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MPEP 2143.01 is your friend June 13, 2008

Posted by Brian Schar in General.
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Over the next few posts, I will set out some thoughts about some of the key sections of MPEP 2143.01.  This section of the MPEP is often overlooked, which is unfortunate because it describes exactly how to defeat an Examiner’s assertion of a motivation to combine references. 

In overcoming a 103 obviousness rejection, two primary approaches are available.  First, one can argue that at least one claim element is not present in any of the cited references, such that the combination of the references cannot include that element and no prima facie case of obviousness exists.   Second, one can argue that there is no motivation to combine the cited references.  Arguing motivation to combine is often a loser, even pre-KSR.  However, in some situations it is advantageous to do so.  In particular, if one of the major sections of MPEP 2143.01 applies to your claim, arguing motivation (thereby setting up that argument for appeal) will be an important part of your office action response.

First up will be my favorite – MPEP 2143.01(V).   

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