. My position is that the claimed invention is novel in that no reference(s) teaches or suggest the claimed elements, and that the examiner cannot just pull the element out of the air because the element itself is known. Then again, I suppose the examiner could concede my common knowledge rebuttal but then cite a second reference in support of the 103 rej showing a spring biasing an object to a position, and say it would be obvious to combine the references. Now that I have though about this some more, I think I am going to amend the claim to recite additional structure about this particular spring and how it functions. The originally-filed claims (prepared by another) are pretty broad....
Thx
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Bill Ri...
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I can't lay my hands on it right now, but somewhere on the PTO website there's a document that outlines post-KSR 103 rejections. Finding that might help.
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IPLoya
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Thanks -- I think you are talking about this memo: http://anticipatethis.wordpress.com/2007/05/04/uspto-ksr-memo/It helps in terms of outlining some basic considerations in determining obviousness, and the MPEP also has some post-KSR guidelines. It does not explicitly address the use of "common knowledge" and whether it can be used to supply elements/limitations that are not otherwise implicit.
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