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 Use of non-statutory matter in a 103 rejection 
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Joined: 2013-09-11 14:16:38
Posts: 1
The Patent Office cited a reference in a 35 USC 103(a) rejection that teaches a system in which users interact with each other while performing Internet searches. The reference states that if each user has different domain expertise, the users may help each other develop new queries as they receive search results.

The pertinent parts of the claim the Patent Office asserted this reference against recites a method performed by a machine for:
1) associating each user with a knowledge domain;
2) determining if users from different knowledge domains are searching for the same thing;
3) connecting those users together.

The Patent Office notes that the cited reference states that
1) its method is based on the assumption that the users who have gotten together have the same information need, but different domain expertise. Therefore, each user is associated with a knowledge domain.
2) since users are collaborating with each other, the users have determined that they are searching for the same thing.
3) since the users are collaborating, they are communicating with each other.

Is it improper to cite non-statutory subject matter as the basis for a 103 rejection? I have not found any case law to support this argument. It is clear that
1) an assumption is an abstract concept (i.e., purely mental).
2) the decision by the users to collaborate, and the users determining if they are searching for the same thing are purely mental processes, which are not performed by the system in the cited reference.
3) the decision by the users to communicate with each other is purely mental.


2013-09-11 14:56:40
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Joined: 2011-12-26 16:53:41
Posts: 117
genghiscomm wrote:
Is it improper to cite non-statutory subject matter as the basis for a 103 rejection? I have not found any case law to support this argument. It is clear that
1) an assumption is an abstract concept (i.e., purely mental).
2) the decision by the users to collaborate, and the users determining if they are searching for the same thing are purely mental processes, which are not performed by the system in the cited reference.
3) the decision by the users to communicate with each other is purely mental.

Prior art doesn't have to be "statutory" under 101 -- that's a requirement for patentability, not for availability as prior art.

Now, to the extent that you've identified *differences" between the reference and the claims -- namely, whether a machine or a human is performing claimed actions -- then that's an argument that the proposed combination does not disclose all the elements of your claims.

That said, the Examiner is generally going to say it's obvious to automate a manual activity. “it is well settled that it is not ‘invention’ to broadly provide a mechanical or automatic means to replace manual activity which has accomplished the same result.” In re Venner, 262 F.2d 91, 95 (CCPA 1958) (citation omitted); see also Leapfrog Enterprises, Inc. v. Fisher Price, Inc., 485 F.3d 1157, 1162 (Fed. Cir. 2007).

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Karen Hazzah
Patent Prosecution blog "All Things Pros" http://allthingspros.blogspot.com/

The opinions expressed on this message board are mine and do not represent the views of my law firm, colleagues, or clients. My writings on this board are not legal advice and are offered for educational purposes only. No attorney-client relationship is created by my writings on this board.


2013-12-19 15:05:38
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