Need a case cite for obviousness

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David Boundy

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Dec 17, 2025, 1:52:12 PM12/17/25
to For patent practitioners. This is not for laypersons to seek legal advice., Rick's List-Serve (patentlaw@googlegroups.com)
We all know the case cites for "you can't treat a claim as a bucket of individual works, you ahve to treat the interconnections" -- in the context of anticipatin.
     -  Perkin-Elmer Corp. v. Computervision Corp., 732 F.2d 888, 894, 221 USPQ 669, 673 (Fed. Cir. 1984).
    -  Lindemann Maschinenfabrik GmbH v. American Hoist and Derrick Co., 730 F.2d 1452, 1459, 221 USPQ 481, 486 (Fed. Cir. 1984).

I need the same thing for obviousness.  The examiner looked at a few isolated words (pretty much the nouns) and ignored the interconnections.  For an appeal, I need a Federal Circuit cite.  You'd think there would be gobs and gobs of these.   My Lexis skills ain't finding it.  In re Kotzab is pretty close, but isn't hitting the nail on the head.  It's not that the art shows all the elements but not motivation to combine; my problem is that the examiner treated the 100-word claim as 20 or so isolated individual words, and entirely ignored the interconnections.   (And I'd like something post-KSR that comes out in the patent owner's/applicant's favor.)

On a related topic, in response to yesterday's question about lawyers getting sanctioned for stupid use of AI,  a friend sent me a note.   My friend says he's starting to get office actions with the kind of random words with random bolding that looks like AI glip signed by the examiner without review.

That's kind of what this action looks like -- the examiner found a reference with eight or ten of the words in close proximity, and another reference with five more, and didn't bother with the interconnections.  Geezo peezo.


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