[Patentpractice] In re Japikse and "criticality of the claimed limitation"

[Dan Feigelson]

Krista, I'm with you on all of the points you raise.

Since examiners won't listen to case law except what's cited in the MPEP, I
like to hold examiners close to what the MPEP says about cited cases, if
doing so works in my favor. I haven't encountered *Japikse* before, let
alone read it, but from the brief blurb in MPEP 2144.04 VI C - the only
place in the MPEP where this decision is cited - it seems that the *only*
difference between what was claimed and what was cited was the position of
the starting switch - " Claims to a hydraulic power press which read on the
prior art except with regard to the position of the starting switch were
held unpatentable because shifting the position of the starting switch
would not have modified the operation of the device "  Seems to me if
either (a) there are additional differences between what you've claimed and
the what's shown in the reference, or (b) making the change would have
modified the operation of the prior art device, then you should argue on
that basis that by the MPEP's own admission, *Japikse* is inapposite. If
you think you may need to appeal, then go into greater discussion about
*Japikse*.  Depending on what the *Japikse* decision actually says, it
might also be worth arguing something about how that case pre-dates the
statute and didn't use the obviousness standard that was enacted in 1952,
although (i) I think the folks who write the MPEP try to avoid making that
mistake, i.e. if they're citing *Japikse* then on this point it probably
wasn't superseded by the statute, and (ii) even if that argument is valid,
the examiner won't listen to it but PTAB should.

Dan

On Tue, Mar 25, 2025 at 4:06 PM Krista S. Jacobsen via Patentpractice <
patentpractice at oppedahl-lists.com> wrote:

> I have an office action in which claims have been rejected under 103. For
> several of the claims, the examiner could not find in the applied
> references exactly what is recited in the claims, but she rejected the
> claims anyway, stating only that the recited configuration would have been
> obvious “since it has been held that rearranging parts of an invention
> involves only routine skill in the art. *In re Japikse*, 86 USPQ 70.”
> Then she adds, “Please note that in the instant application, the Applicant
> has not disclosed any criticality for the claimed limitation.”
>
> I am trying to figure out how best to respond to the examiner’s citation
> to a CCPA decision from 1950 (!!!) and the apparent assertion that
> “criticality” of limitations must be disclosed.
>
> My first thought is that these rejections amount to improper hand-waving.
>
> Second, I am unaware of any requirement for an application to disclose
> “criticality for the claimed limitation” in order for a claim to be
> patentable over a combination of references. MPEP 2144.04 says this about
> “criticality”: "If the applicant has demonstrated the criticality of a
> specific limitation, it would not be appropriate to rely solely on the
> rationale used by the court to support an obviousness rejection.” The
> examiner appears to have recast this statement as: “If the applicant has
> NOT demonstrated the criticality of a specific limitation, it WOULD be
> appropriate to rely solely on the rationale used by the court to support an
> obviousness rejection.” Then she sticks in a reference to *In re Japikse*
> and deems it obvious. I do not think that makes for a proper 103 rejection.
>
> Third, the examiner’s rationale seems to seek to improperly shift the
> USPTO’s burden. The applicant is not required to prove that an invention is
> nonobvious (apparently by disclosing “criticality for the claimed
> limitation” in the application). Instead, the USPTO is required to allow
> the claim unless the examiner can show that the claimed invention IS
> obvious.
>
> I would appreciate any thoughts from the brain trust, especially if you
> have received and responded to similar rejections. Thanks in advance.
>
> Best regards,
> Krista
>
> ------------------------------------------
> Krista S. Jacobsen
> Attorney and Counselor at Law
> Jacobsen IP Law
> krista at jacobseniplaw.com
> T:  408.455.5539
> www.jacobseniplaw.com
>
> NOTICE:  This communication may include privileged or confidential
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