# Presentation: 265282

## TC 1700KSR Examples

- Presented by:
- Jennifer Michener
- Gladys Corcoran
- Jerry Lorengo
- http://uspto-aisd-315/ksrexamplestc1700/

## TC 1700 KSR Examples

- Overview of previous KSR training
- TC Examples utilizing KSR rationale
- Example   1: Rationale   **C**
- Example   2: Rationales **A and E**
- Example   3: Rationale   **B**
- Example   4: Rationales **A and E**
- Example   5: Rationale   **A**
- Example   6: Rationales **E and F**
- Example   7: Rationales **A and C**
- Example   8: Rationales **A and G**
- Example   9: Rationales **A**
- Example 10: Rationale   **G**

## 35 U.S.C. 103

- 35 U.S.C. 103. Conditions for patentability; non-obvious subject matter.
- (a)    A patent may not be obtained though the invention is not identically disclosed or described as set forth in  section 102 of this title, if the differences between the subject matter sought to be patented and the prior art are such that the subject matter as a whole would have been obvious at the time the invention was made to a person having ordinary skill in the art to which said subject matter pertains. Patentability shall not be negatived by the manner in which the invention was made.

## Graham v. John Deere Co.

- The four factual inquires enunciated therein as a background for determining obviousness are as follows:
- Determining the scope and contents of the prior art;
- Ascertaining the differences between the prior art and the claims in issue;
- Resolving the level of ordinary skill in the pertinent art; and
- Evaluating evidence of secondary considerations.

**Notes:**
See MPEP 2141 for a detailed explanation.

## KSR Review

*KSR International Co. v. Teleflex Inc.*
- The Supreme Court reaffirmed the familiar framework for determining obviousness as set forth in *Graham v. John Deere Co.*, and stated that the Federal Circuit had erred by applying the teaching-suggestion-motivation (TSM) test in an overly rigid and formalistic way.

## Key Points

- Examiners must ensure that the written record includes findings of fact concerning the state of the art and the teachings of the applied references.
- Prior art is not limited just to the references being applied, but includes the understanding of one of ordinary skill in the art.
- Office personnel may take into account “the inferences and creative steps that a person of ordinary skill in the art would employ”.
- The key to supporting any rejection under 35 U.S.C. § 103 is the _**clear articulation**_ of the reasons why the claimed invention would have been obvious.

## Rationales:

- These are examples of some rationales that may be employed in
- determining whether a claimed invention would have been obvious:
- Combining prior art elements according to known methods to yield predictable results.
- Simple substitution of one known element for another to obtain predictable results.
- Use of known technique to improve similar devices (methods or products) in the same way.
- Applying a known technique to a known device (method or product) ready for improvement to yield predictable results.
- “Obvious to try” – choosing from a finite number of identified, predictable solutions.
- Known work in one field of endeavor may prompt variations of it for use in either the same field or a different one based on design incentives or other market forces/market place incentives if the variations are predictable to one of ordinary skill in the art.
- The TSM test.

**Notes:**
These are merely examples and do not limit the rationales that may be used.

## TC 1700 Examples

- The following are TC specific examples, for training purposes, which illustrate how to articulate some of the rationales for supporting a prima facie case of obviousness under 35 USC 103.
- The following examples are loosely based on rejections considered by the BPAI.
- The examples are formatted for training purposes only and are not intended to reflect complete prior art rejections.

## Example 1Rationale C

- Claim:
- Claim 4. An additive method for building a 3-D model with a modeling machine by depositing a moisture-sensitive thermoplastic material from a dispensing head of the modeling machine comprising the steps of:
- 	providing the thermoplastic material in solid form in a cassette;
- 	drying the thermoplastic material in the cassette to less than 700 ppm moisture;
- 	loading the cassette containing the dry thermoplastic material to the modeling machine; and
- 	feeding the dry thermoplastic material from the cassette to the dispensing head.

**Notes:**
Rationale C: Use of known technique to improve similar devices (methods or products) in the same way.

## Example 1Prior Art

- Dahlin discloses:
- a similar method, however, Dahlin supplies the thermoplastic material on spools that are placed in a drybox of the machine, evidencing that it was known in the art to keep modeling material free of moisture.
- that it was known in the art to provide and supply the material either in a cassette or on a spool.
- Dahlin fails to teach drying the thermoplastic material to less than 700 ppm moisture prior to loading the cassette.

**Notes:**
Bullet 1 addresses “A. Determining the scope and content of the prior art” of the Graham v. John Deere Co. test (slide 4).
Bullet 2 addresses “B. Ascertaining the differences between the prior art and the claims in issue” of the Graham v. John Deer Co. test.

## Example 1Statements of Obviousness 	

- Examiner rejected claim 4 under § 103(a) as being unpatentable over Dahlin with the following:
- Since it is recognized that moisture level is a variable to be controlled, one of ordinary skill in the art would have appreciated that moisture level could be optimized.  The particular moisture level sought of less than 700ppm would have been obvious to one of ordinary skill in the art.
- While Dahlin does not disclose drying the thermoplastic material in a cassette prior to loading the cassette to the modeling machine, Dahlin evidences that it was known in the art to keep the modeling material free of moisture, ergo, the use of a drybox in the machine.

**Notes:**
Both statements address “C. Resolving the level of ordinary skill in the pertinent art” of the Graham v. John Deere Co. test (slide 4).

## Example 1Rationale C

- It is well-known in many arts that when moisture in a system presents a problem, for example, to moisture-sensitive thermoplastic materials used in modeling machines, components of the system should be dried before and after use, as well as during operation if practically possible.  This inference of obviousness would have been drawn from creative steps that a person of ordinary skill in that art would normally employ.
- It would have been obvious to use a known step of drying to improve a similar method, by preserving the moisture-sensitive material, in the same way.

**Notes:**
Rationale C: Use of known technique to improve similar devices (methods or products) in the same way.

## Example 2Rationales A and E

- Claim:
- Claim 1. A twisted tuft knot type end brush having a cup, an annular row of twisted knot tufts projecting from the cup, a knot retainer plate secured in the bottom of the cup and having alternating fingers and notches, and a center plug shaped to conform to and embrace the twisted knot tufts within the cup, said plug being applied in a putty or liquid form and flowing between said notches to embrace said knots.

**Notes:**
A.  Combining prior art elements according to known methods to yield predictable results.
E.  “Obvious to try” – choosing from a finite number of identified, predictable solutions.

## Example 2Prior Art

- Benyak
- Benyak discloses every aspect of  the claimed invention **except the center plug of material and the alternating fingers and notches of his retainer plate**.
- Rands
- Rands discloses an end brush where the bristle member rear ends are mechanically secured and/or potted with a potting compound into the receiving cup
- Potter
- Potter discloses a retaining plate for brushes with fingers and notches with holes on the fingers for receiving bristle tufts to prevent brush wires from working loose.

**Notes:**
Bullets 1, 2, 3 address “A. Determining the scope and content of the prior art” of the Graham v. John Deere Co. test (slide 4).
Bullet 1 also addresses “B. Ascertaining the differences between the prior art and the claims in issue” of the Graham v. John Deer Co. test.

## Example 2Statement of Obviousness

- Examiner rejected claim 1 under § 103(a) as being unpatentable over Benyak in view of Rands and Potter with the following:
- Since Rands teaches the use of liquid plug material in place of **or in addition to** conventional mechanical engagement, such as those disclosed by Benyak, and Potter teaches the use of alternating fingers and notches on a retaining plate, it would have been obvious to one of ordinary skill in the art to provide a retaining plate with alternating fingers and notches to be used in combination with a liquid plug material to securely retain knots in a cup.

**Notes:**
Statement addresses “C. Resolving the level of ordinary skill in the pertinent art” of the Graham v. John Deere Co. test (slide 4).

## Example 2Rationales A & E

- The combination of the prior art elements of  retaining plates with fingers and notches used along with a potting compound would have yielded the predictable result of increasing the effectiveness of securing knots in an end brush.
- It would have been obvious to choose retaining plates and potting compounds from a finite number of identified, predictable solutions for ways to secure knots in an end brush, i.e., it would have been “obvious to try” the specific structure of the retaining plate, the potting compound, or both to enhance the securement of the knots in the end brush.

**Notes:**
A. Combining prior art elements according to known methods to yield predictable results.
E. “Obvious to try” – choosing from a finite number of identified, predictable solutions.

## Example 3Rationale B 	

- Claim:
- Claim 14. A pack comprising a flexible sheet-like support formed of an absorbent material for placement on a human body surface, wherein the sheet-like support includes at least one weakened line that subdivides the sheet-like support into at least a first subcomponent and a second subcomponent that are detachably connected to each other, and wherein the shape of the first subcomponent is different than the shape of the second subcomponent.

**Notes:**
B. Simple substitution of one known element for another to obtain predictable results.

## Example 3Prior Art

- Gueret discloses
- a patch of sheet matrix adhered to a support substrate that may be cut and shaped to mask or cover parts of the face.
- Gueret fails to teach a “weakened line” for detachable connection.
- Sizemore discloses
- an adhesive tape to be applied to the human body wherein the tape is adapted to be severed into lengths and widths that may vary in size using rows of perforations to yield different shapes without the use of special cutting devices.

**Notes:**
Bullets 1 and 3 address “A. Determining the scope and content of the prior art” of the Graham v. John Deere Co. test (slide 4).
Bullet 2 addresses “B. Ascertaining the differences between the prior art and the claims in issue” of the Graham v. John Deer Co. test.

## Example 3Statement of Obviousness

- Examiner rejected claim 14 under § 103(a) as being unpatentable over Gueret in view of Sizemore with the following:
- It would have been obvious to use the perforations of Sizemore with the patches of Gueret, to avoid the use of cutting devices, which would have allowed for easy and accurate severance of portions of the mask or patch.

**Notes:**
Statement addresses “C. Resolving the level of ordinary skill in the pertinent art” of the Graham v. John Deere Co. test (slide 4).

## Example 3Rationale B

- Simple substitution of one known element (Sizemore’s perforations) for another (Gueret’s required use of cutting) would achieve the predictable result of enhancing the ease and accuracy of producing shaped face masks.

**Notes:**
B. Simple substitution of one known element for another to obtain predictable results.

## Example 4Rationales A and E

- Claim:
- Claim 1. An antibacterial tissue including:
- an upper planar shaped absorbent member;
- an intermediate planar shaped absorbent member having a plurality of apertures formed therein coupled to the upper planar shaped absorbent member;
- an antibacterial member formed on an upper surface of the intermediate planar shaped absorbent member between the upper planar shaped absorbent member and the intermediate planar shaped absorbent member; and
- a lower planar shaped absorbent member coupled to a lower surface of the intermediate planar shaped absorbent member.

**Notes:**
A. Combining prior art elements according to known methods to yield predictable results.
E. “Obvious to try” – choosing from a finite number of identified, predictable solutions.

## Example 4Prior Art

- McAtee discloses:
- personal cleansing articles with two paper-fiber outer layers having a cleaning substance, which may contain a biocide, between the two layers and that more than two plies may be used with any or all plies being apertured.  The cleaning substance may be added onto any or all of the surfaces of the different layers.
- McAtee fails to _specifically_ teach a 3-layered article or that a middle layer, in specific, should contain apertures therein or biocide thereon.

**Notes:**
Bullet 1 addresses “A. Determining the scope and content of the prior art” of the Graham v. John Deere Co. test (slide 4).
Bullet 2 addresses “B. Ascertaining the differences between the prior art and the claims in issue” of the Graham v. John Deer Co. test.

## Example 4Statements of Obviousness

- Examiner rejected claim 1 under § 103(a) as obvious in view of McAtee with the following:
- Because McAtee discloses that two or more layers may be used, one of ordinary skill in the art would have reasoned that a structure with two outer layers and an intermediate layer was obvious in light of the reference.
- By disclosing that any or all of the layers may contain apertures, McAtee suggests that the intermediate member may comprise apertures.
- Because McAtee discloses that the cleaning substance may be coated onto any or all of the layers, one of ordinary skill would have reasoned that a biocide would be useful when placed on the top of the intermediate layer of a 3-layered article.

**Notes:**
Statements address “C. Resolving the level of ordinary skill in the pertinent art” of the Graham v. John Deere Co. test (slide 4).

## Example 4Rationales A & E

- The above combinations of familiar elements, such as number of layers and location of apertures and biocide layers, according to the known methods taught by McAtee yields the predictable result of producing an effective cleansing product.
- It would have been obvious to choose (“obvious to try”) placement of the apertures and a layer of biocide in the intermediate layer as these represent a finite number of predictable solutions (apertures and biocide in layers 1, 2 and/or 3) identified by McAtee.

**Notes:**
A. Combining prior art elements according to known methods to yield predictable results.
E. “Obvious to try” – choosing from a finite number of identified, predictable solutions.

## Example 5Rationale A

- Claim:
- A patterned synthetic sponge, which comprises:
- 		a synthetic sponge formed from an open 	cell elastomeric material and
- 		bearing a pattern having ragged, torn 	edges, being at least about 0.5" in depth,
- 	 	said patterned synthetic sponge 	simulating a natural sea sponge when 	creating faux paint finishes.

**Notes:**
A.  Combining prior art elements according to known methods to yield predictable results.

## Example 5Prior Art

- The “Australian Application” discloses
- An artificial sponge of cellular structure for providing pattern effects on fresh paint
- Any desired pattern character may be formed on the face of a sponge by removing portions of the face through cutting
- The patterned face may be a shape complimentary to the pattern of floral or any other desired pattern.
- The Australian Application fails to teach the pattern having ragged, torn edges and the particular claimed pattern depth (0.5”)

**Notes:**
Bullet 1 addresses “A. Determining the scope and content of the prior art” of the Graham v. John Deere Co. test (slide 4).
Bullet 2 addresses “B. Ascertaining the differences between the prior art and the claims in issue” of the Graham v. John Deer Co. test.

## Example 5Statements of Obviousness

- Examiner rejected the claim under 35 U.S.C. § 103(a) over the “Australian Application” with the following:
- One of ordinary skill in the art would have understood how to modify the pattern depth to achieve the desired pattern character.
- One of ordinary skill in the art would haverecognized that Australian application Figure 1 depicts a non-linear pattern and that the cutting of a sponge would produce a "torn" or "ragged" edge.

**Notes:**
Both statements address “C. Resolving the level of ordinary skill in the pertinent art” of the Graham v. John Deere Co. test (slide 4).

## Example 5Statement of Obviousness (cont.)

- One of ordinary skill in the art would have been able to implement the teachings of the Australian application and remove the material from the surface of the artificial sponge to produce any desired pattern, i.e., one would have understood that a smooth edge on a paint sponge leaves a different paint pattern from that of a paint sponge having torn edges. (If a person of ordinary skill can implement a predictable variation, § 103 likely bars its patentability)

**Notes:**
Statement addresses “C. Resolving the level of ordinary skill in the pertinent art” of the Graham v. John Deere Co. test (slide 4).

## Example 5Rationale A

- The combination of familiar elements (_using artificial sponges with portions of the sponge face removed in place of natural sea sponges_), according to known methods is likely to be obvious when it does no more than yield predictable results (_reduced labor and material costs as compared to natural sea sponges_).
- One of the ways in which subject matter can be proved obvious is by noting that there existed at the time of invention a known problem  (_providing a sea sponge pattern_) for which there was an obvious solution (_by removing the material on a synthetic sponge_) encompassed by the claims.

**Notes:**
A. Combining prior art elements according to known methods to yield predictable results.

## Example 6Rationales E and F

- Claim:
- A process of treating a metallic bone implant consisting essentially of:
- 	treating the metallic bone implant with a solution of hydrofluoric acid in which the concentration of hydrofluoric acid is 0.01% to 0.5%.

**Notes:**
E. “Obvious to try” – choosing from a finite number of identified, predictable solutions.
F. Known work in one field of endeavor may prompt variations of it for use in either the same field or a different one based on design incentives or other market forces/market place incentives if the variations are predictable to one of ordinary skill in the art.

## Example 6Prior Art

- Haruyuki discloses
- Treating a metallic bone implant with a solution of hydrofluoric acid at a concentration of 1% to 6% improves adhesion of the implant to bone tissue by forming "a large number of irregularly shaped microscopic depressions".
- It was known that even "the formation of ultrafine, pores in the surface of metal repair members" are known, albeit "the bonding force with cells is still not always adequate".
- Haruyuki fails to teach the HF concentration of 0.01% to 0.5%.

**Notes:**
Bullet 1 addresses “A. Determining the scope and content of the prior art” of the Graham v. John Deere Co. test (slide 4).
Bullet 2 addresses “B. Ascertaining the differences between the prior art and the claims in issue” of the Graham v. John Deer Co. test.

## Example 6Statements of obviousness

- The Examiner rejected the claim under 35 U.S.C. § 103(a) over Haruyuki with the following:
- Haruyuki teaches that the concentration of the HF in the treating solution and the treatment time are result-effective variables in treating implants.
- An ordinarily skilled artisan would have recognized using lower concentrations of HF acid was a workable option from these teachings because the formation of depressions in the implant surface for improving bone cell binding therewith, even if perhaps of somewhat smaller size, would have been recognized as predictable and within the reach of such an ordinarily skilled artisan by using lower concentrations of HF acid in the treatment of an implant surface.

**Notes:**
These statements address “C. Resolving the level of ordinary skill in the pertinent art” of the Graham v. John Deere Co. test (slide 4).

## Example 6Statements of obviousness (cont.)

- One of ordinary skill in the art would have understood that the value needed for adequate bond strength would differ depending on the particular implant application. That is, bond strength, and thus the degree of HF roughening needed, would vary depending upon whether the implant is meant for the tooth, the knee, the arm, etc.
- Where the bond strength required is relatively low, one of ordinary skill in the art would recognize the use of HF at lower concentrations, such as below 1%.

**Notes:**
These statements address “C. Resolving the level of ordinary skill in the pertinent art” of the Graham v. John Deere Co. test (slide 4).

## Example 6Rationales E and F

- When there is a design need or market pressure to solve a problem (improving adhesion) and there are a finite number of identified, predictable solutions (the concentration of HF acid from 0-6%), a person of ordinary skill has good reason to pursue the known options (the concentration values below 1%) within his or her technical grasp. If this leads to the anticipated success, it is likely the product not of innovation but of ordinary skill and common sense. In that instance the fact that a combination was obvious to try might show that it was obvious under § 103.

**Notes:**
E.  “Obvious to try” – choosing from a finite number of identified, predictable solutions. That is, determining a concentration of HF below 1% is considered a finite number of predictable solutions. 
Known work in one field of endeavor may prompt variations of it for use in either the same field or a different one based on design incentives or other market forces/market place incentives if the variations are predictable to one of ordinary skill in the art.
Note: in the art, for practical purposes, determining a lower concentration of HF, below 1%, is considered a finite number of predictable solutions between 0 and 1%.

## Example 7Rationales A and C

- Claim:
- A vegetative produce handling machine, comprising:
- at least one stationary vegetative produce-contacting surface; and
- a foam padding covering at least a portion of said stationary vegetative produce-contacting surface of the machine, wherein said foam padding is intended to reduce bruising of the vegetative produce contactingthe stationary surface and where said foam padding is formed with an anti-microbial agent to retard the growth of microbes on the padding.

**Notes:**
A. Combining prior art elements according to known methods to yield predictable results.
C. Use of known technique to improve similar devices (methods or products) in the same way.

## Example 7Prior Art

- Smith discloses
*a produce (egg) handling machine comprising a stationary produce-contacting surface (the**feeder drum) on which is attached foam (sponge rubber) padding to protect the produce (eggs)*
- Smith fails to teach “said foam padding formed with an anti-microbial agent”

**Notes:**
Bullet 1 addresses “A. Determining the scope and content of the prior art” of the Graham v. John Deere Co. test (slide 4).
Bullet 2 addresses “B. Ascertaining the differences between the prior art and the claims in issue” of the Graham v. John Deer Co. test.

## Example 7Prior Art, continued

- Zabron discloses
*if a belting is intended to be used to convey food grade products, preferably an antibacterial agent is incorporated into the elastomeric material of the belt to inhibit bacterial growth and promote asepsis on the food-contacting surface*
*other textile layers associated with the belting can also have an antimicrobial agent incorporated therein*
- JP ‘841 discloses
*a method of conferring bacterial/fungal resistance to polyurethane foam by immersing the foam in an aqueous solution of an antibacterial agent*
*the well known necessity of conferring bacterial resistance to many types of products; *
*that polyurethane foams particularly are useful in many diverse fields "by virtue of their light weights and excellent cushion potentials" *

## Example 7Statements of Obviousness

- The Examiner rejected the claim under 35 USC 103 over Smith in view of Zabron and JP '841 with the following:
*Zabron shows that surfaces that come into contact with food may desirably contain an anti-microbial agent, and that one of ordinary skill in this art would have recognized the benefit of incorporating an anti-microbial agent into food-contacting surfaces.*
-  JP’841 discloses *foam padding with an anti-microbial agent incorporated therein to inhibit the growth of bacteria on surfaces is well known in the art.*

**Notes:**
Both statements address “C. Resolving the level of ordinary skill in the pertinent art” of the Graham v. John Deere Co. test (slide 4).

## Example 7Rationales A & C

- The claimed subject matter merely combines familiar elements (antibacterial agents and food contacting surfaces) according to known methods and does no more than yield predictable results.
- If a technique has been used to improve one device (adding antibacterial to surfaces), and a person of ordinary skill in the art would recognize that it would improve similar devices in the same way (foam on feeder drum), using the technique is obvious unless its actual application is beyond his or her skill.

**Notes:**
A. Combining prior art elements according to known methods to yield predictable results.
C. Use of known technique to improve similar devices (methods or products) in the same way.

## Example 8Rationales A and G

- Claim:
- A method of making a surface covering panel wherein said method comprises:
- applying at least one base coating onto a support surface;
- applying a textured surface onto said base coating to form a textured surface;
- printing a pattern onto  said textured surface;
- applying at least one protective coating onto said printed pattern;
- wherein said textured surface and said printed pattern are in register.

**Notes:**
A. Combining prior art elements according to known methods to yield predictable results.
G. The TSM test.

## Example 8Prior Art

- Hansson et al. discloses:
*Forming a base coating onto a substrate*
*Forming a printed pattern onto the base coating; and*
*Embossing the substrate in registry with the printed pattern*
- Hansson fails to teach embossing before printing* *
*Casto* discloses:
- Embossing a substrate with a wood-grain pattern to form a textured surface;
- Applying a pigment to the textured surface; and
- Removing excess pigment from the surface, thereby leaving pigment in the interstices of the pattern.

**Notes:**
Casto does not teach a base coating, but this is immaterial to the instant combination as Casto is being utilized to show printing after embossing as a substitute for the embossing after printing taught by Hansson et al. 
Bullets 1 & 3 address “A. Determining the scope and content of the prior art” of the Graham v. John Deere Co. test (slide 4).
Bullet 2 addresses “B. Ascertaining the differences between the prior art and the claims in issue” of the Graham v. John Deer Co. test.

## Example 8Statements of Obviousness

- The Examiner rejected the claim under 35 U.S.C. § 103(a) over Hansson in view of Casto with the following:
- The disclosure of *Casto* suggests that it would have been obvious to one of ordinary skill in the art to modify the sequence of *Hansson* by embossing first followed by registry printing.
- Casto’s disclosure of first texturizing a surface and then applying a pigment thereto would have suggested providing Hansson with this sequence of steps because the result of this ordering of the steps would predictably lead to a satisfactory printed pattern in registry with the embossment.

**Notes:**
Both statements address “C. Resolving the level of ordinary skill in the pertinent art” of the Graham v. John Deere Co. test (slide 4).

## Example 8Rationales A & G

- The claim would have been obvious because the combination of prior art elements according to known methods, such as the techniques of embossing and printing and the sequence for their use, would have yielded predictable results, such as satisfactory printed pattern in registry with the embossment.
- The claim would have been obvious because a person of ordinary skill in the art would have been motivated to combine the Hansson and Casto references to achieve a printed product of the type defined by the claim, i.e., a product with printing in registry, and that there would have been a reasonable expectation of success.

**Notes:**
A. Combining prior art elements according to known methods to yield predictable results.
G. The TSM test.

## Example 9Rationale A

- Claim:
- A water-treatment apparatus comprising a housing, particulate filter, ozone generator, mixer, and reactor as well as a second, third and fourth filter.
- This example centers upon the particulars of the third filter, claimed as:
- A third filter, which comprises ozone resistant means and which lowers the turbidity level and lowers said ozone in said water source from said second filter.

**Notes:**
A. Combining prior art elements according to known methods to yield predictable results.

## Example 9Prior Art

- Gastman discloses substantially all of the elements of the claims, in particular*:*
- Process and apparatus for treatment of contaminated water with ozone;
- That care should be exercised in selecting material of construction that come into contact with ozone; and
- That the disclosed system is extremely flexible and may be tailored for a particular contaminated water.
- Gastman fails to teach the use of a particulate pre-filter and an ozone-resistant third filter.
- Conway discloses:
- The use of particulate pre-filters in a water treating apparatus.
- Mori discloses:
- Water treatment process in which ozone is added to raw water and filtered with an ozone-resistant membrane; and
- That it is known in the art to use ultrafiltration and microfiltration membranes because of ability to remove impurities, germs and protozoans as well as being highly reliable.

**Notes:**
Bullets 1, 3, & 4 address “A. Determining the scope and content of the prior art” of the Graham v. John Deere Co. test (slide 4).
Bullet 2 addresses “B. Ascertaining the differences between the prior art and the claims in issue” of the Graham v. John Deer Co. test.

## Example 9Statements of Obviousness

- The Examiner rejected the claim under 35 U.S.C. § 103(a) over Gastman in view of Conway and Mori using the following:
- It would be obvious to one of ordinary skill in the art at thetime of invention to use the teaching of Conway in the system of Gastman to provide the macro and micro pre-filters motivated by the fact that Conway discloses that such pre-filters would protect the pumps, valves, etc., and/or removing the particulate matter and sediment.
- It would have been obvious to one of ordinary skill in the art to incorporate the membrane filter of *Mori* in the invention resulting from the combination of *Gastman and Conway *because *Gastman* does not limit the type of filter to be used and one of ordinary skill would use the advanced treatment methods of *Mori* for the advantages disclosed therein.

**Notes:**
These are TSM rationales: Both statements address “C. Resolving the level of ordinary skill in the pertinent art” of the Graham v. John Deere Co. test (slide 4).

## Example 9Rationale A

- It would have been common sense that the filtration system of Gastman would have had obvious uses, i.e., such as for treating raw water, beyond its primary purposes (for contaminated water), and a person or ordinary skill would have been able to combine prior art elements, such as the filter of Mori, into known systems, such as that of Gastman, to yield predictable results.

**Notes:**
A. Combining prior art elements according to known methods to yield predictable results.

## Example 10Reversal

- Claim:
- A composition comprising a faujasite catalyst support wherein:
- the faujasite support has a pore diameter of at least 0.75 nm;
- catalytic particles dispersed on a surface of said support such that said particles comprise at least 10 wt% based on the total weight of the composition;
- wherein said catalytic particles include platinum; and
- wherein said catalytic particles having an average particle diameter of about 2.5 nanometers or less.

## Example 10Prior Art

- Chabaz discloses:
- A palladium-loaded zeolite-Y useful for hydrocracking processes with:
- Palladium particle size of 2.7 nm.
- Disclosure of 8 wt% palladium particles.
- Examiner contends that pore diameter would be inherent property of Zeolite-Y.
- Chabaz fails to specifically teach the use of platinum comprising at least 10 wt% or a support with a pore diameter of at least 0.75 nm.
- Heuland discloses:
- Group VIIIB transition metal-loaded zeolite catalysts suitable for use in hydro-cracking operations.

**Notes:**
Bullets 1 & 3 address “A. Determining the scope and content of the prior art” of the Graham v. John Deere Co. test (slide 4).
Bullet 2 addresses “B. Ascertaining the differences between the prior art and the claims in issue” of the Graham v. John Deer Co. test.

## Example 10Statement of Obviousness

- The Examiner rejected the claim under 35 U.S.C. § 103(a) over Chabaz in view of Heuland with the following:
- Chabaz and Heuland are combinable because they teach transition-metal containing zeolites and each reference teaches such materials are useful hydro-cracking catalysts.

**Notes:**
Attempt to address “C. Resolving the level of ordinary skill in the pertinent art” of the Graham v. John Deere Co. test (slide 4).

## Example 10Analysis of Examiner’s Statement of Obviousness

- Weaknesses in the Examiner’s rationale
- The Examiner has not provided any facts and/or technical reasons to support the assertion that the pore diameter recited in the claim would have been “inherent” to the support of Chabaz.
- The Examiner has not provided **a sufficient reason or explicit analysis** of why the disclosures of the Chabaz and Heuland should be combined.
- It is therefore unlikely that the BPAI would affirm the rejection on the grounds posited by the Examiner given that:
- A key to supporting any rejection under 35 U.S.C. § 103 is the _**clear articulation**_ of the reasons why the claimed invention would have been obvious.

## Example 10Alternative Proposed Statement of Obviousness

- A close analysis of the claim and the cited references shows that the references are nonetheless on point.
- Faujasite and zeolite-Y are the same material.
- Products of identical chemical composition cannot have mutually exclusive properties.
- Thus, the zeolite-Y of Chabaz would inherently exhibit a pore diameter of at least 0.75 nm.
- Both the platinum required by the claim and the palladium disclosed by Chabaz are Group VIIIB transition metals.
- Heuland discloses that zeolite supports loaded with Group VIIIB transition metals are suitable hydro-cracking catalysts.

## Example 10Alternative Proposed Statement of Obviousness (cont.)

- Therefore, using TSM analysis, the following statement of obviousness is proposed:
- Chabaz discloses a zeolite-Y support. Given that zeolite-Y and faujasite are the same material, the zeolite-Y of Chabaz would exhibit the same pore diameter as that instantly claimed because products of identical chemical composition cannot have mutually exclusive properties.
- Although neither Chabaz nor Heuland specifically disclose the use of platinum containing catalytic particles loaded on the support, it would have been obvious to one of ordinary skill in the art at the time of invention to use platinum in place of the palladium disclosed by Chabaz motivated by the fact that Heuland disclose that group VIIIB transition metals (of which platinum and palladium are members)  are suitable for use in zeolite-supported hydro-cracking catalysts.

**Notes:**
G. The TSM test.

## Example 10Alternative Proposed Statement of Obviousness (cont.)

- Finally, although Chabaz discloses only an 8wt% catalytic particle loading (as opposed to the at least 10wt% required by the claim), the claimed amount would have been obvious to one of ordinary skill in the art through routine experimentation in an effort to optimize catalytic activity and utility taking into consideration the operational parameters of the hydro-cracking operation (time, temperature, pressure, throughput), the geometry of the catalytic bodies, the physical and chemical make-up of the hydrocarbon feedstock as well as the nature of the petroleum end-products.