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MPEP 2143.01(V) in action November 28, 2011

Posted by Brian Schar in Patent prosecution, USPTO.
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MPEP 2143.01(V) expressly states that a proposed modification of a prior art invention cannot render that invention “unsatisfactory for its intended purpose.”  If it does, “there is no suggestion or motivation to make the proposed modification.”  An older post analyzes this section in the MPEP in detail. 

The day before Thanksgiving, the BPAI handed down an opinion in Ex parte Hollander, completely reversing the rejection of all pending claims.   Ex parte Hollander provides a compact, but textbook, analysis of a combination of references that renders a prior art invention unsatisfactory for its intended purpose.  Rather than a citation to the MPEP, Ex parte Hollander relies on the Federal Circuit case Tec Air, Inc. v. Denso Mfg. Michigan Inc. (192 F.3d 1353, 1360) (Fed. Cir. 1999) for the same proposition.  (Tec Air may be a useful arrow for appellants to add to their quiver when making an MPEP 2143.01(V) argument.)

The power and the beauty of MPEP 2143.01(V) is that it is not limited to the scope of the claims or to the particular language of the claims.  In Ex parte Hollander, the Board relied on the fact that a prior art bag that “could be opened by an adult” (i.e., a bag that was childproof) would thwart the purpose of the second piece of prior art, which was to provide “a tamperproof container.”   None of these terms appear in the claim at issue.  The analysis of MPEP 2143.01(V) focuses on the proposed modification, not on the particular language of the claims. 

MPEP 2143.01(V) is one of the most powerful weapons you have against badly-thought-out 103 rejections, and its power only increases with the number of references cited.  Use it.

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