I am following up on my recent post Section 103 Obviousness Rejections pertaining to the 2018 USPTO Guidelines issued to USPTO examiner. Recall that in 2007, the US Supreme Court broadened the basis for an examiner to reject a claim of a patent application on the assertion that the development subject of the claim was obvious (Section 103 – obviousness rejection). The expanded grounds for finding a development obvious suggested subjective viewpoints of “common sense” or “understanding of the technology”. This article continues the discussion of the Section 103 Obviousness Rejections.
There is no magic bullet to get around the examiner, but it is important to understand the “exemplary” obviousness grounds and understand that full understanding of the technology, the existing prior art, and careful drafting of the specification and claims can provide the ammunition to shoot holes in the examiner’s argument. This can include objective evidence supporting secondary considerations rebutting a subjective view of obviousness.
The USPTO Guidelines list 7 exemplary grounds. They are repeated below.
- (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 technique 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 a reasonable expectation 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 variations are predictable to one of ordinary skill in the art;
- (G) Some teaching, suggestion, or motivation in the prior art that would have led one of ordinary skill to modify the prior art reference or to combine prior art reference teachings to arrive at the claimed invention.
Looking at the examples labeled C & D, note that the objection is essentially based upon a use of a known technology. This suggests obtaining a through prior art search will allow the inventor to emphasize in the specification that the technology of the development is new and different from known technology. This can include applying technology in a different way or at a different stage than previously used. Also that the use of the known technology is solving a different problem than in its previous use.
Example C (known technology to be used the same way with a similar device) may be still be patentable if (i) the need for the improvement had long been recognized but unmet, (ii) achieves great commercial success, (iii) demonstrated failure of others to solve the problem, or (iv) previous statements of experts or others in the industry that the application of the known technology would not work. These are several of the so-called secondary considerations or “Graham Factors” (Graham v. John Deere decided in 1966). Note that it has been stated that secondary considerations “may often be the most probative and cogent evidence in the record”. See Stratoflex, Inc. v. Aeroquip Corp decided in 1983.
The ground work for arguing these secondary considerations can be set out in the specification. Also, the secondary considerations may be used to rebut an actual or anticipated rejection under example D (discussed below). I believe these factors also are applicable in relation to examples E & F (obvious to try or known efforts to apply the technology based upon technical incentives or market forces). If there is a basis for applying the secondary considerations, I suggest that they be included in the specification. Perhaps the examiner’s thought of obviousness may be deflected or blunted via his reading of the specification and formulation of his own search of the prior art.
Looking at example D (known technology applied to a known device), it appears that this would be where the known technology, i.e., prior art, was used in a different field of endeavor or industry. See my blog regarding non-analogous art can’t be obvious.
As suggested, it is important that the specification provide a foundation to show that the application of prior art is used for solving a different problem than in previous use of the technology. Remember you can’t add additional facts and details to the specification after it is filed since this would be impermissible insertion of new matter. You should try to anticipate the examiner’s rejections and prepare the foundation for your rebuttal.
Again, a good understanding of the known art, acquired via a patent search and your own homework and knowledge, will be very valuable. Of course you cannot have a detailed search over a broad area. Therefore it is important to understand what is your invention and have this focused topic the subject of the prior art search.
As previously stated in my earlier blog post, obviousness is the most used basis for rejection of the claims of a patent application. Asserting facts within the specification that support application of the secondary considerations may show that these facts are an integral part of the significance of the claimed invention, in contrast to rebuttal asserted only after the examiner’s initial obviousness rejection.
It is suggested that these secondary considerations or “Graham Factors” be labeled as objective facts within the specification. Recall that part of the treacherousness of an examiner’s obviousness rejection is that it is accompanied by the examiner’s subjective views. Remember everything appears obvious once it is disclosed.
Copyright David McEwing, 2019