This article addresses overcoming obviousness rejections. This is sometimes referenced as a Section 103 rejection. Rejections under 35 U.S.C. 103 are the most common basis for an examiner refusing to allow issuance of a patent. Section 103 states that an improvement or modification that would be obvious to a hypothetical person of ordinary skill in the art is not patentable.
(You will note that I have spent a significant amount of time discussing rejections based on allegations that the invention is not patentable subject matter, i.e., a section 101 rejection. Recall abstract ideas, laws of nature and natural phenomena are not patentable subject matter. This article, however, takes a new but common topic/obstacle to achieving patent protection.)
I have already written on the topic of “obviousness”, i.e., “overcoming an obviousness rejections”. The USPTO has also issued Examination Guidelines for Determining Obviousness for use by its examiners.
Analysis for obviousness involves (i) determining the scope and content of the prior art, (ii) ascertaining the differences between the claimed invention and the prior art; and (iii) resolving the level of ordinary skill in the pertinent art.
My basic irritation from a 103 obviousness rejection is that it often involves a subjective judgment of the examiner. As stated elsewhere, everything looks obvious in hindsight. My irritation also arises from the examiner’s apparent rush to combine disparate prior art references to point to the inventor’s development. Overcoming an obviousness rejection may require careful study of the prior art cited by the examiner.
Notwithstanding the existence of prior art that may, at first glance, appear to discuss the applicant’s invention, the examiner’s work is not done. Objective evidence relevant to the non-obviousness of the claimed invention must be evaluated by the examiner when presented by the applicant. This evidence, i.e., “secondary considerations,” may include evidence of the applicant’s commercial success, the long-felt but unresolved need in the industry prior to the applicant’s invention, failure of others prior to the applicant’s invention, and unexpected results achieved by the invention. Note that this evidence can be included within the text of the originally filed application. (Note also that these factors are also referred to as the “Graham Factors“.)
Person Skilled in the Art
One of the more difficult tasks is to define the hypothetical person of ordinary skill in the art. The USPTO has stated in MPEP 2141:
“In short, the focus when making a determination of obviousness should be on what a person of ordinary skill in the pertinent art would have known at the time of the invention, and on what such a person would have reasonably expected to have been able to do in view of that knowledge. This is so regardless of whether the source of that knowledge and ability was documentary prior art, general knowledge in the art, or common sense.”
The USPTO materials suggest factors that may be considered in determining the level of ordinary skill in the art may include
(1) “Type of problems encountered in the art;” (2) “prior art solutions to those problems;” (3) “rapidity with which innovations are made;” (4) “sophistication of the technology;” (5) “educational level of active workers in the field.”
The Supreme Court in the 2007 KSR decision stated that the analysis supporting a rejection for obviousness be made explicit and that rejections cannot be sustained mere conclusory statements but, instead, there must be an articulated reason with some rational underpinning to support the legal conclusion of obviousness. This has been consistently upheld in the subsequent 13 years.
A listing of rationales stated by the USPTO (supporting a determination of obviousness) includes:
(A) Combining prior art elements according to known methods to yield predictable results;
(B) Simple substitution of one known element for another to obtain predictable results;
(C) Use of known techniques to improve similar devices, methods, or products, in the same way;
(D) Applying a known technique to a known device, method or product ready for improvement to yield predictable results;
(E) “Obvious to try” choosing from a finite number of identified, predictable solutions, with reasonable predictions of success;
(F) Known work in one field of endeavor may prompt variations of it for use in either the same field or a different one based on design incentives or other market forces if the variation would have been predictable to one of ordinary skill in the art;
(G) Some teaching, suggestion, or motivation in the prior art that would have lead one of ordinary skill to modify the prior art reference or to combine prior art references teachings to arrive at the claimed invention.
As an example, however, the courts, post KSR, have stated that an obviousness rejection under rationale A above, would require written analysis of the following 4 factors:
“To reject a claim based on this rationale, Office personnel must resolve the Graham factual inquiries. Then, Office personnel must articulate the following:
(1) a finding that the prior art included each element claimed, although not necessarily in a single prior art reference, with the only difference between the claimed invention and the prior art being the lack of actual combination of the elements in a single prior art reference;
(2) a finding that one of ordinary skill in the art could have combined the elements as claimed by known methods, and that in combination, each element merely performs the same function as it does separately;
(3) a finding that one of ordinary skill in the art would have recognized that the results of the combination were predictable; and
(4) whatever additional findings based on the Graham factual inquiries may be necessary, in view of the facts of the case under consideration, to explain a conclusion of obviousness.”
The take away is that the examiner must articulate express findings of fact of the above 4 criteria in create a sustainable rejection. If the examiner repeats the rejection (in response to your pointing out the flaw) without providing the required findings, it may be necessary to appeal the rejection to a panel of three administrative law judges of the Patent Trial and Appeals Board (PTAB). Although this may appear to be a significant added cost and time expenditure, it may be the only recourse to circumvent an intransigent examiner. Also it may be more cost efficient to timely appeal rather that conduct continued “rounds” of examiner rejections and your responses.
An additional method of overcoming obviousness rejections may be by the inventors or others providing declarations or oaths regarding the state of the art prior to the invention or the likelihood that a person skilled in the art would look to the patents or other materials cited by the examiner.
This is only a summary of the USPTO materials. I am always available to discuss specific situations. It may be possible to avoid an obviousness rejection by conducting a prior art search combined with informed drafting of the claims after study of the prior art search results.
Copyright © David McEwing, 2020