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MPEP 2143.01(VI) in action February 10, 2011

Posted by Brian Schar in General.

MPEP 2143.01(VI) deals with the motivation to combine references for a 103 rejection.  If a proposed modification would change the principle of operation of a reference, there is no motivation to combine references, and there is no prima facie case of obviousness.  MPEP 2143.01(VI) cites In re Ratti, 270 F.2d 810, 123 USPQ 349 (CCPA 1959).

This week, the BPAI issued a nonprecedential decision in Ex Parte Niessen.  This decision did not reference MPEP 2143.01(VI) directly, but cited In re Ratti and stated that “[a] change in the method or principle of operation of the primary reference can render a modification nonobvious.”   The Board reversed the rejection of claims, because “the Examiner has not sufficiently articulated how the Examiner’s proposed modification of [the primary reference] with [secondary references] would maintain or not fundamentally change the principle [of] operation of [the primary reference].”  I  found this short opinion interesting, because it shows the thought process of the BPAI when the argument of MPEP 2143.01(VI) is advanced by the applicant. 

It also confirms that I’m on the right path to argue MPEP 2143.01(VI) when appropriate – and it usually is.  MPEP 2143.01 is a gold mine that tells you exactly how to overcome 103 rejections, and it should be exploited more often than it is.


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