“Well, Obviously…”

Today was our 103 introduction, which was quicker than scheduled and pretty interesting.

There was a lot of emphasis placed on the difference between technical obviousness and legal obviousness.  You must, as an examiner, make a good case for your obviousness rejection.  You also can’t use the benefit of hindsight; that is, you can’t read the application back into the references you’re citing if there’s no real motivation to do so.  At the same time, you don’t have to have an explicit motivation to combine in the prior art.  We’ll obviously get more training that will address the clarification of Graham v Deere via KSR.  But not yet.

It seems like one of the trickiest things will be reading the claims in the broadest light possible with respect to the specifications; we’ll have to learn to treat commonly used expressions and terms in a way that is more general than we ordinarily would mean them to be.  That can be tough.

We also had a very funny presentation about leave, comp time, overtime, and work schedules.  If you’re thinking about becoming an examiner, consider this: with the IFP (Increased Flex Plan, I believe) you can basically work any 80 hours in a biweek.  You don’ t have to set a schedule beforehand.  You can work Saturdays, if you want to.  You can work up to 12 hours a day or just not come in at all on a day that is inconvenient.  You can leave in the middle of the day, do what you need to do, and come back at 8pm that night.

That is what I call “flexibility.”  Most jobs that offer flexible schedules require core hours every day, or at least require you to declare when you’re going to work up front.  Not so, here.  Of course, most jobs don’t also have production requirements like the PTO does.  But life is about trade-offs.


2 thoughts on ““Well, Obviously…””

  1. You wrote:
    “you can’t read the application back into the references you’re citing if there’s no real motivation to do so. ”

    Ok young pup, here are two nuggets for you . . .

    1. You can never “read the application back into the reference”, whether there’s motivation or not.

    2. 95% of 103 rejections that I get only say, “it would have been obvious to combine element A from reference 1 with element B from reference 2 because then B would be improved.”


  2. Reading the claims as broadly as possible is a talent that takes years to master. Even then, an oldtimer gets tripped up now and again.

    You are already wise to see the difficulty. Maybe that academy thing will work after all.

    Reading the claim, the spec and then the references given by the applicant can lead an examiner down a narrow path. Experience teaches the examiner when to open up his mind after having been so led.

    Often the applicant is so narrowly focused in his field that he cannot see the breadth he claims as well. This is where the examiner who explains himself well practices compact prosecution. If the applicant can see what the examiner sees, then often the applicant will also see how to narrow his claims to the scope needs to overcome the rejections, without loosing what he truly wants to claim.

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