Obviousness: Responding to a Rejection to Your Patent Application under 35 U.S.C. 103

What is an obviousness rejection?

An obviousness rejection of your patent application is a substantive legal argument that your patent application is too similar to existing publications at the time of filing of your patent application. Unlike a procedural objection, you will have to overcome legal and factual arguments to distinguish your rejected claims from the cited prior art references.

What is the proper form of response?

Argument against an obviousness rejection can be filed as a response to a non-final office action in the case of the non-final rejection. If the rejection is final, argument can be presented with a Request for Continued Examination (RCE) or upon appeal to the Patent Trial and Appeal Board.

In the written response, remember to address every point made by the Examiner. At the most benign, the response may be deemed incomplete. An incomplete response can cause your application to become abandoned as the statutory deadline is not met without a complete response. At worst, your response may be deemed to concede unaddressed arguments in an appeal brief.

What is the standard for Obviousness?

35 U.S.C. 103: Conditions for patentability; non-obvious subject matter

A patent for a claimed invention may not be obtained, notwithstanding that the claimed invention is not identically disclosed as set forth in section 102, if the differences between the claimed invention and the prior art are such that the claimed invention as a whole would have been obvious before the effective filing date of the claimed invention to a person having ordinary skill in the art to which the claimed invention pertains. Patentability shall not be negated by the manner in which the invention was made.

How can you respond to an obviousness rejection?

These rejections are commonly addressed in a couple ways. The strongest argument is that the combination of prior art doesn’t teach every element of the claim rejected. A weaker, but sometimes worthwhile argument, is that there is no reason to combine the prior art references.

MPEP 2143.03 All Claim Limitations Must Be ConsidereD

“All words in a claim must be considered in judging the patentability of that claim against the prior art.” In re Wilson, 424 F.2d 1382, 1385, 165 USPQ 494, 496 (CCPA 1970).

Many words in a claim, often including articles and prepositions, either define a new structure or modify a structure recited. For each of these words, the word itself defines a individual claim element. If an element or a word that shapes the scope of the claim can’t be found in the combination of cited prior art references, the rejection is not properly supported under MPEP 2143.03. A well-reasoned response using this argument shifts the burden to the Examiner to find different references to maintain the rejection or allow the patent to issue.

2143.01 Suggestion or Motivation To Modify the References

Obviousness can be established by combining or modifying the teachings of the prior art to produce the claimed invention where there is some teaching, suggestion, or motivation to do so. In re Kahn, 441 F.3d 977, 986, 78 USPQ2d 1329, 1335 (Fed. Cir. 2006) (discussing rationale underlying the motivation-suggestion-teaching test as a guard against using hindsight in an obviousness analysis).

The Examiner has much more discretion when reconsidering claims accompanied by this type of response. However, there are some limits to the Examiner’s discretion. For example, the Examiner must provide some supporting reason that one of ordinary skill in the art would combine the references. Therefore, a strengthening argument could point out that the prior art references combine into a result that is not the claimed invention (e.g. that the combined result is tangential to the invention, rather than the invention itself). In more extreme cases, it can be proper to argue that the references “teach away” from the claimed invention. Be careful not to overplay the differences, as this can lose credibility with the Examiner. It can be important to maintain credibility in a discretionary situation.

As an example of the Examiner’s leeway -when teachings in the prior art conflict, the Examiner can weigh the suggestive power of each reference. Therefore, consider whether the teaching to reach the claimed invention is totally absent in the combination formed by the references, or whether multiple conflicting teachings could form several alternatives, including the claimed invention. Just because one of the alternatives seems disfavored doesn’t prevent the Examiner from maintaining a properly supported argument by the cited combination of references.

If you need help with your patents, trademarks, copyright, or trade secrets, please contact us.

Jeremy I. Maynard
Registered U.S. Patent Attorney
Troutman & Napier, PLLC
4740 Firebrook Blvd.
Lexington, KY 40513
Tel: 859-253-0991
Web: Troutman & Napier, PLLC
Originally Published at: Maynard.Law
Originally Published by: Maynard.Law

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