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after 20 years doing this, including writing my own and reading the replies of others, I think attacking the prima facie case devolves to boiler plate that examiner's easily dismiss with their own canned response in the next (final) rejection. What I do find promising in most cases is that examiners routinely mischaracterize and misapply their prior art references. they say it says something but when you look, it really doesn't. examiners get uncomfortable knowing their work is going to get scrutinized on appeal.
I mean, it obviously depends on what the examiner asserted was obvious and how strong their point was. In some cases sure, it could work, as you obviously know. But in terms of general best practices, no, the examiner is usually going to dig in if you don’t actually address the references. This obviously doesn’t include a situation where you’ve had an interview where the examiner agreed with you and just wanted you to put your arguments on the record.
Mind you this was a final rejection, so the differentiations were already made prior, before I got the case. Mostly just feeling out other situations.
I only find this to be successful when there is something blatant I can point to - like elements/limitations left unaddressed. Examiners really don't like to take the hit of a second non-final, so they'll often give you a final even when you actually have a point, unless it's a really good point.
Canadian here, but have worked on US files...I have seen this done successfully in many US files I've come in on, but have also seen it fail and there be several more rounds of argument with the Examiner... In Canada I definitely argue the idea of 'no motivation to combine Ref 1 & 2', or 'not obvious bc POSITA would have seen X teach-away in Ref 2...' all the time if possible. But I'm biotech/pharma so not sure if its similar for high tech and engineering practice...
In general, I think you’ll have stronger arguments if you point to something specific in one or more references to help make your point. Sure, you can argue the examiner failed to articulate any sort of motivation to combine refs 1 and 2 (or whatever the case may be), but unless you point to something fact-specific from the references, you’ll likely get another office action where the examiner modifies the rejection to address the deficiency.
I agree with you completely. For context, the claimed invention recited a specific and narrowly construed structural difference. The prior art of record spanned about 100 years. No reference remotely contemplated the configuration. Examiner just kept on with “obvious to try” and “finite predictable solutions”. I had zero confidence the Examiner would budge, so I just attacked KSR E. and then went for the Graham factual inquiries.
I wasn’t going after failing to articulate motivations for combination. I straight up went after KSR point E. (Should have been more specific in the post).