Interference No. 104,693
Preputnick v. Provencher
applied reference, the rejection should be reversed on appeal.
Likewise, when filing a motion attacking the patentability of an
opponent's claim on the ground of obviousness, it is incumbent
upon the moving party to establish differences between an
attacked claim and the prior art reference being applied and to
focus on such differences in discussing obviousness of the
claimed invention.
Without a specific identification of differences, an
examiner or a moving party frequently performs unfocused hand
waving about what a reference shows and then concludes that a
certain claim would have been obvious. Such a presentation
leaves much in doubt about whether the proper analysis under
Graham v. John Deere for a determination of obviousness has been
made. As an aid for moving parties to not forget their need to
focus on differences between a prior art reference and the claim
under attack, I 26(e) in the Standing Order, in no uncertain
terms, states with regard to preliminary motions attacking claims
on the ground of obviousness:
Any difference [from each primary prior art
reference] shall be explicitly identified.
we searched, in vain, through the entirety of Preputnick's
preliminary motion 2, for any statement that reasonably can be
viewed as setting forth what Hashiguchi does not disclose
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