This One Weird Trick Isn’t Reasoned Analysis to Support a Combination Under 103 March 7, 2017Posted by Brian Schar in Federal Circuit, General, Patent prosecution, USPTO.
Particularly after the recent In re van Os, the portion of KSR cited therein about the requirement to provide reasoned analysis to combine references is an important bit of precedent to remember.
In re van Os states that “the flexibility afforded by KSR did not extinguish the factfinder’s obligation to provide reasoned analysis. Instead, KSR specifically instructs that when determining whether there would have been a motivation to combine, the ‘analysis should be made explicit.'” (page 4, citation omitted).
Note that the “reasoned analysis” has to do to the motivation to combine the specific references cited by the Examiner.
The “one weird trick” referenced in the clickbaity headline refers to a practice favored by some Examiners, in which the Examiner performs a quick search of one or more references and picks out of at least one reference purported advantages over that reference’s prior art. The Examiner then cuts and pastes into the Office Action those purported advantages over the reference’s prior art, and relies on those cut & pasted statements as being the “reasoned analysis” as to why that reference should be combined with one or more other references. See the switch?
A key tipoff is when your claims are directed to particular subject matter, and the purported reasoned analysis to combine references has nothing to do with that subject matter, the Examiner has utilized this One Weird Trick to combine references without actually performing any analysis at all as to why those references should be combined.
When you have an office action with an obviousness rejection that includes gobbledygook that is completely irrelevant to the claims, do a quick word search on that gobbledygook inside the reference, and usually you’ll find it at the end of the Background or somewhere in the summary. Cut and paste that right back in your Office Action response and call it out as improper under MPEP 2143 and In re van Os. At worst, you’ll get to repurpose that in your appeal brief.