PRE-APPEAL BRIEF RE UEST FOR REVIEW
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`US. Application No. 13/099,325
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`PRV01-102-US
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`A.
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`Purpose of Pre—Appeal Brief
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`Claims 1-5 and 84-94 are pending in the present application. Claims 2-5, 84, 91 and 93
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`were previously withdrawn and are not subject to the final rejections raised by the Examiner in
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`the Final Office Action dated July 21, 2016 (hereinafter,
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`the “Final Office Action”).
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`Accordingly, only claims 1, 85-90, 92 and 94 are subject of the present appeal and Appellant
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`respectfully traverses the final rejections of claims 1, 85-90, 92 and 94. Upon allowance of
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`independent claim 1, reintroduction of previously withdrawn claims is respectfully requested
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`since the withdrawn claims depend from an allowable generic independent claim.
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`B.
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`Initial Oversights By The Examiner
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`Initially, in the Final Office Action, the Examiner states in the Response to Arguments
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`section “Applicant’s arguments filed on 03/21/16 have been fully considered but they are not
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`persuasive. This is a perplexing statement based on the Examiner’s actions in the Final Office
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`Action. More particularly, the Examiner withdrew the previous rejections based on a primary
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`reference of US. Published Patent Application No. 2004/0139706 (“Drebing”). Drebing no
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`longer appears in any of the present rejections of the claims. Instead, the Examiner now relies on
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`a primary reference of US. Patent No. 5,191,820 (“Hartmann”). Accordingly, the withdrawal of
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`the prior rejections and introduction of new rejections does in fact indicate that Appellant’s
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`previous arguments were persuasive.
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`Second, the Examiner presents a final rejection of claim 95 (see Final Office Action, p. 2,
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`1D. However, claim 95 was previously cancelled from the present application and is no longer
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`pending.
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`Third,
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`the Examiner fails to address currently pending claim 92 in the Final Office
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`Action. Appellant wishes to remind the Examiner of his burden to examine each and every
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`claim pending in the present application in order to satisfy his requirement of present a bona fide
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`examination of the present application. Appellant respectfully submits the Examiner has failed to
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`present a bona fide examination of the present application. Accordingly, withdrawal of the
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`present
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`rejections and allowance of the present application are respectfully requested.
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`Furthermore, at minimum, claim 92 is allowable over the references of record.
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`C.
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`No Prima Facie Case of Obviousness of Claims 1, 85-90, 92 and 94
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`Independent claim 1 stands rejected as being unpatentable over six, count them six,
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`different references. Appellant wishes to remind the Examiner that "a patent
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`[or patent
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`PRV01-102-US
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`application] composed of several elements is not proved obvious merely by demonstrating that
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`each of its elements was, independently, known in the prior art." KSR Int'l Co. v. Telefiex Inc.,
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`127 S. Ct. 1727, 1741-43 (2007).
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`Indeed, it is important to "identify a reason that would have
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`prompted a person of ordinary skill in the relevant field to combine the elements in the way the
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`claimed new invention does." E.
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`In the present case, the Examiner merely presents an itemized
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`list of what he believes each of the six references disclose (see Final Office Action, pp. 2-4, 1D
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`and provides no reason as to why or how a person of ordinary skill in the art would be prompted
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`to combine the teachings of each and every one of the six references in the way the claimed
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`invention of independent claim 1 does.
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`Instead, the Examiner merely presents a conclusory
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`statement of “therefore, it would be obvious to one of ordinary skill in the art at the time the
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`invention was made to use belts for driving the modified grippers in Hartmann since it has been
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`held that substituting equivalents known for the same purpose is obvious to one skilled in the
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`art.”
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`This conclusory statement or purported “reason” clearly does not satisfy the essence of
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`this requirement established in KSR. More particularly, KSR clearly states that a reason must be
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`provided that would prompt a person of ordinary skill
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`in the relevant field to combine the
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`elements in the way the claimed invention does. Since the Examiner is relying on six different
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`references to teach the elements of independent claim 1, it is imperative for the Examiner to
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`identify reasons why a person of ordinary skill in the art could combine the teachings of:
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`l)
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`Pryor with Hartmann, 2) Lindee with Hartmann, 3) Weber with Hartmann, 4) JP2000-288983
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`with Hartmann, and 5) Anstalt with Hartmann. The Examiner provides no such reasons, let
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`alone a single reason. These five combinations represent the minimum number of necessary
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`reasons the Examiner must satisfy in order to satisfy the requirement established in KSR. More
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`likely, the Examiner would have to provide further reasons to combine teachings of references
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`because the Examiner is alleging modifying already combined teachings of references with still
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`further references. For example,
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`the Examiner initially proposes modifying Hartmann with
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`Pryor, then the Examiner wants to modify the combination of Hartmann and Pryor with still
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`another reference such as, for example, Lindee, and so on through all six references. With this
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`alleged convoluted combination of six different references, the Examiner must identify reasons
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`why one of ordinary skill
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`in the art would make this multitude of modifications upon
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`modifications to arrive at the invention claimed in independent claim 1. Appellant respectfully
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`submits the Examiner has not achieved this by making a single conclusory statement.
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`PRV01-102-US
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`Moreover, this high threshold for providing reasons of modifying six references is an
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`example of why Examiner’s do not typically reject claims based on a significant number of
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`references.
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`Primarily, such rejections based on large numbers of references is difficult to
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`substantiate. Accordingly, the Examiner’s reliance on such a large number of references in an
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`attempt to reject independent claim 1 in and of itself is sufficient to establish that independent
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`claim 1 is not obvious and is in fact allowable over the references of record.
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`Additionally, courts and others should avoid combining pieces of prior art or modifying
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`prior art through hindsight which would not have been combined or modified absent the
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`inventor's insight. KSR Int'l Co. V. Telefiex Inc., 127 S. Ct. at 1742-43, Graham V. John Deere
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`Co., 383 US. at 36, 86 S. Ct. 684 (1966).
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`In the present case, the Examiner relies on the insight
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`of the elements of independent claim 1, copies these claim elements into the Final Office Action,
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`then merely lists one of the six relied upon references to teach the claim element. This approach
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`to obViousness is what KSR warns against.
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`Furthermore,
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`the present combination and modification of Hartmann, Pryor, Lindee,
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`Weber, JP2000-288983 and Anstalt presented by the Examiner is a clear example of hindsight
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`reconstruction relying on the inventor’s insight. Appellant wishes to point out that courts and
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`others (e.g., Examiners) should avoid combining pieces of prior art or modifying prior art
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`through hindsight which would not have been combined or modified absent the inventor's
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`insight. KSR Int'l Co. V. Telefiex Inc., 127 S. Ct. at 1742-43, Graham V. John Deere Co., 383
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`US. at 36, 86 s. Ct. 684 (1966).
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`More particularly, 35 U.S.C. §103(a) states that a patent may not be obtained if “the
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`subject matter as a whole would have been obvious at the time the invention was made to a
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`person having ordinary skill in the art”. The present rejection does not appear to meet this
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`standard. “The ‘as a whole’ instruction in title 35 prevents evaluation of the invention part-by-
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`part. Without this important requirement, an obViousness assessment might break an invention
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`into its component parts (A + B + C), then find a prior art reference containing A, another
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`containing B, and another containing C, and on that basis alone declare the invention obVious.
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`This form of hindsight reasoning, using the invention as a roadmap to find its prior art
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`components, would discount the value of combining various existing features or principles in a
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`new way to achieve a new result-often the very definition of invention.” Ruiz V. A.B. Chance
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`Co., 357 F.3d 1270, 1275 (Fed. Cir. 2004). Appellant respectfully suggests that the hindsight
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`reasoning cautioned against by the Supreme Court in KSR and the Federal Circuit has occurred
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`as the invention in independent claim 1 has been evaluated part-by-part.
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`PRV01-102-US
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`Accordingly,
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`it can be clearly seen that
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`the Examiner failed to satisfy the basic
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`requirements established in KSR for rejecting a claim as being obvious. Furthermore,
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`it is
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`clearly seen that the Examiner has failed to present a bona fide examination of all of the claims
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`in the present application. For at least these reasons, withdrawal of the present rejections and
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`allowance of the present application are respectfully requested.
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`Furthermore, with respect to claim 85, the Examiner presented a rejection of this claim
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`based on seven, count them seven references. For at least the same reasons as those presented by
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`the Appellant above with respect to the Examiner relying on six references to reject independent
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`claim 1, this seven reference rejection of claim 85 is improper. In short, the Examiner has not
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`satisfied the requirement established by the Supreme Court in KSR about providing reasons for
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`combining the seven references. The Examiner’s simple conclusory statement is insufficient to
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`satisfy the essence of the requirement established in KSR. For at least this additional reason,
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`claim 85 is allowable over the references of record.
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`Moreover, with respect to claims 86 and 87, the Examiner presented a rejection of these
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`claims based on still MORE references. Particularly, the Examiner relied on eight references to
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`reject claims 86 and 87. For at least the same reasons as those presented by the Appellant above
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`with respect to the Examiner relying on six references to reject independent claim 1, this eight
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`reference rejection of claims 86 and 87 is improper. In short, the Examiner has not satisfied the
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`requirement established by the Supreme Court in KSR about providing reasons for combining
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`the eight references. The Examiner’s simple conclusory statement is insufficient to satisfy the
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`essence of the requirement established in KSR. For at least this additional reason, claims 86 and
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`87 are allowable over the references of record.
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