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

Tue Mar 25 15:15:49 UTC 2025

Many thanks to Jeroen, Dan, Scott, and Timothy for your suggestions. They
are extremely helpful and will help me craft a solid reply. (I expect it
will not change the examiner's mind, but at least I'll be ready to appeal.)

I love this listserv. Such generous participants! Thank you all again.

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

On Tue, Mar 25, 2025 at 7:45 AM Timothy Snowden via Patentpractice <
patentpractice at oppedahl-lists.com> wrote:

> 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*********
>
> |
>
> Partner
>
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>
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>
> *From:* Patentpractice <patentpractice-bounces at oppedahl-lists.com>
> <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>
> <patentpractice at oppedahl-lists.com>
> *Cc:* Krista S. Jacobsen <krista at jacobseniplaw.com>
> <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
>
> www.jacobseniplaw.com
>
>
>
> NOTICE:  This communication may include privileged or confidential
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> communication without copying or distributing.
>
>
>
>
>
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