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

Tue Mar 25 14:43:02 UTC 2025

Hi Krista - ditto to what you said and all who responded. I receive this 
from time to time - it's almost always a weak rejection because it's 
typically only pulled out when the record doesn't hold the evidence to 
make a better rejection.

One thing I really like to pound -- and it typically works very well -- 
is /what does the *_record_* show?/ That articulated reasoning with 
rational underpinning is like a hammer. Pound it. Then pound it again. 
It works. Merely rearranging parts /has /been held, not /always /is 
held. Thus, a factual finding must be made re: the understanding of a 
POSITA, /based on the evidence of record/ -- has the examiner shown that 
a POSITA would have known to make such rearrangements? One trick is to 
demand official notice (MPEP 2144.03) be taken of any missing facts that 
the examiner is asserting are 'well known.' Official notice sets the 
examiner up for a lot of work -- because "C.  If Applicant Traverses a 
Factual Assertion as Not Properly Officially Noticed or Not Properly 
Based Upon Common Knowledge, the Examiner *_Must _*Support the Finding 
With Adequate Evidence." Most examiners don't like official notice, as 
such. That's your friend.

Second, these types of rejections 90+% of the time fall into 
impermissible hindsight, as Scott says. Mine the references carefully 
for teaching away or change in principle of operation. A lot of times a 
'change' that looks sensible at first impression actually undoes the 
very thing the primary reference is teaching.

Third, as a fallback / negotiation position, 'criticality' can include 
any advantage. For example, if you said widget X might be blue, and blue 
might help it blend in with the sky, blue can now be argued to be 
critical /in that embodiment/. That's one good reason to layer in a lot 
of example advantages throughout the specification.

Finally, interview the examiner. Sometimes they're just making a 
rejection so they don't get dinged for too many first action allowances, 
and they're just looking to you to provide a good rebuttal they can 
point to. If so, a lot of times you can figure out what kind of argument 
they will accept, and keep it to 1-3 sentences in the response. Other 
times, the examiner has 'gut feel' decided it's not patentable, and 
can't find evidence to support it, but they still don't think it's 
patentable. In those cases, you have to prep for appeal ASAP. Case law, 
succinct but on-point arguments, no deference to the examiner's 
position. Oh ... and let them know you're prepping for appeal -- 
sometimes it helps them rethink the work / reward balance earlier.

Hope that helps.

On 3/25/2025 9:26 AM, Scott C. Sample via Patentpractice wrote:
>
> I agree. It’s a pretty weak rejection.
>
> First, I’d argue all claim limitations must be taught.
>
> “To establish obviousness of a claimed invention, all the claim 
> limitations must be taught or suggested by the prior art. /In re 
> Royka/, 490 F.2d 981, 180 U.S.P.Q. 580 (CCPA 1974).  Additionally, 
> when judging the patentability of a claim against the prior art, all 
> elements in the claim must be considered. /In re Wilson/, 424 F.2d 
> 1382, 1385, 165 U.S.P.Q. 494, 496 (CCPA 1970).”
>
> Second, I’d throw in hindsight and cite KSR using a variation of the 
> following language:
>
> …lacks any rational underpinning and is strongly indicative of 
> impermissible hindsight reconstruction.  “Rejections on obviousness 
> cannot be sustained by mere conclusory statements; instead, there must 
> be some articulated reasoning with some rational underpinning to 
> support the legal conclusion of obviousness.” /KSR/, 550 U.S. 398, 82 
> USPQ2d at 1396 quoting /In re Kahn/, 441 F.3d 977, 988, 78 USPQ2d 
> 1329, 1336 (Fed. Cir. 2006).
>
> It’s doubtful /In re Japikse/amounts to articulated reasoning, unless 
> the arrangement was strictly a design choice without any improvement, 
> assuming this is the cited section:
>
> *C. /Rearrangement of Parts/ *
>
> /In re//Japikse,/ 181 F.2d 1019, 86 USPQ 70 (CCPA 1950) (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.); /In re Kuhle,/ 526 F.2d 553, 188 USPQ 7 
> (CCPA 1975) (the particular placement of a contact in a conductivity 
> measuring device was held to be an obvious matter of design choice).
>
> My two cents
>
> *Scott C. Sample***********
>
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> *From:*Patentpractice <patentpractice-bounces at oppedahl-lists.com> *On 
> Behalf Of *Krista S. Jacobsen via Patentpractice
> *Sent:* Tuesday, March 25, 2025 9:02 AM
> *To:* For advice. <patentpractice at oppedahl-lists.com>
> *Cc:* Krista S. Jacobsen <krista at jacobseniplaw.com>
> *Subject:* [Patentpractice] In re Japikse and "criticality of the 
> claimed limitation"
>
> EXTERNAL EMAIL
>
> 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
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> www.jacobseniplaw.com <http://www.jacobseniplaw.com/>
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